BENGZON

NEGRE
UNTALAN INFRINGEMENT OF
INTELLECTUAL PROPERTY RIGHTS
Intellectual Property Attorneys

FERDINAND M. NEGRE 9 February 2017

Objectives

At the end of the session, the participants are expected to be

familiar with -

 the different acts of IP infringement,

 the salient features of A.M. No. 10-3-10-SC or the Rules of
Procedure in IP Cases and
 recent jurisprudence on these matters.
Outline

 IP and the Constitution

 IP Rights under the IP Code
 Patents,
Utility Models and Industrial Designs
 Trademarks and Tradenames

 Copyrights

 Special Rules on IPR Cases

 Jurisdiction in IP Cases
 Recent Jurisprudence
First, why IP?
 You will know what to do when confronted with an IP case
 Your court may get appointed as SCC or as a pairing court to
SCC
 Before you know it, you get promoted to the appellate court
 We are all consumers here -
 IP is closest to everyone’s daily life!
Intellectual Property and the Constitution

Article 14, Section 13, 1987 Constitution

“The State shall protect and secure the exclusive rights of scientists,
inventors, artists, and other gifted citizens to their intellectual property
and creations, particularly when beneficial to the people, for such
period as may be provided by law.”
Intellectual Property and the Constitution

Article 14, Section 13, 1987 Constitution

“The State shall protect and secure the exclusive rights of scientists,
inventors, artists, and other gifted citizens to their intellectual property
and creations, particularly when beneficial to the people, for such
period as may be provided by law.”
 Exclusive Rights

 Limited in time, scope and space

 exceptions and limitations

INTELLECTUAL PROPERTY RIGHTS
Intellectual Property Defined
 the legal rights which result from intellectual activities in the
industrial, scientific, literary and artistic fields
 creations of the mind, such as inventions; literary and artistic
works; designs; and symbols, names and images used in commerce.
 Rights = Exclusivity
• control and/or competitive advantage
• Limited in time, scope and space
 exceptions and limitations
“Intellectual Property Rights”
 It is property
 Articles 521 and 712, Civil Code of the Philippines
 Creations of the human mind or intellect
 Intangible asset
 Vs. Object/Embodiment
 Intellectual property rights
 Creators of intellectual property = rights
 Rights = assigned or licensed to others
Kinds of IP rights

Trademarks Patents

Trade name Utility Model

Geographic Industrial Design

Indications
Layout design
Copyright
Trade Secret
IP Rights Protected Under the IP Code

 Copyright – Programs in the smart phone

 Patent – Front and Rear Camera
 Trademark – word mark or logo shown on
or appearing in the smart phone
 Industrial Design – Design and Shape of
the phone
 Layout Design of Integrated Circuits –
The circuits or the map that compose the
microchip of the phone
 Geographic Indications
 Trade Secret – ?.
Kinds of IP rights

Trademarks Patents

Trade name Utility Model

Geographic Industrial Design

Indications
Layout design
Copyright
Trade Secret
PATENT, UTILITY MODELS
& INDUSTRIAL DESIGNS
Patents
“Invention”
 Any technical solution of a problem in any field of human activity

which is new, involves an inventive step and is industrially

applicable shall be patentable.
 It may be, or may relate to -

a product, or
 process, or

 an improvement of a product or process.

REQUIREMENTS FOR PATENTABILITY

1. Novelty (Novel or New)

2. Inventive Step (Non-obvious)

3. Industrial Applicability (Useful)

REQUIREMENTS FOR PATENTABILITY

1. Novelty

• SECTION 23. Novelty. — An invention shall not be considered

new if it forms part of a prior art. (Sec. 9, R.A. No. 165a)
REQUIREMENTS FOR PATENTABILITY

Sec. 24. Prior art shall consist of:

24.1. Everything which has been made available to the public anywhere in the world,
before the filing date or the priority date of the application claiming the invention; and

24.2. The whole contents of an application for a patent, utility model, or industrial design
registration, published in accordance with this Act, filed or effective in the Philippines,
with a filing […] date that is earlier than the filing […] date of the application:…:
Provided further, That the applicant or the inventor identified in both applications are
not one and the same.
REQUIREMENTS FOR PATENTABILITY

2. Inventive Step

SECTION 26. Inventive Step. — An invention involves an inventive

step if, having regard to prior art, it is not obvious to a person
skilled in the art at the time of the filing date or priority date of the
application claiming the invention
REQUIREMENTS FOR PATENTABILITY

3. Industrial Applicability

SECTION 27. Industrial Applicability. — An invention that can be

produced and used in any industry shall be industrially applicable.
Recap: REQUIREMENTS FOR PATENTABILITY

1. Novelty

2. Inventive Step

3. Industrial Applicability
NON-PATENTABLE SUBJECT MATTER

Section 22

1. Discoveries

2. Scientific theories

3. Mathematical methods

4. Schemes, rules and methods of performing mental acts, playing

games, doing business, programs for computers
NON-PATENTABLE SUBJECT MATTER

Section 22 (continued)

5. Methods for treatment of the human or animal body by surgery or

therapy & diagnostic methods practised on the human & animal body

6. Plant varieties or animal breeds or essentially biological processes for

the production of plants and animals

7. Aesthetic creations

8. Contrary to public order or morality

Ownership of Patents

 SECTION 28. Right to a Patent. - The right to a patent belongs to

the inventor, his heirs, or assigns. When two (2) or more persons have
jointly made an invention, the right to a patent shall belong to them
jointly.
Ownership of Patents

 SECTION 28. Right to a Patent. - The right to a patent belongs to

the inventor, his heirs, or assigns. When two (2) or more persons have
jointly made an invention, the right to a patent shall belong to them
jointly.
Ownership of Patents

 SECTION 30. Inventions Created Pursuant to a Commission. - 30.1. The person

who commissions the work shall own the patent, unless otherwise provided in
the contract.

30.2. In case the employee made the invention in the course of his employment
contract, the patent shall belong to:
(a) The employee, if the inventive activity is not a part of his regular duties even if the
employee uses the time, facilities and materials of the employer.
(b) The employer, if the invention is the result of the performance of his regularly-
assigned duties,
unless there is an agreement, express or implied, to the contrary.
FIRST-TO-FILE RULE
Section 29.

If 2 or more persons have made the invention separately and

independently of each other, the right to the patent shall belong to
the person who FILED an application for such invention;

OR
Where 2 or more applications are filed for the same invention, to
the applicant who has the EARLIEST filing date, or the earliest
priority date.
 RIGHTS AND LIMITATIONS
 Territory:

 Valid and binding only in the country where it is issued

 International filing system: Patent Cooperation Treaty (PCT)

 Term:

 Patent: 20 years

 Scope:

 Claims
CLAIMS INTERPRETATION

SECTION 75. Extent of Protection and Interpretation of Claims.

—
75.1. The extent of protection conferred by the patent shall be determined by
the claims, which are to be interpreted in the light of the description and
drawings.
 Lagundi (Vitex negundo) Utility Model

UM No. 2-1999-00164

 Lagundi Pediatric Syrup, Herbal Pharmaceutical

Composition in Syrup Form containing Lagundi as
the Active Ingredient
Patent Infringement
 The making, using, offering for sale, selling, or importing a
patented product or a product obtained directly or
indirectly from a patented process, or the use of a patented
process without the authorization of the patentee (Section
76.1, IPC)
RIGHTS TO PATENT, IN GENERAL

Right to exclude others from:

 Making

 Using

 Offering for sale

 Selling

 Importing (except for medicines)

a patented product or a product obtained directly or indirectly from a patented

process, or the use of a patented process (Section 76, IP Code)
Patent Infringement

 Types:
 Literalinfringement
 Infringement by Equivalents
Patent Infringement
 Types:
 Literal infringement
•Literal infringement exists if an accused device falls directly within the
scope of properly interpreted claims.
Example:
Patent Claim Accused Product

A biodegradable composition A biodegradable composition

comprising: comprising:
1. A resin; and 1. A mixture of resin and an
2. A soy protein. elastomeric material; and
2. A soy protein
Patent Infringement
 Infringement by Equivalents
• Functions-Means-Results test:
If two devices do the same work in substantially the same way and
accomplish substantially the same result, they are the same, even
though they differ in name, form or shape. (Smith Kline Beckman vs.
CA, G.R. No. 126627 [2003])
Patent Claim Accused Product

A biodegradable composition A biodegradable composition

comprising: comprising:
1. A resin; and 1. A resin; and
2. A corn starch. 2. A potato starch.
Patent Infringement
 How to determine if there is infringement of a patent?
PROPER CLAIMS CONSTRUCTION
Extent of protection afforded by a patent is determined by its claims.
“When the language of its claims is clear and distinct, the patentee is bound
thereby and may not claim anything beyond them. And so are the courts bound
which may not add to or detract from the claims matters not expressed or
necessarily implied, nor may they enlarge the patent beyond the scope of
that which the inventor claimed and the patent office allowed, even if the
patentee may have been entitled to something more than the words it had chosen
would include.” (Smith Kline Beckman vs. CA, G.R. No. 126627 [2003])
Patent Infringement
 As an incident to an infringement case pending before it, courts have
jurisdiction to pass upon patentability of an invention.

“SECTION 81. Defenses in Action for Infringement. - In an action

for infringement, the defendant, in addition to other defenses available
to him, may show the invalidity of the patent, or any claim thereof, on
any of the grounds on which a petition of cancellation can be brought
under Section 61 hereof.”
REQUIREMENTS FOR UTILITY MODEL

1. Novelty

2. Inventive Step

3. Industrial Applicability
INDUSTRIAL DESIGN

Section 112. Definition of Industrial Design. - An industrial design is

any composition of lines or colors or any three-dimensional form,
whether or not associated-with lines or colors: Provided, That such
composition or form gives a special appearance to and can serve as
pattern for an industrial product or handicraft. (Sec. 55, R.A. No.
165a)
REQUIREMENTS FOR INDUSTRIAL DESIGN

Section 113. Substantive Conditions for Protection. - 113.1. Only

industrial designs that are new or original shall benefit from
protection under this Act.
113.2. Industrial designs dictated essentially by technical or
functional considerations to obtain a technical result or those that
are contrary to public order, health or morals shall not be protected.
DISTINCTIONS

INDUSTRIAL
PATENTS UTILITY MODELS
DESIGN

Novelty Novelty
REGISTRATION Inventive step
Novelty
REQUIREMENTS Industrial Industrial
Applicability Applicability

SUBSTANTIVE
EXAMINATION
Required Not Required Not Required

TERM OF
PROTECTION
20 7 5+5+5
Infringement of Utility Models

 Tests for infringement of patents also apply to UMs

Section 108. Applicability of Provisions Relating to Patents. - 108.1.

Subject to Section 109, the provisions governing patents shall apply,
mutatis mutandis, to the registration of utility models.
108.2. Where the right to a patent conflicts with the right to a utility
model registration in the case referred to in Section 29, the said
provision shall apply as if the word "patent" were replaced by the
words "patent or utility model registration".
Infringement of Industrial Designs

 Tests for infringement of patents also apply to IDs

Section 119. Application of Other Sections and Chapters. - 119.1. The following
provisions relating to patents shall apply mutatis mutandis to an industrial design
registration:
xxx
CHAPTER VII - Remedies of a Person with a Right to Patent;
CHAPTER VIII - Rights of Patentees and Infringement of Patents;
xxx
TRADEMARK, TRADENAME
INFRINGEMENT &
UNFAIR COMPETITION
Trademarks

A trademark is any visible sign capable of distinguishing the goods or

services produced or provided by one enterprise from those of other
enterprises
Trademarks

A trademark is any visible sign capable of distinguishing the goods or

services produced or provided by one enterprise from those of other
enterprises

Visible Sign
Trademarks

A trademark is any visible sign capable of distinguishing the goods or

services produced or provided by one enterprise from those of other
enterprises

Visible Sign

Distinctive
Distinctiveness of a mark
Ownership of a mark
 How Marks are Acquired. - The rights in a mark shall be acquired
through registration made validly in accordance with the provisions of
this law. (Sec. 122)
 159.1. Notwithstanding the provisions of Section 155 hereof, a registered
mark shall have no effect against any person who, in good faith, before the
filing date or the priority date, was using the mark for the purposes of his
business or enterprise.

 TM rights are acquired through valid registration!

 BUT see Berris v. Abyadang and E.Y. Industrial v. Shen Dar – ownership is
acquired based on prior use.
Ownership of a mark
 Registration
- Prior use is not a requirement but there must be actual use after application
- Declaration of Actual Use – within three (3) years from filing of the application
 Protection:
- Ten (10) years from registration
- renewable for periods of ten (10) years each – indefinite – provided a declaration of
use is filed within 1 year from the 5th year of registration
Rights of a Trademark Owner
 Right to exclusive use of the mark in connection with one’s own goods
or services resulting in likelihood of confusion

 Right to prevent others from use of an identical mark for the same,
similar or related goods or services.
Rights of a Trademark Owner
 Will trademark registration abroad be valid and binding
here?
- No.
- Principle of Territoriality
Trademark Infringement
Unauthorized use of a registered trademark, or of a
colorable imitation of the same, for similar or related
goods in which such use is likely to cause confusion or
mistake, or to deceive.

 Governed by section 155, IPC

Trademark Infringement
Elements:
1. Ownership of a trademark through registration
2. That the trademark is reproduced, counterfeited, copied, or colourably
imitated by another
3. No consent by the trademark owner or assignee
4. Use in connection with the sale, offering for sale, or advertising of any such
goods, business or services or those related thereto
5. Likelihood of Confusion
Trademark Infringement
Element 1:
1. Ownership of a trademark
 R.A. 166 (Old trademark law): Prior use
 R.A. 8293 (IPC): Registration
Trademark Infringement
Element 2:
2. That the trademark is reproduced, counterfeited, copied, or
colourably imitated by the infringer;
Trademark Infringement
Element 2:
2. That the trademark is reproduced, counterfeited, copied,
or colourably imitated by another without consent;
 Exact reproduction/counterfeiting/copying of the mark
 Use of a colorable imitation thereof
• “Colorable imitation” denotes such a close or ingenious imitation as to
be calculated to deceive ordinary persons, or such a resemblance to the
original as to deceive an ordinary purchaser giving such attention as a
purchaser usually gives, as to cause him to purchase the one supposing
it to be the other. (Rule 18, Section 4, AM No. 10-3-10-SC)
Trademark Infringement
Element 2:
2. That the trademark is reproduced, counterfeited, copied,
or colourably imitated by another without consent;
 Exact reproduction/counterfeiting/copying of the mark
 Use of a colorable imitation thereof
• “Colorable imitation” denotes such a close or ingenious imitation as to
be calculated to deceive ordinary persons, or such a resemblance to the
original as to deceive an ordinary purchaser giving such attention as a
purchaser usually gives, as to cause him to purchase the one supposing
it to be the other. (Rule 18, Section 4, AM No. 10-3-10-SC)
Counterfeiting Colorable Imitation
Trademark Infringement
Elements 3 and 4:
3. Unauthorized Use in connection with the sale, offering for sale, or
advertising of any such goods, business or services, or those that
are related thereto
Trademark Infringement
Elements 3 and 4:
3. Unauthorized use in connection with the sale, offering for sale, or
advertising of any such goods, business or services or those that
are related thereto
 Use of identical or similar mark for non-identical, dissimilar or
non-related goods = No infringement
• Exception 1: Internationally Well-Known Marks
• Exception 2: Dilution of Mark
Trademark Infringement

Elements 5:
4. Likelihood of confusion
4. Is actual confusion necessary?
Trademark Infringement
Element 5:
4. Likelihood of confusion

 Types of confusion:
• As to the goods themselves (“Confusion of goods”)
• As to the source or origin of such goods (“Confusion of business”)
Trademark Infringement
Element 5:
4. Likelihood of confusion

 Types of confusion:
• As to the goods themselves (“Confusion of goods”)
 Same or competing goods
• As to the source or origin of such goods (“Confusion of business”)
Trademark Infringement
Element 5:
4. Likelihood of confusion

 Types of confusion:
• As to the goods themselves (“Confusion of goods”)
• As to the source or origin of such goods (“Confusion of business”)
 Wherein the goods of the parties are different but the defendant’s
product can reasonably be assumed to originate from the plaintiff
thereby deceiving the public into believing that there is some
connection between the plaintiff and defendant, which in fact, does
not exist (Mighty Corporation vs. EJ Gallo, 434 SCRA 473, [2004]])
Trademark Infringement
Element 5:
Likelihood of confusion
 Tests of confusion:
• Dominancy Test
• Holistic Test
Trademark Infringement
Element 5:
Likelihood of confusion
 Tests of confusion:
• Dominancy Test
 Prevalent features of a product
Trademark Infringement
Element 5:
Likelihood of confusion
 Tests of confusion:
• Dominancy Test
 Prevalent features of a product
Trademark Infringement
Element 5:
Likelihood of confusion
 Tests of confusion:
• Dominancy Test
 Prevalent features of a product

NS D-10 PLUS D-10 80 WP

Trademark Infringement
Element 5:
Likelihood of confusion
 Tests of confusion:
• Holistic Test
 Marks in their entirety
Emerald v. CA, G.R. 100098 (1995)

 “LEE” v. "STYLISTIC MR. LEE" both for jeans or pants

Trademark Infringement
Element 5:
Likelihood of confusion
 Other factors:
• Idem Sonans Rule – aural effects of the words and letters contained in the marks
are also considered in determining the issue of confusing similarity
 Examples:
 “Pycogenol” vs. “PCO-GENOL” (Prosource vs. Horphag)
 “Dermaline” vs. “Dermalin” (Dermaline Inc. vs. Myra Pharmaceuticals)
 “Nanny” vs. “Nan” (Societe Produits Nestle S.A. vs. Dy Jr.)
Recap: Trademark Infringement
Elements:
1. Ownership of a trademark, i.e. registration
2. That the trademark is reproduced, counterfeited, copied, or colorably imitated
by the infringer
3. No consent by the trademark owner or assignee
4. Use in connection with the sale, offering for sale, or advertising of any goods,
business or services, or those that are related thereto
5. Likelihood of Confusion
Trademark Fair Use
SECTION 148. Use of Indications by Third Parties for Purposes
Other than those for which the Mark is used. - Registration of the
mark shall not confer on the registered owner the right to preclude
third parties from using bona fide their names, addresses,
pseudonyms, a geographical name, or exact indications concerning
the kind, quality, quantity, destination, value, place of origin, or time
of production or of supply, of their goods or services: Provided,
That such use is confined to the purposes of mere identification
or information and cannot mislead the public as to the source
of the goods or services.
Tradename Infringement
 Same protection as for trademark
 Section 165.3 in relation to Section 153 to 156, IPC
 Only (but big) difference: registration is NOT a requirement
for ownership of a tradename
 Section 165.2 (a), IPC:
“Notwithstanding any laws or regulations providing for any obligation to
register trade names, such names shall be protected, even prior to or
without registration, against any unlawful act committed by third parties.”
In Coffee Partners, Inc. vs. San Francisco Coffee & Roastery, Inc. (G.R. No.
169504, 3 March 2010), the SC squarely ruled upon the issue of
whether petitioner’s use of the trademark "SAN FRANCISCO
COFFEE" constitutes infringement of respondent’s trade name
"SAN FRANCISCO COFFEE & ROASTERY, INC.," even if the
trade name is not registered with the Intellectual Property
Office (IPO).
The Supreme Court held that a trade name need not be registered
with the IPO before an infringement suit may be filed by its owner
against the owner of an infringing trademark. All that is required is
that the trade name is previously used in trade or commerce in the
Philippines.
Tradename Infringement
 Section 165.2 (b), IPC

In particular, any subsequent use of the trade name by a third party,

whether as a trade name or a mark or collective mark, or any
such use of a similar trade name or mark, likely to mislead the
public, shall be deemed unlawful.
Tradename Infringement
Elements:
1. Ownership of a tradename; registration with IPO is not required.
2. That the tradename is reproduced, counterfeited, copied, or colorably imitated
by the infringer;
3. Use in connection with the sale, offering for sale, or advertising of any goods,
business or services, or those that are related thereto
4. No consent by the tradename owner
5. Likelihood of Confusion
Unfair Competition
 Governed by Section 168, IPC
 Premise: Protection of one’s goodwill for his/her
products/services
Unfair Competition
 Unfair competition has been defined as the passing off (or
palming off) or attempting to pass off upon the public of the
goods or business of one person as the goods or business of
another with the end and probable effect of deceiving the public.
(Superior Commercial Enterprises vs. Kunnan, G.R. 169974
[2010])

 Is“hoarding” of softdrink or beer bottles to stifle supply a form of

unfair competition under the IP Code?
Unfair Competition
 Elements:
1. Confusing similarity in the general appearance of the goods;
2. Intent to deceive the public and defraud a competitor

 “True test" of unfair competition:

 whether the acts of the defendant have the intent of deceiving or are
calculated to deceive the ordinary buyer making his purchases under
the ordinary conditions of the particular trade to which the
controversy relates
Distinctions
Trademark infringement Tradename Unfair Competition
infringement
Legal basis 155 165 168

Registration a Yes No No
requirement?
Acts prohibited Use/reproduction/counte Use/reproduction/counte Passing off of one’s goods
rfeiting/copying of a rfeiting/copying of a
trademark or colorable tradename
imitation thereof

Is fraud an element? No No Yes

COPYRIGHT
Subject Matter of Copyright: “Work”
Section 172. Literary and Artistic Works. -
(a) Books, pamphlets, articles and other writings;
(b) Periodicals and newspapers;
(c) Lectures, sermons, addresses, dissertations prepared for oral delivery, whether or not reduced
in writing or other material form;
(d) Letters;
(e) Dramatic or dramatico-musical compositions; choreographic works or entertainment in
dumb shows;
(f) Musical compositions, with or without words;
(g) Works of drawing, painting, architecture, sculpture, engraving, lithography or other works of
art; models or designs for works of art;
(h) Original ornamental designs or models for articles of manufacture, whether or not
registrable as an industrial design, and other works of applied art;
Subject Matter of Copyright: “Work”
Section 172. Literary and Artistic Works. –
(i) Illustrations, maps, plans, sketches, charts and three-dimensional works relative to
geography, topography, architecture or science;
(j) Drawings or plastic works of a scientific or technical character;
(k) Photographic works including works produced by a process analogous to
photography; lantern slides;
(l) Audiovisual works and cinematographic works and works produced by a process
analogous to cinematography or any process for making audio-visual recordings;
(m) Pictorial illustrations and advertisements;
(n) Computer programs; and
(o) Other literary, scholarly, scientific and artistic works.
 Audiovisual &
cinematographic works

Musical compositions

Books, articles &

other writings

Dramatic or dramatico-
musical compositions
Computer
programs
Letters

Works of drawing, painting,

architecture, sculpture and other
Acquisition of Copyright

 No formalities required
 Automatic Protection: “From Moment of Creation”
a. Registration?
b. Deposit?
c. ©?
d. Fixed or Expressed?

Proof of Ownership: Sec. 218 – Affidavit Evidence

Acquisition of Copyright

 No formalities required (Automatic Protection), but it must be original

and it must be an artistic or literary work:
a. Original
– personal involvement or creativity
– “a modicum of creativity”
b. Artistic or Literary Work
– Functional or Technical Work; Public Domain Work
Ownership of Copyright
 SECTION 178. Rules on Copyright Ownership. - Copyright ownership shall be
governed by the following rules:

178.1 …copyright shall belong to the author of the work;

Q: Who is an author?
178.2. In the case of works of joint authorship, the co-authors shall be the original
owners of the copyright and in the absence of agreement, their rights shall be
governed by the rules on co-ownership. If, however, a work of joint authorship
consists of parts that can be used separately and the author of each part can be
identified, the author of each part shall be the original owner of the copyright
in the part that he has created;
Ownership of Copyright
Work Under Employment

 178.3. In the case of work created by an author during and in the course of his
employment, the copyright shall belong to:
(a) The employee, if the creation of the object of copyright is not a part of his
regular duties even if the employee uses the time, facilities and materials of the
employer.
(b) The employer, if the work is the result of the performance of his regularly-
assigned duties,
unless there is an agreement, express or implied, to the contrary.
Ownership of Copyright
Commissioned Work

178.4. In the case of a work commissioned by a person other than

an employer of the author and who pays for it and the work is made
in pursuance of the commission, the person who so commissioned
the work shall have ownership of the work, but the copyright
thereto shall remain with the creator, unless there is a written
stipulation to the contrary;
Ownership of Copyright
Sec. 178.6. In respect of letters, the copyright shall belong to the
writer subject to the provisions of Article 723 of the Civil Code.
Sec. 179. Anonymous and Pseudonymous Works. - For
purposes of this Act, the publishers shall be deemed to represent
the authors of articles and other writings published without the
names of the authors or under pseudonyms, unless the contrary
appears, or the pseudonyms or adopted name leaves no doubt as
to the author's identity, or if the author of the anonymous works
discloses his identity.
 DURATION OF COPYRIGHT
WORK TERM OF PROTECTION
Literary and Artistic Works Life of the author + 50 years after his death
Derivative Works
Joint Authorship Life of the last surviving author + 50 years after his death

Anonymous or Pseudonyms 50 years from date it as first lawfully published

If before expiration of said period the author’s identity is revealed or no

longer in doubt, the rule on Literary and Joint Authorship applies

Work of Applied Art 25 years from date of making

Photographic works If published – 50 years from publication
Audiovisual works Unpublished – 50 years from making

Performances not incorporated in recordings 50 years from end of the year in which performance took place

Sound recordings and performances incorporated therein 50 years from end of the year in which recoding took place

Broadcasts 20 years from the date of broadcast

Copyright Infringement

1. Is it a “work” covered by copyright? If yes…

2. Is the intended use permissible? If not…

COPYRIGHT INFRINGEMENT.
Copyright and Public Domain

a. Duration of Copyright – Expired?

b. Unprotected Subject Matter
o Ideas, procedure, system, method or operation, concept, principle, discovery
and mere data
o News of the day & mere items of press information
o Official text (and official translations thereof) of a legislative, administrative
or legal nature
o Works of the Government
Copyright and Fair Use

 The Fair Use Exception – fair use for criticism, comment, news
reporting, teaching including limited number of copies for classroom
use, scholarship, research and similar purposes.
Copyright and Fair Use

 Factors to be considered in determining fair use

1. Purpose & character of the use

2. Nature of the copyrighted work

3. Amount & substantiality of the portion used in relation to the

copyrighted work as a whole; &
4. Effect of the use upon the potential market for or value of the
copyrighted work.
Copyright Infringement
 Who is liable for infringement?
 Directly commits an infringement;
 Benefits from the infringing activity of another person who commits an
infringement if the person benefiting has been given notice of the infringing
activity and has the right and ability to control the activities of the other
person;
 With knowledge of infringing activity, induces, causes or materially
contributes to the infringing conduct of another

Q: is hacking a copyright infringement?

Copyright Infringement
Elements:

 Ownership of a copyright
• Proof of Ownership: Sec. 218 – Affidavit Evidence
 Exercise of any of the exclusive economic rights in Section 177

 without the consent of the copyright owner

Copyright Infringement
Economic Rights
1. Reproduction of the work or substantial portion of the work;
2. Dramatization, translation, adaptation, abridgment, arrangement;
3. The first public distribution of the original and each copy of the
work;
4. Rental of an audiovisual or cinematographic work, …
5. Public display of the original or a copy of the work;
6. Public performance of the work; and
7. Other communication to the public of the work.
Copyright Infringement
Infringement of a copyright is a trespass on a private domain owned
and occupied by the owner of the copyright, and, therefore,
protected by law, and infringement of copyright, or piracy, which is
a synonymous term in this connection, consists in the doing by any
person, without the consent of the owner of the copyright, of
anything the sole right to do which is conferred by statute on the
owner of the copyright. (Columbia vs. CA, 329 Phil 875 (1996))
Copyright Infringement
 Test of copyright infringement
To what extent must there be a copying of the original
work for there to be copyright infringement?

Whether an ordinary observer comparing the works can

readily see that one has been copied from the other
(Habana vs. Robles, G.R. No. 131522 [1999])
Copyright Infringement
In determining the question of infringement, the amount of matter
copied from the copyrighted work is an important consideration. To
constitute infringement, it is not necessary that the whole or even a
large portion of the work shall have been copied. If so much is
taken that the value of the original is sensibly diminished, or the labors
of the original author are substantially and to an injurious extent
appropriated by another, that is sufficient in point of law to constitute
piracy (copyright infringement). (Habana vs. Robles, G.R. No. 131522
[1999])
Copyright Infringement
In determining the question of infringement, the amount of matter
copied from the copyrighted work is an important consideration. To
constitute infringement, it is not necessary that the whole or even a
large portion of the work shall have been copied. If so much is
taken that the value of the original is sensibly diminished, or the labors
of the original author are substantially and to an injurious extent
appropriated by another, that is sufficient in point of law to constitute
piracy (copyright infringement). (Habana vs. Robles, G.R. No. 131522
[1999])
THRESHOLD: SUBSTANTIAL COPYING
CASE ANALYSIS

ABS-CBN v. Gozon
G.R. No. 195956, March 11, 2015
J. Leonen
Issues

 Are news footages copyrightable subject matter?

 Is fair use a matter of defense?
 Is good faith (lack of knowledge of/intent to commit
infringement) a defense in copyright infringement cases?
 May corporate directors be held liable for copyright infringement?
A.M. 10-3-10-SC

RULES OF PROCEDURE FOR INTELLECTUAL

PROPERTY RIGHTS CASES
A.M. No. 10-3-10-SC
 RULES OF PROCEDURE FOR INTELLECTUAL
PROPERTY CASES
 Approved: 18 October 2011
 Consists of rules for:
 Civilprocedure
 Criminal procedure

 Rules on evidence

 Destruction of seized goods pending trial

A.M. No. 10-3-10-SC

SEC. 2. In what courts applicable. These Rules shall be observed by the

Regional Trial courts designated by the Supreme Court as Special
Commercial Courts.
A.M. No. 10-3-10-SC: Civil Procedure
Applies to the civil actions involving:
 Trademarks/tradename infringement, unfair competition
 Patent/utility model/industrial design infringement

 False designation of origin/false description or representation (Section

169, IPC)
 Civil actions for copyright infringement

 Actions concerning:
• Trademark license contracts (Section 150, IPC)
• Cancellation of collective marks (Section 167, IPC)
• Breach of contract (Section 194, IPC)
A.M. No. 10-3-10-SC
Objective: speedy; summary in nature

Rule 3, Section 1: Allowable pleadings

 Complaint
 Compulsory counterclaim pleaded in the answer
 Cross-claims pleaded in the answer
 Answers to the pleadings above

NOTE: All pleadings must be verified

A.M. No. 10-3-10-SC

Rule 3, Section 4: Prohibited Pleadings

a) Motion to dismiss;
b) Motion for a bill of particulars;
c) Motion for reconsideration of a final order or judgment, except with
regard to an order of destruction issued under Rule 20 hereof;
d) Etc.
A.M. No. 10-3-10-SC

Rule 1, Section 4:

Executory nature of orders. — Any order issued by the court under

these Rules is immediately executory unless restrained by a superior
court.
Writs of Search and Seizure
 Special Commercial Courts in -
Quezon City Manila

Pasig City Makati City

 Writs issued by these courts are enforceable nationwide

 Concurrent jurisdiction with other special commercial courts within
territorial jurisdiction (Rule 2, Sec. 2)
 Appeal
On Pleadings
45 days or Position
Paper in 30
STEPS days**
30 days 15 days
5 days *
Judgment
Trial
15 days
Pre-trial
30 days

Answer Clarificatory Hearing

5 days 15 days
Service of 45 days
Summons
*from period for availing **summary judgment
of, or in compliance with
Filing of Rule 5: Modes of
complaint Discovery
A.M. No. 10-3-10-SC: Criminal Procedure

Applies to the following cases:

 Repetition of Infringement of Patent, Utility Model (Section 108)
and Industrial Design
 Trademark Infringement, Unfair Competition

 False Designations of Origin; False Description or Representation

 Copyright infringement

 Other violations of intellectual property rights as may be defined

by law
A.M. No. 10-3-10-SC

 Disposition of goods seized pursuant to a search warrant

(Rule 11, Section 4)
 Searchwarrant may be quashed if, no criminal complaint is filed
within 60 days from its issuance.
• By motion of party whose goods were taken and with notice to applicant
• If no motion to quash is filed, the issuing court shall require the parties,
including the private complainant, if any, to show cause why the search
warrant should not be quashed.
Order of Destruction
 Anytime after filing of complaint or information
 Notice and summary hearing
 Conditions:
 Inventoryand photographs taken
 Witnessed and attested by:
• Accused/defendant or representative, or barangay officer
• Complainant, counsel or representative
• Seizing office or representative
 Representative samples preserved
 Bond posted
A.M. No. 10-3-10-SC

Where does the complainant file the Motion to Destroy?

Where does the respondent or accused file the Motion to Quash SW

or writ of search and seizure?
Inventory and photographs of infringing goods
Witnessing Destruction
Retention of representative samples
Proper Disposal
Destruction
A.M. 02-1-06-SC Writ of Civil Search and Seizure
 Anton Piller Order
 Inaudita Altera Parte

The judicial authorities shall have the authority to adopt

provisional measures inaudita altera parte where appropriate, in
particular where [1] any delay is likely to cause irreparable harm
to the right holder, or where [2] there is a demonstrable risk of
evidence being destroyed. (Art. 50 TRIPs)
A.M. 02-1-06-SC Writ of Civil Search and Seizure
 Purposes
Prevent infringement of IP
Preserve relevant evidence (Sec. 1)
JURISDICTION
Jurisdiction in IP Cases
INTELLECTUAL PROPERTY OFFICE REGULAR COURTS

Inter-partes cases:
• Oppositions to TM applications;
• Petitions to cancel TM
registrations;
• Petitions to cancel patents, UM
registrations, ID registrations;
• Petitions for Compulsory
Licensing.
Jurisdiction in IP Cases
INTELLECTUAL PROPERTY OFFICE REGULAR COURTS

Criminal actions involving:

• Repetition of Infringement of Patent,
Utility Model (Section 108) and
Industrial Design
• Trademark Infringement, Unfair
Competition
• False Designations of Origin; False
Description or Representation
• Copyright infringement
Jurisdiction in IP Cases
INTELLECTUAL PROPERTY OFFICE REGULAR COURTS

Administrative actions for IPVs where the total Civil actions for violations of IPRs
damages claimed are two hundred thousand irrespective of the total damages claimed.
pesos (P200,000.00) or more.

Cases involving: Cases involving:

• Trademarks/trade name infringement, unfair • Trademarks/trade name infringement, unfair
competition competition
• Patent/utility model/industrial design • Patent/utility model/industrial design
infringement infringement
• Civil actions for copyright infringement • Civil actions for copyright infringement
• False designation of origin/false description or • False designation of origin/false description or
representation (Section 169, IPC) representation (Section 169, IPC)
Jurisdiction for IP Cases
 Which between MTC level courts and RTCs have jurisdiction to
hear, try and decide cases involving intellectual property rights?

Manolo Samson vs. Judge Reynaldo Daway, et.al.

(G.R. Nos. 160054-55, [2004])
Samson vs. Daway
 Facts:
 Two (2) informations for unfair competition were filed against Samson
before the QC Regional Trial Court.
 Samson filed a motion seeking for the quashal of the information on the
ground the RTC lacks jurisdiction over the offense charged.
• Penalty for unfair competition is less than six (6) years; therefore, offense is
cognizable by the MTC as per RA 7691.
• RA 8293 repealed RA No. 166; therefore, the provision in the latter law
stating that jurisdiction is conferred to courts of first instance had been
repealed;
Samson vs. Daway
 Issue:
Which court has jurisdiction over criminal and civil cases for
violation of intellectual property rights?
Samson vs. Daway
 Issue:
Which court has jurisdiction over criminal and civil cases for
violation of intellectual property rights?

 Held:
RTC.
Samson vs. Daway
RTC has jurisdiction over criminal and civil cases for violation
of intellectual property rights

1. R.A. No. 8293 and R.A. No. 166 are special laws conferring jurisdiction over
violations of intellectual property rights to the Regional Trial Court. They
should therefore prevail over R.A. No. 7691, which is a general law.
• Statutory Construction: In case of conflict between a general law and a
special law, the latter must prevail.
Recent Jurisprudence
Kolin v. Kolin (March 25, 2015)
 Kolin v. Kolin (March 25, 2015)
TAIWAN KOLIN CORPORATION, LTD. KOLIN ELECTRONICS, INC.

Household appliances, particularly: Automatic voltage regulator,

television sets, cassette recorder, VCD converter, recharger, stereo booster,
Amplifiers, camcorders, and other a/v AC-DC regulated power supply, step-
electronic equipment, flat iron, vacuum down transformer, and PA amplified
cleaner, etc... AC-DC
 UFC v. Barrio Fiesta

Barrio Fiesta Manufacturing Corporation

(“PAPA BOY & DEVICE” for lechon
sauce)
versus
UFC Philippines Inc., now Nutria-Asia
Inc. (PAPA, PAPA BANANA CATSUP,
PAPA KETSARAP)
[G.R. No. 198889, January 20, 2016]
UFC v. Barrio Fiesta
 IPAP v. ES, et.al.
G .R. No. 204605 July 19, 2016
Background:

 In 2012, the Philippines acceded to the Madrid Protocol through

ratification by the President.

 The IPAP petitioned the SC to declare the accession

unconstitutional, as the same was in the nature of the treaty and
the accession had not been approved by Congress.
 IPAP v. ES, et.al.
G .R. No. 204605 July 19, 2016

 Whether or not the IPAP has locus standi to challenge the

President's ratification of the Madrid Protocol

 Whether or not the President's ratification of the Madrid Protocol

is valid and constitutional; and

 Whether or not the Madrid Protocol is in conflict with the IP

Code.
 IPAP v. ES, et.al.
G .R. No. 204605 July 19, 2016

 On 19 July 2016, the Supreme Court voted 13-0 in denying the petition as
executive agreements do not require the consent of Congress

 “The ruling upheld the ‘exercise of discretion’ of the Secretary of Foreign

Affairs to determine whether an agreement should be considered an
executive agreement or a treaty”

 Moreover, the SC categorically stated that the accession was not in conflict
with the IP Code.
 IPAP v. ES, et.al.
G .R. No. 204605 July 19, 2016

“I have no doubt that many of the lawyers who practice in the

field of trademark protection in Intellectual Property Law do
not have the myopic goal of simply being administrative
agents or local post offices for owners of foreign marks. I have
full confidence that they can meet the skill and accreditation
requirements to work under the Madrid Protocol as well as
any foreign lawyer…”
 IPAP v. ES, et.al.
G .R. No. 204605 July 19, 2016

“…In an era of more transnational transactions and markets

evolving from national boundaries, we should adapt as a
profession, as surely as our products become more
competitive. The sooner our profession adapts, the better it
can assist our entrepreneurs and our own industries to
weather the difficult political economies of the world market.”
BENGZON
NEGRE
THANK YOU
UNTALAN
Intellectual Property Attorneys
FOR YOUR PATIENCE!

FERDINAND M. NEGRE