Intellectual Property Office

By: Group 5 Baldeo, Rexcia De La Cruz, Alexandria Go, Natasha Magulta, Lara Pedayo, Aimee

Intellectual Property Office (IPO)

The agency of the government in charge of the implementation of the Intellectual Property Code. It replaced the Bureau of Patents, Trademarks and Technology Transfer.

IPSO Offices in the Philippines

Baguio Angeles Legaspi Cebu Davao General Santos

IP Philippines VISION
An Intellectual Property-conscious Philippines in a demystified, development-oriented, and democratized IP System by 2020(2020 VISION: 3D IP)

IP Philippines MISSION
We are a knowledge-driven government organization that works towards economic, technological, and socio-cultural development by communicating, enabling, and ensuring the effective use of the Intellectual Property System in all levels of society for the creation, protection, utilization, and enforcement of Intellectual Property.

IP Philippines STRATEGIC GOALS

SG1 Deliver quality and timely patents, trademarks, and other registrations SG2 Provide speedy, quality, and effective legal remedies and be the forum of choice for IP dispute resolution SG3 Provide IP-related business development and technology transfer services SG4 Institutionalize copyright support services SG5 Increase the level of appreciation of, respect for, and utilization of IP SG6 Lead the advocacy for legal and policy infrastructures to address emerging national and global demands of the IP system

SG7 Develop and maintain a highly-motivated, competent, and cohesive workforce committed to serve with professionalism, transparency, and integrity a SG8 Provide a conducive work environment that supports professional growth and promotes work-life balance

Division of the IPO

It is divided into six [6] Bureaus, namely: [1] [2] [3] [4] [5] [6] Bureau of Patents; Bureau of Trademarks; Bureau of Legal Affairs; Documentation, Information and Technology Transfer Bureau; Management Information System and EDP Bureau; and Administrative, Financial and Personnel Services Bureau.

Functions of the Intellectual Property Office Examine applications for the grant of letters patent for inventions and register utility models and industrial designs; Examine applications for the registration of marks, geographic indication and integrated circuits; Register technology transfer arrangements and settle disputes involving technology transfer payments covered by the provisions of Part II, Chapter IX on Voluntary Licensing and develop and implement strategies to promote and facilitate technology transfer; Promote the use of patent information as a tool for technology development; Publish regularly in its own publication the patents, marks, utility models and industrial designs, issued and approved, and the technology transfer arrangements registered; Administratively adjudicate contested proceedings affecting intellectual property rights; and Coordinate with other government agencies and the private sector efforts to formulate and implement plans and policies to strengthen the protection of intellectual property rights in the country. Director General POWERS and FUNCTIONS: Manage and direct all functions and activities of the Office, including the promulgation of rules and regulations to implement the objectives, policies, plans, programs and projects of the Office: Provided, That in the exercise of the authority to propose policies and standards in relation to the following: (1) the effective, efficient, and economical operations of the Office requiring statutory enactment;

(2) coordination with other agencies of government in relation to the enforcement of intellectual property rights; (3) the recognition of attorneys, agents, or other persons representing applicants or other parties before the Office; and (4) the establishment of fees for the filing and processing of an application for a patent, utility model or industrial design or mark or a collective mark, geographic indication and other marks of ownership, and for all other services performed and materials furnished by the Office, the Director General shall be subject to the supervision of the Secretary of Trade and Industry; Exercise exclusive appellate jurisdiction over all decisions rendered by the Director of Legal Affairs, the Director of Patents, the Director of Trademarks, and the Director of the Documentation, Information and Technology Transfer Bureau. The decisions of the Director General in the exercise of his appellate jurisdiction in respect of the decisions of the Director of Patents, and the Director of Trademarks shall be appealable to the Court of Appeals in accordance with the Rules of Court; and those in respect of the decisions of the Director of Documentation, Information and Technology Transfer Bureau shall be appealable to the Secretary of Trade and Industry. Exercise original jurisdiction to resolve disputes relating to the terms of a license involving the authors right to public performance or other communication of his work. The decisions of the Director General in these cases shall be appealable to the Secretary of Trade and Industry. Term of Office. - The Director General and the Deputies Director General shall be appointed by the President for a term of five (5) years and shall be eligible for reappointment only once: Provided, That the first Director General shall have a first term of seven (7) years. Appointment to any vacancy shall be only for the unexpired term of the predecessor.

The Office of the Director General.

The Office of the Director General shall consist of the Director General and the Deputies Director General, their immediate staff and such Offices and Services that the Director General will set up to support directly the Office of the Director General. Atty. Andrew Michael S. Ong Deputy Director General Operations, IP Policies and International Relations Deliverables: D1. A development-oriented and globally competitive IP registration system which raises the bar of trademark, design, UM and patent examination & administration processes to satisfy unmet end-user expectations D2. Establishing new delivery mechanisms and stakeholder platforms to increase the use of the IP system by sectors that have never been served before by IPOPHL D3. Strengthening the legal and policy support units of IPOPHL through institutionalized mechanisms and structures

D4. Establishing an effective multi-door conflict resolution structure and justice system for IPOPHL D5. Creating an end-user centric and market-oriented balanced scorecard for IPOPHL through effective institutional planning, performance monitoring and benchmarking

Atty. Allan B. Gepty Deputy Director General Management and Support Services D6. Involvement of IPOPHL in key national programs and initiatives that will bring about economic, technological, and socio-cultural development. D7. A modernized IPOPHL office comparable to the best in the ASEAN Region. D8. The general welfare of IPOPHL employees in terms of professional growth and work life balance is secured.

Bureau of Patents
The Bureau of Patents shall have the following functions: Search and examination of patent applications and the grant of patents; Registration of utility models, industrial designs, and integrated circuits; and Conduct studies and researches in the field of patents in order to assist the Director General in formulating policies on the administration and examination of patents.

Bureau of Trademarks
The Bureau of Trademarks shall have the following functions: Search and examination of the applications for the registration of marks, geographic indications and other marks of ownership and the issuance of the certificates of registration; and Conduct studies and researches in the field of trademarks in order to assist the Director General in formulating policies on the administration and examination of trademarks.

Bureau of Legal Affairs

The Bureau of Legal Affairs shall have the following functions: Hear and decide opposition to the application for registration of marks; cancellation of trademarks; subject to the provisions of Section 64, cancellation of patents, utility models, and industrial designs; and petitions for compulsory licensing of patents; Exercise original jurisdiction in administrative complaints for violations of laws involving intellectual property rights: Provided, That its jurisdiction is limited to complaints where the total damages claimed are not less than Two hundred thousand pesos (P200,000): Provided, further, That availment of the provisional remedies may be granted in accordance with the Rules of Court. The Director of Legal Affairs shall have the power to hold and punish for contempt all those who disregard orders or writs issued in the course of the proceedings. (n) After formal investigation, the Director for Legal Affairs may impose one (1) or more of the following administrative penalties: (i) The issuance of a cease and desist order which shall specify the acts that the respondent shall cease and desist from and shall require him to submit a compliance report within a reasonable time which shall be fixed in the order; (ii) The acceptance of a voluntary assurance of compliance or discontinuance as may be imposed. Such voluntary assurance may include one or more of the following:

(1) An assurance to comply with the provisions of the intellectual property law violated; (2) An assurance to refrain from engaging in unlawful and unfair acts and practices subject of the formal investigation;(3) An assurance to recall, replace, repair, or refund the money value of defective goods distributed in commerce; and (4) An assurance to reimburse the complainant the expenses and costs incurred in prosecuting the case in the Bureau of Legal Affairs.The Director of Legal Affairs may also require the respondent to submit periodic compliance reports and file a bond to guarantee compliance of his undertaking;

(iii) The condemnation or seizure of products which are subject of the offense. The goods seized hereunder shall be disposed of in such manner as may be deemed appropriate by the Director of Legal Affairs, such as by sale, donation to distressed local governments or to charitable or relief institutions, exportation, recycling into other goods, or any combination thereof, under such guidelines as he may provide; (iv) The forfeiture of paraphernalia and all real and personal properties which have been used in the commission of the offense; (v) The imposition of administrative fines in such amount as deemed reasonable by the Director of Legal Affairs, which shall in no case be less than Five thousand pesos (P5,000) nor more than One hundred fifty thousand pesos (P150,000). In addition, an additional fine of not more than One thousand pesos (P1,000) shall be imposed for each day of continuing violation; (vi) The cancellation of any permit, license, authority, or registration which may have been granted by the Office, or the suspension of the validity thereof for such period of

time as the Director of Legal Affairs may deem reasonable which shall not exceed one (1) year; (vii) The withholding of any permit, license, authority, or registration which is being secured by the respondent from the Office; (viii) The assessment of damages; (ix) Censure; and (x) Other analogous penalties or sanctions.

Documentation, Information and Technology Transfer Bureau

The Documentation, Information and Technology Transfer Bureau shall have the following functions: Support the search and examination activities of the Office through the following activities: (a) Maintain and upkeep classification systems whether they be national or international such as the International Patent Classification (IPC) system; (b) Provide advisory services for the determination of search patterns; (c) Maintain search files and search rooms and reference libraries; and (d) Adapt and package industrial property information. Establish networks or intermediaries or regional representatives; Educate the public and build awareness on intellectual property through the conduct of seminars and lectures, and other similar activities; Establish working relations with research and development institutions as well as with local and international intellectual property professional groups and the like; Perform state-of-the-art searches; Promote the use of patent information as an effective tool to facilitate the development of technology in the country; Provide technical, advisory, and other services relating to the licensing and promotion of technology, and carry out an efficient and effective program for technology transfer; and Register technology transfer arrangements, and settle disputes involving technology transfer payments. (n)

The Management Information Services and EDP Bureau

The Management Information Services and EDP Bureau shall: Conduct automation planning, research and development, testing of systems, contracts with firms, contracting, purchase and maintenance of equipment, design and maintenance of systems, user consultation, and the like; and Provide management information support and service to the Office.

Administrative, Financial and Human Resource Development Service Bureau

The Administrative Service shall: (a) Provide services relative to procurement and allocation of supplies and equipment, transportation, messengerial work, cashiering, payment of salaries and other Office's obligations, office maintenance, proper safety and security, and other utility services; and comply with government regulatory requirements in the areas of performance appraisal, compensation and benefits, employment records and reports; Administrative, Financial and Human Resource Development Service Bureau (b) Receive all applications filed with the Office and collect fees therefor; and (c) Publish patent applications and grants, trademark applications, and registration of marks, industrial designs, utility models, geographic indication, and lay-out designs of integrated circuits registrations. The Patent and Trademark Administration Services shall perform the following functions among others: (a) Maintain registers of assignments, mergings, licenses, and bibliographic on patents and trademarks; (b) Collect maintenance fees, issue certified copies of documents in its custody and perform similar other activities; and (c) Hold in custody all the applications filed with the office, and all patent grants, certificate of registrations issued by the office, and the like. Administrative, Financial and Human Resource Development Service Bureau The Financial Service shall formulate and manage a financial program to ensure availability and proper utilization of funds; provide for an effective monitoring system of the financial operations of the Office; and The Human Resource Development Service shall design and implement human resource development plans and programs for the personnel of the Office; provide for present and future manpower needs of the organization; maintain high morale and favorable employee attitudes towards the organization through the continuing design and implementation of employee development programs.

CASES
AMERICAN TOBACCO Co (ATC)., et al. v. The Director of Patents G.R. No. L-26803 October 14, 1975 FACTS ATC filed petition for mandamus with preliminary injunction before the Philippine Patent Office concerning the use of trademark and trade name. ATC challenged the validity of RULE 168 of the Revised Rules of Practice Before the Philippine Patent Office in Trademark Cases RULE 168 as amended, provides: Authorization to the Director of Patent to designate any ranking official TO HEAR inter partes proceedings. LIKEWISE, all judgments determining the merits of the case shall be personally and directly prepared by the Director and signed by him. Revised Rule of Practice 168. Original Jurisdiction over inter partes proceedings. The Director of Patents shall have original jurisdiction over inter partes proceedings, In the event that the Patent Office is provided with an Examiner of Interferences, this Examiner shall then have the original jurisdiction over these cases, instead of the Director. In the case that the Examiner of Interferences takes over the original jurisdiction over inter partes proceedings, his final decisions shall be subject to appeal to the Director of Patents within three months of the receipt of notice decision. Such inter partes proceedings in the Philippine Patent Office under this Title shall be heard before the Director of Patents, any hearing officer, or any ranking official designated by the Director, but all judgments determining the merits of the case shall be personally and directly prepared by the Director and signed by him. The said proceeding refers to: Hearing of opposition to the registration of a mark or trade name, Interference proceeding instituted for the purpose of determining the question of priority of adaption and use of said marks, and Cancellation of registration of said marks pending at the Patent Office. Under the Trade-mark Law (Republic Act No. 166 ) The Director of Patents is vested with jurisdiction over the above-mentioned cases. Likewise, the Rules of Practice in Trade-mark Cases contains a similar provision

 In accordance with the amended Rule, the Director of Patents delegated the hearing of petitioners' cases to hearing officers, specifically, Attys. Amando Marquez, Teofilo Velasco, Rustico Casia and Hector Buenaluz, the other respondents herein. Petitioners filed their objections to the authority of the hearing officers to hear their cases, alleging that the amendment of the Rule is illegal and void because The Director must personally hear and decide inter partes case. Said objections were overruled by the Director of Patents The petition of mandamus to compel the Director of Patent to personally hear the case. ISSUE Whether or not the hearing done by the hearing officers are within due process. RULING Supreme Court ruled: The power to decide solely resides in the administrative agency vested by law However, this does not preclude a delegation of the power to hold hearing on the basis of which the decision of the administrative agency will be made. For administrative officer to exercise his own judgement and discretion does not preclude him from utilizing [ as a matter of practical administrative procedure] the aid of subordinates to investigate and report to him the facts [which will then be the basis of decisions] It is sufficient that the judgment and discretion finally exercised are those of the officer authorized by law. Due process of the law nor the requirements of fair hearing require that the actual taking of testimony be before the same officer who will make the decision [Director of Patent] Due Process: As long as the party was not deprived of his right to present his own case and submit evidence in support, and the decision is supproted by the evidence in record - NO QUESTION that due process and fair trial were fully met. There is no abnegation of responsibility on the part of the officer concerned as the actual decision making remains with and is made by said officer. However, it is required that to give the substance of a hearing, which is for the purpose of making determinations upon evidence the officer who makes the determination must consider and appraise the evidence which justifies them.

Pest Management Association of the Philippines vs. Fertilizer and Pesticide Authority
FACTS The case commenced upon PMAPs filing of a Petition For Declaratory Relief With Prayer For Issuance Of A Temporary Restraining Order with the RTC on January 4, 2002.

 Petitioner, a non-stock corporation duly organized and existing under the laws of the Philippines, is an association of pesticide handlers duly licensed by respondent Fertilizer and Pesticide Authority (FPA). It questioned the validity of Section 3.12 of the 1987 Pesticide Regulatory Policies and Implementing Guidelines, which provides: 3.12 Protection of Proprietary Data Data submitted to support the first full or conditional registration of a pesticide active ingredient in the Philippines will be granted proprietary protection for a period of seven years from the date of such registration. During this period subsequent registrants may rely on these data only with third party authorization or otherwise must submit their own data. After this period, all data may be freely cited in support of registration by any applicant, provided convincing proof is submitted that the product being registered is identical or substantially similar to any current registered pesticide, or differs only in ways that would not significantly increase the risk of unreasonable adverse effects. Petitioner argued that the specific provision on the protection of the proprietary data in FPAs Pesticide Regulatory Policies and Implementing Guidelines is unlawful for for exceeding the limits of delegated authority; and for encroaching on the exclusive jurisdiction of the Intellectual Property Office. Respondents emphasized that the provision on protection of proprietary data does not usurp the functions of the Intellectual Property Office (IPO) since a patent and data protection are two different matters. A patent prohibits all unlicensed making, using and selling of a particular product, while data protection accorded by the FPA merely prevents copying or unauthorized use of an applicant's data, but any other party may independently generate and use his own data. It is further argued that under Republic Act No. 8293 (R.A. No. 8293), the grant of power to the IPO to administer and implement State policies on intellectual property is not exclusionary as the IPO is even allowed to coordinate with other government agencies to formulate and implement plans and policies to strengthen the protection of intellectual property rights. On November 5, 2002, the RTC dismissed the petition for declaratory relief for lack of merit. The RTC held that the FPA did not exceed the limits of its delegated authority in issuing the aforecited Section 3.12 of the Guidelines granting protection to proprietary data x x x because the issuance of the aforecited Section was a valid exercise of its power to regulate, control and develop the pesticide industry under P.D. 1144 and the assailed provision does not encroach on one of the functions of the Intellectual Properly Office (IPO) ISSUE Whether or not FPA encroach upon the jurisdiction of the Intellectual Property Office RULING There is no encroachment upon the powers of the IPO granted under R.A. No. 8293, otherwise known as the Intellectual Property Code of the Philippines. Section 5 thereof enumerates the functions of the IPO. Nowhere in said provision does it state nor can it be inferred that the law intended the IPO to have the exclusive authority to protect or promote

intellectual property rights in the Philippines. On the contrary, paragraph (g) of said Section even provides that the IPO shall coordinate with other government agencies and the private sector efforts to formulate and implement plans and policies to strengthen the protection of intellectual property rights in the country." Clearly, R.A. No. 8293 recognizes that efforts to fully protect intellectual property rights cannot be undertaken by the IPO alone. Other agencies dealing with intellectual property rights are, therefore, not precluded from issuing policies, guidelines and regulations to give protection to such rights. Lastly, FPA emphasize that the provision on protection of proprietary data does not usurp the functions of the Intellectual Property Office (IPO) since a patent and data protection are two different matters. A patent prohibits all unlicensed making, using and selling of a particular product, while data protection accorded by the FPA merely prevents copying or unauthorized use of an applicant's data, but any other party may independently generate and use his own data. It is further argued that under Republic Act No. 8293 (R.A. No. 8293), the grant of power to the IPO to administer and implement State policies on intellectual property is not exclusionary as the IPO is even allowed to coordinate with other government agencies to formulate and implement plans and policies to strengthen the protection of intellectual property rights. RULING WHEREFORE, the petition is DENIED. The Decision of the Regional Trial Court of Quezon City, Branch 90, in SP. Civil Case No. Q-01-42790 is AFFIRMED.

COFFEE PARTNERS, INC., v.s. SAN FRANCISCO COFFEE & ROASTERY, INC.
FACTS Petitioner Coffee Partners, Inc. is a local corporation engaged in the business of establishing and maintaining coffee shops in the country. It registered with the Securities and Exchange Commission (SEC) in January 2001. It has a franchise agreement with Coffee Partners Ltd. (CPL), a business entity organized and existing under the laws of British Virgin Islands, for a non-exclusive right to operate coffee shops in the Philippines using trademarks designed by CPL such as SAN FRANCISCO COFFEE. Respondent is a local corporation engaged in the wholesale and retail sale of coffee. It registered with the SEC in May 1995. It registered the business name SAN FRANCISCO COFFEE & ROASTERY, INC. with the Department of Trade and Industry (DTI) in June 1995. Respondent had since built a customer base that included Figaro Company, Tagaytay Highlands, Fat Willys, and other coffee companies. In 1998, respondent formed a joint venture company with Boyd Coffee USA under the company name Boyd Coffee Company Philippines, Inc. (BCCPI). Respondent later embarked on a project study of setting up coffee carts in malls and other commercial establishments in Metro Manila. In June 2001, respondent discovered that petitioner was about to open a coffee shop under the name SAN FRANCISCO COFFEE in Libis, Quezon City. According to

respondent, petitioners shop caused confusion in the minds of the public as it bore a similar name and it also engaged in the business of selling coffee. Respondent sent a letter to petitioner demanding that the latter stop using the name SAN FRANCISCO COFFEE. Respondent also filed a complaint with the Bureau of Legal Affairs-Intellectual Property Office (BLA-IPO) for infringement and/or unfair competition with claims for damages. In its answer, petitioner denied the allegations in the complaint. Petitioner alleged it filed with the Intellectual Property Office (IPO) applications for registration of the mark SAN FRANCISCO COFFEE & DEVICE for class 42 in 1999 and for class 35 in 2000. Petitioner maintained its mark could not be confused with respondents trade name because of the notable distinctions in their appearances. Petitioner argued respondent stopped operating under the trade name SAN FRANCISCO COFFEE when it formed a joint venture with Boyd Coffee USA. Petitioner contended respondent did not cite any specific acts that would lead one to believe petitioner had, through fraudulent means, passed off its mark as that of respondent, or that it had diverted business away from respondent. Mr. David Puyat, president of petitioner corporation, testified that the coffee shop in Libis, Quezon City opened sometime in June 2001 and that another coffee shop would be opened in Glorietta Mall, Makati City. He stated that the coffee shop was set up pursuant to a franchise agreement executed in January 2001 with CPL, a British Virgin Island Company owned by Robert Boxwell. Mr. Puyat said he became involved in the business when one Arthur Gindang invited him to invest in a coffee shop and introduced him to Mr. Boxwell. For his part, Mr. Boxwell attested that the coffee shop SAN FRANCISCO COFFEE has branches in Malaysia and Singapore. He added that he formed CPL in 1997 along with two other colleagues, Shirley Miller John and Leah Warren, who were former managers of Starbucks Coffee Shop in the United States. He said they decided to invest in a similar venture and adopted the name SAN FRANCISCO COFFEE from the famous city in California where he and his former colleagues once lived and where special coffee roasts came from. RULING OF THE BUREAU OF LEGAL AFFAIRS In its 14 August 2002 Decision, the BLA-IPO held that petitioners trademark infringed on respondents trade name. It ruled that the right to the exclusive use of a trade name with freedom from infringement by similarity is determined from priority of adoption. Since respondent registered its business name with the DTI in 1995 and petitioner registered its trademark with the IPO in 2001 in the Philippines and in 1997 in other countries, then respondent must be protected from infringement of its trade name. The BLA-IPO also held that respondent did not abandon the use of its trade name as substantial evidence indicated respondent continuously used its trade name in connection with the purpose for which it was organized. It found that although respondent was no longer involved in blending, roasting, and distribution of coffee because of the creation of BCCPI, it continued making plans and doing research on the retailing of coffee and the setting up of coffee carts. The BLA-IPO ruled that for abandonment to exist, the disuse must be permanent, intentional, and voluntary.

 The BLA-IPO held that petitioners use of the trademark SAN FRANCISCO COFFEE will likely cause confusion because of the exact similarity in sound, spelling, pronunciation, and commercial impression of the words SAN FRANCISCO which is the dominant portion of respondents trade name and petitioners trademark. It held that no significant difference resulted even with a diamond-shaped figure with a cup in the center in petitioner's trademark because greater weight is given to words the medium consumers use in ordering coffee products. On the issue of unfair competition, the BLA-IPO absolved petitioner from liability. It found that petitioner adopted the trademark SAN FRANCISCO COFFEE because of the authority granted to it by its franchisor. The BLA-IPO held there was no evidence of intent to defraud on the part of petitioner. The BLA-IPO also dismissed respondents claim of actual damages because its claims of profit loss were based on mere assumptions as respondent had not even started the operation of its coffee carts. The BLA-IPO likewise dismissed respondents claim of moral damages, but granted its claim of attorneys fees. Both parties moved for partial reconsideration. Petitioner protested the finding of infringement, while respondent questioned the denial of actual damages. The BLA-IPO denied the parties partial motion for reconsideration. The parties appealed to the Office of the Director General-Intellectual Property Office (ODG-IPO).

RULING OF THE OFFICE OF THE DIRECTOR GENERAL

In its 22 October 2003 Decision, the ODG-IPO reversed the BLA-IPO. It ruled that petitioners use of the trademark SAN FRANCISCO COFFEE did not infringe on respondent's trade name. The ODG-IPO found that respondent had stopped using its trade name after it entered into a joint venture with Boyd Coffee USA in 1998 while petitioner continuously used the trademark since June 2001 when it opened its first coffee shop in Libis, Quezon City. It ruled that between a subsequent user of a trade name in good faith and a prior user who had stopped using such trade name, it would be inequitable to rule in favor of the latter.

THE RULING OF THE COURT OF APPEALS In its 15 June 2005 Decision, the Court of Appeals set aside the 22 October 2003 decision of the ODG-IPO in so far as it ruled that there was no infringement. It reinstated the 14 August 2002 decision of the BLA-IPO finding infringement. The appellate court denied respondents claim for actual damages and retained the award of attorneys fees. In its 1 September 2005 Resolution, the Court of Appeals denied petitioners motion for reconsideration and respondents motion for partial reconsideration. ISSUE Whether petitioners use of the trademark SAN FRANCISCO COFFEE constitutes infringement of respondents trade name SAN FRANCISCO COFFEE & ROASTERY, INC., even if the trade name is not registered with the Intellectual Property Office (IPO).

SUPREME COURT The petition has no merit. Petitioner contends that when a trade name is not registered, a suit for infringement is not available. Petitioner alleges respondent has abandoned its trade name. Petitioner points out that respondents registration of its business name with the DTI expired on 16 June 2000 and it was only in 2001 when petitioner opened a coffee shop in Libis, Quezon City that respondent made a belated effort to seek the renewal of its business name registration. Petitioner stresses respondents failure to continue the use of its trade name to designate its goods negates any allegation of infringement. Petitioner claims no confusion is likely to occur between its trademark and respondents trade name because of a wide divergence in the channels of trade, petitioner serving readymade coffee while respondent is in wholesale blending, roasting, and distribution of coffee. Lastly, petitioner avers the proper noun San Francisco and the generic word coffee are not capable of exclusive appropriation. Respondent maintains the law protects trade names from infringement even if they are not registered with the IPO. Respondent claims Republic Act No. 8293 (RA 8293)[7] dispensed with registration of a trade name with the IPO as a requirement for the filing of an action for infringement. All that is required is that the trade name is previously used in trade or commerce in the Philippines. Respondent insists it never abandoned the use of its trade name as evidenced by its letter to petitioner demanding immediate discontinuation of the use of its trademark and by the filing of the infringement case. Respondent alleges petitioners trademark is confusingly similar to respondents trade name. Respondent stresses ordinarily prudent consumers are likely to be misled about the source, affiliation, or sponsorship of petitioners coffee. As to the issue of alleged abandonment of trade name by respondent, the BLA-IPO found that respondent continued to make plans and do research on the retailing of coffee and the establishment of coffee carts, which negates abandonment. This finding was upheld by the Court of Appeals, which further found that while respondent stopped using its trade name in its business of selling coffee, it continued to import and sell coffee machines, one of the services for which the use of the business name has been registered. The binding effect of the factual findings of the Court of Appeals on this Court applies with greater force when both the quasi-judicial body or tribunal like the BLA-IPO and the Court of Appeals are in complete agreement on their factual findings. It is also settled that absent any circumstance requiring the overturning of the factual conclusions made by the quasi-judicial body or tribunal, particularly if affirmed by the Court of Appeals, the Court necessarily upholds such findings of fact. Clearly, a trade name need not be registered with the IPO before an infringement suit may be filed by its owner against the owner of an infringing trademark. All that is required is that the trade name is previously used in trade or commerce in the Philippines. HOWEVER, RA 8293, WHICH TOOK EFFECT ON 1 JANUARY 1998, HAS DISPENSED WITH THE REGISTRATION REQUIREMENT. SECTION 165.2 OF RA 8293 CATEGORICALLY STATES THAT TRADE NAMES SHALL BE PROTECTED, EVEN PRIOR TO OR WITHOUT REGISTRATION WITH THE IPO, AGAINST ANY UNLAWFUL ACT INCLUDING ANY SUBSEQUENT USE OF THE TRADE NAME BY

A THIRD PARTY, WHETHER AS A TRADE NAME OR A TRADEMARK LIKELY TO MISLEAD THE PUBLIC. APPLYING EITHER THE DOMINANCY TEST OR THE HOLISTIC TEST, PETITIONERS SAN FRANCISCO COFFEE TRADEMARK IS A CLEAR INFRINGEMENT OF RESPONDENTS SAN FRANCISCO COFFEE & ROASTERY, INC. TRADE NAME. THE DESCRIPTIVE WORDS SAN FRANCISCO COFFEE ARE PRECISELY THE DOMINANT FEATURES OF RESPONDENTS TRADE NAME. PETITIONER AND RESPONDENT ARE ENGAGED IN THE SAME BUSINESS OF SELLING COFFEE, WHETHER WHOLESALE OR RETAIL . THE LIKELIHOOD OF CONFUSION IS HIGHER IN CASES WHERE THE BUSINESS OF ONE CORPORATION IS THE SAME OR SUBSTANTIALLY THE SAME AS THAT OF ANOTHER CORPORATION. IN THIS CASE, THE CONSUMING PUBLIC WILL LIKELY BE CONFUSED AS TO THE SOURCE OF THE COFFEE BEING SOLD AT PETITIONERS COFFEE SHOPS. PETITIONERS ARGUMENT THAT SAN FRANCISCO IS JUST A PROPER NAME REFERRING TO THE FAMOUS CITY IN CALIFORNIA AND THAT COFFEE IS SIMPLY A GENERIC TERM, IS UNTENABLE. RESPONDENT HAS ACQUIRED AN EXCLUSIVE RIGHT TO THE USE OF THE TRADE NAME SAN FRANCISCO COFFEE & ROASTERY, INC. SINCE THE REGISTRATION OF THE BUSINESS NAME WITH THE DTI IN 1995. THUS, RESPONDENTS USE OF ITS TRADE NAME FROM THEN ON MUST BE FREE FROM ANY INFRINGEMENT BY SIMILARITY. OF COURSE, THIS DOES NOT MEAN THAT RESPONDENT HAS EXCLUSIVE USE OF THE GEOGRAPHIC WORD SAN FRANCISCO OR THE GENERIC WORD COFFEE. GEOGRAPHIC OR GENERIC WORDS ARE NOT, PER SE, SUBJECT TO EXCLUSIVE APPROPRIATION. IT IS ONLY THE COMBINATION OF THE WORDS SAN FRANCISCO COFFEE, WHICH IS RESPONDENTS TRADE NAME IN ITS COFFEE BUSINESS, THAT IS PROTECTED AGAINST INFRINGEMENT ON MATTERS RELATED TO THE COFFEE BUSINESS TO AVOID CONFUSING OR DECEIVING THE PUBLIC. The Court of Appeals was correct in setting aside the 22 October 2003 Decision of the Office of the Director General-Intellectual Property Office and in reinstating the 14 August 2002 Decision of the Bureau of Legal Affairs-Intellectual Property Office.

The court denied the petition for review.

James Howard Boothe and John Morton, II, petitioners vs. The Director of Patents, respondent
FACTS Petitioners James Howard Boothe and John Morton II, chemists, citizens and residents of the United States, claim to be the inventors of a new antibiotic designated as "tetracycline", a new derivative of chlortetracycline (popularly known as "aureomycin") February 19, 1954 Boothe and Morton applied for Letters Patent to the Director of Patents to cover the invention. They claimed the right of priority granted to foreign applicants under section 15 of the Patent Law (RA 165)

 March 6, 1954 The Director of Patents acknowledged the receipt of the petitioners application. Section 15 of RA 165 Section 15. Application previously filed abroad. An application for patent for an invention filed in this country by any person who has previously regularly filed an application for a patent for the same invention in a foreign country, which by treaty, convention or law affords similar privileges to citizens of the Philippines, shall have the same force and effect as the same application would have if filed in this country on the date on which the application for patent for the same invention was first filed in such foreign country: Provided, That the application in this country is filed within twelve months from the earliest date on which such foreign application was filed and a certified copy of the foreign application together with a translation thereof into English, if not in the English language, is filed within six months from the date of filing in the Philippines, unless the Director for good cause shown shall extend the time for filing such certified copy: And provided, further, that no patent shall be granted on an application for patent for an invention which had been patented or described in a printed publication in this or any foreign country more than one year before the date of the actual filing of the application in this country, or which had been in public use or sale in this country for more than one year prior to such filing. April 14, 1954 Petitioners filed a legalized copy of their Application for Letters Patent in the United States for the same invention. The legalized copy indicated that the application was filed on March 16, 1953. February 7, 1958 Petitioner informed respondent Director that their application for Letters Patent was denied by the US on the reason that a Letters Patent for a similar invention as theirs was awarded to Pfizer and Co., which has filed its application ahead. Petitioners, however, observed and requested: In the Philippines, however, the situation is at least the reverse. Pfizer and Co. did not file or else filed an application after the above application has already been filed. The said above application therefore is good and valid. August 5, 1959 Patent examiner, Lydia Nueva Espaa, rejected all the claims of the petitioners because of Philippine Patent No. 254 November 29, 1956, which refers to a local Patent obtained by Pfizer and Co., presumably covering the same invention. Petitioners were advised that the "Specification" they had submitted was "incomplete" and that responsive action should be filed by them four months from date of mailing Petitioners filed to make their responsive action regarding the specification October 9, 1961, petitioners requested for clarification of Paper No. 6, particularly as to why their Specification was considered incomplete. July 3, 1962 - petitioners submitted two complete copies of the Specification, which included nine additional pages, and reiterated their request for priority right in the Philippines October 2, 1962 - Chief Patent Examiner, Nicanor Mapili, issued Paper No. 20 rejecting the additional nine pages of Specification submitted by petitioners. Petitioners moved for reconsideration on the ground that their application falls under the exception provided for in Rule 47 of the Revised Rules of Practice in Patent Cases in that the missing nine pages submitted by them are not really new matter but a mere "minor informality."

 February 5, 1963 - Chief Patent Examiner Mapili issued Paper No. 22 denying petitioners' Motion for Reconsideration Petitioners appealed to dent the Director of Patents

DIRECTOR OF PATENTS Petitioners prayed for

Revocation of the Chief Patent Examiner Mission of their Specification submitted on July 3, 1962 Allowance of their application on the merits
Respondent Director of Patents rendered that the additional pages of the specification be admitted, but the application shall not be extended priority rights under section 15 of the Patent Law. The filing date was moved from March 5, 1954 to April 14, 1954. The application was remanded to the Chief Patent Examiner for proper action and for further examination on the merits. Petitioner filed a motion for Partial Reconsideration June 10, 1965 - respondent Director denied reconsideration for lack of merit June 11, 1965 - petitioners filed a Second Motion for reconsideration on the ground that priority rights are governed by convention and treaty, while invention claims are governed exclusively by the Statute and Rules of Practice. August 24, 1965 - Respondent Director denied the motion for lack of merit

SUPREME COURT January 9, 1967 The Court assumed jurisdiction of the case Petitioners continue to claim that RESPONDENT DIRECTOR OF PATENTS ERRED IN HOLDING THAT PETITIONERS' APPLICATION, SERIAL NO. 952, MAY NOT BE TREATED AS FILED UNDER SECTION 15 AS AMENDED, OF REPUBLIC ACT NO. 165 KNOWN AS THE PATENT LAW. 1) The Director had no jurisdiction to decide the question of whether or not the Philippine Application should be treated as filed under Section 15 of the Act; 2) The Director had no jurisdiction to decide the question of whether or not the Philippine Application was incomplete under Rules 47 and 48 of the Revised Rules of Practice in Patent Cases; 3) The Director misconstrued and misapplied Rules 47 and 48 of the Rules; 4) The Director misconstrued and misapplied Rule 262 (b) of the Rules. ISSUES

 The scope of the powers of the Director of Patents in cases appealed to him and the correctness of his application of Rules 47, 48 and 262(b) of the Revised Rules of Practice in Patent Cases.

DECISION Explicit in Rule 262 of the Revised Rules of Practice in Patent Cases is the power and authority of respondent Director to decide petitioners' appeal in the manner that he did, and we quote: 262. Decision by the Director. (a) The Director, in his decision, may affirm or reverse the decision of the Principal Examiner in whole or in part on the ground and on the claims specified by the Examiner. The affirmance of the rejection of a claim on any of the grounds specified constitutes a general affirmance of the decision of the Principal Examiner on that claim, except as to any ground specifically reversed. (b) Should the Director have knowledge of any grounds not involved in the appeal for rejecting any claim he may include in his decision a statement to that effect with his reasons for so holding which statement shall constitute a rejection of the claims. ... What respondent Director exercised was his authority to review the decisions of Patent Examiners, as explicitly provided for in the last paragraph of the same Rules 254: The only supervision which the Director of Patent may lawfully exercise over the Principal Examiners and the Executive Examiner is a general supervision, exercised through a review of the recommendations they may make for the grant of a patent, and through a review of their decision by petition and appeal. Rule 47. Application accepted and filed for examination only when complete An application for an invention patent will not be accepted and placed upon the files for examination until all its required parts, complying with the rules relating thereto are received except that 'certain minor informalities may be waived subject to subsequent correction, whenever required. If the papers and parts are incomplete, or so defective that they cannot be accepted as a complete application for examination, the applicant will be notified; the papers will be held four months for completion and if not by then completed, will be stored as an abandoned incomplete application and eventually destroyed or otherwise disposed of. The specification which petitioners submitted on March 5, 1954 was far from complete. That defect was one of substance and not merely one of form. Petitioners' application could be deemed as complete only on July 2, 1963 when they submitted the additional pages on the Specifications and Claims

 Respondent Director did not err in converting petitioners' application into an ordinary application filed on April 14, 1954, not only for their having failed to complete their application within the four-month period provided for by Rules 47 and 48, Revised Rules of Practice in Patent Cases, but also for their failure to file a complete application within twelve months from March 16, 1953, the date of the foreign application. For, to be entitled to the filing date of the patent application, an invention disclosed in a previously filed application must be described within the instant application in such a manner as to enable one skilled in the art to use the same for a legally adequate utility. The Director of Patents did not act with grave abuse of discretion. He did not lack jurisdiction over the case.

Smith Kline & French Laboratories, Ltd., petitioner, vs. Court of Appeals, Bureau of Patents, Trademarks & Technology Transfer and Doctors pharmaceuticals, Inc., respondents.
FACTS Petitioner (Smith Kline & French Lab., Ltd.) is a foreign corporation with principal office at Welwyn Garden City, England. It owns Philippine Letters Patent No. 12207 issued by BPTTT for the patent of the drug Cimetidine. Private respondent (Doctors Pharmaceuticals, Inc.) is a domestic corporation engaged in business of manufacturing and distributing pharmaceutical products. FACTS BPTTT On March 30, 1987, private respondent filed a petition for compulsory licensing with BPTTT for authorization to manufacture its own brand of medicine from the drug Cimetidine and to market the resulting product in the Philippines. Petition was filed pursuant to Sec. 34 of RA 165 (An Act Creating a Patent Office Prescribing Its Powers and Duties, Regulating the Issuance of Patents, and Appropriating Funds Therefor) which provides for the compulsory licensing of a particular patent after the expiration of 2 years from the grant of the latter if the patented invention relates to medicine or that which is necessary for public health or public safety. Private respondent alleged that the grant of Phil. Letters Patent No. 12207 was issued on Nov. 29, 1978; that it was filed beyond the 2-year protective period provided in Sec. 34 of RA 165; and that it had the capability to work the patented product or make use of it in its manufacture of medicine. Petitioner opposed, arguing that it had no cause of action & lacked the capability to work the patented product; that petition failed to specifically divulge how respondent would use or improve the patented product; that respondent was motivated by pecuniary gain attendant to the grant of a compulsory license.

 FACTS Petitioner also maintained that it was capable of satisfying the demand of the local market in the manufacture & marketing of the medicines covered by the patented product. Petitioner challenged the constitutionality of Sections 34 & 35 of RA 165 for violating the due process and equal protection clauses of the Constitution. BPTTT Ruling That private respondent be granted a non-exclusive & non-transferable license to manufacture, use & sell in the Phil. its own brands of pharmaceutical products containing petitioners patented invention which is disclosed and claimed in Phil. Letters Patent No. 12207. (February 14, 1994) COURT OF APPEALS Petitioner claimed that BPTTT ruling was erroneous because it should not have proceeded to decide the case below for failure of private respondent to affirmatively prove the jurisdictional fact of publication. CA Ruling We take note of well-crafted petition submitted by petitioner albeit the legal milieu and a good number of decided cases militate against the grounds posited by petitioner. In sum, considering the well-entrenched jurisprudence sustaining the position of respondents, We reiterate the rule in Basay Mining Corp. vs. SEC, to effect thatThe legal presumption is that the official duty has been performed. And it is particularly strong as regards administrative agencies vested with powers said to be quasi-judicial in nature, in connection with the enforcement of laws affecting particular fields of activity, the proper regulation and/or promotion of which requires a technical or special training, aside from a good knowledge and grasp of the overall conditions, relevant to said field, obtaining in the nations. The policy and practice underlying our Administrative Law is that courts of justice should respect the findings of fact of said administrative agencies, unless there is absolutely no evidence in support thereof or such evidence is clearly, manifestly and patently insubstantial. [GR 76695] -its motion for reconsideration having been DENIED in the resolution. Petitioner filed an instant petition for review on certiorari to SC. ISSUE Whether or not the Honorable Court of Appeals erred in not holding the BPTTTs action was rendered null & void for failure of private respondent to affirmatively prove the jurisdictional fact of publication as required by law?

SUPREME COURT As to the erring alleged by the petitioner to the BPTTT, the SC hold that the petitioner can no longer assail the jurisdiction of the BPTTT, raising this issue only for the first time on appeal. In Pantranco North Express, Inc. v. CA, the SC ruled that where the issue of jurisdiction is raised for the first time on appeal, the party invoking it is so barred on the ground of laches or estoppel under the circumstances therein stated. It is now settled that this rule applies with equal force to quasi-judicial bodies such as BPTTT. Here, petitioner have not furnished any cogent reason to depart from this rule. Petition is DENIED.