RFBT 3

Atty. Ruth Hazel A. Galang

7

Intellectual Property Law

RA 8293
Patent
Refer to any technical solution of a problem in any field of human
activity, which is new, involves an inventive step and is industrially
applicable. It may be, or refer to, any product, process, or an
improvement of any of the foregoing. [Sec. 21, RA 8293] It is vested
from the issuance of letters of patent.

3
What are Patentable
a. Inventions
b. Utility Model
c. Industrial Designs
d. Lay-Out Designs (Topographies of Integrated Circuits)

4
Inventions
A patentable invention is 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 any of the foregoing.
[Sec. 21, RA 8293]

5
Inventions
REQUISITES
1. A technical solution of a problem in any field of human activity;
2. It must be a novel invention;
3. Industrially applicable.

6
Inventions
STANDARDS OF PATENTABLE INVENTIONS
1. Novelty — An invention shall not be considered new if it forms part
of a prior art. [Sec. 23, RA
8293]

Prior art shall consist of:

a. 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; [Sec. 24.1, RA 8293]

7
Inventions
b. 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 or priority date that is
earlier than the filing or priority date of the application: Provided, That
the application which has validly claimed the filing date of an earlier
application under Section 31 of this Act, shall be prior art with effect
as of the filing date of such earlier application: Provided further, That
the applicant or the inventor identified in both applications are not
one and the same. [Sec. 24.2, RA 8293]

8
Inventions
Non-Prejudicial Disclosures –This is an exception to the General
Rule on Prior Art under Sec. 24. It provides that the disclosure of the
information contained in the application during the 12 months
preceding the filing date or the priority date of the application shall
not prejudice the applicant on the ground of lack of novelty if such
disclosure was made by:
a. The inventor

9
Inventions
b. A patent office and the information contained (a) in another
application filed by the inventor and should not have been disclosed
by the office, or (b) in an application filed without the knowledge or
consent of the inventor by a third party which obtained the
information directly or indirectly from the inventor
c. A third party which obtained the information directly or indirectly
from the inventor [Sec. 25, RA 8293]

10
Inventions
An invention must possess the essential elements of novelty,
originality and precedence and for the patentee to be entitled to
protection, the invention must be new to the world. [Maguan vs. CA,
G.R. L-45101 (1986)]

11
Inventions
2. 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. [Sec. 26.1, RA 8293, as amended by RA 9502]
3. Industrial Applicability — an invention that can be produced and
used in any industry shall be industrially applicable. [Sec. 27, RA
8293]

12
Utility Model
Unlike an invention patent, a utility model need not be inventive. The
law merely requires that it be novel and industrially applicable. [Sec.
109.1, RA 8293]

A utility model registration shall expire, without any possibility of

renewal, at the end of the seventh year after the date of the filing of
the application. [Sec. 109.3, RA 8293]

13
Utility Model
Statutory Classes of Utility Models
A Utility Model may be, or may relate to:
1. A useful machine;
2. An implement or tool;
3. A product or composition;
4. A method or process; or
5. An improvement of any of the foregoing. [Rule 201, Rules and
Regulations on Utility Models and Industrial Designs as amended]

14
Utility Model
Grounds for Cancellation of Utility Models
1. That the claimed invention does not qualify for registration as a
utility model and does not meet the requirements of registrability;
2. That the description and the claims do not comply with the
prescribed requirements;
3. That any drawing which is necessary for the understanding of the
invention has not been furnished;
4. That the owner of the utility model registration is not the inventor
or his successor in title [Sec. 109.4, RA 8293]

15
Industrial Design
Industrial Design
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. 112.1, RA 8293]

16
Layout Design
Layout Design (Topography) of an integrated Circuit
The three-dimensional disposition, however expressed, of the
elements, at least one of which is an active element, and of some or
all the interconnections of an integrated circuit, or such a three-
dimensional disposition prepared for an integrated circuit intended
for manufacture. [Sec. 112.3, RA 8293]

17
Integrated Circuit
A product, in its final form, or an intermediate form, in which the
elements, at least one of which is an active element and some or all
of the interconnections are integrally formed and/or on a piece of
material, and which is intended to perform an electronic function.
[Sec. 112.2, RA 8293]

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Non-Patentable Inventions
a. Discoveries, scientific theories and mathematical methods, and in
the case of drugs and medicines, the mere discovery of a new form
or new property of a known substance which does not result in the
enhancement of the known efficacy of that substance, or the mere
discovery of any new property or new use for a known substance,
or the mere use of a known process unless such known process
results in a new product that employs at least one new reactant.
Salts, esters, ethers, polymorphs, metabolites, pure form, particle
size, isomers, mixtures of isomers, complexes, combinations, and
other derivatives of a known substance shall be considered to be
the same substance, unless they differ significantly in properties with
regard to efficacy; [Sec. 22.1, RA 8293 as amended by RA 9502]
19
Non-Patentable Inventions
b. Schemes, rules and methods of performing mental acts, playing
games or doing business, and programs for computers; [Sec. 22.2,
RA 8293]
c. Methods for treatment of the human or animal body by surgery or
therapy and diagnostic methods practiced on the human or animal
body. This provision shall not apply to products and composition for
use in any of these methods; [Sec. 22.3, RA 8293]

20
Non-Patentable Inventions
d. Plant varieties or animal breeds or essentially biological process
for the production of plants or animals. This provision shall not apply
to micro- organisms and non-biological and microbiological
processes; [Sec. 22.4, RA 8293]
e. Aesthetic creations; [Sec. 22.5, RA 8293]
f. Anything which is contrary to public order or morality. [Sec. 22.6, RA
8293]

21
Non-Patentable Inventions
CHEAPER MEDICINES ACT: In addition to discoveries, scientific
theories and mathematical methods, the IP Code now includes (as
non- patentable), in case of drugs and medicines:
a. The mere discovery of a new form or new property of a known
substance which does not result in the enhancement of the known
efficacy of that substance
b. The mere discovery of any new property or new use of a known
substance
c. the mere use of a known process unless such known process
results in a new product that employs at least one reactant [Sec.
26.2, RA 8293 as amended by RA 9502]
22
Ownership of a Patent
a. Right to a Patent
General Rule: The right to 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. [Sec. 28,
RA 8293]
Exception: Inventions created pursuant to a commission (Work for
Hire Doctrine)
1. The employer has the right to the patent if the invention is the
result of the performance of the employee’s regularly assigned
duties [Sec. 30.2, RA 8293]
2. In case of inventions created pursuant to a commission, the
person who commissions the work shall own the patent [Sec. 30.1, 23
Ownership of a Patent
b. First-to-File rule
If two (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 two
or more applications are filed for the same invention, to the applicant
who has the earliest filing date or, the earliest priority date. [Sec. 29,
RA 8293]

24
Ownership of a Patent
Filing Date
The filing date of a patent application shall be the date of receipt by
the Office of at least the following elements:
a. An express or implicit indication that a Philippine patent is sought;
b. Information identifying the applicant; and
c. Description of the invention and one (1) or more claims in Filipino
or English. [Sec. 40.1, RA 8293]

25
Ownership of a Patent
c. Invention created pursuant to a commission/in the course of
employment
The person who commissions the work shall own the patent, unless
otherwise provided in the contract. [Sec. 30.1, RA 8293]
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. [Sec. 30.2, RA 8293] 26
Ownership of a Patent
d. Right of Priority
An application for patent filed by any person who has previously
applied for the same invention in another country which by treaty,
convention, or law affords similar privileges to Filipino citizens, shall
be considered filed as of the date of filing the foreign application:
Provided, That: (a) the local application expressly claims priority; (b) it
is filed within twelve (12) months from the date the earliest foreign
application was filed; and (c) a certified copy of the foreign
application together with an English translation is filed within six (6)
months from the date of filing in the Philippines. [Sec. 31, RA 8293]

27
Ownership of a Patent
Grounds for Cancellation of a Patent
Any interested person may petition to cancel the patent or any claim
thereof, or parts of the claim, on any of the following grounds:
1. That what is claimed as the invention is not new or patentable;
2. That the patent does not disclose the invention in a manner
sufficiently clear and complete for it to be carried out by any
person skilled in the art; or
3. That the patent is contrary to public order or morality. [Sec. 61.1, RA
8293]

28
Ownership of a Patent
Where the grounds for cancellation relate to some of the claims or
parts of the claim, cancellation may be effected to such extent only.
[Sec. 61.2, RA 8293]

29
Ownership of a Patent
Effect of Cancellation of Patent or Claim
The rights conferred by the patent or any specified claim or claims
cancelled shall terminate. Notice of the cancellation shall be
published in the IPO Gazette. Unless restrained by the Director
General, the decision or order to cancel by Director of Legal Affairs
shall be immediately executory even pending appeal. [Sec. 66, RA
8293]

30
Ownership of a Patent
Remedies of a Person with a Right to a Patent
Patent Application by Persons Not Having the Right to a Patent. If a
person other than the applicant, is declared by final court order or
decision as having the right to the patent, such person may, within
three (3) months after the decision has become final:
1. Prosecute the application as his own application in place of the
applicant;
2. File a new patent application in respect of the same invention;
3. Request that the application be refused; or
4. Seek cancellation of the patent, if one has already been issued.
[Sec. 67, RA 8293]
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Ownership of a Patent
5. Remedy of the True and Actual inventor
If a person, who was deprived of the patent without his consent or
through fraud, is declared by final court order or decision to be the
true and actual inventor, the court shall: (1) Order for his substitution
as patentee, or
(2) At the option of the true inventor, cancel the patent, and
(3) Award actual and other damages in his favor, if warranted by the
circumstances. [Sec. 68, RA 8293]

The action shall be filed within 1 year from the date of publication
made in accordance with Sections 44 and 51, respectively. [Sec. 70,
32
RA 8293]
Ownership of a Patent
6. Rights Conferred by a Patent
Where the To restrain, prohibit and prevent any unauthorized person or entity from
subject matter making, using, offering for sale, selling or importing that product. [Sec.
of a patent is a 71.1(a), RA 8293]
product
Where the To restrain, prevent or prohibit any unauthorized person or entity from
subject matter using the process, and from manufacturing, dealing in, using, selling or
of a patent is a offering for sale, or importing any product obtained directly or indirectly
process from such process. [Sec. 71.1(b), RA 8293]
Other rights of a Patent owners shall also have the right to assign, or transfer by
patent owner succession the patent, and to conclude licensing contracts for the
same. [Sec. 71.2, RA 8293]

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Ownership of a Patent
4. Term of a Patent
a. Term of Invention Patent
The term of a patent shall be twenty (20) years from the filing date of
the application. [Sec. 54, RA 8293]
A patent shall take effect on the date of the publication of the grant
of the patent in the IPO Gazette. [Sec. 50.3, RA 8293]

34
Ownership of a Patent
b. Term of Utility Model
A utility model registration shall expire, without any possibility of
renewal, at the end of the seventh year after the date of the filing of
the application. [Sec. 109.3, RA 8293]

c. Term of Industrial Design

The registration of an industrial design shall be for a period of five (5)
years from the filing date of the application. [Sec. 118.1, RA 8293]

35
Cancellation of a Patent
a. Grounds for Cancellation of a Patent
Any interested person may petition to cancel the patent or any claim
thereof, or parts of the claim, on any of the following grounds:
1. That what is claimed as the invention is not new or patentable;
2. That the patent does not disclose the invention in a manner
sufficiently clear and complete for it to be carried out by any person
skilled in the art; or
3. That the patent is contrary to public order or morality. [Sec. 61.1, RA
8293]

36
Cancellation of a Patent
Where the grounds for cancellation relate to some of the claims or
parts of the claim, cancellation may be effected to such extent only.
[Sec. 61.2, RA 8293]

37
Requirement of the Petition
The petition for cancellation shall be in writing, verified by the
petitioner or by any person in his behalf who knows the facts,
specify the grounds upon which it is based, include a statement of
the facts to be relied upon, and filed with the Office. Copies of
printed publications or of patents of other countries, and other
supporting documents mentioned in the petition shall be attached
thereto, together with the translation thereof in English, if not in
English language. [Sec. 62, RA 8293]

38
Notice of Hearing
Upon filing of a petition for cancellation, the Director of Legal Affairs
shall forthwith serve notice of the filing thereof upon the patentee
and all persons having grants or licenses, or any other right, title or
interest in and to the patent and the invention covered thereby, as
appears of record in the Office, and of notice of the date of hearing
thereon on such persons and the petitioner. Notice of the filing of the
petition shall be published in the IPO Gazette. [Sec. 63, RA 8293]

39
Effect of Cancellation of Patent or
Claim
The rights conferred by the patent or any specified claim or claims
cancelled shall terminate. Notice of the cancellation shall be
published in the IPO Gazette. Unless restrained by the Director
General, the decision or order to cancel by Director of Legal Affairs
shall be immediately executory even pending appeal. [Sec. 66, RA
8293]

40
Remedy of the True and Actual
Inventor
If a person, who was deprived of the patent without his consent or
through fraud is declared by final court order or decision to be the
true and actual inventor, the court shall order for his substitution as
patentee, or at the option of the true inventor, cancel the patent, and
award actual and other damages in his favor if warranted by the
circumstances. [Sec. 68, RA 8293]
The action shall be filed within one (1) year from the date of
publication made in accordance with Sections 44 and 51,
respectively. [Sec. 70, RA 8293]

41
Rights Conferred by a Patent
a. Where the subject matter of a patent is a product, to restrain,
prohibit and prevent any unauthorized person or entity from making,
using, offering for sale, selling or importing that product. [Sec. 71.1(a),
RA 8293]
b. Where the subject matter of a patent is a process, to restrain,
prevent or prohibit any unauthorized person or entity from using the
process, and from manufacturing, dealing in, using, selling or
offering for sale, or importing any product obtained directly or
indirectly from such process. [Sec. 71.1(b), RA 8293]
c. Patent owners shall also have the right to assign, or transfer by
succession the patent, and to conclude licensing contracts for the
same. [Sec. 71.2, RA 8293]
42
Prior User
Any prior user, who, in good faith was using the invention or has
undertaken serious preparations to use the invention in his enterprise
or business, before the filing date or priority date of the application
on which a patent is granted, shall have the right to continue the use
thereof as envisaged in such preparations within the territory where
the patent produces its effect. [Sec. 73.1, RA 8293]
The right of the prior user may only be transferred or assigned
together with his enterprise or business, or with that part of his
enterprise or business in which the use or preparations for use have
been made. [Sec. 73.2, RA 8293]

43
Use by the Government
A Government agency or third person authorized by the
Government may exploit the invention even without agreement of
the patent owner where:
1. The public interest, in particular, national security, nutrition, health
or the development of other sectors, as determined by the
appropriate agency of the government, so requires; [Sec. 74.1(a), RA
8293]
2. A judicial or administrative body has determined that the manner
of exploitation, by the owner of the patent or his licensee, is anti-
competitive. [Sec. 74.1(b), RA 8293]

44
Patent Infringement
It is 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. [Sec. 76.1, RA 8293 as amended by RA
9502]

45
Patent Infringement
Tests in Patent Infringement
a. Literal Infringement
In using literal infringement as a test, resort must be had in the first
instance to the words of the claim. To determine whether the
particular item falls within the literal meaning of the patent claims,
the court must juxtapose the claims of the patent and the accused
product within the overall context of the claims and specifications, to
determine whether there is exact identity of all material elements.
[Godinez v. CA, G.R. No. L-97343 (1993)]

46
Patent Infringement
The test is satisfied if:
The item that is being sold, made or used conforms exactly to the
patent claim of another; One makes, uses or sells an item that has all
the elements of the patent claim of another plus other elements.

47
Patent Infringement
b. Doctrine of Equivalents
Under the doctrine of equivalents, an infringement occurs when a
device:
(1) Appropriates a prior invention by incorporating its innovative
concept, albeit with some modification and change,
(2) Performs substantially the same function in substantially the same
way, and
(3) Achieves substantially the same result. [Godinez v. CA, G.R. No. L-
97343 (1993)]

48
Patent Infringement
The doctrine of equivalents thus requires satisfaction of the function-
means-and-result test, the patentee having the burden to show that
all three components of such equivalency test are met. [Smith Klein
Beckman Corp. v. CA, G.R. No. 126627 (2003)]

49
Patent Infringement
Civil and Criminal Actions
Civil Action for Infringement
Any patentee, or anyone possessing any right, title or interest in and
to the patented invention, whose rights have been infringed, may
bring a civil action before a court of competent jurisdiction:
1. To recover from the infringer such
damages sustained thereby, plus attorney’s fees and other
expenses of litigation, and
2. To secure an injunction for the protection of his rights. [Sec. 76.2,
RA 8293]
50
Patent Infringement
If the damages are inadequate or cannot be readily ascertained with
reasonable certainty, the court may award, by way of damages, a
sum equivalent to reasonable royalty. [Sec. 76.3, RA 8293]
The court may, according to the circumstances of the case, award
damages in a sum above the amount found as actual damages
sustained: Provided, That the award does not exceed three (3) times
the amount of such actual damages. [Sec. 76.4, RA 8293]

51
Patent Infringement
Criminal Action Only After Finality of Judgment in Civil Action and
After Repetition of Infringement
If infringement is repeated by the infringer or by anyone in
connivance with him after finality of the judgment of the court
against the infringer, the offenders shall:
1. Be criminally liable therefor, and
2. Upon conviction, suffer imprisonment for the period of not less
than 6 months but not more than 3 years and/or a fine of not less
than One hundred thousand pesos (P100,000) but not more than
Three hundred thousand pesos (P300,000), at the discretion of the
court
52
Patent Infringement
Prescriptive Period
Civil Action: No damages can be recovered for acts of infringement
committed more than four (4) years before the institution of the
action for infringement. [Sec. 79, RA 8293]

Criminal Action: 3 years from date of the commission of the crime.

[Sec. 84, RA 8293]

53
Patent Infringement
Defenses in Actions 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. [Sec. 81, RA 8293]

54
Patent Infringement
Patent found invalid may be cancelled
In an action for infringement, if the court shall find the patent or any
claim to be invalid, it shall cancel the same, and the Director of Legal
Affairs upon receipt of the final judgment of cancellation by the
court, shall record that fact in the register of the Office and shall
publish a notice to that effect in the IPO Gazette. [Sec. 82, RA 8293]

55
Patent Infringement
Doctrine of File Wrapper Estoppel
Patentee is precluded from claiming as part of a patented product
that which he had to excise or modify in order to avoid patent office
rejection, and he may omit any additions he was compelled to add
by patent office regulations. [Advance Transformer Co. v. Levinson,
837 F.2d 1081(1988)]

56
Licensing
a. Voluntary
Voluntary Licensing is the grant by the patent owner to a third
person of the right to exploit the patented invention. [Sec. 85, RA
8293]
To encourage the transfer and dissemination of technology, prevent
or control practices and conditions that may in particular cases
constitute an abuse of intellectual property rights having an adverse
effect on competition and trade, all voluntary technology transfer
arrangements or licensing contracts shall:

57
Licensing
1. Not contain any of the prohibited clauses for voluntary license
contracts under Sec. 87
2. Contain all of the mandatory provisions for voluntary license
contracts under Sec. 88
3. Be approved and registered with the Documentation, Information
and Technology Transfer Bureau [of the IPOPHL] as an exceptional
case under Sec. 91, ONLY IF the agreement fails to comply with Sec.
87 and 88. [See Secs. 85 & 92, RA 8293]

58
Licensing
Mandatory Provisions
The following provisions shall be included in voluntary license
contracts:
1. That the laws of the Philippines shall govern the interpretation of
the same and in the event of litigation, the venue shall be the proper
court in the place where the licensee has its principal office; [Sec.
88.1, RA 8293]
2. Continued access to improvements in techniques and processes
related to the technology shall be made available during the period
of the technology transfer arrangement; [Sec. 88.2, RA 8293]

59
Licensing
3. In the event the technology transfer arrangement shall provide for
arbitration, the Procedure of Arbitration of the Arbitration Law of the
Philippines or the Arbitration Rules of the United Nations
Commission on International Trade Law (UNCITRAL) or the Rules of
Conciliation and Arbitration of the International Chamber of
Commerce (ICC) shall apply and the venue of arbitration shall be the
Philippines or any neutral country; [Sec. 88.3, RA 8293]
4. The Philippine taxes on all payments relating to the technology
transfer arrangement shall be borne by the licensor. [Sec. 88.4, RA
8293]

60
Licensing
Effect of Non-compliance with any Provisions of Secs. 87 and 88
The technology transfer arrangement (TTA) shall automatically be
rendered unenforceable, unless said technology transfer
arrangement is approved and registered with the Documentation,
Information and Technology Transfer Bureau (DITTB of the IPOPHL)
under the provisions of Section 91 on exceptional cases. [Sec. 92, RA
8293]

61
Licensing
Compulsory
Compulsory Licensing is the grant of the Director of Legal Affairs of
a license to exploit a patented invention, even without the
agreement of the patent owner, in favor of any person who has
shown his capability to exploit the invention. [Sec. 93, RA 8293 as
amended by RA 9502]

62
Licensing
Period for Filing a Petition for Compulsory License
At any time after the grant of patent. However, a compulsory license
may not be applied for on the ground stated in Sec. 93.5 before the
expiration of a period of 4 years from the date of filing of the
application or 3 years from the date of the patent whichever period
expires last. [Sec. 94, RA 8293 as amended by RA 9502]

63
Assignment and Transmission of
Rights
Inventions and any right, title or interest in and to patents and
inventions covered thereby, may be assigned or transmitted by
inheritance or bequest or may be the subject of a license contract.
[Sec. 103.2, RA 8293]
An assignment may be of:
(i) The entire right, title or interest in and to the patent and the
invention covered thereby, or
(ii) An undivided share of the entire patent and invention, in which
event the parties become joint owners thereof.
64
Assignment and Transmission of
Rights
An assignment may be limited to a specified territory. [Sec. 104, RA
8293]
Rights of Joint Owners
If two or more persons jointly own a patent and the invention
covered thereby, each joint owner shall be entitled to personally
make, use, sell, or import the invention for his own profit.

65
Assignment and Transmission of
Rights
However, neither of the joint owners shall be entitled to grant
licenses or to assign his right, title or interest or part thereof without
the consent of the other owner or owners, or without proportionally
dividing the proceeds with such other owner or owners. [Sec. 107,
RA 8293]

66
Assignment and Transmission of
Rights
Form of Assignment
The assignment must be in writing and must be notarized. [Sec. 105
RA 8293] It shall be void as against any subsequent purchaser or
mortgagee for valuable consideration and without notice, unless, it is
so recorded in the Office, within 3 months from the date of said
instrument, or prior to the subsequent purchase or mortgage. [Sec.
106.2, RA 8293]

67
Trademark

Marks
Any visible sign capable of distinguishing the goods (trademark) or
services (service mark) of an enterprise and shall include a stamped
or marked container of goods. [Sec. 121.1, RA 8293]

68
Trademark

Trademark Service Mark

Any visible sign which is: Any visible sign capable of

Adopted and used to identify the distinguishing the services of an
source or origin of goods; and enterprise from the service of other
Capable of distinguishing them from enterprises.
goods emanating from a competitor.

69
Trademark

Collective Marks
Any visible sign designated as such in the application for
registration and capable of distinguishing the origin or any other
common characteristic, including the quality of goods or
services of different enterprises which use the sign under the
control of the registered owner of the collective mark. [Sec.
121.2, RA 8293]

70
Trademark

Trade Name
The name or designation identifying or distinguishing an
enterprise [Sec. 121.3, RA 8293].
Any individual name or surname, firm name, device or word
used by manufacturers, industrialists, merchants, and others to
identify their businesses, vocations or occupations. [Converse
Rubber Corp. v. Universal Rubber Products, Inc., G.R. No. L-
27906 (1987)]

71
Trademark
DIFFERENCES BETWEEN A TRADEMARK/ SERVICE MARK
AND A TRADENAME UNDER THE IP CODE
Trademark/Service Mark Trade Name

Basis of ownership

Registration Prior use in Philippine commerce

When Protected

Upon registration A trade name may be protected

even if unregistered

72
Trademark
DIFFERENCES BETWEEN A TRADEMARK/ SERVICE MARK
AND A TRADENAME UNDER THE IP CODE
Trademark/Service Mark Trade Name

Remedies

A trademark or service mark owner A trade name owner only has civil
can avail of administrative, civil and and administrative remedies
criminal remedies
Assignment

A trademark orservice mark can be A trade name can only be assigned

assigned independent of the with the business.
business

73
Trademark
Functions of a Trademark
1. To point out distinctly the origin or ownership of the goods and to
which it is affixed;
2. To secure him, who has been instrumental in bringing into the market
a superior article of merchandise, the fruit of his industry and skill;
3. To assure the public that they are producing the genuine article;
4. To prevent fraud and imposition; and
5. To protect the manufacturer against substitution and sale of an
inferior and different article as its product. [Mirpuri v.
CA, G.R. No. 114508 (1999)]
74
Trademark
Spectrum of Distinctiveness
Generic Marks
Generic Marks are those which constitute the name of an article or
substance; or comprise the genus of which the particular product is a
species of. [Societe Des Produits Nestle v. CA, G.R. No. 112012, 2001]

These must remain in the public domain and can never be registered
as a trademark.

75
Trademark
Descriptive Marks
Consists exclusively of signs or of indications that may serve in trade to
designate the kind, quality, quantity, intended purpose, value,
geographical origin, time or production of the goods or rendering of the
services, or other characteristics of the goods or services. [Sec. 123(j),
RA 8293]

These are words that merely describe the product or service or refer to
their quality or characteristic.

76
Trademark
General rule: Descriptive marks are not entitled to protection and are
too weak to function as a trademark.
Exception: Doctrine of Secondary meaning

Example: “YELLOW PAGES” for telephone directory having yellow

pages.

77
Trademark
Suggestive Marks
Marks that hint or suggest the nature or quality of the good or service
without directly describing it. They are “subtly descriptive” and are
entitled to protection despite lack of distinctiveness.
Example: “JAGUAR” for automobile.

78
Trademark
Arbitrary Marks
Common words used as marks, but are unrelated to the good or
service they represent. They neither describe nor suggest the
characteristic of the goods or service, though they are considered
highly distinctive for purposes of registration.
Example: “APPLE” for electronic product.

79
Trademark
Fanciful or “Coined” Marks
These are invented or “coined” words that do not have any meaning
and are made solely for the purpose of the mark. They are considered
“strong” marks for purposes of registration and protection for being
inherently distinctive.
Example: “KODAK” for camera.

80
Trademark
Acquisition of Ownership of Mark
General Rule: To acquire rights in a mark, registration is required. [Sec.
122, RA 8293]
Exception: Well-known marks are protected even without registration.

Note: However, when the well-known mark is not registered, its

protection is limited, as it only prevents the registration of confusingly
similar marks that are used for identical or similar goods or services.
[Sec. 123.1(e), RA 8293]

81
Trademark
Registration is not a mode of acquiring ownership, rather, it merely
gives rise to a prima facie presumption of ownership of the registrant
over the mark [Sec. 138, RA 8293]
Said presumption of ownership may be rebutted by the true owner of
the mark in an opposition or cancellation proceeding.

82
Trademark
Filing Date
The filing date of an application shall be the date on which the Office
received the following indications and elements in English or Filipino: a.
An express or implicit indication that the registration of a mark is sought;
b. The identity of the applicant;
c. Indications sufficient to contact the applicant or his representative, if
any;
d. A reproduction of the mark whose registration is sought; and
e. The list of the goods or services for which the registration is sought.
[Sec. 127.1, RA 8293]
83
Trademark
Priority Right
An application for registration of a mark filed in the Philippines by a
person referred to in Section 3, and who previously duly filed an
application for registration of the same mark in one of those countries,
shall be considered as filed as of the day the application was first filed
in the foreign country (Provided, the Philippine application is filed within
6 months from the filing of the foreign application). [Sec. 131.1, RA 8293]

84
Trademark
No registration of a mark in the Philippines by a person described in this
section shall be granted until such mark has been registered in the
country of origin of the applicant. [Sec. 131.2, RA 8293]

85
Trademark
Significance of Priority Right
A Philippine application filed by another applicant after the priority date
but earlier than the foreign applicant’s actual filing may be refused
registration if it is identical to the mark with a priority date. [Agpalo, The
Law on Trademark, Infringement and Unfair Competition (2000)]

86
Trademark
Acquisition of Ownership of Trade Name
The ownership of a trade name is acquired through adoption and use.
Such names shall be protected, even prior to or without registration,
against any unlawful act committed by third parties, [Sec. 165.2 (a), RA
8293]

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. [Sec. 165.2 (b), RA 8293]

87
Trademark
A name or designation may not be used as a trade name:
1. If by its nature or the use to which such name or designation may be
put, it is contrary to public order or morals; and
2. If, in particular, it is liable to deceive trade circles or the public as to
the nature of the enterprise identified by that name. [Sec.
165.1, RA 8293]

Any change in the ownership of a trade name shall be made with the
transfer of the enterprise or part thereof identified by that name. [Sec.
165.4, RA 8293]
88
Trademark
Non-Registrable Marks Section 123, IPC

89
Trademark
DOCTRINE OF SECONDARY MEANING
Secondary meaning is acquired when a descriptive mark or a mark that
may serve in trade that consists of a shape or color becomes distinctive
because of its exclusive and continuous use in Philippine commerce.

90
Trademark
The Office may accept as prima facie evidence that the mark has
become distinctive, proof of substantially exclusive and continuous use
thereof by the applicant:
(i) In commerce in the Philippines
(ii) For 5 years before the date on which the
claim of distinctiveness is made. [Sec. 123.2, RA 8293]

91
Trademark
DISCLAIMERS
The Office may allow or require the applicant to disclaim an
unregistrable component of an otherwise registrable mark but such
disclaimer shall not prejudice or affect:
(i) The applicant’s or owner’s rights then existing or thereafter arising in
the disclaimed matter; nor
(ii) The applicant’s or owner’s right on another application of later date if
the disclaimed matter became distinctive of the applicant’s or owner’s
goods, business or services. [Sec. 126]

92
Trademark
DISCLAIMED WORDS
Words in a mark that are not being claimed for exclusive use, including:
1. Generic terms;
2. Descriptive words; and
3. Those that do not function as part of the trademark. [Rule 608, Rule
on Trademarks]
Note: Except for generic terms, disclaimed words can later on be
registered as part of the trademark if it acquires distinctiveness.

93
Trademark
Under the old trademark law or R.A. 166, actual commercial use of a
trademark in the Philippines was required prior to its registration. [RA
166, Sec. 2-A]
RA 8293 no longer requires prior use before filing the application (i.e., it
shifted to an intent to use system). However, the law still requires use of
the mark after filing.

94
Trademark
Declaration of Actual Use (DAU)
The applicant or the registrant is required to file a Declaration of Actual
Use of the mark after filing and registration.
Note: Failure to file declaration of actual use automatically results in the
denial of the registration or the cancellation of the registration by
operation of law. [Secs. 124.2& 145, RA 8293]

95
Trademark
Non-Use of Mark When Excused
Non-use caused by circumstances arising independently of the will of
the trademark owner shall be excused. However, non-use due to lack
of funds shall not excuse non-use of a mark. [Sec. 152.1, RA 8293]

96
Trademark
The ff. shall not be grounds for cancellation or removal of a mark:
1. Use which does not alter its distinctive character though the use is
different from the form in which it is registered. [Sec. 152.2, RA 8293]
2. Use of a mark in connection with one or more of the goods/services
belonging to the class in which the mark is registered. [Sec. 152.3, RA
8293]
3. Use of the mark by a company related to the applicant or registrant.
[Sec. 152.4, RA 8293]
4. Use of the mark by a person controlled by the registrant. [Sec. 152.4,
RA 8293]

97
Trademark
Note: The use of a mark by a company related with, or controlled by
the registrant or applicant shall inure to the latter's benefit: Provided,
that such mark is not used in such manner as to deceive the public.
[Sec.152.4, RA 8293]

98
Trademark
Declaration of Non-Use (DNU)
In lieu of a DAU, an applicant or registrant, when warranted, shall file a
Declaration of Non- Use indicating the grounds or justification therefor.
Non-use of a mark may be excused in the following cases:
1. Where the applicant or registrant is
prohibited from using the mark in commerce because of a requirement
imposed by another government agency prior to putting the goods in
the market or rendering of the services;

99
Trademark
2. Where a restraining order or injunction was issued by the Bureau of
Legal Affairs, the courts or quasi-judicial bodies prohibiting the use of
the mark; or
3. Where the mark is the subject of an opposition or cancellation case.
[Rule 211, Trademark Regulations of 2017]

100
Trademark
When to File Declaration of Non- Use (DNU)
1. Within three (3) years from filing date of the application;
2. Within the prescribed periods mentioned in Rule 204 when use of a
registered mark or a mark subject of an active application has been
interrupted or discontinued by a pending litigation. [See Rule 212,
TrademarkRegulations of 2017]

101
Trademark
Tests to Determine Confusing Similarity between Marks
1. Dominancy Test
The dominancy test considers the dominant features in the competing
marks in determining whether they are confusingly similar.

102
Trademark
Under the dominancy test:
● Greater weight is given to the similarity of the appearance of the
product arising from the adoption of the dominant features of the
registered mark.
● Minor differences between the registered mark and the mark in
question are disregarded.
● The aural and visual impressions created by the marks in the public
mind are considered.
● Little weight is given to factors like prices, quality, sales outlets and
market segments. [McDonald’s Corporation v. L.C. Big Mak Burger,
Inc., et al., G.R. No. 143993 (2004)]
103
Trademark
2. Holistic Test
The holistic test, to determine whether a trademark has been infringed,
considers the mark as a whole and not as dissected. If the buyer is
deceived, it is attributable to the marks as a totality, not usually to any
part of it.

104
Trademark
The court therefore should be guided by its first impression.
● The buyer acts quickly and is governed by a casual glance
● The value of such casual glance may be dissipated, as soon as the
court assumed to analyze carefully the respective features of the
mark. [Del Monte Corporation, et al. v. CA, G.R. No. L-78325 (1990)]

105
Trademark
SIMILARITY/ DISSIMILARITY OF GOODS and SERVICES
Goods or services may not be considered as being similar or dissimilar
to each other on the ground that, in any registration or publication by
the Office, they appear in different classes of the Nice Classification.
[Sec. 44.2, RA 8293]

106
Trademark
Related goods and services are those that, though non-identical or
non-similar, are so logically connected to each other that they may
reasonably be assumed to originate from one manufacturer or from
economically-linked manufacturers. [Mang Inasal Philippines v.IFP
Manufacturing Corporation, G.R. No. 221717, June 19, 2017]

The mere fact that one person has adopted and used a trademark on
his goods would not prevent the adoption and use of the same
trademark by others on unrelated articles of a different kind. [Taiwan
Kolin v. Kolin Electronics Co., G.R. No. 209843 (2015)]

107
Trademark
DOCTRINE OF RELATED GOODS/SERVICES
1. Goods are related when they:
a. Belong to the same class; or
b. Have the same descriptive properties or physical attributes; or
c. Serve the same purpose or flow through the same channel of trade.
2. The use of identical marks on non- competing but related goods
may likely cause confusion, as it can be reasonably assumed that they
originate from one manufacturer.

108
Trademark
3. Corollarily, the use of identical marks on non-competing and
unrelated goods is not likely to cause confusion. [Esso Standard
Eastern, Inc. v. Court of Appeals, G.R. No. L-29971 (1982)]

109
Trademark
Idem Sonans
The rule on idem sonans is also a test to resolve the confusing similarity
of trademarks.
● A mark with a different spelling but is similar in sound with a
registered mark when read, may be ruled as being confusingly-
similar with the said registered mark or senior mark.
● Two names are said to be "idem sonantes" if the attentive ear finds
difficulty in distinguishing them when pronounced. [Martin v. State,
541 S.W. 2d 605 (1976)]

110
Trademark
Similarity of sound is sufficient to rule that the two marks are
confusingly similar when applied to merchandise of the same
descriptive properties. [Marvex Commercial v. Director of Patent, G.R.
No. L-19297 (1966)]

111
Trademark
Well-Known Marks
A well-known mark is a mark which a competent authority of the
Philippines has designated to be well-known internationally and in the
Philippines. [Sec. 123.1(e), RA 8293]

112
Trademark
"Competent authority" for purposes of determining whether a mark is
well-known, means:
● The Court;
● The Director General;
● The Director of the Bureau of Legal Affairs [Rule 101 (d), Trademark
Regulations of 2017];
● Any administrative agency or office vested with quasi-judicial or
judicial jurisdiction to hear and adjudicate any action to enforce the
rights to a mark. [Dy v. Koninklijke Philips Electronics, N.V. G.R. No.
186088 (2017)]

113
Trademark
In determining whether a mark is well-known, account shall be taken of
the knowledge of the relevant sector of the public, rather than the
public at large, including knowledge in the Philippines which has been
obtained as a result of the promotion of the mark. [Sec. 123.1(e), RA
8293]

114
Trademark
Protection Extended to Well-Known Marks
The owner of a well-known mark has the right to be protected,
whether or not the mark is registered in the Philippines. [Sec. 123.1(e)]

115
Trademark
If the well-known mark is registered or not registered in the Philippines:
A mark cannot be registered if it is identical with, or confusingly similar
to, or constitutes a translation of an internationally well-known mark if
used for identical or similar goods or services. [Sec. 123.1(e)]

116
Trademark
If the well-known mark is registered in the Philippines:
A mark cannot be registered if it is identical with, or confusingly similar
to, or constitutes a translation of an internationally well-known mark
even if it is used for goods or services which are NOT similar to those
with respect to which registration is applied. [Sec. 123.1(f)]

117
Trademark
Other persons or entities cannot use the registered well-known mark
even for unrelated goods, provided that:
1. The use of the mark in relation to those goods or services would
indicate a connection between those goods or services, and the owner
of the registered mark; and
2. That the interests of the owner of the registered mark are likely to be
damaged by such use. [Sec. 123.1(f)]

118
Trademark
Rights Conferred by Registration
The owner of a registered mark shall have the exclusive right to
prevent all third parties not having the owner's consent from using in
the course of trade:
(i) Identical or similar signs or containers,
(ii) For goods or services which are identical or similar to those in
respect of which the trademark is registered,
(iii) Where such use would result in a likelihood of confusion.

119
Trademark
Exception: In cases of importation of drugs and medicines allowed
under Section 72.1 of this Act and of off-patent drugs and medicines,
third parties can import the same even without the owner’s consent,
provided that:
● Said drugs and medicines bear the registered marks
● The registered marks have not been tampered, unlawfully modified,
or infringed upon [Sec. 147.1, RA 8293 as amended by RA 9502]

120
Trademark
When Such Rights Are Conferred
The rights of the owner are conferred upon registration of the mark,
and a mark isdeemed registered on the 31st day from the publication
for purposes of opposition, provided no opposition is filed.
● On the 31st day from the publication for purposes of opposition (if no
opposition is filed)
● On the date the decision or final order giving due course to the
application becomes final and executory (if opposition is filed). [See
Rule 703, Trademarks Regulations of 2017]

121
Trademark
Certificates of Registration
A certificate of registration of a mark shall be prima facie evidence of:
1. The validity of the registration,
2. The registrant's ownership of the mark, and
3. The registrant's exclusive right to use the same in connection with the
goods or services and those that are related thereto specified in the
certificate. [Sec. 138, RA 8293]

122
Trademark
Duration
A certificate of registration shall remain in force for 10 years from
registration and may be renewed for periods of 10 years at its expiration
upon payment of the prescribed fee and upon filing of a request. [Sec.
145-146, RA 8293]

123
Trademark
Limitations on Such Rights
1. Duration (except that, inasmuch as the registration of a trademark
could be renewed every 10 years, provided a Declaration of Actual Use
is timely submitted, a trademark could conceivably remain registered
forever);
2. Territorial (except well-known marks);

124
Trademark
3. Fair Use: The 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:
a. Such use is confined to the purposes of mere identification or
information; and
b. Such use cannot mislead the public as to the source of the goods or
services. [Sec. 148, RA 8293]

125
Trademark
4. Prior User: 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. [Sec. 159.1, RA
8293]
5. Non-Use: Failure to file declaration of actual use automatically results
in the denial of the registration or the cancellation of the registration by
operation of law. [Sec. 124.2]

126
Trademark
Assignment and Transfer of Application and Registration
1. An application for registration of a mark, or its registration, may be
assigned or transferred with or without the transfer of the business
using the mark. [Sec. 149.1, RA 8293]
2. Such assignment or transfer shall, however, be null and void if it is
liable to mislead the public, particularly as regards the nature, source,
manufacturing process, characteristics, or suitability for their purpose,
of the goods or services to which the mark is applied. [Sec. 149.2, RA
8293]

127
Trademark
3. The assignment of the application for registration of a mark, or its
registration, shall be in writing and require the signatures of the
contracting parties. Transfers by mergers or other forms of succession
may be made by any document supporting such transfer. [Sec. 149.3,
RA8293]
4. Assignments and transfers shall have no effect against third parties
until they are recorded at the Office. [Sec. 149.5, RA 8293]

128
Trademark
Trademark infringement
The ff. shall be liable in a civil action for infringement:
1. Any person who shall, without the consent of the owner of the
registered mark, use in commerce any reproduction, counterfeit, copy,
or colorable imitation of a registered mark or the same container or a
dominant feature thereof:
a. In connection with the sale, offering for sale, distribution, advertising
of any goods or services, including other preparatory steps necessary
to carry out the sale of any goods or services on; or
b. In connection with which such use is likely to cause confusion, or to
cause mistake, or to deceive. [Sec. 155.1, RA 8293]
129
Trademark
2. Any person who shall, without the consent of the owner of the
registered mark:
a. Reproduce, counterfeit, copy or colorably imitate a registered mark
or a dominant feature thereof; and
b. Apply such reproduction, counterfeit, copy or colorable imitation to
labels, signs, prints, packages, wrappers, receptacles or
advertisements, intended to be used in commerce:
i. In connection with the sale, offering for sale, distribution, or advertising
of goods or services on; or
ii. In connection with which such use is likely to cause confusion, or to
cause mistake, or to deceive. [Sec. 155.2, RA 8293]
130
Trademark
ELEMENTS OF TRADEMARK INFRINGEMENT
1. The trademark being infringed is registered in the Intellectual
Property Office; however, in infringement of trade name, the same
need not be registered;
2. The trademark or trade name is reproduced, counterfeited, copied,
or colorably imitated by the infringer;
3. The infringing mark or trade name is used in connection with the sale,
offering for sale, or advertising of any goods, business or services; or
the infringing mark or trade name is applied to labels, signs, prints,
packages, wrappers, receptacles or advertisements intended to be
used upon or in connection with such goods, business or services;
131
Trademark
4. The use or application of the infringing mark or trade name is likely to
cause confusion or mistake or to deceive purchasers or others as to the
goods or services themselves or as to the source or origin of such
goods or services or the identity of such business;
5. It is without the consent of the trademark or trade name owner or the
assignee thereof. [Prosource International, Inc. vs. Horphag Research
Management S.A., G.R. No. 180073 (2009)]

Of these, it is the element of likelihood of confusion that is the

gravamen of trademark infringement. [McDonald’s Corporation v. L.C.
Big Mak Burger, Inc., et al., G.R. No. 143993 (2004)]
132
Trademark
DOCTRINE OF NATURAL EXPANSION OF BUSINESS
The protection to which the owner of a trademark is entitled extends to
cases in which the use of by a junior appropriator of a trademark of
trade name is likely to lead to a confusion of source.

133
Trademark
Damages
The owner of a registered mark may recover damages from any
person who infringes his rights, and the measure of the damages
suffered shall be either:
(i) The reasonable profit which the complaining party would have made,
had the defendant not infringed his rights; or
(ii) The profit which the defendant actually made out of the
infringement; or
(iii) In the event such measure of damages cannot be readily
ascertained with reasonable certainty, then the court may award as
damages –
134
Trademark
a. A reasonable percentage based upon the amount of gross sales of
the defendant; or
b. The value of the services in connection with which the mark or trade
name was used in the infringement of the rights of the complaining
party. [Sec. 156.1, RA 8293]

135
Trademark
Requirement of Notice
The owner of the registered mark shall not be entitled to recover profits
or damages unless the acts have been committed with knowledge that
such imitation is likely to cause confusion, or to cause mistake, or to
deceive.

136
Trademark
Such knowledge is presumed if:
● The registrant gives notice that his mark is registered by displaying
with the mark the words '"Registered Mark" or the letter R within a
circle or
● The defendant had otherwise actual notice of the registration. [Sec.
158, RA 8293]

137
Trademark
Penalties
Independent of the civil and administrative sanctions imposed by law, a
criminal penalty of imprisonment from two (2) years to five (5) years and
a fine ranging from Fifty thousand pesos (P50,000) to Two hundred
thousand pesos (P200,000), shall be imposed on any person who is
found guilty of committing any of the acts mentioned in Section 155,
Section 168 and Subsection 169.1. (Arts. 188 and 189, Revised Penal
Code). [Sec. 170, RA 8293]

138
Trademark
Unfair Competition
The ff. shall be guilty of unfair competition,and shall be subject to an
action therefor:
(i) Any person who shall employ deception or any other means contrary
to good faith, by which he shall pass off the goods manufactured by
him or in which he deals, or his business, or services for those of the
one having established such goodwill; or
(ii) Any person who shall commit any acts calculated to produce said
result. [Sec. 168.2, RA 8293]

139
Trademark
Particular acts of unfair competition:
a. Selling one’s goods and giving them the general appearance of
goods of another manufacturer or dealer, either:
● As to the goods themselves or in the wrapping of the packages in
which they are contained, or the devices or words thereon; or
● In any other feature of their appearance, which would be likely to
influence purchasers to believe that the goods offered are those of
a manufacturer or dealer, other than the actual manufacturer or
dealer. [Sec. 168.3(a), RA 8293]

140
Trademark
b. Clothing one’s goods with such appearance as shall deceive the
public and defraud another of his legitimate trade, or any subsequent
vendor of such goods or any agent of any vendor engaged in selling
such goods with a like purpose. [Sec.
168.3(a), RA 8293]
c. Using any artifice, or device, or employing any other means
calculated to induce the false belief that such person is offering the
services of another who has identified such services in the mind of the
public. [Sec. 168.3(b), RA 8293]
d. Making any false statement in the course of trade or committing any
other act contrary to good faith of a nature calculated to discredit the
goods, business or services of another. [Sec. 168.3(c), RA 8293]
141
Trademark

Infringement of Trademark or Unfair Competition

Trade Name
Unauthorized use of a trademark or Passing off of one’s goods as those
trade name of another
Fraudulent intent is unnecessary Fraudulent intent is essential

Prior registration of the trademark is Registration is not necessary

a prerequisite to the action

142
Trademark
Registration of marks under the Madrid Protocol
a. Coverage
What is the Madrid Protocol
The Madrid Protocol is a system facilitating, by way of a single
international application and registration:
1. The securing of protection of trademarks in multiple designated
territories that are members to the Protocol [Art 2]; and
2. The management of such registered trademarks

143
Trademark
Territorial Effect only on Designated Territories
The protection resulting from the international registration shall extend
to any Contracting Party only at the request of the person who files the
international application or who is the holder of the international
registration.
However, no such request can be made with respect to the
Contracting Party whose Office is the Office of origin. [Art.3bis]

144
Trademark
Rights conferred
An international registration is equivalent to a bundle of national
registrations in the designated Contracting Parties.
The rights conferred to the registered owner of the marks are the
respective exclusive rights granted by the trademark law of each
designated country.

145
Trademark
The protection of the mark in each of the designated Contracting
Parties is the same as if the mark had been the subject of an application
for registration filed direct with the Office of that Contracting Party. [Art.
4(1)]

146
Trademark
When protection under international registration lost
The protection resulting from the international registration may no
longer be invoked if, before the expiry of five years from the date of the
international registration, the basic application or the registration
resulting therefrom, or the basic registration, as the case may be, has
been 1) withdrawn, 2) has lapsed, 3) has been renounced or 4) has been
the subject of a final decision of rejection, revocation, cancellation or
invalidation, in respect of all or some of the goods and services listed in
the international registration.

147
Trademark
Requirements for registration
Prior application or registration
An applicant must have first 1) applied for an application (“basic
application”) for, or 2) registered (“basic registration”) the mark sought to
be internationally registered through his “home” national or regional
Intellectual Property Office before filing an international application.
The “Home” or Office of Origin
Must be in a territory that is: a Contracting Party to the Protocol (e.g.
Philippines), or within a Contracting Organization (e.g. European Union).

148
Trademark
Requirements for registration
a. Be a national of;
b. Be domiciled in; or
c. Have a real and effective industrial or commercial establishment in
the contracting state or contracting organization

149
Trademark
Three-step process
1. Application through the National or Regional IP Office.
2. Formal Examination by WIPO
3. Substantive Examination by National or Regional designated Offices

150
Trademark
Independence of International Registration
Upon expiry of a period of five years from the date of the international
registration, such registration shall become independent of the basic
application or the registration resulting therefrom, or of the basic
registration, as the case may be. [Art. 6(2)]

151
Trademark
Term of Protection
Registration of a mark at the International Bureau is effected for ten
years. [Art. 6(1)]
Renewal
Any international registration may be renewed for a period of ten years
from the expiry of the preceding period, by the mere payment of the
basic fee, supplementary, and complementary fees. [Art.7]

152
Asia Pacific Resources International Holdings Ltd v.
Paperone, Inc., G.R. Nos. 213365-66, December 10, 2018

Unfair Competition
Facts: Petitioner is engaged in the production, marketing, and sale of pulp and
premium wood free paper. It alleged that it is the owner of a well-known trademark,
PAPER ONE, with Certificate of Registration No. 4-1999-01957 issued on September 5,
2003. Petitioner claimed that the use of PAPERONE in respondent's corporate name
without its prior consent and authority was done in bad faith and designed to unfairly
ride on its good name and to take advantage of its goodwill. Respondent Paperone,
Inc., on its part, averred that it had no obligation to secure prior consent or authority
from petitioner to adopt and use its corporate name. The Department of Trade and
Industry (DTI) and the SEC had allowed it to use Paperone, Inc., thereby negating any
violation on petitioner's alleged prior rights.

153
Asia Pacific Resources International Holdings Ltd v.
Paperone, Inc., G.R. Nos. 213365-66, December 10, 2018

Issue: Whether or not the respondent is liable for unfair competition.

Held: Yes. Respondent Paperone Inc. is liable for unfair competition as its trade name
is confusingly similar with that of petitioner.

154
Asia Pacific Resources International Holdings Ltd v.
Paperone, Inc., G.R. Nos. 213365-66, December 10, 2018

There are two types of confusion, viz.: (1) confusion of goods (product confusion),
where the ordinarily prudent purchaser would be induced to purchase one product in
the belief that he was purchasing the other; and (2) confusion of business (source or
origin confusion), where, although the goods of the parties are different, the product,
the mark of which registration is applied for by one party, is such as might reasonably
be assumed to originate with the registrant of an earlier product; and the public would
then be deceived either into that belief or into the belief that there is some connection
between the two parties, though inexistent.[20] Thus, while there is confusion of goods
when the products are competing, confusion of business exists when the products
are non-competing but related enough to produce confusion of affiliation.[21]

155
Asia Pacific Resources International Holdings Ltd v.
Paperone, Inc., G.R. Nos. 213365-66, December 10, 2018

This case falls under the second type of confusion. Although we see a noticeable
difference on how the trade name of respondent is being used in its products as
compared to the trademark of petitioner, there could likely be confusion as to the
origin of the products. Thus, a consumer might conclude that PAPER ONE products
are manufactured by or are products of Paperone, Inc. Additionally, although
respondent claims that its products are not the same as petitioner's, the goods of the
parties are obviously related as they are both kinds of paper products.

156
157
Sunfire Trading v. Guy, G.R. No. 235279, March 02, 2020

Cancellation of assignment of trademark and Certificate of Registration

Facts: Northern Islands Company Inc. (NICI) filed against 3D Industries, Inc. (3D) a cvil
case for breach of contract, trademark infringement, and unfair competition.
Eventually, NICI prevailed in the civil case

On May 7, 2013, execution proceedings ensued to satisfy the judgment award in favor
of NICI. In the public auction of the trademark, private respondent Geraldine Guy
emerged as the highest bidder and a Certificate of Sale was issued in her
favor.1âшphi1 The trademark was paid for in the amount of P500,000.00 and
accordingly, the proceeds were released to NICI. Pursuant to the auction sale, the
court a quo ordered the Intellectual Property Office ("IPO") to cause registration of the
trademark in the name of private respondent. However, the IPO failed to comply
because based on the IPO record, the trademark had already been transferred by 3D
to petitioner.
158
Sunfire Trading v. Guy, G.R. No. 235279, March 02, 2020

Private respondent claimed that petitioner should be treated as identical with 3D since
it was owned and controlled by the same individual, and that the transfer was done to
impede execution over the trademark.

Upon investigation with the IPO, private respondent discovered that as early as April 4,
2009, a Deed of Assignment of the trademark was executed in petitioner's favor by
3D, as evidenced by a Deed of Assignment dated April 24, 2009. And, "[F]or some
unresolved conditions between 3D Industries and Sunfire however, the mark was
temporarily returned to 3D on October 22, 2010, but was permanently assigned back
to Sunfire Trading on February 12, 2013 xxx."

159
Sunfire Trading v. Guy, G.R. No. 235279, March 02, 2020

Issue: Whether or not the assignment of trademark and the corresponding Certificate
of Petitioner is valid.

Held: No. The transfer made during the pendency of the case of NICI and 3D is invalid.

160
Zuneca Pharmaceutical v. Natrapharm, G.R. No. 211850,
September 08, 2020

Acquisition through use abandoned

Facts: “ZYNAPS” (without an e) is owned by Zuneca. It is a drug for the treatment of
seizures like epilepsy. On the other hand, Natrapharm owns “ZYNAPSE” (with an e),
which is also a medicine, but for stroke. Zuneca never registered its trademark
“ZYNAPS” with the Intellectual Property (IP) Office, but it has been using it since 2004.
Meanwhile, Natrapharm has registered its trademark “ZYNAPSE” on 24 September
2007. Natrapharm sued Zuneca for trademark infringement for using a confusingly
similar trademark in the same field of drugs or medicine. Zuneca counter-sued and
alleged that Natrapharm was the one in bad faith since it (Natrapharm) knows
Zuneca’s usage of “ZYNAPS” as a mark since 2004 considering that they both
presented their products in the same pharmaceutical convention years prior.

161
Zuneca Pharmaceutical v. Natrapharm, G.R. No. 211850,
September 08, 2020

Issue: Whether or not Zuneca is liable for trademark infringement.

Held: No. The Supreme Court ruled that the only mode of acquiring ownership of a
trademark is through registration, and not use.

According to the SC: “(i) the language of the IP Code provisions clearly conveys the
rule that ownership of a mark is acquired through registration; (ii) the intention of the
lawmakers was to abandon the rule that ownership of a mark is acquired through use;
and (iii) the rule on ownership used in Berris and E.Y.

162
Zuneca Pharmaceutical v. Natrapharm, G.R. No. 211850,
September 08, 2020

Indeed, Section 122 of the IP Code states, “(T)he rights in a mark shall be acquired
through registration made validly in accordance with the provisions of this law.”

In effect, the SC abandoned its previous rulings that the first user in good faith defeats
the right of the first filer in good faith. Trademark is acquired solely through registration.

163
Prosel Pharmaceuticals & Distributors, Inc. v. Tynor Drug
House, Inc, G.R. No. 248021, September 30, 2020

Brand name

Facts: Petitioner alleged that CEEGEEFER was an improved version of its previous
product, Selvon C - a product that was granted a Bureau of Food and Drugs (BFAD)
Certificate of Product Registration on December 3, 1999.4 Petitioner claimed that since
it was a customary practice in the pharmaceutical industry for companies to use the
generic names of products as basis for creating brand names, it phonetically derived
CEEGEEFER from one of its ingredients, Chlorella5 Growth Factor (CGF). Being an
improved version of Selvon-C, the packaging used for CEEGEEFER was the same as
Selvon C's in order to expedite the approval of its application for registration of
CEEGEEFER with BFAD.

164
Prosel Pharmaceuticals & Distributors, Inc. v. Tynor Drug
House, Inc, G.R. No. 248021, September 30, 2020

However, petitioner received respondent's Demand Letter dated March 28, 2007
requiring petitioner to: (1) stop distributing CEEGEEFER products; (2) recall CEEGEEFER
products that were already distributed; and (3) execute an undertaking to stop using or
imitating respondent's trademark and design. The Demand Letter claimed that
CEEGEEFER was confusingly similar to respondent's multivitamin product, CHERIFER.

Issue: Whether or not Petitioner is liable for unfair competition.

Held: Yes. Petitioner's CEEGEEFER mark and packaging is a colorable imitation of

respondent's CHERIFER + Logo.

165
Copyright

Copyright is the legal protection extended to the owner of the rights in

an “original work”, which refers to every literary, scientific and artistic
production.

Copyright refers to the right granted by a statute to the proprietor of an

intellectual production to its exclusive use and enjoyment to the extent
specified in the statute. [Olaño v. Lim Eng Co, G.R. 195835 (2016)]

166
Copyright

1. Basic Principles
a. Works are Protected by the Sole Fact of Their Creation

PRINCIPLE OF AUTOMATIC PROTECTION

Copyright is vested from the very moment of creation irrespective of
their mode or form of expression, as well as of their content, quality
and purpose. [Sec. 171.1-172.2, RA 8293]

167
Copyright

b. Protection Extends Only to the Expression of an Idea, Not the Idea

Itself

No protection shall extend, under this law, to any idea, procedure,

system method or operation, concept, principle, discovery or mere
data as such, even if they are expressed, explained, illustrated or
embodied in a work. [Sec. 175, RA 8293]

168
Copyright

c. The Copyright is Distinct from the Property in the Material Object

Subject to it

Consequently:
(1) The transfer or assignment of the copyright shall NOT itself
constitute a transfer of the material object
(2) The transfer or assignment of the sole copy or of one or several
copies of the work shall NOT imply transfer or assignment of the
copyright. [Sec. 181, RA 8293]

169
Copyright

d. Copyright, like other intellectual property rights, is a Statutory Right

• The rights are limited to what the statute confers.

• It may be obtained and enjoyed only with respect to the subjects
and by the persons, and on terms and conditions specified in the
statute.
• It can cover only the works falling within the statutory enumeration
or description. [Pearl and Dean vs. Shoemart, G.R. No. 148222 (2003)]

170
Copyright

2. Copyrightable Works

a. Original Works (Sec. 172.1, RA 8293)

171
Copyright
When a work is considered original:
1. The work is an independent creation of the author; and
2. It must not be copied from the work of another.

A person must be the original creator of the work to be entitled to a

copyright. He must have created it by his own skill, labor and judgment
without directly copying or evasively imitating the work of another.
[Ching Kian Chuan vs. CA, G.R. No. 130360 (2001)]

Works are protected irrespective of their mode or form of expression.

[Sec. 172.2, RA 8293]
172
Copyright

Derivative Works
The following derivative works shall also be protected by copyright:
Dramatizations, translations, adaptations, abridgments, arrangements,
and other alterations of literary or artistic works; and Collections of
literary, scholarly or artistic works, and compilations of data and other
materials which are original by reason of the selection or coordination
or arrangement of their contents. [Sec. 173.1, RA 8293]

173
Copyright

Derivative works are protected as new works, provided they shall not:
(1) Affect the force of any subsisting copyright upon the original works
employed or any part thereof; or
(2) Be construed to imply any right to such use of the original works, or
to secure or extend copyright in such original works. [Sec. 173.2, RA
8293]

174
Copyright
3. Non-Copyrightable Works
a. Unprotected Subject Matter
(1) Any idea, procedure, system method or operation, concept,
principle, discovery or mere data as such, even if they are expressed,
explained, illustrated or embodied in a work;
(2) News of the day and other miscellaneous facts having the character
of mere items of press information;
(3) Any official text of a legislative, administrative or legal nature, as well
as any official translation thereof;

175
Copyright
(4) Pleadings;
(5) Original decisions of courts and tribunals
(Note: This pertains to the “original decisions” not the SCRA published
volumes since these are protected under derivative works under Sec.
173.1). [Sec. 175, RA 8293]

176
Copyright
Television newscasts are subject to copyright. Although news or the
events themselves are not copyrightable, expression of the news
particularly when it underwent a creative process is entitled to
copyright protection. [ABS-CBN Corp. vs. Gozon, G.R. No. 195956 (2015)]

The format or mechanics of a TV show is not copyrightable as

copyright does not extend to ideas, procedures, processes, systems,
methods of operation, concepts, principles or discoveries regardless of
the form in which they are described, explained, illustrated or
embodied. [Joaquin Jr. et al vs. Drilon, et al, G.R. No. 108946 (1999)]

177
Copyright
A compilation is not copyrightable per se, but it is copyrightable only if
its facts have been selected, coordinated, or arranged in such a way
that the resulting work as a while constitutes an original work of
authorship. Otherwise known as the Sweat of the Brow or Industrious
Collection Test. [Feist Publication vs. Rural Telephone Services, 499 U.S.
340 (1991)]

178
Copyright
3. Works of the Government of The Philippines
A work created by an officer or employee of the Philippine Government
or any of its subdivisions and instrumentalities, including government-
owned or controlled corporations as a part of his regularly prescribed
official duties. [Sec. 171.11, RA 8293]

179
Copyright
General Rule: No copyright shall subsist in any work of the Government.
Exceptions
1. When copyright is transferred by assignment or bequest in favor of
the government [Sec. 176.3];
2. Author of speeches, lectures, sermons, addresses and dissertations
shall have exclusive right of making a collection of his work.

180
Copyright
However, prior approval of the government agency or the office
wherein the work is created shall be necessary for the exploitation of
such work for profit. [Sec. 176.1]

Publication or republication by the Government in a public document of

any work in which copyright is subsisting shall not be taken:
(1) To cause any abridgment or annulment of the copyright; or
(2) To authorize any use or appropriation of
such work without the consent of the copyright owner. [Sec. 176.3, RA
8293]

181
Copyright
Note: Works made by an officer or employee of the Government as part
of his regularly prescribed duty do not enjoy copyright. Works made by
an employee of the government which is not as a part of his regularly
prescribed official duties (i.e. not considered a “Work of the Government”)
may enjoy copyright.

182
Copyright
c. Works of the Public Domain

Works of the public domain are non- copyrightable.

To this class of works belong:
1. Works, whose term of copyright has expired;
2. Works wherein the copyright over them are waived by the owner in
favor of the public; and
3. Works which did not enjoy copyright protection in the first place, as in
the case of unregistered works made under previous laws that required
the registration of copyright [See: Santos vs. McCullough Printing
Company, G.R. No. L-19439 (1964)]

183
Copyright
d. Useful Articles

A “useful article” is defined as an article “having intrinsic utilitarian function

that is not merely to portray the appearance of the article or to convey
information” is excluded from copyright eligibility. The only instance
when a useful article may be the subject of copyright protection is when
it incorporates a design element that is physically or conceptually
separable from the underlying product. [Olaño v. Lim Eng Co, G.R. No.
195835 (2016)]

184
Copyright
USEFUL ARTICLE DOCTRINE

Works whose sole purpose is utilitarian, and have no separate artistic

value are non- copyrightable works.

In contrast, a work of applied art, which has utilitarian functions, but has
an identifiable artistic work or creation incorporated thereto, can be the
subject of a copyright to the extent that the design features:
○ Can be identified separately from, and
○ Are capable of existing independently of the utilitarian aspects of the
article. [Brandir Int’l v. Cascade Pacific, 834 F. 2nd 1142 (2nd Cir.) (1987)]

185
Copyright
Denicola Test: Conceptual Separability (Aesthetics v. Functionality)
(1) The work cannot be copyrighted if its design elements reflect a
merger of aesthetic and functional considerations, and the artistic
aspects of the work cannot be conceptually separable from the
utilitarian aspects.
(2) Conceptual separability exists where design elements can be
identified as reflecting the designer's artistic judgment, exercised
independently of functional influences
(3) The relevant question should be whether the design of a useful
article, however intertwined with the article’s utilitarian aspects, causes
an ordinary reasonable observer to perceive an aesthetic concept not
related to the article’s use. [BrandirInt’l v. Cascade Pacific, 834 F. 2nd 1142
(2nd Cir.) (1987)]
186
Copyright
4. Rights of Copyright Owner

Works are protected by the sole fact of their creation, irrespective of

their mode or form of expression, as well as of their content, quality and
purpose. [Sec. 172.2, RA 8293]
The issuance of the certificates of registration and deposit as provided
by Sec. 2, Rule 7 of the Copyright Safeguards and Regulations, are
purely for recording the date of registration and deposit of the work, and
are not conclusive as to copyright ownership (nor does it determine the
time when copyright vests). [Manly Sportwear v. Dadodette Enterprises,
G.R. No. 165306 (2005)]

187
Copyright
a. Copyright or Economic Rights

1. Reproduction of the work or substantial portion of the work;

2. Dramatization, translation, adaptation, abridgment, arrangement or
other transformation of the work;
3. The first public distribution of the original and each copy of the work
by sale or other forms of transfer of ownership;
4. Rental of the original or a copy of:
a. An audiovisual or cinematographic work,
b. A work embodied in a sound recording,
c. A computer program,
d. A compilation of data and other materials or a musical work in
graphic form
188
Copyright
e. Irrespective of the ownership of the original or the copy which is the
subject of the rental;
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. [Sec. 177, RA 8293]

189
Copyright
Publisher’s Copyright

In addition to the right to publish granted by the author, his heirs, or

assigns, the publisher shall have a copyright consisting merely of the
right of reproduction of the typographical arrangement of the published
edition of the work. [Sec.174, RA 8293]

190
Copyright
Copyright in a work of architecture

The copyright in any such work shall include:

○ The right to control the erection of any building which reproduces the
whole or a substantial part of the work either in its original form or in
any form recognizably derived from the original

However, it shall not include:

○ The right to control the reconstruction or rehabilitation in the same
style as the original of a building to which that copyright relates. [Sec.
186, RA 8293]

191
Copyright
Communication to the Public of the Copyrighted Works
This includes point-to-point transmission of a work, including:
(1) Video on demand, and
(2) Providing access to an electronic retrieval system
- Such as computer databases, servers, or similar electronic storage
devices.

Broadcasting, rebroadcasting, retransmission by cable, and broadcast

and retransmission by satellite are all acts of “communication to the
public” within the meaning of the IPC. [Rule 11, Copyright Safeguards and
Regulations]

192
Copyright
First Public Distribution of Work

An exclusive right of first distribution of work includes all acts involving

distribution, specifically including the first importation of an original and
each copy of the work into the jurisdiction of the Republic of the
Philippines. [Rule 12, Copyright Safeguards and Regulations]

193
Copyright
b. Moral Rights

The author of a work shall, independently of the economic rights in

Section 177 or the grant of an assignment or license with respect to such
right, have the right:
1. To require that the authorship of the works be attributed to him, in
particular, the right that his name, as far as practicable, be indicated in a
prominent way on the copies, and in connection with the public use of
his work; [Sec. 193.1, RA 8293]
2. To make any alterations of his work prior to, or to withhold it from
publication; [Sec. 193.2, RA 8293]

194
Copyright
3. To object to any distortion, mutilation or other modification of, or other
derogatory action in relation to, his work which would be prejudicial to
his honor or reputation; [Sec. 193.3, RA 8293]
4. To restrain the use of his name with respect to any work not of his
own creation or in a distorted version of his work. [Sec. 193.4, RA 8293]

195
Copyright
ASSIGNMENT OR LICENSE OF MORAL RIGHTS
Moral rights cannot be assigned or licensed. [Sec. 198, RA 8293]

WAIVER OF MORAL RIGHTS

While Moral Rights cannot be assigned or licensed, it can be waived.
[Sec. 198, RA 8293]

General Rule: Moral rights can be waived in writing, expressly stating

such waiver. [Sec. 195, RA 8293]

196
Copyright
Exceptions
Even if made in writing, waiver is still not valid if:
1. Use of the name of the author, title of his
work, or his reputation with respect to any version or adaptation of his
work, which because of alterations substantially tends to injure the
literary or artistic reputation of another author; [Sec. 195.1, RA 8293]
2. It uses the name of the author in a work that he did not create. [Sec.
195.1, RA 8293]

The right of attribution is waived by contribution to a collective work

unless such is expressly reserved. [Sec. 196, RA 8293]

197
Copyright
c. Right to Transfer, Assign, or License
The author has the right to assign or license the copyright and/or the
material object in whole or in part, and they allow the owner to derive
financial reward from the use of his works by others. [Sec. 180.1, RA 8293
as amended by RA 10372]

198
Copyright
Rights of Assignee or Licensee
The assignee or licensee is entitled to all the rights and remedies which
the assignor or licensor had with respect to the copyright, within the
scope of the assignment or license. [Sec. 180.1]

The submission of a literary, photographic or artistic work to a

newspaper, magazine or periodical for publication shall constitute only a
license to make a single publication unless a greater right is expressly
granted. If two (2) or more persons jointly own a copyright or any part
thereof, neither of the owners shall be entitled to grant licenses without
the prior written consent of the other owner or owners. [Sec. 180.3, RA
8293]
199
Copyright
Filing of Assignment or License
An assignment or exclusive license may be filed in duplicate with the
National Library upon payment of the prescribed fee for registration in
books and records kept for the purpose. [Sec. 182, RA 8293]

200
Copyright
d. Rights to Proceeds on Subsequent Transfers (Droit De Suite or Follow
Up Rights)
In every sale or lease of an original work of painting or sculpture or of
the original manuscript of a writer or composer, subsequent to the first
disposition thereof by the author, the author or his heirs shall have an
inalienable right to participate in the
gross proceeds of the sale or lease to the extent of five percent (5%)

201
Copyright
Duration of Right
This right shall exist during the lifetime of the author and for 50 years
after his death. [Sec. 200, RA 8293]

Works not covered

Prints, etchings, engravings, works of applied art, or works of similar kind
wherein the author primarily derives gain from the proceeds of
reproductions. [Sec. 201, RA 8293]

202
Copyright
e. Related Rights (Neighboring Rights)

Performer’s Rights
1) As regards their performances, the right of authorizing:
a) The broadcasting and other communication to the public of their
performance; and
b) The fixation of their unfixed performance. [Sec. 203.1, RA 8293]
c) Such right shall be maintained and exercised 50 years after his death,
by his heirs, and in default of heirs, the government, where protection is
claimed. [Sec. 204.2, RA 8293]

203
Copyright
2) The right of authorizing the direct or indirect reproduction of their
performances fixed in sound recordings, or audiovisual works or fixations
in any manner or form; [Sec. 203.2, RA 8293, as amended by 10372]
3) The right of authorizing the first public distribution of the original and
copies of their performance fixed in the sound recording or audiovisual
works or fixations through sale or rental or other forms of transfer of
ownership; [Sec. 203.3, RA 8293, as amended by RA 10372]
a) Subject to the provisions of Section 206
4) The right of authorizing the commercial rental to the public of the
original and copies of their performances fixed in sound recordings or
audiovisual works or fixations, even after distribution of them by, or
pursuant to the authorization by the performer; [Sec. 203.4, RA 8293, as
amended by RA 10372] 204
Copyright
5) The right of authorizing the making available to the public of their
performances fixed in sound recordings or audiovisual works or fixations,
by wire or wireless means, in such a way that members of the public
may access them from a place and time individually chosen by them;
[Sec. 203.5, RA 8293, as amended by RA 10372]
6) The right to claim to be identified as the performer of his
performances, and to object to any distortion, mutilation or other
modification of his performances that would be prejudicial to his
reputation, as regards his live aural performances or performances fixed
in sound recordings or audiovisual works or fixations;
a) Exception: Where the omission is dictated by the manner of the use of
the performance. [Sec. 204.1, RA 8293, as amended by RA 10372]
205
Copyright
7) The right to an additional remuneration equivalent to at least five
percent (5%) of the original compensation he or she received for the first
communication or broadcast, in every communication to the public or
broadcast of a performance subsequent to the first communication or
broadcast thereof by the broadcasting organization. [Sec. 206, RA 8293]
a) Unless otherwise provided in the contract

206
Copyright
Rights of Producers of Sound Recordings
1. The right to authorize the direct or indirect reproduction of their sound
recordings, in any manner or form; the placing of these reproductions in
the market and the right of rental or lending; [Sec. 208.1, RA 8293]
2. The right to authorize the first public distribution of the original and
copies of their sound recordings through sale or rental or other forms of
transferring ownership; [Sec. 208.2, RA 8293]
3. The right to authorize the commercial rental to the public of the
original and copies of their sound recordings, even after distribution by
them by or pursuant to authorization by the producer. [Sec. 208.3, RA
8293]

207
Copyright
Single Equitable Remuneration
The right to be paid a single equitable remuneration by the user to be
shared withthe performers equally, in the absence of any agreement,
when a sound recording published for commercial purposes, or a
reproduction of such sound recording, is:
a. Used directly for broadcasting or
b. Used for other communication to the public; or
c. Publicly performed with the intention of making and enhancing profit.
[Sec. 209, RA 8293]

208
Copyright
Rights of Broadcasting Organizations
1. The rebroadcasting of their broadcasts; [Sec. 211.1, RA 8293]
2. The recording in any manner, including the making of films or the use
of video tape, of their broadcasts for the purpose of communication to
the public of television broadcasts of the same; [Sec. 211.2, RA 8293]
3. The use of such records for fresh transmissions or for fresh recording.
[Sec. 211.3, RA 8293]

209
Copyright
Must-Carry Rule
This rule prevents cable television companies from excluding
broadcasting organization especially in those places not reached by
signal. Also, the rule prevents cable television companies from depriving
viewers in far-flung areas the enjoyment of programs available to city
viewers. [ABS-CBN Broadcasting vs. Philippine Multi-Media System, G.R.
Nos. 175769-70 (2009)]

210
Copyright
5. Rules on Ownership of Copyright

a. Ownership of Copyright
Work Ownership

Single Creator of an Original Work Belongs to the author of the work [Sec.
178.1, RA 8293]
Works of Joint Authorship Belongs of the co-authors; in the absence
of agreement, their rights shall be
governed by the rules on co-ownership.
However, if the work consists of parts that
can be used separately and identified, the
author of each part owns the copyright of
the part he has created. [Sec. 178.2, RA
8293]
211
Copyright
Work Ownership

Work created during the course of Belongs to the employee if the creation is
employment not a part of his regular duties, even if he
used the time, facilities and materials of the
employer. However, copyright belongs to
the employer if the work is in the
performance of the employee’s regular
duties unless there is an agreement to the
contrary. [Sec. 178.3, RA 8293]
Work commissioned by a person other than The person who commissioned the work
the employer and pays for it holds ownership of the work
per se, but copyright remains with the
creator unless there was a stipulation to the
contrary. [Sec. 178.4, RA 8293]

212
Copyright
Work Ownership

Audio visual works Belongs to the producer, author of the

scenario, composer of the music, film
director, and author of the adapted work.
However, subject to stipulations, the
producers shall exercise the copyright as
may be required for the exhibition of the
work, except for the right to collect license
fees for the performance of musical
compositions in the work. [Sec. 178.5, RA
8293]
Letters Belongs to the writer, but the court may
authorize their publication or dissemination
of the public good or interest of justice
requires, pursuant to Art. 723, New Civil
Code. [Sec. 178.6, RA 8293] 213
Copyright
Work Ownership

Anonymous and pseudonymous works Publishers are deemed to represent the

authors, unless the contrary appears, the
pseudonyms or adopted names leave no
doubt as to theauthor’s identity or if the
author discloses his identity. [Sec. 179, RA
8293]
Collective works A contributor is deemed to have waived his
right unless he expressly reserves it. [Sec.
196, RA 8293]

214
Copyright
b. Presumption of Ownership

The natural person whose name is indicated on a work in the usual

manner as the author shall, in the absence of proof to the contrary, be
presumed to be the author of the work.

The person or body corporate, whose name appears on an audio-visual

work in the usual manner, shall, in the absence of proof to the contrary,
be presumed to be the maker of said work. [Sec. 219, RA 8293]

215
Copyright
Use of Pseudonyms

This provision shall be applicable even if the name is a pseudonym,

where the pseudonym leaves no doubt as to the identity of the author.
[Sec. 219, RA 8293]

216
Copyright
c. Transfer or Assignment of Copyright

The copyright may be assigned or licensed in whole or in part. [Sec.

180.1, RA 8293]
○ The copyright is not deemed assigned or licensed inter vivos in whole
or in part unless there is a written indication of such intention. [Sec.
180.2, RA 8293 as amended by RA 10372]
○ If two or more persons jointly own a copyright or any part thereof,
neither of the owners shall be entitled to grant licenses without the
prior written consent of the other owner or owners. [Sec. 180.3, RA
8293]

217
Copyright
Submitted Work

General Rule: The submission of a literary, photographic or artistic work

to a newspaper, magazine or periodical for publication shall constitute
only a license to make a single publication.

Exception: Unless a greater right is expressly granted. [Sec. 180.3, RA

8293]

218
Copyright
d. Collective Management Organizations (CMO)

CMOs are entities composed of artists, writers, composers and other

creators, or copyright/related rights holders that manage the bundle of
copyrights that their members own by providing the legal platform to
efficiently enforce their intellectual property rights.

219
Copyright
The owners of copyright and related rights or their heirs may designate a
society of artists, writers, composers and other right-holders to
collectively manage their economic or moral rights on their behalf.
For the said societies to enforce the rights of their members, they shall
first secure the necessary accreditation from the Intellectual Property
Office. [Sec. 183, RA 8293 as amended by RA 10372]

220
Copyright
6. Limitations on Copyright

a. Fair Use

DOCTRINE OF FAIR USE

The fair use of copyrighted work for criticism, news reporting, teaching
(including multiple copies for classroom use), research and similar
purposes is not an infringement of copyright. [Sec. 185.1, RA 8293]

221
Copyright
Decompilation

Refers to the reproduction of the code and translation of the forms of

the computer program to achieve the inter-operability of an
independently created computer program with other programs. This
may also constitute fair use. [Sec. 185.1, RA 8293]

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Copyright
Factors to consider in determining Fair Use
a. The purpose and character of the use, including whether such use is
of a commercial nature or is for non-profit educational purposes;
b. The nature of the copyrighted work;
c. The amount and substantiality of the portion used in relation to the
copyrighted work as a whole; and
d. The effect of the use upon the potential market for or value of the
copyrighted work [Sec. 185.1, RA 8293; Harper & Row v. Nation
Enterprise, 471 US 539, (1985)]

223
Copyright
The fact that a work is unpublished shall not by itself bar a finding of fair
use if such finding is made upon consideration of all the above factors.
[Sec. 185.2, RA 8293]

Commercial use of the copyrighted work can be weighed against fair

use. [ABS–CBN Corp. vs. Gozon, G.R. No. 195956 (2015)]

224
Copyright
Parody, like other comment and criticism, may claim fair use. The more
transformative the new work, the less will be the significance of other
factors, like commercialism. The heart of any parodist's claim to quote
from existing material is the use of some elements of a prior author's
composition to create a new one that, at least in part, comments on that
author's work. [Campbell v. Acuff-Rose Music Inc., 510 U.S. 569 (1994)]

225
Copyright
b. Limitations on Protection of Neighboring Rights
Sections 203, 208 and 209 shall not apply where the acts referred to in
those Sections are related to:
1. The use by a natural person exclusively for his own personal purposes;
2. Using short excerpts for reporting current
events;
3. Use solely for the purpose of teaching or for scientific research; and
4. Fair use of the broadcast subject to certain conditions. [Sec. 212, RA
8293]

226
Copyright
c. Term of Protection

Duration of Copyright
Works Terms

Original Literary and Artistic Works Lifetime of author and for 50 years
including Posthumous Works after his death [Sec. 213.1, RA
8293]
Derivative Works including Lifetime of author and for 50 years
Posthumous Works after his death [Sec. 213.1, RA
8293]
Joint Authorship Lifetime of the last surviving author
and for 50 years after his death
[Sec. 213.2, RA 8293]
227
Copyright
Works Terms

Anonymous or Pseudonymous 50 years from date of first lawful

Works publication [Sec. 213.3, RA 8293]
Applied Art 25 years from date of making [Sec.
213.4, RA 8293]
Published Photographic Works 50 years from publication [Sec.
213.5, RA 8293]
Unpublished Photographic Works 50 years from the making [Sec.
213.5, RA 8293]
Published Audio-visual Works 50 years from publication [Sec.
213.6, RA 8293]
Unpublished Audio- visual Works 50 years from the making [Sec.
213.6, RA 8293]
228
Copyright
The term of protection subsequent to the death of the author shall run
from the date of his death or of publication, but such terms shall always
be deemed to begin on the first day of January of the year following the
event which gave rise to them. [Sec. 214, RA 8293]

229
Copyright
Term of Protection of Moral Rights

Moral Rights Term

Right of Attribution or Right of Lifetime of author and in perpetuity

Paternity (Sec. 193.1) after his death [Sec. 198.1, RA 8293
as amended by RA 10372]
Sec. 193.2- 193.4 Coterminous with the economic
rights. [Sec. 198, RA 8293 as
amended by RA 10372]

230
Copyright
Term of Protection of Neighboring Rights

Works Term

For performances not incorporated 50 years from the end of the year in
in recordings which the performance took place
[Sec. 215.1(a), RA 8293]
For sound or image and sound 50 years from the end of the year in
recordings and for performances which the recording took place.
incorporated therein [Sec. 215.1 (b), RA 8293]
Broadcasts 20 years from the date the
broadcast took place [Sec. 215.2,
RA 8293]

231
Copyright
7. Copyright Infringement

A person infringes a right protected under this Act when one:

a. Directly commits an infringement;
b. Benefits from the infringing activity of another person who commits an
infringement if the person benefiting:
i. Has been given notice of the infringing activity; and
ii. Has the right and ability to control the activities of the other person;
c. With knowledge of infringing activity, induces, causes or materially
contributes to the infringing conduct of another. [Sec.
216, RA 8293 as amended by RA 10372]

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Copyright
It also includes the act of any person who at the time when copyright
subsists in a work has in his possession an article which he known, or
ought to know, to be an infringing copy of the work for the purpose of:
a. Selling, letting for hire, or by way of trade offering or exposing for
sale, or hire, the article
b. Distributing the article for purpose of trade, or for any other purpose
to an extent that will prejudice the rights of the copyright owner in the
work; or
c. Trade exhibit of the article in public. [Sec. 217.3, RA 8293]

233
Copyright
What Constitutes Infringement

Infringement 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.
It can cover a whole range of acts from copying, assembling, packaging
to marketing, including the mere offering for sale of counterfeit goods.
[Habana et al vs. Robles et al., G.R. No. 131522 (1999)]

234
Copyright
Substantial Reproduction
It is not necessarily required that the entire copyrighted work, or even a
large portion of it, be copied. If so much is taken that the value of the
original work is substantially diminished, there is an infringement of
copyright and to an injurious extent, the work is appropriated.
In cases of infringement, copying alone is not what is prohibited. The
copying must produce an “injurious effect.” [Habana et al vs. Robles et al.,
G.R. No. 131522 (1999)]

235
Copyright
Knowledge not an Element of Infringement
Knowledge of infringement is material only when a person is charged of
aiding and abetting a copyright infringement. The liability for copyright
infringement is in the nature of strict liability. It does not require mens rea
or culpa. [ABS–CBN Corp vs. Gozon, G.R. No. 195956 (2015)]

236
Copyright
What does not constitute copyright infringement – Section 184,RA 8293

237
Copyright
Reproduction of Published Work

General Rule: The private reproduction of a published work in a single

copy, where the reproduction is made by a natural person exclusively
for research and private study, shall be permitted, without the
authorization of the owner of copyright in the work. [Sec. 187.1, RA 8293]

238
Copyright
Exceptions: Such permission shall not extend to:
a. A work of architecture in the form of building or other construction;
b. An entire book, or a substantial part thereof, or of a musical work in
graphic form by reprographic means;
c. A compilation of data and other materials; d. A computer program
except as provided in Section 189; and
e. Any work in cases where reproduction would unreasonably conflict
with a normal exploitation of the work or would otherwise unreasonably
prejudice the legitimate interests of the author. [187.2, RA 8293]

239
Copyright
Reprographic Reproduction by Libraries

Any library or archive whose activities are not for profit may, without the
authorization of the author of copyright owner, make a single copy of
the work by reprographic reproduction:
a. Where the work by reason of its fragile character or rarity cannot be
lent to user in its original form;
b. Where the works are isolated articles contained in composite works or
brief portions of other published works and the reproduction is
necessary to supply them, when this is considered expedient, to
persons requesting their loan for purposes of research or study instead
of lending the volumes or booklets which contain them; and
240
Copyright
c. Where the making of such a copy is in order to preserve and, if
necessary in the event that it is lost, destroyed or rendered unusable,
replace a copy, or to replace, in the permanent collection of another
similar library or archive, a copy which has been lost, destroyed or
rendered unusable and copies are not available with the publisher. [Sec.
188.1, RA 8293]

241
Copyright
It shall not be permissible to produce a volume of a work published in
several volumes or to produce missing tomes or pages of magazines or
similar works, unless the volume, tome or part is out of stock:
Provided, That every library which, by law, is entitled to receive copies
of a printed work, shall be entitled, when special reasons so require, to
reproduce a copy of a published work which is considered necessary
for the collection of the library but which is out of stock. [Sec. 188.2, RA
8293]

242
Copyright
Reproduction of Computer Program
The reproduction in one back-up copy or adaptation of a computer
program shall be permitted, without the authorization of the author of, or
other owner of copyright in, a computer program, by the lawful owner
of that computer program: Provided, That the copy or adaptation is
necessary for:
a. The use of the computer program in conjunction with a computer for
the purpose, and to the extent, for which the computer program has
been obtained; and
b. Archival purposes, and, for the replacement of the lawfully owned
copy of the computer program in the event that the lawfully obtained
copy of the computer program is lost, destroyed or rendered unusable.
[Sec. 189.1, RA 8293]
243
Copyright
Importation for Personal Purposes
Sec. 190.2 of RA 8293 that limited the importation of books was repealed
by RA 10372. RA 10372 expressly limited the prohibition to import or
export only to counterfeit goods.

244
Copyright
a. Remedies for infringement

(1) An injunction restraining such infringement; [Sec. 216.1(a)]

(2) Actual damages, including legal costs and due to the infringement, as
well as the profits the infringer may have made due to such
infringement;
- In proving profits: The plaintiff shall be required to prove sales only,
and the defendant shall be required to prove every element of cost
which he claims [Sec. 216.1(b)]
(3) Such damages which to the court shall appear to be just and shall not
be regarded as penalty, in lieu of actual damages and profits; [Sec.
216.1(b)]
245
Copyright
(4) Impounding during the pendency of the action, upon such terms and
conditions as the court may prescribe, sales invoices and other
documents evidencing sales, all articles and their packaging alleged to
infringe a copyright and implements for making them; [Sec. 216.1(c)]
(5) Deliver under oath for destruction without any compensation all
infringing copies or devices, as well as all plates, molds, or other means
for making such infringing copies as the court may order; [Sec. 216.1(d)]
(6) Such other terms and conditions, including the payment of moral and
exemplary damages, which the court may deem proper, wise and
equitable and the destruction of infringing copies of the work even in the
event of acquittal in a criminal case; [Sec. 216.1(e)]
(7) Criminal liability.
246
Copyright
The copyright owner may elect, at any time before final judgment is
rendered, to recover instead of actual damages and profits, an award of
statutory damages for all infringements involved in an action in a sum
equivalent to the filing fee of the infringement action but not less than
Php50,000.00. In awarding statutory damages, the court may consider
the following factors:
(1) The nature and purpose of the infringing act;
(2) The flagrancy of the infringement;
(3) Whether the defendant acted in bad faith;
(4) The need for deterrence;
(5) Any loss that the plaintiff has suffered or is likely to suffer by reason of
the infringement; and
247
Copyright
(6) Any benefit shown to have accrued to the defendant by reason of
the infringement.

In case the infringer was not aware and had no reason to believe that his
acts constitute an infringement of copyright, the court in its discretion
may reduce the award of statutory damages to a sum of not more than
Ten thousand pesos (Php10,000.00). [Sec. 216.1]

248
Copyright
Note: The amount of damages to be awarded shall be doubled against
any person who:
i. Circumvents effective technological measures; or
ii. Having reasonable grounds to know that it will induce, enable,
facilitate or conceal the infringement:
a. Remove or alter any electronic rights management information for a
copy of a work, sound recording, or fixation of a performance; or
b. Distribute, import for distribution, broadcast, or communicate to the
public works or copies of works without authority, knowing that
electronic rights management information has been removed or
altered without authority. [Sec. 216.1 (b)]

249
Copyright
However, no damages may be recovered under this Act after the lapse
of four (4) years from the time the cause of action arose. [Sec. 226, RA
8293]

250
Copyright
b. Criminal penalties

Any person infringing any right secured by provisions of Part IV of this

Act or aiding or abetting such infringement shall be guilty of a crime
punishable by:
(a) Imprisonment of one (1) year to three (3) years plus a fine ranging from
Fifty thousand pesos (P50,000) to One hundred fifty thousand pesos
(P150,000) for the first offense.
(b) Imprisonment of three (3) years and one (1) day to six (6) years plus a
fine ranging from One hundred fifty thousand pesos (P150,000) to Five
hundred thousand pesos (P500,000) for the second offense.

251
Copyright
(c) Imprisonment of six (6) years and one (1) day to nine (9) years plus a
fine ranging from Five hundred thousand pesos (P500,000) to One
million five hundred thousand pesos (P1,500,000) for the third and
subsequent offenses.
(d) In all cases, subsidiary imprisonment in cases of insolvency. [Sec.
217.1, RA 8293 as amended by RA 10372]

252
Copyright
Certificate of Registration and Deposit

The issuance of the certificates of registration and deposit as provided

by Sec. 2, Rule 7 of the Copyright Safeguards and Regulations, are
purely for recording the date of registration and deposit of the work, and
are not conclusive as to copyright ownership (nor does it determine the
time when copyright vests). [Manly Sportswear v. Dadodette Enterprises,
G.R. No. 165306 (2005)]

253
Copyright
Purpose of Registration and Deposit: Completing the records of the
National Library and the Supreme Court Library; provided, that only
works in the field of law shall be deposited with the Supreme Court
Library. [Sec. 191, RA 8293 as amended by RA 10372]

The National Library has deputized the IPOPHL to receive deposited

works in its behalf.

254
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255
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