a.

Air Philippines v Pennswell: trade and industrial

INTELLECTUAL PROPERTY CODE (RA8293) secrets are exempted from compulsory disclosure.
I. Intellectual Property Rights in General i. Trade Secret – plan, tool, or compound known
only to tis owner and those of his employees to
a. Intellectual Property Rights – rights given to persons over creation of whom it is necessary to confide it.
their minds. 2 categories:
i. Industrial Property - inventions, trademarks, industrial design, d. Patent, Trademark, Copyright
geographic indications
ii. Copyright and related rights – literary and artistic works Patent Trademark Copyright
1) Perfoming artists, producers of phonograms in their Definition Exclusive right Any visible sign Intangible right
recordings, broadcasters in their radio and tv programs granted to an capable of granted to author or
inventor over distinguishing originator of literary,
b. Kinds of IPR in the IPC: 1) INVENTION goods or services artistic, scentifiic,
i. Copyright and related rights – original creations in literary and 2) UTILITY of an enterprise and scholarly works
artistic domain MODEL where he is invested
1) protected from the moment of creation 3) INDUSTRIAL Includes a stamped with sole and
ii. Trademark and service marks – nay visible sign capable of DESIGN or marked exclusive privilege of
distinguishing goods or services of an enterprise container of goods multiplying copies of
iii. Patents – technical solution of a problem with any field of human To sell, use, and the same and
activity which is new make same for publishing and
1) Involves an inventive step commerce or selling them
2) Is industrially applicable industry
Other rights
c. Intellectual Property as a right Ø Communicating
i. Statutory in nature – protection must be provided by law, enjoyed on it to the public
terms specified by the Statute. Ø Right of
ii. Incorporeal right – exists separately form material object to which it Attribution
is attached Ø Right to carry out
1) Effect: ownership in one does not result in ownership of the derivative work
other and other moral
iii. Private right – participation of rights holder is necessary to establish rights
ownership, determine lack of consent or authority or in any act Scope or Technical Attaches to good or Literary, artistic,
deemed as an infringement Object solution of a services of an scientific works
iv. Not absolute – subject to limitations IPR involves problem in any enterprise and
v. NOTE: field of human stamped or marked Original intellectual
1) Hoarding for purposes of destruction is not a violation of activity containers creations – protected
IPR. Ø New from moment of
a. It does not relate to infringement of patent, Ø Involves creation
trademark, trade name, without proper authority inventive
form registered owner. step
2) Trade secrets – protected under the IPC as it covers Ø industrially
protection of undisclosed information. applicable

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Term of 20 years 10 years – 50 years ii. Types of Patent
Protection Certificate of 1) Patentable Inventions
From filing of Registration 2) Industrial Designs
application for 3) Utility Models – mode of tools or industrial product or part
grant Provided: of same which is of practical utility by reason of its form,
Ø file declaration configuration, or composition
of actual use _ a. Qualification for regsirtration: if it is new and
evidence OR industrially applicable
Ø show valid b. Same rules as patentable inventions, except for
reasons based inventive step
on existence of c. Cannot be renewed
obstacles to d. Effectivity of Registration: 7 years after date of filing,
such use – without possibility of renewal
within 1 year e. New model of implements or tools, even if not
form 5th possessed of quality invention, but is of practical
anniversary of utility, is entitled to a patent for utility model.
date of f. Examples
registration of i. Plain automative spare parts – which must
the mark conform to original structural design of
If not: mark components they seek to replace (Ching v
removed from Salinas)
Register by Office ii. Audio equipment – karaoke (Rasario v CA)
Modes of Application with Registration from Moment of iii. Purpose
Acquiring IPO Creation 1) Reward invention
NOTE: 2) Promote disclosure of inventions – to further innovation,
Ø These rights are not interchangeable. Distinct and separate from one permit publci to practice onvnetion once patent expires
another. 3) Stringent requirements – to ensure ideas in the public
Ø Grant of one does not guarantee the grant of the other. domain remain there for free use of the public, and it is only
o Proteciton of “Lavandera Ko” as a tradename or business after exhaustive examination that patent is issued
name v “Lavandera Ko” as a copyright – literary work
Ø Article of commerce – trademark, patent, and copyright protection
o Original ornamental design – copyright if design can be b. Patentable Inventions
separated from utuilitatiran aspect i. Generally
o Ornamental design – industrial design, bc it cannot be 1) What: technical solution of a problem, new, involves an
patented inventive step, industrially applicable. May be or may relate
o Stamped or marked container of goods - trademark to a product or process, or improvement of any of the
Ø foregoing.
2) Examples:
II. Patents a. Products
a. General i. Drone
i. Patent – exclusive right granted to investor over an invention utility ii. iPhone
model, or industrial design to sell, use, and make same for iii. 3D printer
commerce and industry. iv. Self-driving car

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 b. Process iv. If disclosure was made by inventor himself
i. Improvement of old process of mosaic tile 2) Inventive Step – if, having regard to prior art, it is not
making (Aguas v De Leon) obvious to a person skilled in the art at the time of the filing
1. Produced tiles were suitable for date or priority date of application claiming the invention
construction AND ornamentation – a. Prior art: only those available to the public before
new and useful kind of tile filing date or priority date.
2. Overcome problem of producing mere b. Person skilled: average level of skill, exclude best
decorative tiles, with insufficient expert available
durability. c. Rule for Drugs and Medicine: no inventive step if
ii. Requisites for Patentability invention results from
1) Novelty – invention is not new if it forms part of prior art i. mere discovery of a new form or new proeprty
(publicly known or publicly used) of a known susbstance – does not result in
a. Requisites: efficacy of substance
i. Novelty ii. Mere discovery of new property or new use for
ii. Originality a known substance
iii. Precedence iii. Mere use of a known process
iv. NOTE: if it is shown by evidence that the 1. XP: known process results in new
patented item existed and were publicly known product that employs at least one new
before issuance of patent -à presumption of reactant (IPC 26.2)
correctness and validity of patent is set aside 3) Industrial Applicability – an invention that can be produced
(Maguan v CA) and used in any industry
b. Prior art a. Process must be directed to making or improving a
i. Everything made available to the public , commercial or industrial product.
anywhere in the world, before filing date or b. Must be legal
priority date of application claiming invention
ii. Contents of a published application for a c. Non-Patentable Inventions
patent, utility model, or industrial design i. Inventiosn excluded from patent protection (IPC 22.1)
registration, with a filing or priority date that is 1) Discoveries, scientific theories, and methamtical methofd
earlier than the filing or priority date of the a. Rule on drugs and medicines
application 2) Schemes, rules, and methods of performing mental acts
c. Not new if: a. Playing games
i. Publicly known, publicly used b. Doing business
ii. Described in a printed publication or circulated c. Programs for computers
within the country 3) Methods for treatment of the human or animal body by
iii. Substantially similar to any other utility model surgery or therapy; diagnostic methods
so known, used or described 4) Plant varieties or animal breeds; biological process for
d. Doctrine of Non-Prejudicial Disclosure (IPC 25) production of plants or animals
i. disclosure of information contained in 5) Aesthetic creations;
application 6) Anything contrary to public order or morality
ii. 12 months preceding filing date or priority date
of application d. Ownership of a Patent
iii. Shall not prejudice applicant on ground of lack i. Right to a Patent
of novelty 1) Inventor, his heirs, or assigns.

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 a. Subscription to shares of stock of the corporation a. Local application expressly claims priority
with the patent as consideration is not assignment i. Filed within 12 months from date of earliest
2) Joint inventors – 2 or more persons jointly made invention foreign application filed
3) NOTE: Copyright is different from patent. b. Certified copy of the foreign application (English
a. Copyright – extended only to prints, pictorial translation)
illsutrations, etc i. filed within 6 months from date of filing in the
b. Patent – actual device or lightbox itself Ph
i. If covered only by copyright and not patent, 4) NOTE
subject to appropriation without significant a. Filing of local application is not a grant of patent.
restraint. i. Inaccurate to argue that prior patent
ii. First-to-File Rule application in US removed the invention from
1) If 2 or more made the invention separately and independent the public domain in the Ph.
2) Right to patent belongs to person who either: b. Compliance with requirements is necessary.
a. filed an application for such invention
b. applicant who has earliest filing date – if 2 or more e. Grounds for Cancellation of a Patent
applications are filed i. Grounds
3) Remedy: petition for cancellation of patent and substation 1) Not new or patentable
as patentee does not disclose invention in a manner
a. Ground: he is true and actual inventor, sufficiently clear and complete for it to be
iii. Inventions created pursuant to a commission carried out by any person skilled in the art
1) No EE-ER 2) Contrary to public order or not patentable
a. GR: person who commissions the work shall own ii. Effect: rights conferred by patent shall terminate
the patent iii. Not grounds for cancellation
b. XP: otherwise provide in the contract 1) Patent is granted not in favor of the true and actual inventor
c. NOTE: Different rule if Copyright
i. Actual work à one who commissioned f. Remedy of the true and Actual Inventor
ii. Copyright à author or creator i. Remedies of person declared by final court order as having the
2) EE-ER – it shall belong to right to the patent, but is not the applicant.
a. EE – if inventive activity not part of regular duties 1) Period: within 3 months after decision has become final
i. Even if EE uses time, facilities, and materials 2) Remedies:
for the employer a. Prosecute application as his own application in
b. ER – result of performance of regularly-assigned place of the applicant
duties (NOTE: inventing must be part of his duties) b. File new patent application in respect of same
i. XP: agreement, express or implied, to the invention
contrary c. Request that application be refused
iv. Right of priority d. Seek cancellation of patent, if one has already been
1) Application for patent by a person who previously applied issued
for the same invention in another country ii. Remedies of true and actual inventor deprived of patent
a. By treaty, convention, or law, grants similar 1) True and actual inventor who is not a patent holder è
privileges to Filipino Citizens CANNOT file for patent infringement
2) Effect: Considered filed as of the date of the filing of the 2) If deprived of patent without consent or through fraud
foreign application a. file court action
3) Provided: i. to be declared entitled to the patent and

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 ii. to award damages ii. Right to import drugs and medicines in this
b. upon final judgment, inventor may either section – available to any go’vt agency or
i. substitute as patentee or private third party (IPC 72.1)
ii. ask to cancel the patent b. any prior user in good faith
3) If patent issued not to the first filer (in the absence of fraud) i. using the invention or undertaking serious
a. inventor must file court action to be declared preparations
entitled to the patent ii. in his enterprise or business
b. upon final judgment, seek cancellation of patent iii. before the filing/priority date shall have right to
after 3 months from finality of favorable court continue use
decision iv. within the territory where patent produces
its effects (IPC 73)
g. Rights Conferred by a patent – throughout Ph territory, for the duration 3) Use by Gov’t
of the term a. Drugs and medicines – involving testing, using
i. Product - To restrain or prohibit any unauthorized person from amking, selling invention and data
1) Making i. Only for the development and submission of
2) Using information and issuance of approvals by gov’t
3) Offering for sale regulatory agencies
4) Selling or importing product b. Gov’t agency or third person authorized by the gov’t
ii. Process – restrain, prevent, or prohibit unauthorized person or entity where
from i. Public interest so requires; or
1) Using process 1. Determined by President
2) Manufacturing ii. Mere determination of appropriate gov’t
3) Dealing in agency on existence of a ground based on
4) Using public interest
5) Selling or offering for sale 1. Determined by gov’t agency
6) Importing nay product obtained directly or indirectly form iii. Manner of exploitation is anti-competitive
that process 1. Determined by judicial body or admin
iii. Assign or transfer by succession patent body
iv. Conclude licensing contracts for same iv. Drugs or medicines
1. national emergency or other
h. Limitations of patent rights circumstances of extreme urgency; or
i. Term of Patent: 20 years from filing of date of application (Not 2. public non-commercial use of patent
subject to extension) by patentee, without satisfactory
ii. Parties have no right to prevent the use of the same under the ff reason
(172) c. Limitations for Gov’t Use
1) Others i. Scope and duration – limited to purpose for
a. Using patented product put on market in the Ph by hiwhc it was authorized
the owner of the product ii. Non-exclusive
2) Prior User iii. Right holder shall be informed whenever any of
a. Using a patented product put on the market in the the circumstances occur
Ph by the owner of the product iv. Payment of adequate remuneration to right
i. Medicine à limitation applies if introduced holder
anywhere in the world by the patent owner

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 i. Patent Infringement vi. Civil and Criminal Action – remedies of patent owner
i. IP Infringement - performing acts in violation of rights of the owner 1) 1st act of infringement – within 4 years from act of
of the IPR infringement
ii. GR: Patent Infringement1 - importation without patentee’s a. Civil action
authorization amounts to infringement i. Actual damages
1) Product - Making, using, offering for sale, selling, importing 1. Based on profit
a patented product obtained directly or indirectly form a 2. If not ascertainable, based on
patented process reasonable royalty
2) Process – use of process without authorization ii. Other damages – not exceeding 3x actual
iii. XP: importation of drugs and medicines damages
1) By the gov’t or private 3rd party b. Preliminary injunction to restrain infringer – during
2) Once drug or medicine introduced in Ph or anywhere in the pendency of action
world c. Atty’s fees and other costs of litigation
3) By patent owner or ay party authorized to use invention in d. Motion for seizure and/or disposal/destruction of
PH infringing goods – anytime after filing of complaint
iv. Filing of action for patent infringement i. Destruction – completely destroyed
1) May only be filed: ii. Disposal – prohibited from re-entry into
a. Patentee channels of commerce, but may be reused for
i. Or successors-in-interest and assignee some other lawful purpose
b. Anyone possessing rights or interest in patented e. NOTE: Contributory infringer –
invention i. Induces infringement of a patent
2) Only patent holder can file action for infringement, not ii. Provides infringer with component of a
inventor who is not a patent holder. patented product
3) BOP: plaintiff iii. Product procued because of a patented
a. Prima facie presumption of correctness and validity: process
i. Plaintiff introduces patent in evidence 2) 2nd act of infringement
ii. Same is in due form a. Same remedies as 1st
b. Effect: BOE shifts to defendant b. Criminal action
v. Test in Patent Infringement c. NOTE: In trademark and copyright infringement,
1) Literal Infringement – exact identity of all material elements criminal liability already arises during the 1st
2) Doctrine of Equivalents – prevailing test instance.
a. Device appropriates prior invention vii. Orders issued in IPR cases; immediately executory
b. Incorporates innovative concept with some 1) GR: immediately executory
modifications 2) XP:
c. Passes functions-means-result a. Restrained by SC or CA
i. Substantially same mode of operation b. Order of destruction where MR is filed
ii. Achieves substantially the same result viii. Damages not recoverable:

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Inapplicable to instances covered by the following: 4. Procedures on issuance of a special license under TRIPs
1. Limitations of patent rights (IPC 72.4) agreement
2. Use of Invention by Government (IPC 74)
3. Compulsory Licensing (IPC 93.6)
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 1) Filed more than 4 years after act of infringement i. Requiring a tech transfer agreement
2) Acts of infringement was committed before infringer j. requiring payments for patents after their expiration
a. Knew k. restricting r&d activities of licensee
b. had reasonable grounds to know of patent l. preventing licensee from adapting imported
i. presumption of knowledge: on patented technology to local conditions
product or package supplied to the public, m. exempting licensor for liability for non-fulfillment of
words placed “Philippine patent” + Number of his responsibilities
Patent 3) Compulsory contractual stipulations
ix. Defenses in Action for Infringement a. Laws of Ph shall govern its interpretation
1) Invalid patent or claim i. Litigation à venue – principal place of
2) Grounds for petition for cancellation business of licensee
3) Not new or patentable ii. Continued access to improvements and
4) Specification does not comply with law techniques shall be made available during
5) Patent not issued to true and actual inventor; did not derive period
his rights therefrom iii. Application of arbitration laws of ph – venue Ph
6) Prescription or neutral country
x. Execution of Decision iv. Ph taxes on all payments – borne by licensor
1) Competent court has jd to declare patent invalid ii. Compulsory – gov’t allows another to produce patented product
2) Ministerial duty of Patent Office to execute decision upon without consent of patent owner
a. Certification that judgement has become final 1) By: director general of IPO
j. Licensing 2) Grounds
i. Voluntary – authorization given by patentee to another person a. National emergency or extreme urgency
allowing him to produce patented article b. Public interest so requires as determined by
1) License fixes amount of royalties, quality requirements, appropriate gov’t agency
defines markets in which licensee can sell c. Anti-Competitive manner of exploitation of
2) Prohibited stipulations in technology transfer agreements licensee
a. Obligation to acquire form a specific source capital d. Public non-commercial use of patent by patentee
goods, raw materials, etc without satisfactory reason
b. Reserving right to fix sale or resale prices of e. not being worked in the PH on a commercial scale
products manufactured although capable
c. Restrictions regarding volume and structure of f. Demand for patented drugs is not being met as
production determined by DOH
d. Prohibiting use of competitive technologies in non- 3) How to file: petition for compulsory license with Director of
exclusive technology transfer agreement Legal Affairs – IPO
e. establishing full or partial purchase option 4) Who may file:
f. obligating licensee to transfer for free to licensor a. Gov’t
inventions or improvements that mey be obtained b. Private 3rd person
through use of licensed technology 5) Period to File
g. requiring payment of royalties to owners of patents a. GR: when
for patents not used i. After 4 years from date of filing of application;
h. prohibition to export licensed product or
i. XP: justified for protection of legitimate interest ii. 3 years from date of patent
of licensor b. XP: It may be applied for anytime

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 i.Public interest 1) No territorial boundaries; extends to every market where the
ii.Anti-competitive manner trader’s goods have become known an identified by his use
iii.Public non-commercial use of the mark.
iv. interdependence of patents 2) Owner of a trademark has no right to property; no right to
1. invention protected by patent (second prevent others from manufacturing, producing, or selling
patent) cannot be worked w/o same article to which it is attached.
infringing first patent granted on a prior a. Trademark confers no exclusive rights in goods to
application which mark has been applied.
2. compulsory license may be granted to b. Marks v Collective Marks v Trade Names
the second patentholder i. Mark – distinguishes goods from one another
3. to the extent necessary to work his 1) any visible sign capable of distinguishing
invention 2) the goods (trade mark) or services (service mark) of an
6) Terms and Conditions enterprise
a. Scope and duration limited to that authorized 3) including stamped or marked containers of the goods
b. Non-exclusive licensee ii. Collective mark – distinguishes origin or common
c. Non-assignable characteristic/quality
d. Use is predominantly for supply of Ph Market 1) any visible sign designated as such in the application
e. Patentee paid adequate remuneration 2) capable of distinguishing the origin or any other common
7) Price v United Laboratories: compulsory license may be characteristic
granted over the entire patented invention – no law requiring 3) including quality of goods/services of different enterprises
that license be limited to a specific embodiment of the 4) which use the sign under the control of the registered owner
invention of the collective mark
k. Assignment and Transmission of Rights iii. Trade Name –
i. Patent may be 1) the name identifying or distinguishing an enterprise
1) Assigned 2) need not be registered with the IPO before infringement may
2) Transmitted by inheritance; be filed
3) Subject to license contract a. Unlike in patent à patent registration give rise to
ii. Formalities infringement
1) In writing, notarized 3) NOTE: not allowed if it is
2) IPO shall record a. Contrary to public order or morals
a. Assignments b. Intended to deceive public as to nature of the
b. Licenses enterprise identified
c. Other instrument relating to transmission of any c. Acquisition of Ownership of Mark
right i. Acquisition: solely through registration
d. If not recorded within 3 months from date of 1) file application
instrument = assignment void. 2) declaration of actual use with evidence
a. within 3 years from filing date of application; and
III. Trademarks b. within 1 year from 5th anniversary of date of
a. Trademarks - visible sign capable of distinguishing goods registration of mark
i. word, name, symbol, sign ii. Failure to file à mark removed from register, construed as
ii. adopted and used abandonment or withdrawal
iii. to identify goods and distinguish them from those of others 1) XP: non-use is caused by circumstances independent of will
iv. NOTE: of trademark owner

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 a. Lack of funds – not an excuse. iv. marks likely to mislead the public as to
iii. Zuneca v Natrapharm: first t- file rule prevails a. nature
1) Even if mark is previously used and not abandoned b. quality
2) Gf applicant may still register and become owner c. characteristics
3) Prior user cannot ask for cancellation of latter’s registration d. geographical origin
a. Prior user in gf à not liable for infringement for v. generic marks
subsequent registration of another 1) commonly used as the name of a kind of goods
iv. Certificate of Registration of Trademark 2) not legally protectable unless product to which it attaches
1) Prima facie evidence cannot be identified with the generic name (ex. generic
a. validity of registration names that may be protected --> “Sakura” cannot be
b. registrant’s ownership identified with DVDs; “La Salle” which means “the room” is
c. exclusive right to use same not identifiable with educational services)
d. Acquisition of Ownership of Trade Name vi. signs which have become customary or usual in everyday language
i. Acquisition: by use (“genericidal marks”)
1) Protected prior to and even without registration vii. descriptive marks
ii. Effect: the following is unlawful 1) indications that may serve in trade to designate the kind,
1) Subsequent use of name by 3rd party (as a name or mark) quality, geographical origin, or other characteristics of the
2) Use of a similar trade name or mark likely to mislead public goods
iii. Remedies for trademark infringement also apply to trade name 2) may not be registered (ex. “Lyceum” meaning university)
infringement. viii. shapes that may be necessitated by technical factors or by the
e. Non-Registrable Marks – cannot be registered if: nature of goods themselves
i. immoral, deceptive, scandalous or ix. consists of color alone, unless defined by a given form
1) matter which may x. contrary to public order or morality
2) falsely suggest a connection with persons, institutions, f. First to File Rule (Trademarks)
beliefs i. Filing of application for registration of trademark in gf precludes
a. “Harvard” for jeans registration of same trademark for same goods or services ,or
3) or bring them into contempt or disrepute closely related goods and services
ii. flag or coat of arms or other insignia of the PH or any of its political g. Test to Determine Confusing Similarity Between Marks
subdivisions i. Dominancy Test (IPC 155.1) – whether dominant feature of the
iii. name, portrait or signature competing trademarks cause confusion or deception
1) identifying a living individual 1) Colorable imitation of a registered mark or a dominant
a. except by his written consent feature
2) identifying a deceased President of the PH 2) Includes: visual, aural, and connotative comparisons,
a. during the life of the widow and overall impressions.
b. unless with widow’s written consent 3) Only likelihood of confusion on the part of the buying public
c. NOTE: the name spouses of deceased president’s is necessary to render two marks confusing similar as to
are allowed. deny registration.
3) identical with a registered mark with an earlier filing/priority ii. Idem Sonans = where
date wrt 1) marks are with different spelling but
a. same goods 2) sounds similar may be ruled as being confusingly similar
b. closely related goods iii. scope of protection
c. nearly resembles mark as to likely cause confusion 1) identical goods and related goods
4) well known marks 2) areas that are normal potential expansion of his business

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 iv. Doctrine of Unrelated Goods 1) it is competent authority of Ph (Sehwani Incorporated v IN N
1) one who registered trademark Out)
2) cannot prevent use/registration of the same trademark by a. registering authority; or
others b. courts of country
3) on UNRELATED articles of different kind vi. Paris Convention on Protection of Trademarks
v. Decisive factors on relatedness (Might Corp v E&J Gallo Winery) 1) Rule: any foreign national or juridical person has legal
1) business to which goods belong capacity to sue for protection of its trademarks (PC 6) and
2) class of product trade names.
3) product’s quantity, quality, nature of package a. Doing business in Ph or not
4) nature and cost of articles b. Merely requires that the trademark is “well known”
5) descriptive properties, physical attributes, essential in country where protection is sought
characteristics with reference to form, composition, texture, 2) Protected without the obligation of filing or registration.
or quality vii. Theory of Dilution
6) purpose of goods 1) Owner of a famous mark is entitled to injunction against
7) whether article is bought for immediate consumption – day- another person’s commercial use of a mark or tradename
to-day household items 2) Requisites:
8) fields of manufacture a. Use begins after mark has become famous; and
9) conditions under which article is usually purchased b. Causes dilution of distinctive quality of the mark
10) channels of trade through which goods flow, how they are i. Other Kinds of Marks
distributed, marketed, displayed, and sold i. Generic Marks – refer to the basic nature of the item, not legally
11) complementarity protectable.
h. Well-Known Marks 1) Not allowed: Sakura to refer to flowers
i. Definition 2) Allowed: Sakura to refer to DVDs – name
1) Considered by competent authority of ph to be well-known a. Name has no logical connection to the said item
a. Internationally and ii. Descriptive Marks – conveys characteristics, qualities, or
b. In the Ph ingredients of a product to one who does not know what it is
2) Registered or not in the Ph 1) Prohibited
3) As mark of a person other than the applicant 2) Ex
ii. If registered in Ph àidentical marks or those confusingly similar a. Axilon – brand name
cannot i. Accilone – generic term for class of anti-fungal
1) Related goods drugs, used by medical professional
2) unrelated goods – with respect for goods to which iii. Genericidal – consists exclusively of signs or indications that have
registration is applied for become customary or usual to designate goods or services in
iii. If not registered in Ph à cannot be used for everyday language
1) Identical/related goods only iv. Descriptively misleading mark – mark likely to mislead public, as
a. Scope of protection extends only to this to nature, quality characteristics
iv. Remedies of owner off well-known mark: j. Doctrine of Secondary Meaning: Generic or Descriptive term may be
1) Oppose application for registration appropriated and registered as TM if:
2) Petition to cancel registration i. word or phrase
3) Unfair competition – if goods being passed off by another as ii. originally incapable of exclusive appropriation with reference to an
goods of owner article in the market
v. Knowledge of general public à not taken into account in iii. has been used
determining if well known. 1) so long and

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 2) so exclusively 1) by anyone who believes that he is damaged by the
iv. by one producer with reference to his article registration of a mark
v. that the word or phrase has come to mean that the article was his 2) within 5 years from date of registration
produce 3) or at any time, if
vi. Basis: IIPC 123.2 a. registered mark becomes the generic name or
1) Nothing shall prevent registration of device which has b. has been abandoned or
become idstincitve in relation to goods for which registration c. registration was obtained with fraud or
is requested, as a result of the use that have been made of d. registered to misrepresent the source of the goods
it in commerce in the Philippines. e. registered owner fails to use the mark within the PH
vii. Prima facie evidence: of distinctiveness during an uninterrupted period of 3 years or longer
1) Substantially exclusive and continuous use by applicant i. actual use – by having establishment in Ph or
2) In PH use of the mark on an interactive website
3) 5 years before date on which claim of distinctiveness is (commercial interaction)
made ii. Petition for cancellation of registered trademark
k. Rights Conferred by Registration 1) does NOT preclude the first registrant from filing an action
i. Exclusive right to prevent all third persons from using identical or for TM infringement
similar signs 2) not a prejudicial question for criminal proceedings for
ii. 3 main rights of TM owner unfair competition
1) may use the TM in trade a. action for cancellation = whether person will be
a. if he is first user (in good faith), cannot be sued for damaged by registration
infringement even though TM is registered by the b. unfair competition = whether respondent had given
first file goods appearance of those of petitioner’s with
2) may register TM intent to deceive
3) may sue for infringement in case of unauthorized use m. Trademark Infringement
iii. Protection extends to i. Elements [RISC-L]
1) existing goods AND 1) TM being infringed is Registered
2) market areas that are the normal potential expansion of its 2) TM is Imitated by infringer
business 3) infringing mark is used in connection with the Sale,
iv. Right to register a domain name (ex. “www.kolin.ph”) advertising, etc of goods
1) containing its registered trademark as a dominant feature 4) use is Likely to cause confusion or mistake
2) absent any legal obstacle or compelling reason 5) use is without the Consent of the TM owner or assignee
3) provided it does not infringe on the rights of another ii. Essential element: registration
trademark owner with a registered mark in its favor iii. Remedies
v. Termination of rights = upon cancellation of certificate of registration 1) civil action for trademark infringement to recover damages
in the ff. cases: amounting to
1) failure to declare actual use within 1 year from 5th a. reasonable profit if defendant did not infringe or
anniversary i. profit defendant actually made or
2) failure to file declaration of actual use within 3 years from ii. if uncertain, reasonable percentage based on
filing application the amount of gross sales of the defendant
l. Cancellation of Registration b. damages may be doubled if with actual intent to
i. Petition to cancel registration = may be filed with the Bureau of mislead the public
Legal Affairs (BLA) of IPO c. attorney’s fees and costs of suit
2) including an application for issuance of

11
 a. order to impound sales invoices and other n. Unfair Competition
documents and i. Elements
b. preliminary injunction 1) passing off upon the public of goods or business of one
c. order to dispose of goods outside channels of person as,
commerce 2) and with confusing similarity with,
3) criminal action for trademark infringement 3) the goods or business of another
iv. Remedy for wrongful seizure of goods = damages (filed with the 4) with the intent to deceive public
same court) ii. Essential elements:
1) unless warrant was issued under Rule 126 (no counterclaims 1) intent to deceive/defraud public/competitor AND
for damages) 2) confusing similarity in the general appearance
v. Other remedies to protect rights a. due not to the similarity of the marks but
1) may oppose other application for registration b. may have resulted from other external factors in
2) petition for cancellation of trademark packaging/presentation
vi. Law Governing Search and Seizure Order iii. Nature of Offense
1) Civil action – Rule on Search and Seizure in Civil Actions for 1) Transitory or continuing
Infringement of IPR a. SW applied for in any court where any of the lements
a. Remedy: counterclaim for damages of the alleged offense was committed
2) Criminal action for violation of RA8293, in anticipation of – iv. Distinction from trademark infringement
Rule 126
a. Issued upon finding of probable cause
b. Remedy: separate civil action for damages
vii. Scenario Trademark Infringement Unfair Competition
1) Applicant for admin cancellation of registered trademark can Unauthorized use of trademark Passing off one’s goods as those of
simultaneously file action for trademark infringement another
a. UNLESS: registered trademark cancelled, decision Fraudulent intent is unnecessary
attained finality Fraudulent intent is essential
2) Defendant in action for trademark infringement CANNOT file Prior registration of trademark is
admin cancellation of trademark a prerequisite Registration is NOT necessary
a. Remedy: file answer, invoke as defense that he is
not entitled to trademark registration No TM infringement if goods are
viii. Limitations on Action for Infringement (IPC 159) unrelated There may be UC even if goods are not
1) Not entitled to recover profits (IPC 158) related if goods are passed off as that
a. XP: acts were committed with knowledge that of another manufacturer’s
imitation is likely to cause confusion
2) Gf use before filing or priority date v. Scenarios
3) Innocent infringer engaged solely in business of printing 1) Action for cancellation of trademark is not a prejudicial
mark question in a criminal action for unfair competition
a. Injunction against future printing only a. Action for cancellation – remedy available to
4) Infringement is par to paid ad person who believes he will be damaged by
a. Remedy of owner --> injunction against registration of mark
presentation of advertising matter in future issues of i. Determines registration
paper

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 b. Criminal action for uc – determining won goods c. Lectures, addresses whether or not reduced in
were given general appearance of goods of writing
petitioner d. Letters (incl. instant messaging)
i. Registration not relevant e. Musical compositions
c. Effect: one may be an unfair competitor even if his f. Drawing, painting, architecture, sculpture
competing trademark is registered. g. Original ornamental designs or models
h. Illustrations, maps, plans, sketches relative to
IV. Copyright geography, topography, architecture or science
a. Basic Principles (172.2, 175, 181 only) i. Drawings or plastic works of a scientific or technical
i. Copyright è a right which is character
1) intangible j. Photographic works
2) incorporeal k. Audiovisual and cinematographic works
3) granted by statute to l. Pictorial illustrations and advertisements
4) the author or originator m. Computer programs
5) of certain productions which are n. Other literary, scholarly, scientific, artistic works
a. artistic i. Text messages – akin to letters
b. literary 4) Examples
c. scientific a. Copyrightable
d. scholarly i. Sketches of hatch door
6) involving right to ii. Design element on hatch door
a. multiply iii. Design made on belt – not included to enhance
b. publish function, conceptually separable from belt
c. or any other form of communication to the public 1. Sculptural work
7) as well as b. Not copyrightable
a. right of attribution i. Hatch door – object of utility, not intellectual
b. right to carry out derivative work creation
c. other moral rights 1. Even if fabricated based on sketches
ii. Characteristics 2. protection given to expression of idea,
1) granted to the originator/creator not idea itself
2) assignable ii. functional belt
3) object is original intellectual creation in the literary, artistic, 5) Useful article = article having an intrinsic utilitarian function
scientific domains è not copyrightable
a. XPT: Denicola Test – if useful article
b. Copyrightable Works i. incorporates a design element
i. Original Works ii. that is physically or conceptually separable
1) Starting point of protection: sole fact of their creation iii. from the underlying product
2) 2 main classifications iv. design element is copyrightable
a. Original b. any aesthetic element that can be separated from
b. Derivative utilitarian element may be copyrighted.
3) Original Literary and Artistic Works = copyrightable ii. Derivative Works
a. Books, pamphlets, articles, other writings 1) Derivative Works = also copyrightable as NEW works
b. Periodicals/newspapers a. dramatizations, translations, adaptations
i. alterations of artistic works
b. collection or compilation original by reason of
13
 i. of literary, scholarly or artistic works, data 1) Scope of protection: immediate, protected from moment
materials of creation irrespective of mode or form of expression,
ii. original by reason of content, quality, purpose
1. selection a. Knowledge that item is protected by copyright is
2. coordination irrelevant
3. arrangement of contents 2) Ownership of copyrighted material is shown by
2) Treatment: protected as new works a. proof of originality and
a. Conditions: it shall not b. copyrightability
i. affect force of any subsisting copyright upon 3) Registration and deposit with National Library = do not
og works; or confer any right or title
ii. Be construed to imply right to such use of a. merely serves as a notice of recording and
original works registration
iii. Secure or extend copyright in original works b. not conclusive proof of copyright ownership
iii. Non-copyrightable works c. copyright certificate
1) Idea, procedure, system, method, discovery even if i. creates presumption of validity and ownership
expressed and useful in support of claim of infringement
a. expression of idea is copyrightable, but idea itself is ii. disputable and if effectively challenged, burden
not shifts to the applicant
i. book of new accounting system – 4) Classifications of rights derived from copyright
copyrightable a. Economic – exclusive right to carry out or authorize
ii. accounting system itself – not copyrightable i. Reproduction of work or substantial portion
b. Format or mechanics of tv show – not included. ii. Dramatization, translation, adaptation or other
c. Audio visual recording - copyrightable transformation of work
2) News of the day and items of press information iii. First public distribution of
a. XPT: manner of expression of news reports and the 1. the original and
arrangement and creative process of expressing 2. each copy of the work
such news è entitled to protection iv. Rental of original or copy
b. Illustration v. Public display of original or copy
i. Subject of news report – not copyrightable vi. Public performance of work
ii. Footage created - copyrightable vii. Other communication to the public
3) any official Text of a legislative, administrative or legal b. Moral – coterminous with economic rights
nature and its official translation i. right of attribution – that name of author be
4) any work of the Government of the PH indicated in a prominent way è Lasts during
5) Addresses, rules, speeches, lectures lifetime and in perpetuity after death of
a. read or rendered in author
i. courts of justice, ii. right to make any alterations or to withhold
ii. admin agencies work from publication
iii. deliberative assemblies iii. right of integrity – to object to any modification
iv. public meetings iv. right against false attribution – to restrain use
b. XPT: author of the speeches = has exclusive right of of his name with respect to any work not of his
making a collection of his works own creation
5) Reproduction
iv. Rights Conferred by a Copyright

14
a. Test of substantiality: if so much is taken that the ii. Derivative work – transformation of original
value of original is sensibly diminished = work
infringement 1. Exclusive privilege of author, and
i. Copying alone is not prohibited; copying must those he authorizes
be with injurious effect iii. NOTE
b. Legally permissible reproductions 1. Both are protected
i. quotations from published work if compatible 2. XP: transformation done after term of
with fair use (provided source is mentioned) copyright, only derivative work
ii. reproduction to the public by mass media 6) First Sale Doctrine (“Exhaustion Principle”)
1. articles on current political, social a. individual who knowingly purchases a copy of
topics copyrighted work
2. lectures, addresses, etc delivered in b. from the copyright holder
public c. receives the right to
a. for information purposes i. sell
b. not expressly reserved ii. display
c. source is indicated iii. dispose
iii. communication to the public of literary, d. notwithstanding interests of the copyright owner;
scientific, or artistic works as part of reports of e. Effect: copyright holder’s right to control the
current events distribution = goes away after the “first sale” of the
iv. private reproduction of published work in a work
single copy f. Limitations: distribution only
1. exclusively for research and private i. Not included
study 1. Reproduction/transformation
2. but shall not extend to 2. Rental right – audiovisual
a. work of architecture in the cinematographic work, sound
form of building recording, computer program, musical
b. entire or substantial part of work (must be with consent)
book/musical work a. XP: books
c. compilation of data 7) Droite de Suite
d. computer program a. author or his heirs
v. any library or archive not for profit may make b. have an alienable right to participate
single copy of work if work is c. in the gross proceeds of the sale/lease
1. fragile d. to the extent of 5%
2. to preserve work e. during the lifetime of author + 50 years from death
vi. every library which by law is entitled to receive 8) “Public” = open to the public or substantial number of
copies of printed work persons outside a normal circle of family or social
vii. reproduction in 1 back up copy or adaptation acquaintances (ex. close friends are not “public”)
of a computer program provided necessary for 9) Waiver of Moral Rights
1. use of computer program with a a. GR: allowed by written instrument
computer b. XPT: waiver is invalid where its effect is to permit
2. archival purposes and for back up in another to
case of loss of lawfully obtained copy i. use the name of author or title of his work
c. Derivative Work 1. with respect to any version or
i. Original work adaptation
15
 2. which would substantially tend to ii. if using pseudonym: until end of 50 years from
injure reputation of another author date of first publication
ii. use the name of author with respect to a work iii. works of applied art: 25 years from making
he did not create iv. 50 years from publication of work or, if
10) Contribution to collective work unpublished, from making
a. GR: right to have his contribution attributed to him 1. photographic works
is deemed waived 2. audiovisual works
b. XP: he expressly reserves it (IPC 196) v. performers (if not incorporated in recordings):
50 years from end of year in which
performance took place
v. Ownership of a copyright vi. producers of sound recordings and if
1) Copyright shall belong to performance is incorporated therein): 50 years
a. GR: original work = copyright belongs to creator from end of year in which recording took place
b. if joint authorship = co-authors are original owners vii. broadcasts: 20 years from date of broadcast
i. absent agreement à rules on co-ownership 1. Calculation of term: deemed to begin
1. if parts identifiable, can be used Jan 1 of the year following the event
separately à author of each is owner which gave rise to the term
of part created
c. in the course of employment vi. Limitations on copyright
i. if part of regular duties = belongs to employer 1) Private Performance: Recitation/performance of work
(unless stipulated otherwise) lawfully made accessible to the public
ii. if not = belongs to employee a. done privately and free of charge or
1. even if EE uses facilities, time, b. made strictly for charitable or religious institution
materials of ER c. NOTE: if added to make establishment more
d. if commissioned by one other than the employer attractive, and performers are paid, songs played
and pays for it therein is copyrightable.
i. one who commissioned = owns the work 2) Making of quotations from published work
ii. creator = owns copyright (XPT: stipulated a. compatible with fair use and
otherwise) i. consider: amount and substantiality of portion
e. if audiovisual work, copyright shall belong to used in relation to copyrighted work as a whole
i. producer b. extent of use is justifiable for purpose intended
ii. author of scenario c. source and author of work is mentioned
iii. author of work so adapted d. example: lifting quotes of a book, incorporating it in
iv. composer of music another book, with proper attribution
v. film director 3) Reproduction to the public by mass media of
f. in case of letters = belong to the writer a. articles on current political, social, etc topic
i. *XPT: if using pseudonym or anonymous = b. lectures, addresses etc
publisher shall be deemed to represent authors i. delivered in public
2) Term of Copyright ii. for information purposes
a. GR: during life of author + 50 years from death iii. not expressly reserved
b. Special cases iv. source is indicated
i. joint authorship: during life of last surviving c. Examples:
author + 50 years from death i. *includes presidential debates (Rappler v.
Bautista)
16
 ii. News story printing a substantial part of d. NOTE: attribution is not required
speech of public official i. However, failure to do so is plagiarism.
4) Reproduction of literary, scientific, artistic works 11) Repro or distribution of published articles in a specialized
a. as part of reports of current events and format exclusively for the use of persons with visual
b. by means of disability
i. photography a. nonprofit basis è if for profit, copyright infringement
ii. cinematography b. shall indicate copyright owner and date of original
iii. broadcasting publication
c. example: photo of paintings in art gallery exhibit as 12) In case of fair use of copyrighted work (DOCTRINE OF
part of report of current events FAIR USE)
5) Inclusion of a work by way of illustration
a. for teaching purposes and vii. Doctrine of fair use
b. is compatible with fair use 1) Fair use –
c. provided source is mentioned a. privilege to use copyrighted material
6) Use of a work by or under the direction or control of b. in a reasonable manner
a. Gov’t c. without consent of copyright owner
b. National Library 2) No copyright infringement if: (4-Factor Test)
c. Educational, scientific, professional institutions a. Purpose and character of use is for (IPC 185)
d. Use is in public interest i. criticism and comment
e. compatible with fair use ii. news reporting
7) making of ephemeral recordings iii. teaching, incl. multiple copies for classroom
a. by a broadcasting organization use OR
b. by means of its own facilities iv. scholarship, research, similar purpose
c. for use in its own broadcast b. Nature of copyrighted work
8) Public performance/communication of a work i. more factual than creative à fair use weighed
a. in a place with no admission fee in favor of user
b. by a club/institution for charitable or educational c. Amount of portion used (exact repro compared to
purpose only small portion is more unfair)
c. whose aim is not profit making i. Even if copyrighted in its entirety à if ore mere
d. NOTE: poetry reading competition among students pardoy or entertainment, may still be argued in
9) Public display of original or copy not made by means of film, favor of fair use
slide, television image or on screen, provided d. Effect of use (negative impact on copyrighted
a. that either work has been published or work’s market is unfair)
b. that the original displayed has been e. *ALL 4 FACTORS MUST BE PASSED
i. sold, viii. Copyright infringement
ii. given away or 1) Definition
iii. transferred to another by the author or his a. doing by any person
successor in title b. without consent of the copyright owner
10) Any use made of a work c. of anything which constitutes as
a. for the purpose of any judicial proceedings or d. the sole right conferred on the copyright owner
b. for the giving of professional advice by legal 2) Gravamen:
practitioner a. Unauthorized manufacturing of intellectual works
c. example: copying portions of a book for inclusion in
a pleading
17
 b. performance of any of the rights exclusively granted iii. order of destruction
to the copyright owner 1. without compensation
a. copies or devices for making
3) Acts of copyright infringement copies
a. directly committing CI 2. may be ordered even in the event of
b. benefiting from the CI of another person IF acquittal
i. person benefiting has been given notice of the 7) Prescription: no damages may be recovered after 4 years
infringing activity AND from the cause of action
ii. has right and ability to control activities of the 8) Defenses available
other person a. not copyrightable
c. with knowledge of the infringing activity, b. term of copyright expired
inducing/materially contributing to the infringing c. use of work is within limitations
conduct of another d. not the copyright owner
4) Liability – if they actively participated e. non-participation in the act
a. Corporate officer f. if the basis is benefit derived
b. Corporate agent i. lack of notice and/or
i. Who commit crime ii. no ability to control infringement
ii. Could have prevented by virtue of managerial g. prescription
position, but didn’t h. lack of evidence
5) Intent to pirate = NOT indispensable ix. Examples of Copyright Infringement
a. Copyright Law is a special law; criminal intent is 1) sale of illicit copies of software programs
immaterial 2) use of ornamental design embossed in a coffee mug as a
6) Remedies design for T-shirt (Denicola Test)
a. Civil action for copyright infringement for 3) receipts of rentals by mall owner of an establishment-lessee
i. Actual damages = gross sales less cost committing acts of infringement if owner has
ii. Moral and exemplary damages a. notice of infringing activity and
1. As court may deem proper, wise, and b. ability to stop the activity
equitable 4) 50 years after death of composer, an assignee change the
iii. In lieu of actual damages and profits, Statutory tempo from ballad to rock and claimed to be the owner of
Damages the composition (violated right of attribution)buyer of
1. not less than P50,000 copyrighted book reproduced it in its entirety and shared it
2. if not aware, not more than P10,000 with his classmate for private studyCD burning (without
iv. Double the damages if permission of copyright holder)
1. circumvents technological measures 5) Reprinting of private library of a book that has gone out of
or stock (library must be allowed by law to receive copies of
2. alters or removes electronic rights printed work so as not to be liable)
management information 6) Repro of collection of classical books on literature published
b. Criminal action for copyright infringement more than 50 years after death of authors by one OTHER
c. Together with application for than person who made the collection
i. preliminary injunction 7) Repro of back-up copies of a licensed computer program
1. from committing infringement for archival purposes è law only allows 1 copy for archival
2. entry into channels of commerce purposes
imported goods that infringed
ii. search and seizure order
18
 a. *XPT: more than 1 is allowed by terms of license
agreement
8) X’s painting of Madonna and Child was used by her mother
to print some personalized gift wrappers which were sold to
friends. Y liked the painting and made many copies and sold
the same through Nat’l Bookstore. è J Hernando Q
x. Not copyright infringement
1) Reproduction of entire thesis of another
2) Provided for personal use
3) Use of layout or appearance of book without consent of
author
a. If use is with consent of publisher – owner of art
4) Removing restrictions on how app contents can be stored

19