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Republic Act No.

8293 June 6, 1997 and policies to strengthen the protection of intellectual


AN ACT PRESCRIBING THE INTELLECTUAL property rights in the country.
PROPERTY CODE AND ESTABLISHING THE
INTELLECTUAL PROPERTY OFFICE, PROVIDING FOR THE LAW ON PATENTS
ITS POWERS AND FUNCTIONS, AND FOR OTHER
PURPOSES Patentable Inventions - Any technical solution of a problem
in any field of human activity which is new, involves an
Intellectual Property consists of: inventive step and is industrially applicable shall be
Patentable. It may be, or may relate to, a product, or process,
1. Copyright and Related Rights; or an improvement of any of the foregoing.
2. Trademarks and Service Marks;
3. Geographic Indications; Non-Patentable Inventions:
4. Industrial Designs; 1. Discoveries, scientific theories and mathematical
5. Patents; methods;
6. Layout-Designs (Topographies) of Integrated Circuits; 2. Schemes, rules and methods of performing mental
and acts, playing games or doing business, and programs
7. Protection of Undisclosed Information (n, TRIPS). for computers;
3. Methods for treatment of the human or animal body by
International Conventions and Reciprocity surgery or therapy and diagnostic methods practiced
on the
Any person who is a national or who is domiciled or has a human or animal body. This provision shall not apply
real and effective industrial establishment in a country which to products and composition for use in any of these
is a party to any convention, treaty or agreement relating to methods;
intellectual property rights or the repression of unfair 4. Plant varieties or animal breeds or essentially
biological process for the production of plants or
competition, to which the Philippines is also a party, or
animals. This provision shall not apply to micro-
extends reciprocal rights to nationals of the Philippins by law, organisms and non-biological and microbiological
shall be entitled to benefits to the extent necessary to give processes.
effect to any provision of such convention, treaty or
reciprocal law, in addition to the rights to which any owner of Provisions under this subsection shall not preclude
an intellectual property right is otherwise entitled by this Act. Congress to consider the enactment of a law providing
(n) sui generis protection of plant varieties and animal
breeds and a system of community intellectual rights
protection:
Technology Transfer Arrangement - refers to contracts or
5. Aesthetic creations; and
agreements involving the transfer of systematic knowledge
6. Anything which is contrary to public order or
for the manufacture of a product, the application of a process,
morality.
or rendering of a service including management contracts;
and the transfer, assignment or licensing of all forms of
Novelty - An invention shall not be considered new if it
intellectual property rights, including licensing of computer
forms part of a prior art.
software except computer software developed for mass
market.
Prior Art consists of:
1. Everything which has been made available to the
Functions of the Intellectual Property Office (IPO):
public anywhere in the world, before the filing date
1. Examine applications for grant of letters patent for
or the priority date of the application claiming the
inventions and register utility models and industrial
invention; and
designs;
2. The whole contents of an application for a patent,
2. Examine applications for the registration of marks,
utility model, or industrial design registration,
geographic indication, integrated circuits;
published in accordance with this Act, filed or
3. Register technology transfer arrangements and settle
effective in the Philippines, with a filing or priority
disputes involving technology transfer payments
date that is earlier than the filing or priority date of
covered by the provisions of Part II, Chapter IX on
the application: Provided, That the application which
Voluntary Licensing and develop and implement
has validly claimed the filing date of an earlier
strategies to promote and facilitate technology
application under Section 31 of this Act, shall be
transfer;
prior art with effect as of the filing date of such
4. Promote the use of patent information as a tool for
earlier application: Provided further, That the
technology development;
applicant or the inventor identified in both
5. Publish regularly in its own publication the patents,
applications are not one and the same.
marks, utility models and industrial designs, issued
and approved, and the technology transfer
DID RA8293 repeal existing laws on IP?
arrangements registered;
6. Administratively adjudicate contested proceedings
Mirpuri vs CA
affecting intellectual property rights; and
7. Coordinate with other government agencies and the
Whether or not the treaty (Paris Convention) affords
private sector efforts to formulate and implement plans
protection to a foreign corporation against a Philippine
applicant for the registration of a similar trademark?
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distinguish them from those manufactured, sold or dealt in
The Court held in the affirmative. RA 8293 defines trademark by others.
as any visible sign capable of distinguishing goods. The Paris
Convention is a multilateral treaty that seeks to protect Trademark (RA 8293) - any visible sign capable of
industrial property consisting of patents, utility models, distinguishing goods.
industrial designs, trademarks, service marks, trade names
and indications of source or appellations of origin, and at the Three Distinct Functions of Trademark:
same time aims to repress unfair competition. In short,
foreign nationals are to be given the same treatment in each 1. they indicate origin or ownership of the articles to
of the member countries as that country makes available to its which they are attached;
own citizens. Nationals of the various member nations are 2. they guarantee that those articles come up to a
thus assured of a certain minimum of international protection certain standard of quality; and
of their industrial property. 3. they advertise the articles they symbolize

Do IPC No. 686 and IPC No. 2049 involve the same cause of RES JUDICATA
action? An absolute bar to a subsequent action for the same cause

No. The issue of ownership of the trademark was not raised in REQUISITES:
IPC 686. IPC 2049 raised the issue of ownership, the first 1. former judgement or order must be final
registration and use of the trademark in the US and other 2. judgement or order must be one on the merits
countries, and the international recognition of the trademark 3. it must have been rendered by a court having
established by extensive use and advertisement of jurisdiction over the subject matter and parties there
respondents products for over 40 years here and abroad. must be between the first and second actions
These are different from the issues of confessing similarity identity of parties of subject matter and causes of
and damage in IPC 686. The issue of prior use may have been action.
raised in IPC 686 but this claim was limited to prior use in the
Philippines only. Prior use in IPC 2049 stems from the Proceeding in intellectual property office or formerly known
respondents claims originator of the word and symbol as Bureau of Patents are known as inter partes cases which
―Barbizon‖, as the first and registered user of the mark means those parties opposing each other in different property
attached to its products which have been sold and advertised office.
would arise for a considerable number of years prior to
petitioner‘s first application. Indeed, these are substantial According to this case what are the other functions of TM:
allegations that raised new issues and necessarily gave 1. to assure the public that they are procuring the
respondents a new cause of action. genuine article;
2. to prevent fraud and imposition;
Moreover, the cancellation of 3. to protect the manufacturer against substitution and
petitioner‘s certificate registration for failure sale of an inferior and different article as his
to file the affidavit of use arose after IPC 686. This gave product.
respondent another cause to oppose the second application. 4. indicate origin or ownership of the articles to which
they are attached;
It is also to be noted that the oppositions in the first and 5. guarantee that those articles come up to a certain
second cases are based on different laws. Causes of action standard quality;
which are distinct and independent from each other, although 6. They advertise the articles they symbolize.
out of the same contract, transaction, or state of facts, may be
sued on separately, recovery on one being no bar to Samson vs. Daway
subsequent actions on others. The mere fact that the same
relief is sought in the subsequent action will not render the Which court has jurisdiction over criminal and civil cases for
judgment in the prior action operating as res judicata, such as violation of intellectual property rights?
where the actions are based on different statutes.

Did RA 8293 repeal existing laws in IP? The SC held that under Section 163 of the IPC, actions for
unfair competition shall be brought before the proper courts
The Intellectual Property Code took effect on January 1, 1998 with appropriate jurisdiction under existing laws. The law
and by its express provision, repealed the Trademark Law, contemplated in Section 163 of IPC is RA 166 otherwise
the Patent Law, Articles 188 and 189 of the Revised Penal known as the Trademark Law. Section 27 of the Trademark
Code, the Decree on Intellectual Property, and the Decree on Law provides that jurisdiction over cases for infringement of
Compulsory Reprinting of Foreign Textbooks. The Code was registered marks, unfair competition, false designation of
enacted to strengthen the intellectual and industrial property origin and false description or representation, is lodged with
system in the Philippines as mandated by the country's the Court of First Instance (now Regional Trial Court). Since
accession to the Agreement Establishing the World Trade RA 7691 is a general law and IPC in relation to Trademark
Organization (WTO). Law is a special law, the latter shall prevail. Actions for
unfair competition therefore should be filed with the RTC.
Trademark (RA 166) - any word, name, symbol, emblem,
sign or device or any combination thereof adopted and used Did RA 8293 repeal RA 166?
by a manufacturer or merchant to identify his goods and

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The case of Mirpuri v. Court of Appeals, invoked by 2. Confusion of Business – wherein the goods of the
petitioner finds no application in the present case. Nowhere in parties are different but the defendant‘s product can
Mirpuri did we state that Section 27 of R.A. No. 166 was reasonably (though mistakenly) be assumed to
repealed by R.A. No. 8293. Neither did we make a originate from the plaintiff, thus deceiving the
categorical ruling therein that jurisdiction over cases for public into believing that there is some connection
violation of intellectual property rights is lodged with the between the plaintiff and defendant which, in fact,
Municipal Trial Courts. does not exist.

The passing remark in Mirpuri on the repeal of R.A. No. 166 In determining the likelihood of confusion, the Court must
by R.A. No. 8293 was merely a backgrounder to the consider:
enactment of the present Intellectual Property Code and
cannot thus be construed as a jurisdictional pronouncement in 1. the resemblance between the trademarks;
cases for violation of intellectual property rights. 2. the similarity of the goods to which the trademark is
attached;
INTELLECTUAL PROPERTY RIGHTS IN GENERAL 3. the likely effect on the purchaser; and
4. the registrant‘s express or implied consent and other
Mighty Corporation and La Campana vs E& J Gallo fair and equitable considerations
Winery
Keyword: Commercial Actual Use and Trademark TEST OF TRADEMARK INFRINGEMENT
Registration
1. Dominancy Test – consists in seeking out the main,
Whether GALLO cigarettes and GALLO wines were identical, essential or dominant features of a mark.
similar or related goods for the reason alone that they were
purportedly forms of vice? 2. Holistic Test – takes stock of the other features of a
mark, taking into consideration the entirety of the
Wines and cigarettes are not identical, similar, competing or marks.
related goods. In resolving whether goods are related, several
factors come into play: DISTINCTIONS BETWEEN TRADEMARK
INFRINGEME NT
1. the business (and its location) to which the goods AND UNFAIR COMPETITION
belong
2. the class of product to which the good belong 1. In Trademark Infringement, it is limited but it
3. the product‘s quality, quantity, or size, including the recognizes a more exclusive right derived from the
nature of the package, wrapper or container trademark adoption and registration by the person
4. the nature and cost of the articles
whose goods or business is first associated with it,
5. the descriptive properties, physical attributes or
essential characteristics with reference to their whereas in Unfair Competition it is broader and
form, composition, texture or quality more inclusive.
6. the purpose of the goods 2. Infringement of trademark is the unauthorized use
7. whether the article is bought for immediate of a trademark, whereas unfair competition is the
consumption, that is, day-to-day household items passing off of one's goods as those of another.
8. the field of manufacture 3. In infringement of trademark fraudulent intent is
9. the conditions under which the article is usually
unnecessary, whereas in unfair competition
purchased
10. the channels of the trade through which the goods fraudulent intent is essential.
flow, how they are distributed, marketed, displayed 4. In infringement of trademark the prior registration
and sold of the trademark is a prerequisite to the action,
whereas in unfair competition registration is not
The test of fraudulent simulation is to the likelihood of the necessary.
deception of some persons in some measure acquainted with
an established design and desirous of purchasing the ELEMENTS OF TRADEMARK INFRINGEMENT
commodity with which that design has been associated. The (Article 6bis of the Paris Convention):
simulation, in order to be objectionable, must be as appears
likely to mislead the ordinary intelligent buyer who has a 1. registration or use by another person of a trademark
need to supply and is familiar with the article that he seeks to which is a reproduction, imitation or translation
purchase. liable to create confusion,
2. of a mark considered by the competent authority of
Two types of confusion in Trademark Infringement: the country of registration or use to be well-known
1. Confusion of Goods – when an otherwise prudent in that country and is already the mark of a person
purchaser is induced to purchase one product in the entitled to the benefits of the Paris Convention, and
belief that he is purchasing another, in which case 3. such trademark is used for identical or similar
defendant‘s goods are then brought as the plaintiff‘s goods.
and its poor quality reflects badly on the plaintiff‘s
reputation. ELEMENTS OF TRADEMARK INFRINGEMENT
(Secs. 2, 2-A, 9-A, 20 & 22 of the Trademark Law):

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1. a trademark actually used in commerce in the ACTS VIOLATIVE OF SECTION 29 OF TRADEMARK
Philippines and registered in the principal register of LAW (UNFAIR COMPETITION)
the Philippine Patent Office
2. is used by another person in connection with the 1. Any person, who in selling his goods shall give
sale, offering for sale, or advertising of any goods, them the general appearance of goods of another
business or services or in connection with which manufacturer or dealer, either as to the goods
such use is likely to cause confusion or mistake or to themselves or in the wrapping of the packages in
deceive purchasers or others as to the source or which they are contained, or the devices or words
origin of such goods or services, or identity of such thereon, or in any other feature of their appearance,
business; or such trademark is reproduced, which would be likely to influence purchasers to
counterfeited, copied or colorably imitated by believe that the goods offered are those of a
another person and such reproduction, counterfeit, manufacturer or dealer other than the actual
copy or colorable imitation is applied to labels, manufacturer or dealer, or who otherwise clothes
signs, prints, packages, wrappers, receptacles or the goods with such appearance as shall deceive the
advertisements intended to be used upon or in public and defraud another of his legitimate trade, or
connection with such goods, business or services as any subsequent vendor of such goods or any agent
to likely cause confusion or mistake or to deceive of any vendor engaged in selling such goods with a
purchasers, like purpose;
3. the trademark is used for identical or similar goods, 2. Any person who by any artifice, or device, or who
and employs any other means calculated to induce the
4. such act is done without the consent of the false belief that such person is offering the services
trademark registrant or assignee of another who has identified such services in the
mind of the public;
In summary, the Paris Convention protects well-known 3. Any person who shall make any false statement in
trademarks only (to be determined by domestic authorities), the course of trade or who shall commit any other
while the Trademark Law protects all trademarks, whether act contrary to good faith of a nature calculated to
well-known or not, provided that they have been registered discredit the goods, business or services of another.
and are in actual commercial use in the Philippines.
Following universal acquiescence and comity, in case of Del Monte Corporation et.al vs. CA & Sunshine Sauce Mfg.
domestic legal disputes on any conflicting provisions between Industries Keyword: Colorable Imitation
the Paris Convention (which is an international agreement)
and the Trademark law (which is a municipal law) the latter Whether or not the two articles are distinguishable by their
will prevail. label when set side by side but whether the general confusion
made by the article upon the eye of the casual purchaser who
is unsuspicious and off his guard, is such as to likely result in
Under both the Paris Convention and the Trademark Law, the his confounding it with the original?
protection of a registered trademark is limited only to goods
identical or similar to those in respect of which such It has been held that in making purchases, the consumer must
trademark is registered and only when there is likelihood of depend upon his recollection of the appearance of the product
confusion. Under both laws, the time element in commencing which he intends to purchase. The buyer having in mind the
infringement cases is material in ascertaining the registrant‘s mark/label of the respondent must rely upon his memory of
express or implied consent to another‘s use of its trademark the petitioner's mark.
or a colorable imitation thereof. This is why acquiescence,
estoppel or laches may defeat the registrant‘s otherwise valid Unlike the judge who has ample time to minutely examine the
cause of action. labels in question in the comfort of his sala, the ordinary
shopper does not enjoy the same opportunity.
Hence, proof of all the elements of trademark infringement is
a condition precedent to any finding of liability. As a general rule, an ordinary buyer does not exercise as
much prudence in buying an article for which he pays a few
Colorable Imitation – such similarity in form, content, centavos as he does in purchasing a more valuable thing.
words. Sound, meaning, special arrangement or general Expensive and valuable items are normally bought only after
appearance of the trademark or trade name in their overall deliberate, comparative and analytical investigation. But mass
presentation or in their essential and substantive and products, low priced articles in wide use, and matters of
distinctive parts as would likely mislead or confuse persons in everyday purchase requiring frequent replacement are bought
the ordinary course of purchasing the genuine article. by the casual consumer without great care.

Guidelines in the implementation of Article 6bis of Paris As previously stated, the person who infringes a trade mark
Convention: does not normally copy out but only makes colourable
changes, employing enough points of similarity to confuse
1. the mark must be internationally known; the public with enough points of differences to confuse the
2. the subject of the right must be a trademark, not a courts. What is undeniable is the fact that when a
patent or copyright or anything else; manufacturer prepares to package his product, he has before
3. the mark must be for use in the same or similar him a boundless choice of words, phrases, colors and symbols
kinds of goods; and sufficient to distinguish his product from the others.
4. the person claiming must be the owner of the mark

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Registration in Principal Register vs Supplemental Copyright - confined to literary and artistic works which are
Register original intellectual creations in the literary and artistic
domain protected from the moment of their creation.
1. Registration in the Principal Register gives rise to a
presumption of the validity of the registration, the Patentable Invention - any technical solution of a problem
registrant's ownership of the mark and his right to in any field of human activity which is new, involves an
the exclusive use thereof. There is no such inventive step and is industrial applicable.
presumption in the registration in the Supplemental
Register. Pearl & Dean vs Shoemart

2. Registration in the Principal Register is limited to Whether or not light boxes are subject of patent, copyright
the actual owner of the trademark and proceedings and trademark infringement?
therein on the issue of ownership which may be
contested through opposition or interference The light boxes cannot, by any stretch of the imagination, be
proceedings or, after registration, in a petition for considered as either prints, pictorial illustrations, advertising
cancellation. copies, labels, tags or box wraps, to be properly classified as a
copyrightable; what was copyrighted were the technical
Registration in the Principal Register is constructive drawings only, and not the light boxes themselves. In other
notice of the registrant's claim of ownership, while cases, it was held that there is no copyright infringement
registration in the Supplemental Register is merely proof when one who, without being authorized, uses a copyrighted
of actual use of the trademark and notice that the registrant architectural plan to construct a structure. This is because the
has used or appropriated it. It is not subject to copyright does not extend to the structures themselves.
opposition although it may be cancelled after the
issuance. Corollary, registration in the Principal Register On the patent infringement, there can be no infringement of
is a basis for an action for infringement while registration in a patent until a patent has been issued, since whatever right
the Supplemental Register is not. one has to the invention covered by the patent arises alone
from the grant of patent. An inventor has no common law
3. In applications for registration in the Principal right to a monopoly of his invention. He has the right to make
Register, publication of the application is necessary. use of and vend his invention, but if he voluntarily discloses
This is not so in applications for registrations in the it, such as by offering it for sale, the world is free to copy and
Supplemental Register. use it with impunity. A patent, however, gives the inventor
the right to exclude all others. As a patentee, he has the
DIFFERENCES BETWEEN TRADEMARK, PATENT exclusive right of making, selling or using the invention. To
AND COPYRIGHT be able to effectively and legally preclude others from
copying and profiting from the invention, a patent is a
Kho vs CA primordial requirement. No patent, no protection. The
ultimate goal of a patent system is to bring new designs and
Whether or not Kho has the exclusive right to use the trade technologies into the public domain through disclosure.14
name and its container? Ideas, once disclosed to the public without the protection of a
valid patent, are subject to appropriation without significant
Kho has no right to support her claim for the exclusive use of restraint.
the subject trade name and its container. The name and
container of a beauty cream product are proper subjects of a On the trademark infringement allegation, the words ―Poster
trademark (not copyright like what she registered for) Ads‖ are a simple contraction of the generic term poster
inasmuch as the same falls squarely within its definition. In advertising. In the absence of any convincing proof that
order to be entitled to exclusively use the same in the sale of ―Poster Ads‖ has acquired a secondary meaning in this
the beauty cream product, the user must sufficiently prove jurisdiction, Pearl & Dean‘s exclusive right to the use of
that she registered or used it before anybody else did. Kho‘s ―Poster Ads‖ is limited to what is written in its certificate of
copyright and patent registration of the name and container registration, namely, stationeries.
would not guarantee her the right to the exclusive use of the
same for the reason that they are not appropriate subjects of Three-Fold Purpose of Patent Law
the said intellectual rights. Consequently, a preliminary
injunction order cannot be issued for the reason that the 1. it seeks to foster and reward invention
petitioner has not proven that she has a clear right over the 2. it promotes disclosures of inventions to stimulate
said name and container to the exclusion of others, not having further innovation and to permit the public to
proven that she has registered a trademark thereto or used the practice the invention once the patent expires
same before anyone did. 3. the stringent requirements for patent protection seek
to ensure that ideas in the public domain remain
Trademark - any visible sign capable of distinguishing the there for the free use of the public
goods (trademark) or services (service mark) of an enterprise
and shall include a stamped or marked container goods. Secondary Meaning - means that a word or phrase originally
incapable of exclusive appropriation with reference to an
Trade name - the name or designation identifying or article in the market (because it is geographically or
distinguishing an enterprise. otherwise descriptive) might nevertheless have been used for
so long and so exclusively by one producer with reference to
his article that, in the trade and to that branch of the
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purchasing public, the word or phrase has come to mean that the concurrent jurisdiction of civil courts and the
the article was his property. IPO over unfair competition cases.

IPO OFFICE; JURISDICTION These two provisions read:

Section 160. Right of Foreign Corporation to Sue in


In-n-out Burger vs Sehwani Trademark or Service Mark Enforcement Action. Any
foreign national or juridical person who meets the
Whether or not the Intellectual Property Office (an
requirements of Section 3 of this Act and does not engage in
administrative body) have jurisdiction of cases involving
business in the Philippines may bring a civil
provisions of the IPC (e.g. unfair competition)?
or administrative action hereunder for opposition,
The IPO (an administrative body) has jurisdiction in cases cancellation, infringement, unfair competition, or false
involving provisions of the IPC (e.g. unfair competition) due designation of origin and false description, whether or not it
to the following reasons: is licensed to do business in the Philippines under existing
laws.
Section 10 of the Intellectual Property Code specifically
identifies the functions of the Bureau of Legal Affairs, Section 170. Penalties. Independent of the civil
thus: and administrative sanctions imposed by law, a criminal
penalty of imprisonment from two (2) years to five (5) years
Section 10. The Bureau of Legal Affairs.―The Bureau of and a fine ranging from Fifty thousand pesos (P50,000) to
Legal Affairs shall have the following functions: Two hundred thousand pesos (P200,000), shall be imposed on
any person who is found guilty of committing any of the acts
10.1 Hear and decide opposition to the application for mentioned in Section 155, Section168, and Subsection169.1.
registration of marks; cancellation of trademarks; subject to
the provisions of Section 64, cancellation of patents and Based on the foregoing discussion, the IPO Director of Legal
utility models, and industrial designs; and petitions for Affairs had jurisdiction to decide the petitioner‘s
compulsory licensing of patents; administrative case against respondents and the IPO Director
General had exclusive jurisdiction over the appeal of the
10.2 (a) Exercise original jurisdiction in administrative judgment of the IPO Director of Legal Affairs.
complaints for violations of laws involving intellectual
property rights; Provided, That its jurisdiction is limited Essential Elements of Unfair Competition
to complaints where the total damages claimed are not
less than Two hundred thousand pesos 1. Confusing similarity in the general appearance of
(P200,000): Provided, futher, That availment of the the goods and
provisional remedies may be granted in accordance with
2. Intent to deceive the public and defraud a
the Rules of Court.
competitor.
(vi) The cancellation of any permit, license, authority, or
The confusing similarity may or may not result from
registration which may have been granted by the Office,
similarity in the marks, but may result from other external
or the suspension of the validity thereof for such period of
factors in the packaging or presentation of the goods. The
time as the Director of Legal Affairs may deem reasonable
intent to deceive and defraud may be inferred from the
which shall not exceed one (1) year;
similarity of the appearance of the goods as offered for sale to
(viii) The assessment of damages; the public. Actual fraudulent intent need not be shown.

Unquestionably, petitioner‘s complaint, which seeks the Phil Pharmawealth vs Pfizer


cancellation of the disputed mark in the name of respondent
Can an injunctive relief be issued based on an action of
Sehwani, Incorporated, and damages for violation of
patent infringement when the patent allegedly infringed has
petitioner‘s intellectual property rights, falls within the
already lapsed?
jurisdiction of the IPO Director of Legal Affairs.
No. The provision of R.A. 165, from which the Pfizer‘s
While Section 163 thereof vests in civil courts jurisdiction
patent was based, clearly states that "[the] patentee shall have
over cases of unfair competition, nothing in the said
the exclusive right to make, use and sell the patented
section states that the regular courts have sole jurisdiction
machine, article or product, and to use the patented process
over unfair competition cases, to the exclusion of
for the purpose of industry or commerce, throughout the
administrative bodies.
territory of the Philippines for the term of the patent; and such
 Sections 160 and 170, which are also found under making, using, or selling by any person without the
Part III of the Intellectual Property Code, recognize authorization of the patentee constitutes infringement of the
patent."
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in the IPO and RTC cases, a decision in one case will
Clearly, the patentee‘s exclusive rights exist only during the necessarily amount to res judicata in the other action.
term of the patent. Since the patent was registered on 16 July
1987, it expired, in accordance with the provisions of R.A. RA 8293 is silent with respect to any remedy available to
165, after 17 years, or 16 July 2004. Thus, after 16 July 2004, litigants who intend to question an interlocutory order issued
Pfizer no longer possessed the exclusive right to make, use, by the BLA-IPO.
and sell the products covered by their patent. The CA was
Moreover, Section 1(c), Rule 14 of the Rules and Regulations
wrong in issuing a temporary restraining order after the cut-
on Administrative Complaints for Violation of Laws
off date.
Involving Intellectual Property Rights simply provides that
What tribunal has jurisdiction to review the decisions of the interlocutory orders shall not be appealable.
Director of Legal Affairs of the Intellectual Property Office?
The said Rules and Regulations do not prescribe a procedure
According to IP Code, the Director General of the IPO within the administrative machinery to be followed in
exercises exclusive jurisdiction over decisions of the IPO- assailing orders issued by the BLA-IPO pending final
BLA. The question in the CA concerns an interlocutory order, resolution of a case filed with them.
and not a decision. Since the IP Code and the Rules and
Hence, in the absence of such a remedy, the provisions of the
Regulations are bereft of any remedy regarding interlocutory
Rules of Court shall apply in a suppletory manner, as
orders of the IPO-BLA, the only remedy available to Pfizer is
provided under Section 3, Rule 1 of the same Rules and
to apply the Rules and Regulations suppletorily. Under the
Regulations.
Rules, a petition for certiorari to the CA is the proper remedy.
This is consistent with the Rules of Court. Thus, the CA had
Hence, in the present case, respondents correctly resorted to
jurisdiction.
the filing of a special civil action for certiorari with the CA to
question the assailed Orders of the BLA-IPO, as they cannot
Is there forum shopping when a party files two actions with
appeal therefrom and they have no other plain, speedy and
two seemingly different causes of action and yet pray for the
adequate remedy in the ordinary course of law. This is
same relief?
consistent with Sections 1 and 4, Rule 65 of the Rules of
Yes. Forum shopping is defined as the act of a party against Court, as amended.
whom an adverse judgment has been rendered in one forum,
In the first place, respondents' act of filing their complaint
of seeking another (and possibly favorable) opinion in
originally with the BLA-IPO is already in consonance with
another forum (other than by appeal or the special civil action
the doctrine of primary jurisdiction.
of certiorari), or the institution of two (2) or more actions or
proceedings grounded on the same cause on the supposition
that one or the other court would make a favorable
disposition.

The elements of forum shopping are: (a) identity of parties,


or at least such parties that represent the same interests in
both actions; (b) identity of rights asserted and reliefs prayed
for, the reliefs being founded on the same facts; (c) identity of
the two preceding particulars, such that any judgment
rendered in the other action will, regardless of which party is
successful, amount to res judicata in the action under
consideration. This instance meets these elements.

The parties are clearly identical. In both the complaints in the


BLA-IPO and RTC, the rights allegedly violated and the acts
allegedly violative of such rights are identical, regardless of
whether the patents on which the complaints were based are
different. In both cases, the ultimate objective of Pfizer was to
ask for damages and to permanently prevent Pharmawealth
from selling the contested products. Relevantly, the Supreme
Court has decided that the filing of two actions with the same
objective, as in this instance, constitutes forumshopping.

Owing to the substantial identity of parties, reliefs and issues

7
COPYRIGHT LAW such copies has been such, as to satisfy the reasonable
requirements of the public, having regard to the nature of the
DEFINITION (Sec 171-171.13) work;

Section 171. Definitions. - For the purpose of this Act, the 171.8. "Rental" is the transfer of the possession of the
following terms have the following meaning: original or a copy of a work or a sound recording for a limited
period of time, for profit-making purposes;
171.1. "Author" is the natural person who has created the
work; 171.9. ‗Reproduction‘ is the making of one (1) or more
copies, temporary or permanent, in whole or in part, of a
171.2. A "collective work" is a work which has been created
work or a sound recording in any manner or form without
by two (2) or more natural persons at the initiative and under
prejudice to the provisions of Section 185 of this Act (Sec.
the direction of another with the understanding that it will be
41[E], P.D. No. 49a);
disclosed by the latter under his own name and that
contributing natural persons will not be identified; 171.10. A "work of applied art" is an artistic creation with
utilitarian functions or incorporated in a useful article,
171.3. ‗Communication to the public’ or ‗communicate to
whether made by hand or produced on an industrial scale;
the public‘ means any communication to the public, including
broadcasting, rebroadcasting, retransmitting by cable, 171.11. A "work of the Government of the Philippines" is a
broadcasting and retransmitting by satellite, and includes the work created by an officer or employee of the Philippine
making of a work available to the public by wire or wireless Government or any of its subdivisions and instrumentalities,
means in such a way that members of the public may access including government-owned or controlled corporations as a
these works from a place and time individually chosen by part of his regularly prescribed official duties.
them;
171.12. ‗Technological measure’ means any technology,
171.4. A "computer" is an electronic or similar device device or component that, in the normal course of its
having information-processing capabilities, and a "computer operation, restricts acts in respect of a work, performance or
program" is a set of instructions expressed in words, codes, sound recording, which are not authorized by the authors,
schemes or in any other form, which is capable when performers or producers of sound recordings concerned or
incorporated in a medium that the computer can read, of permitted by law;
causing the computer to perform or achieve a particular task
or result; 171.13. ‗Rights management information‘ means
information which identifies the work, sound recording or
171.5. "Public lending" is the transfer of possession of the performance; the author of the work, producer of the sound
original or a copy of a work or sound recording for a limited recording or performer of the performance; the owner of any
period, for non-profit purposes, by an institution the services right in the work, sound recording or performance; or
of which are available to the public, such as public library or information about the terms and conditions of the use of the
archive; work, sound recording or performance; and any number or
code that represent such information, when any of these items
171.6. "Public performance", in the case of a work other
is attached to a copy of the work, sound recording or fixation
than an audio-visual work, is the recitation, playing, dancing,
of performance or appears in conjunction with the
acting or otherwise performing the work, either directly or by
communication to the public of a work, sound recording of
means of any device or process; in the case of an audio-visual
performance.
work, the showing of its images in sequence and the making
of the sounds accompanying it audible; and, in the case of a ORIGINAL WORKS
sound recording, making the recorded sounds audible at a
place or at places where persons outside the normal circle of a Works Protected:
family and that family's closest social acquaintances are or
can be present, irrespective of whether they are or can be 1. Literary and Artistics Works
present at the same place and at the same time, or at different
Section 172. Literary and Artistic Works. - 172.1. Literary
place and/or at different times, and where the performance
and artistic works, hereinafter referred to as "works", are
can be perceived without the need for communication within
original intellectual creations in the literary and artistic
the meaning of Subsection 171.3;
domain protected from the moment of their creation and shall
171.7. "Published works" means works, which, with the include in particular:
consent of the authors, are made available to the public by
(a) Books, pamphlets, articles and other writings;
wire or wireless means in such a way that members of the
public may access these works from a place and time
(b) Periodicals and newspapers;
individually chosen by them: Provided, That availability of

8
(c) Lectures, sermons, addresses, dissertations prepared for employed or any part thereof, or be construed to imply any
oral delivery, whether or not reduced in writing or other right to such use of the original works, or to secure or extend
material form; copyright in such original works. (Sec. 8, P.D. 49; Art. 10,
TRIPS)
(d) Letters;
Section 174. Published Edition of Work. - In addition to the
(e) Dramatic or dramatico-musical compositions; right to publish granted by the author, his heirs, or assigns,
choreographic works or entertainment in dumb shows; the publisher shall have a copyright consisting merely of the
right of reproduction of the typographical arrangement of the
(f) Musical compositions, with or without words;
published edition of the work. (n)
(g) Works of drawing, painting, architecture, sculpture,
Note:
engraving, lithography or other works of art; models or
designs for works of art; Derivative works are original work.

(h) Original ornamental designs or models for articles of There must be compliance of the requirements:
manufacture, whether or not registrable as an industrial
design, and other works of applied art; 1. must borrow the original and expressive content

(i) Illustrations, maps, plans, sketches, charts and three- 2. the work must alter not merely copy. / must have
dimensional works relative to geography, topography, substantial variation
architecture or science;
Article 5 of civil code.
(j) Drawings or plastic works of a scientific or technical No right can spring from an unlawful act.
character;
Protection, when commenced:
(k) Photographic works including works produced by a
process analogous to photography; lantern slides; 172.2. Works are protected by the sole fact of their creation,
irrespective of their mode or form of expression, as well as of
(l) Audio-visual works and cinematographic works and works their content, quality and purpose. (Sec. 2, P.D. No. 49a)
produced by a process analogous to cinematography or any
process for making audio-visual recordings; Works not protected:

(m) Pictorial illustrations and advertisements; Section 175. Unprotected Subject Matter. - Notwithstanding
the provisions of Sections 172 and 173, no protection shall
(n) Computer programs; extend, under this law, to any idea, procedure, system,
method or operation, concept, principle, discovery or mere
Note: Computer program are copyrightable in this
data as such, even if they are expressed, explained, illustrated
jurisdiction but not patentable.
or embodied in a work; news of the day and other
miscellaneous facts having the character of mere items of
(o) Other literary, scholarly, scientific and artistic works.
press information; or any official text of a legislative,
2. Derivative Works administrative or legal nature, as well as any official
translation thereof (n)
Section 173. Derivative Works. - 173.1. The following
derivative works shall also be protected by copyright: Section 176. Works of the Government. - 176.1. No
copyright shall subsist in any work of the Government of the
(a) Dramatizations, translations, adaptations, abridgments, Philippines. However, prior approval of the government
arrangements, and other alterations of literary or artistic agency or office wherein the work is created shall be
works; and necessary for exploitation of such work for profit. Such
agency or office may, among other things, impose as a
(b) Collections of literary, scholarly or artistic works, and condition the payment of royalties. No prior approval or
compilations of data and other materials which are original by conditions shall be required for the use of any purpose of
reason of the selection or coordination or arrangement of their statutes, rules and regulations, and speeches, lectures,
contents. (Sec. 2, [P] and [Q], P.D. No. 49) sermons, addresses, and dissertations, pronounced, read or
rendered in courts of justice, before administrative agencies,
173.2. The works referred to in paragraphs (a) and (b) of
in deliberative assemblies and in meetings of public
Subsection 173.1 shall be protected as new works:
character. (Sec. 9, first par., P.D. No. 49)
Provided however, That such new work shall not affect the
176.2. The author of speeches, lectures, sermons, addresses,
force of any subsisting copyright upon the original works
and dissertations mentioned in the preceding paragraphs shall
9
have the exclusive right of making a collection of his works. paragraphs, and articles in periodicals," and it protects an
(n) enterprising newspaper or magazine that invests its money
and pays for the right to publish an original article, and that
176.3. Notwithstanding the foregoing provisions, the was the reason why the Legislature saw fit to use the
Government is not precluded from receiving and holding language in question.
copyrights transferred to it by assignment, bequest or
otherwise; nor shall publication or republication by the Above and beyond all this, it would seem that upon the
Government in a public document of any work in which undisputed facts in this case, common courtesy among
copyright is subsisting be taken to cause any abridgment or newspaper men would suggest that the defendant would give
annulment of the copyright or to authorize any use or "the source of the reproduction." It would have been a very
appropriation of such work without the consent of the simple and an easy thing to do.
copyright owner. (Sec. 9, third par., P.D. No. 49)
Santos vs McCullough
Notes:
Law: Art. 721. By intellectual creation, the following
When work is created? persons acquire ownership:

A work is created when two requirements are Originality and (1) The author with regard to his literary, dramatic, historical,
some form of expression. legal, philosophical, scientific or other work;

The work must have their origin in the labor of the author. (2) The composer; as to his musical composition;

Original as the term is used in copyright means only that the (3) The painter, sculptor, or other artist, with respect to the
work was independently created by the author (as opposed to product of his art;
copied from the other works) and that it possess at least some
minimal degree of creativity. The distinction is one between (4) The scientist or technologist or any other person with
creation and discovery: the first person to find a particular regard to his discovery or invention. (n)
fact has not created the fact: he or she has merely discovered
Art. 722. The author and the composer, mentioned in Nos. 1
its existence.
and 2 of the preceding article, shall have the ownership of
However, it is not necessary, to qualify for copyright their creations even before the publication of the same. Once
protection, that works should pass a test of imaginativeness. their works are published, their rights are governed by the
Copyright laws.
The right to obtain a copyright on a book depends on
originality of the author‘s work and not upon any standard of The painter, sculptor or other artist shall have dominion over
merit. the product of his art even before it is copyrighted.

2nd Requirement: Expression The scientist or technologist has the ownership of his
discovery or invention even before it is patented. (n)
In order for a work to be entitled protection, there must at
least be some verifiable expression of the intellectual product. Whether or not the creator of an artistic design may prevent
Idea is not protected, only the expression. There is creation its production by another where the artistic design has been
when an idea is expressed in some tangible medium. previously published without a copyright?

BASIC PRINCIPLES (CASES) Paragraph 33 of Patent Office Administrative Order No. 3 (as
amended dated September 18, 1947) entitled "Rules of
Philippine Education vs Alindala Practice in the Philippines Patent Office relating to the
Registration of Copyright Claims" promulgated pursuant to
Whether or not the principle under US Copyright Law, that Republic Act 165, provides, among others, that an
after an article is once published without a copyright, it intellectual creation should be copyrighted thirty (30)
becomes public property, is applicable under Philippine days after its publication, if made in Manila, or within
Copyright Law? sixty (60) day's if made elsewhere, failure of which
renders such creation public property.
NO. The language in question in the Copyright Law of the
Philippine Islands, which is not found in the Copyright Law When the purpose is a limited publication, but the effect is
of the United States, was inserted for a specific purpose, and general publication, irrevocable rights thereupon become
it was intended to prohibit the doing of the very thing which vested in the public, in consequence of which enforcement of
the defendant did in this case; otherwise, the use of all of the restriction becomes impossible.
those words is a nullity. This construction does not least
impair the Copyright Law, except as to "news items, editorial

10
The author of a literary composition has a light to the first The essence of a copyright infringement is the similarity or at
publication thereof. He has a right to determine whether it least substantial similarity of the purported pirated works to
shall be published at all, and if published, when, where, by the copyrighted work. Hence, the applicant must present to
whom, and in what form. This exclusive right is confined to the court the copyrighted films to compare them with the
the first publication. purchased evidence of the video tapes allegedly pirated to
determine whether the latter is an unauthorized reproduction
When once published, it is dedicated to the public, and the of the former. This linkage of the copyrighted films to the
author loses the exclusive right to control subsequent pirated films must be established to satisfy the requirements
publication by others, unless the work is placed under the of probable cause. Mere allegations as to the existence of the
protection of the copyright law. copyrighted films cannot serve as basis for the issuance of a
search warrant.
Two classes of property rights:
Columbia Pictures vs CA
The fact of authorship - the artist cannot be divested of the
same. In other words, he may sell the right to print hundred of Whether or not the 20th Century Fox ruling may be applied
his work yet the purchaser of said right can never be the retroactively in this case?
author of the creation.
No. In 1986, obviously the 1988 case of 20th Century Fox was
The right to publish, republish, multiply and/or distribute not yet promulgated. The lower court could not possibly have
copies of the intellectual creation - the author or his assigns expected more evidence from the VRB and Columbia
or heirs may have the work copyrighted and once this is Pictures in their application for a search warrant other than
legally accomplished any infringement of the copyright will what the law and jurisprudence, then existing and judicially
render the infringer liable to the owner of the copyright. accepted, required with respect to the finding of probable
cause.
20th Century Fox vs CA
The Supreme Court also revisited and clarified the ruling in
Whether or not the search and seizures conducted in
the 20th Century Fox Case. It is evidently incorrect to suggest,
connection with the government’s anti-film piracy campaign
as the ruling in 20th Century Fox may appear to do, that in
is valid?
copyright infringement cases, the presentation of master tapes
of the copyright films is always necessary to meet the
NO. The search and seizure is not valid based on the
requirement of probable cause for the issuance of a search
following reasons:
warrant. It is true that such master tapes are object evidence,
Absence of Probable Cause with the merit that in this class of evidence the ascertainment
of the controverted fact is made through demonstration
The NBI agents who acted as witnesses did not have personal involving the direct use of the senses of the presiding
knowledge of the subject matter of their testimony that the magistrate. Such auxiliary procedure, however, does not rule
confiscated tapes owned by private respondents were pirated out the use of testimonial or documentary evidence,
tapes. depositions, admissions or other classes of evidence tending
to prove the factum probandum, especially where the
Non-Presentation of Master Tapes production in court of object evidence would result in delay,
inconvenience or expenses out of proportion to is evidentiary
The presentation of the master tapes of the copyrighted films
value.
from which the pirated films were allegedly copied was
necessary for the validity of search warrants against those In fine, the supposed pronouncement in said case regarding
who have in their possession the pirated films. The court the necessity for the presentation of the master tapes of the
cannot presume that duplicate or copied tapes were copy-righted films for the validity of search warrants should
necessarily reproduced from master tapes that it owns. at most be understood to merely serve as a guidepost in
determining the existence of probable cause in copyright
Search warrant issued is a general warrant
infringement cases where there is doubt as to the true nexus
The articles seized are generally connected with or related to between the master tape and the pirated copies. An objective
a legitimate business not necessarily involving piracy of and careful reading of the decision in said case could lead to
no other conclusion than that said directive was hardly
intellectual property or infringement of copyright laws.
intended to be a sweeping and inflexible requirement in all or
Hence, including these articles without specifications and/or similar copyright infringement cases.
particularity that they were really instruments in violating
Anti-Piracy Law makes the search warrant too general which Joaquin vs Drilon
could result in the confusion of all items found in any video
Whether or not the order of Drilon finding no probable cause
store.
is valid?
11
Yes. The essence of copyright infringement is the copying, in Whether or not there is substantial similarity between Coors
whole or in part, of copyrightable materials as defined and photograph and Garnett photograph thus constituting
enumerated in Section 2 of PD. No. 49 (Copyright copyright infringement?
Law). Apart from the manner in which it is actually
expressed, however, the idea of a dating game show is a non- To prove infringement, a plaintiff with a valid copyright must
copyrightable material. Ideas, concepts, formats, or demonstrate that: (1) the defendant has actually copied the
schemes in their abstract form clearly do not fall within plaintiff's work; and (2) the copying is illegal because a
the class of works or materials susceptible of copyright substantial similarity exists between the defendant's work
registration as provided in PD. No. 49. What is covered by and the protectible elements of plaintiff's.
BJPI‘s copyright is the specific episodes of the show Rhoda
Actual copying - which is used as a term of art to mean that
and Me.
"the defendant, in creating its work, used the plaintiff's
Further, BJPI should have presented the master videotape of material as a model, template, or even inspiration" - may be
the show in order to show the linkage between the copyright shown by direct evidence, which rarely is available, or by
show (Rhoda and Me) and the infringing show (It‘s a Date). proof of access and probative similarities (as distinguished
This is based on the ruling in 20th Century Fox vs CA (though from "substantial similarity") between the two works.
this has been qualified by Columbia Pictures vs CA, this is
Protectible Elements of Garnett Photography
still good law). Though BJPI did provide a lot of written
evidence and description to show the linkage between the
Originality
shows, the same were not enough. A television show includes
more than mere words can describe because it involves a Copyright protection may extend only to those components of
whole spectrum of visuals and effects, video and audio, such a work that are original to the author. 'Original' in the
that no similarity or dissimilarity may be found by merely copyright context "means only that the work was
describing the general copyright/format of both dating game independently created by the author (as opposed to copied
shows. from other works), and that it possesses at least some minimal
degree of creativity.
Habana vs Robles
Originality depends upon independent creation, and the
Whether or not respondents are liable for copyright
photographer did not create that object. By contrast, if a
infringement?
photographer arranges or otherwise creates the subject that
his camera captures, he may have the right to prevent others
YES. A perusal of the records yields several pages of the
from producing works that depict that subject.
book DEP that are similar if not identical with the text of
CET. In several other pages the treatment and manner of
1. Rendition – copyright protects not what is depicted
presentation of the topics of DEP are similar if not a rehash of
but rather how it is depicted. The effects are the
that contained in CET. The similarities in examples and
basis of originality of the works i.e. the effect
material contents are so obviously present in this case. How
produced by the lens and filters selected
can similar/identical examples not be considered as a mark of
copying? Robles‘ act of lifting from the book of Habana et al 2. Timing – a person may create a worthwhile
substantial portions of discussions and examples, and her photograph by being at the right place at the right
failure to acknowledge the same in her book is an time. Copyright based on originality in timing is
infringement of Habana et al‘s copyrights. limited by the principle that copyright in a
photograph ordinarily confers no rights over the
The Supreme Court also elucidated that in determining the
subject matter.
question of infringement, the amount of matter copied from
the copyrighted work is an important consideration. To 3. Creation of the Subject - The principle that
constitute infringement, it is not necessary that the whole or copyright confers no right over the subject matter
even a large portion of the work shall have been copied. If so has an important limitation. A photograph may be
much is taken that the value of the original is sensibly original to the extent that the photographer created
diminished, or the labors of the original author are "the scene or subject to be photographed.
substantially and to an injurious extent appropriated by
another, that is sufficient in point of law to constitute piracy. To conclude, the nature and extent of protection conferred by
the copyright in a photograph will vary depending on the
PREREQUISITES AND ELEMENTS FOR nature of its originality. Insofar as a photograph is original in
COPYRIGHTABLE SUBJECT MATTER (Originality the rendition or timing, copyright protects the image but does
and Creativity) not prevent others from photographing the same object or
scene.
Mannion vs Coors
Ong Ching Kian Chuan vs CA
12
Whether or not the issuance of the writ of preliminary award for temperate damages, not nominal damages. For
injunction in favor of respondent Tan was proper? although the exact amount of damage or loss can not be
determined with reasonable certainty, the fact that there was
YES. A person to be entitled to a copyright must be the infringement means they suffered losses for which they are
original creator of the work. He must have created it by entitled to moderate damages. We find that the award of
his own skill, labor and judgment without directly P50,000.00 as temperate damages fair and reasonable,
copying or evasively imitating the work of another. The considering the circumstances herein as well as the global
copies of the certificates of copyright registered in the name coverage and reputation of private respondents Levi Strauss
of Ceroilfood Shandong sufficiently raise reasonable doubt. & Company and Levi Strauss (Phil.), Inc.
With such a doubt, the preliminary injunction asked by Ong
against Tan is unavailing.
Both the trail court and the Court of Appeals found there was
To be entitled to an injunctive writ, petitioner must show, infringement.
inter alia, the existence of a clear and unmistakable right and
an urgent and paramount necessity for the writ to prevent Feist Pubs., Inc vs Rural Tel
serious damage. In this case, the Court found that petitioner‘s
right has not been clearly and unmistakably demonstrated. Whether or not the names, addresses, and phone numbers in
a telephone directory able to be copyrighted?
The Court added it was premature for the CA to declare that
the design of petitioner‘s wrapper is a copy of the wrapper No. Facts cannot be copyrighted, however compilations of
allegedly registered by Ceroilfood Shandong. The only issue facts can generally be copyrighted.
brought before the CA involved the grave abuse of discretion
To qualify for copyright protection, a work must be
allegedly committed by the trial court in granting the writ of
original to the author, which means that the work was
preliminary injunction, and not on the merits of the
independently created by the author, and it possesses at
infringement case. That matter remains for decision after
least some minimal degree of creativity. A work may be
appropriate proceedings at the trial court.
original even though it closely resembles other works so long
Sambar vs Levi Strauss Co. as the similarity is fortuitous, not the result of copying.

Whether or not petitioner infringe on private respondent’s Facts are not original. The first person to find and report a
arcuate design? particular fact has not created the fact; he has merely
discovered its existence. Facts may not be copyrighted and
To be entitled to a copyright, the thing being copyrighted are part of the public domain available to every person.
must be original, created by the author through his own skill,
labor and judgment, without directly copying or evasively Factual compilations may possess the requisite originality.
imitating the work of another. The author chooses what facts to include, in what order to
place them, and how to arrange the collected date so they may
From the foregoing discussion, it is clear that the matters be effectively used by readers. Thus, even a directory that
raised by petitioner in relation to the last issue are purely contains no written expression that could be protected, only
factual, except the matter of nominal and temperate damages. facts, meets the constitutional minimum for copyright
Petitioner claims that damages are not due private protection if it features an original selection or arrangement.
respondents and his copyright should not be cancelled But, even though the format is original, the facts themselves
because he had not infringed on Levi‘s trademark. Both the do not become original through association. The copyright on
trial court and the Court of Appeals found there was a factual compilation is limited to formatting. The copyright
infringement. Thus, the award of damages and does not extend to the facts themselves.
cancellation of petitioner’s copyright are
appropriate. Award of damages is clearly provided in To establish copyright infringement, two elements must be
Section 23 of the Trademark law, while cancellation of proven: ownership of a valid copyright and copying of
petitioner’s copyright finds basis on the fact that the design constituent elements of the work that are original. The first
was a mere copy of that of private respondents’ element is met in this case because the directory contains
trademark. To be entitled to copyright, the thing being some forward text. As to the second element, the information
copyrighted must be original, created by the author through contains facts, which cannot be copyrighted. They existed
his own skill, labor and judgment, without directly copying or before being reported and would have continued to exist if a
evasively imitating the work of another telephone directory had never been published. There is no
originality in the formatting, so there is no copyrightable
However, we agree with petitioner that it was error for the expression. Thus, there is no copyright infringement.
Court of Appeals to affirm the award of nominal damages
combined with temperate damages by the Regional Trial Copyright treats facts and factual compilations in a wholly
Court of Makati. What respondents are entitled to is an consistent manner. Facts, whether alone or as part of a

13
compilation, are not original and therefore may not be property in virtue of a search warrant does not end with the
copyrighted. A factual compilation is eligible for copyright if actual taking of the property by the proper officers and its
it features an original selection or arrangement of facts, but delivery, usually constructive, to the court. The order for the
the copyright is limited to the particular selection or issuance of the warrant is not a final one and cannot
arrangement. In no event may copyright extend to the facts constitute res judicata. Such an order does not ascertain and
themselves. adjudicate the permanent status or character of the seized
property. By its very nature, it is provisional, interlocutory. It
The primary objective of copyright is not to reward the labor is merely the first step in the process to determine the
of authors, but "to promote the Progress of Science and useful character and title of the property. That determination is done
Arts." in the criminal action involving the crime or crimes in
connection with which the search warrant was issued. Hence,
Meshwerks vs Toyota
such a criminal action should be prosecuted, or commenced if
not yet instituted, and prosecuted. The outcome of the
criminal action will dictate the disposition of the seized
Manly Sportswear vs Dadotte property…

Whether or not the issuance of certificate of registration and Further, the copyright certificates issued in favor of MANLY
deposit puts the copyrighted article in the mantle of constitute merely prima facie evidence of validity and
protection of the copyright law? ownership. However, no presumption of validity is created
where other evidence exist that may cast doubt on the
Where the copyrighted products do not appear to be original copyright validity. Hence, where there is sufficient proof that
creations and are not among the classes of work enumerated the copyrighted products are not original creations but are
under Section 172 of RA 8293, trial court may not be faulted readily available in the market under various brands, as in this
for overturning its initial assessment that there was probable case, validity and originality will not be presumed and the
cause in view of its inherent power to issue search warrants trial court may properly quash the issued warrant for lack of
and to quash the same. In the instant case, we find that the probable cause.
trial court did not abuse its discretion when it entertained the
motion to quash considering that no criminal action has yet At most, the certificates of registration and deposit issued by
been instituted when it was filed. the National Library and the Supreme Court Library serve
merely as a notice of recording and registration of the work
The trial court also properly quashed the search warrant it but do not confer any right or title upon the registered
earlier issued after finding upon re-evaluation of the evidence copyright owner or automatically put his work under the
that no probable cause exists to justify its issuance in the first protective mantle of the copyright law. It is not a conclusive
place. As ruled by the trial court, the copyrighted products do proof of copyright ownership. As it is, non-registration and
not appear to be original creations of MANLY and are not deposit of the work within the prescribed period only makes
among the classes of work enumerated under Section 172 of the copyright owner liable to pay a fine.
RA 8293. The trial court, thus, may not be faulted for
overturning its initial assessment that there was probable
cause in view of its inherent power to issue search warrants
and to quash the same. No objection may be validly posed to
an order quashing a warrant already issued as the court must
be provided with the opportunity to correct itself of an error
unwittingly committed, or, with like effect, to allow the
aggrieved party the chance to convince the court that its
ruling is erroneous.

The order quashing a search warrant is not res judicata on the


issue of copyright infringement- the applicant for a search
warrant could still file a separate copyright infringement suit
against the respondents. As correctly observed by the Court
of Appeals, the trial court‘s finding that the seized products
are not copyrightable was merely preliminary as it did not
finally and permanently adjudicate on the status and character
of the seized items. MANLY could still file a separate
copyright infringement suit against the respondents because
the order for the issuance or quashal of a warrant is not res
judicata. Thus, in Vlasons Enterprises Corporation v. Court of
Appeals we held that: The proceeding for the seizure of

14
Unilever vs CA As gleaned from the description of the models and their
objectives, these articles are useful articles which are defined
Whether or not P&GP is entitled to any protection even if no as one having an intrinsic utilitarian function that is not
registration has been made with the National Library of the merely to portray the appearance of the article or to convey
disputed TV commercial? information. Indeed, while works of applied art, original
intellectual, literary and artistic works are copyrightable,
Injunction is resorted to only when there is a pressing
useful articles and works of industrial design are not. A
necessity to avoid injurious consequences which cannot be
useful article may be copyrightable only if and only to the
remedied under any standard compensation. As correctly
extent that such design incorporates pictorial, graphic, or
ruled by the CA, there was an extreme urgency to grant the
sculptural features that can be identified separately from, and
preliminary injunction prayed for by P&GP considering that
are capable of existing independently of the utilitarian
TV commercials are aired for a limited period of time only.
aspects of the article.
In fact, this Court takes note of the fact that the TV
commercial in issue ― the Kite TV advertisement ― is no In this case, the petitioner’s models are not works of applied
longer aired today, more than 10 years after the injunction art, nor artistic works. They are utility models, useful
was granted on September 16, 1994. articles, albeit with no artistic design or value.

Section 2 of PD 49 stipulates that the copyright for a work or A utility model is a technical solution to a problem in any
intellectual creation subsists from the moment of its creation. field of human activity which is new and industrially
Accordingly, the creator acquires copyright for his work right applicable. It may be, or may relate to, a product, or
upon its creation. process, or an improvement of any of the aforesaid.
Essentially, a utility model refers to an invention in the
Ching vs. Salinas mechanical field. This is the reason why its object is
sometimes described as a device or useful object.
Whether or not Leaf Spring Eye Bushing is protected under
the Copyright Law?
UTILITY MODEL v. INVENTION: first, the requisite of
“inventive step” in a patent for invention is not required;
The RTC had jurisdiction to delve into and resolve the issue
second, the maximum term of protection is only seven years
whether the petitioner’s utility models are copyrightable and,
compared to a patent which is twenty years, in a patent for
if so, whether he is the owner of a copyright over the said
both reckoned from the date of the application; and third, the
models.
provisions on utility model dispense with its substantive
For the RTC to determine whether the crime for infringement examination and prefer for a less complicated system.
under R.A. No. 8293 as alleged in an application is
No copyright granted by law can be said to arise in favor of
committed, the petitioner-applicant was burdened to prove
the petitioner despite the issuance of the certificates of
that (a) respondents Jessie Ching and Joseph Yu were the
copyright registration and the deposit of the Leaf Spring Eye
owners of copyrighted material; and (b) the copyrighted
Bushing and Vehicle Bearing Cushion.
material was being copied and distributed by the
respondents. Thus, the ownership of a valid copyright is
That the works of the petitioner may be the proper subject of
essential.
a patent does not entitle him to the issuance of a search
warrant for violation of copyright laws. In Kho v. Court of
Ownership of copyrighted material is shown by proof of
Appeals[49] and Pearl & Dean (Phil.), Incorporated v.
originality and copyrightability. By originality is meant that
Shoemart, Incorporated,[50] the Court ruled that “these
the material was not copied, and evidences at least minimal
copyright and patent rights are completely distinct and
creativity; that it was independently created by the author
separate from one another, and the protection afforded by
and that it possesses at least same minimal degree of
one cannot be used interchangeably to cover items or works
creativity.
that exclusively pertain to the others.
Copying is shown by proof of access to copyrighted material
In this case, the bushing and cushion are not works of art.
and substantial similarity between the two works.
They are, as the petitioner himself admitted, utility
It bears stressing that the focus of copyright is the usefulness models which may be the subject of a patent.
of the artistic design, and not its marketability. The central
inquiry is whether the article is a work of art.] Works for Telstra Case
applied art include all original pictorials, graphics, and
sculptural works that are intended to be or have been
embodied in useful article regardless of factors such as mass
production, commercial exploitation, and the potential
availability of design patent protection.

15
Laktaw vs Paglinawan 177.7. Other communication to the public of the work. (Sec.
5, P. D. No. 49a)
Law: Article 7 of the Law of January 10, 1879, on
Intellectual Property: Case: Filipino Society of Composers

Nobody may reproduce another person's work without the Whether or not the playing and singing of musical
owner's consent, even merely to annotate or add anything to compositions which have been copyrighted under the
it, or improve any edition thereof. provisions of the Copyright Law (Act 3134) inside the
establishment of Benjamin Tan constitute a public
Whether or not Paglinawan violated Article 7 of the performance for profit within the meaning and contemplation
Intellectual Property Law (1879)? of the Copyright Law of the Philippines?

Yes, Paglinawan violated Article 7 of Intellectual Property Yes. The playing of music in dine and dance establishment
Law. which was paid for by the public in purchases of food and
drink constituted "performance for profit" within a Copyright
It is not necessary that a work should be an improper copy of
Law (Buck, et al. v. Russon No. 4489 25 F. Supp. 317).
another work previously published. It is enough that another's
work has been reproduced without the consent of the owner, Music provided by a combo in a restaurant constitutes public
even though it be only to annotate, add something to it, or performance for profit within the meaning of the Copyright
improve any edition thereof. Law.In the case at bar, it is admitted that the patrons of the
restaurant in question pay only for the food and drinks and
As early as 1918, the Supreme Court enunciated that a person
apparently not for listening to the music. As found by the trial
who published a Spanish-Tagalog dictionary and copied the
court, the music provided is for the purpose of entertaining
equivalents, definitions and different meanings given in
and amusing the customers in order to make the
another author‘s Spanish-Tagalog dictionary, although
establishment more attractive and desirable. It will be noted
making some additions of his own and some unimportant
that for the playing and singing the musical compositions
changes in the examples to illustrate the meanings of the
involved, the combo was paid as independent contractors by
words, has violated the intellectual property rights of other
the appellant . It is therefore obvious that the expenses
author. The Supreme Court reasoned that although words are
entailed thereby are added to the overhead of the restaurant
not the property of anybody, their definitions, the example
which are either eventually charged in the price of the food
that explain their sense and the manner of expressing their
and drinks or to the overall total of additional income
different meanings, may constitute special work.
produced by the bigger volume of business which the
entertainment was programmed to attract. Consequently, it is
RIGHTS OF COPYRIGHT OWNER (Sec. 177)
beyond question that the playing and singing of the combo
Section 177. Copyright or Economic Rights. - Subject to the in defendant-appellee's restaurant constituted performance
provisions of Chapter VIII, copyright or economic rights shall for profit contemplated by the Copyright Law. (Act 3134
consist of the exclusive right to carry out, authorize or amended by P.D. No. 49, as amended).
prevent the following acts:
If the general public has made use of the object sought to be
177.1. Reproduction of the work or substantial portion of the copyrighted within 30 days prior to the copyright application,
work; the law deems the object to have been donated to the public
domain and can no longer be copyrighted as in the case of the
177.2. Dramatization, translation, adaptation, abridgment, songs at bar. The Supreme Court has ruled that "Paragraph 33
arrangement or other transformation of the work; of Patent Office Administrative Order No. 3 (as amended,
dated September 18, 1947) entitled 'Rules of Practice in the
177.3. The first public distribution of the original and each Philippines Patent Office relating to the Registration of
copy of the work by sale or other forms of transfer of Copyright Claims' promulgated pursuant to Republic Act
ownership; 165, provides among other things that an intellectual creation
should be copyrighted thirty (30) days after its publication, if
177.4. Rental of the original or a copy of an audio-visual or
made in Manila, or within the (60) days if made elsewhere,
cinematographic work, a work embodied in a sound
failure of which renders such creation public property."
recording, a computer program, a compilation of data and
(Santos v. McCullough Printing Company, 12 SCRA 324-325
other materials or a musical work in graphic form,
[1964]. Indeed, if the general public has made use of the
irrespective of the ownership of the original or the copy
object sought to be copyrighted for thirty (30) days prior to
which is the subject of the rental; (n)
the copyright application the law deems the object to have
been donated to the public domain and the same can no
177.5. Public display of the original or a copy of the work;
longer be copyrighted.
177.6. Public performance of the work; and

16
A careful study of the records reveals that the song "Dahil Sa 178.4. In the case of a work commissioned by a person other
Iyo" which was registered on April 20, 1956 (Brief for than an employer of the author and who pays for it and the
Appellant, p. 10) became popular in radios, juke boxes, etc. work is made in pursuance of the commission, the person
long before registration (TSN, May 28, 1968, pp. 3-5; 25) who so commissioned the work shall have ownership of the
while the song "The Nearness Of You" registered on January work, but the copyright thereto shall remain with the creator,
14, 1955 (Brief for Appellant, p. 10) had become popular unless there is a written stipulation to the contrary;
twenty five (25) years prior to 1968, (the year of the hearing)
or from 1943 (TSN, May 28, 1968, p. 27) and the songs 178.5. In the case of audio-visual work, the copyright shall
"Sapagkat Ikaw Ay Akin" and "Sapagkat Kami Ay Tao belong to the producer, the author of the scenario, the
Lamang" both registered on July 10, 1966, appear to have composer of the music, the film director, and the author of the
been known and sang by the witnesses as early as 1965 or work so adapted. However, subject to contrary or other
three years before the hearing in 1968. The testimonies of the stipulations among the creators, the producer shall exercise
witnesses at the hearing of this case on this subject were the copyright to an extent required for the exhibition of the
unrebutted by the appellant. (Ibid, pp. 28; 29 and 30). Under work in any manner, except for the right to collect performing
the circumstances, it is clear that the musical compositions in license fees for the performance of musical compositions,
question had long become public property, and are therefore with or without words, which are incorporated into the work;
beyond the protection of the Copyright Law. and

Kirsaeng vs Wiley 178.6. In respect of letters, the copyright shall belong to the
writer subject to the provisions of Article 723 of the Civil
Arbitrage – the practice of buying something in one place Code. (Sec. 6, P.D. No. 49a)
and selling it almost immediately in another place where it is
worth more. Section 179. Anonymous and Pseudonymous Works. - For
purposes of this Act, the publishers shall be deemed to
First Sale Doctrine – The doctrine which typically enables represent the authors of articles and other writings published
the lawful owner of a book to resell or otherwise dispose it as without the names of the authors or under pseudonyms,
he wishes. unless the contrary appears, or the pseudonyms or adopted
name leaves no doubt as to the author's identity, or if the
Objective Reasonableness Approach - it both encourages author of the anonymous works discloses his identity. (Sec. 7,
parties with strong legal positions to stand on their rights and P.D. 49)
deters those with weak ones from proceeding with litigation.
Civil Code: Art. 723.
COPYRIGHT OWNERSHIP
Letters and other private communications in writing are
Section 178. Rules on Copyright Ownership. - Copyright owned by the person to whom they are addressed and
ownership shall be governed by the following rules: delivered, but they cannot be published or disseminated
without the consent of the writer or his heirs. However, the
178.1 Subject to the provisions of this section, in the case of
court may authorize their publication or dissemination if the
original literary and artistic works, copyright shall belong to
public good or the interest of justice so requires. (n)
the author of the work;
TRANSFER OR ASSIGNMENT OF COPYRIGHT
178.2. In the case of works of joint authorship, the co-authors
shall be the original owners of the copyright and in the Section 180. Rights of Assignee. - 180.1. The copyright may
absence of agreement, their rights shall be governed by the be assigned in whole or in part. Within the scope of the
rules on co-ownership. If, however, a work of joint authorship assignment, the assignee is entitled to all the rights and
consists of parts that can be used separately and the author of remedies which the assignor had with respect to the
each part can be identified, the author of each part shall be the copyright.
original owner of the copyright in the part that he has created;
180.2. The copyright is not deemed assigned inter vivos in
178.3. In the case of work created by an author during and in whole or in part unless there is a written indication of such
the course of his employment, the copyright shall belong to: intention.

(a) The employee, if the creation of the object of copyright is 180.3. The submission of a literary, photographic or artistic
not a part of his regular duties even if the employee uses the work to a newspaper, magazine or periodical for publication
time, facilities and materials of the employer. shall constitute only a license to make a single publication
unless a greater right is expressly granted. If two (2) or more
(b) The employer, if the work is the result of the performance
persons jointly own a copyright or any part thereof, neither of
of his regularly-assigned duties, unless there is an agreement,
the owners shall be entitled to grant licenses without the prior
express or implied, to the contrary.

17
written consent of the other owner or owners. (Sec. 15, P.D. film should look like, the plaintiff may be said "author"
No. 49a) within the meaning of the Copyright Act.

Section 181. Copyright and Material Object. - The copyright A "joint work" under the Copyright Act is one "prepared by
is distinct from the property in the material object subject to two or more authors with the Intention that their contributions
it. Consequently, the transfer or assignment of the copyright be merged into inseparable or interdependent parts of a
shall not itself constitute a transfer of the material object. Nor unitary whole." To prove co-authorship status, it must be
shall a transfer or assignment of the sole copy or of one or shown by the individual claiming co-authorship status that
several copies of the work imply transfer or assignment of the each of the putative co-authors (1) fully intended to be co-
copyright. (Sec. 16, P.D. No. 49) authors, and (2) made independently copyrightable
contributions to the work.
Section 182. Filing of Assignment or License. - An
assignment or exclusive license may be filed in duplicate with Case: Erickson vs Trinity (Joint Authorship)
the National Library upon payment of the prescribed fee for
registration in books and records kept for the purpose. Whether or not theres is joint work between Trinity and
Erickson?
Upon recording, a copy of the instrument shall be returned to
the sender with a notation of the fact of record. Notice of the No. It is clear that, with regard to at least two works, Much
record shall be published in the IPO Gazette. (Sec. 19, P.D. Ado and Prairie Voices, Trinity cannot clear the first hurdle.
No. 49a) Much Ado is based on a work that Ms. Erickson had largely
completed before Trinity actors improvised based on Ms.
Section 183. Designation of Society. - The copyright owners Erickson's creation. The fact that one actor, Michael Osborne,
or their heirs may designate a society of artists, writers or suggested that Ms. Erickson include a passage from Macbeth
composers to enforce their economic rights and moral rights and an introduction to the play does not make him a joint
on their behalf. (Sec. 32, P.D. No. 49a) author. He conceded that whether his contributions were
included and where they went into the compilation were
Case: Lindsay vs RMS Titanic (Sole Authorship) entirely Ms. Erickson's decisions.

Whether or not Lindsay is the sole author of his subject Furthermore, neither Ms. Erickson nor Trinity considered any
work? of the actors to be co-authors with her in Much Ado, as is
evidenced by the licensing agreement. Similarly with Prairie
Yes. The Copyright Act of 1976 provides that copyright
Voices, Ms. Erickson provided the stories on which the play
ownership "vests initially in the author or authors of the
was based, and she decided which of the actors' suggestions
work." Generally speaking, the author of a work is the
were incorporated into the script. The actors did not consider
person "who actually creates the work, that is, the person who
themselves to be joint authors with Ms. Erickson, and there is
translates an idea into a fixed, tangible expression entitled to
no evidence that Ms. Erickson considered the actors as co-
copyright protection." In the context of film footage and
authors of the script. Because Trinity cannot establish the
photography, it makes intuitive sense that the "author" of a
requisite intent for Much Ado or Prairie Voices, the actors
work is the individual or individuals who took the pictures,
cannot be considered joint authors for the purposes of
i.e. the photographer.
copyright protection.
For over 100 years, the Supreme Court has recognized that
Elements of Joint Ownership:
photographs may receive copyright protection in ''so far as
they are representatives of original intellectual conceptions of 1. it must show the parties intended to be joint authors
the author". An individual claiming to be an author for at the time the work was created;
copyright purposes must show "the existence of those facts of
originality, of intellectual production, of thought, and 2. must show that its contributions to the works were
conception." Some elements of originality in a photograph independently copyrightable
includes "posing the subjects, lighting, angle, selection of
film and camera, evoking the desired expression, and almost
any variant involved."

All else being equal, where a plaintiff alleges that he


exercised such a high degree of control over a film operation
— including the type and amount of lighting used, the
specific camera angles to be employed, and other detail-
intensive artistic elements of a film — such that the final
product duplicates his conceptions and visions of what the

18
Two Competing Tests: (2) that the plaintiff owns the copyrights in those works;

1. Childress Standard - which requires both (3) that the copyrights have been registered in accordance
copyrightability and intent to be joint authors. with the statute; and

2. Collaboration Test - does not require each of the (4) "by what acts during what time" the defendant infringed
putative joint authors' contributions to be the copyright.
independently copyrightable.
Case: Almuhammed vs Lee
Tests in the determination of the contributions of authors
claiming joint authorship: Whether or not Almuhammed is a co-author of the copyright
of the movie Malcolm X?
De Minimis Standard - requires that "more than a word or
line must be added by one who claims to be a joint author. No. When interpreting a statute, we look first to the
Asserts that if two authors collaborate, with one contributing language.‖ The statutory language establishes that for a work
only uncopyrightable plot ideas and another incorporating to be a ―joint work‖ there must be (1) a copyrightable work,
those ideas into a completed literary expression, the two (2) two or more ―authors,‖ and (3) the authors must intend
authors should be regarded as joint authors of the resulting their contributions be merged into inseparable or
work. interdependent parts of a unitary whole.

This position has not found support in the courts. The lack of A ―joint work‖ in this circuit ―requires each author to make
support in all likelihood stems from one of several an independently copyrightable contribution‖ to the disputed
weaknesses in Professor Nimmer's approach. work. Malcolm X is a copyrightable work, and it is
undisputed that the movie was intended by everyone involved
First, Professor Nimmer's test is not consistent with one of with it to be a unitary whole. It is also undisputed that
the Act's premises: ideas and concepts standing alone should Aalmuhammed made substantial and valuable contributions
not receive protection. Because the creative process to the movie, including technical help, such as speaking
necessarily involves the development of existing concepts Arabic to the persons in charge of the mosque in Egypt,
into new forms, any restriction on the free exchange of ideas scholarly and creative help, such as teaching the actors how
stifles creativity to some extent. Restrictions on an author's to pray properly as Muslims, and script changes to add
use of existing ideas in a work, such as the threat that verisimilitude to the religious aspects of the movie.
accepting suggestions from another party might jeopardize
the author's sole entitlement to a copyright, would hinder Speaking Arabic to persons in charge of the mosque,
creativity. however, does not result in a copyrightable contribution to the
motion picture. Coaching of actors, to be copyrightable, must
Second, contribution of an idea is an exceedingly ambiguous be turned into an expression in a form subject to copyright.
concept. Professor Nimmer provides little guidance to courts
or parties regarding when a contribution rises to the level of But there is another element to a ―joint work.‖ A ―joint work‖
joint authorship except to state that the contribution must be includes ―two or more authors.‖ Aalmuhammed established
"more than a word or a line. that he contributed substantially to the film, but not that he
was one of its authors.‖ We hold that authorship is required
Copyrightability Test (Copyrightable Subject Matter) - under the statutory definition of a joint work, and that
According to Professor Goldstein, "a collaborative authorship is not the same thing as making a valuable and
contribution will not produce a joint work, and a contributor copyrightable contribution. We recognize that a contributor of
will not obtain a co-ownership interest, unless the an expression may be deemed to be the ―author‖ of that
contribution represents original expression that could stand expression for purposes of determining whether it is
on its own as the subject matter of copyright." independently copyrightable.

Furthermore, the parties must have intended to be joint


authors at the time the work was created. Id. Professor
Goldstein and the courts adopting his test justify this position
by noting that use of the word "authors" suggests that each
collaborator's contribution must be a copyrightable "work of
authorship" within the meaning of law.

To withstand a motion to dismiss, a complaint based on


copyright infringement must allege:

(1) which specific original works are the subject of the


copyright claim;
19
Case: Community for Creative Non-Violence vs Reid 9. whether the work is part of the regular business of
(Works made for hire) the hiring party;
10. whether the hiring party is in business;
Whether or not the sculpture made by Reid is a work made 11. the provision of employee benefits and the tax
for hire? treatment of the hired party

No. The Copyright Act of 1976 provides that copyright


Examining the circumstances of this case in light of these
ownership "vests initially in the author or authors of the
factors, we agree with the Court of Appeals that Reid was
work."
not an employee of CCNV, but an independent contractor.
As a general rule, the author is the party who actually creates
Case: Roeslin vs District of Columbia (Works made for
the work, that is, the person who translates an idea into a
fixed, tangible expression entitled to copyright protection. hire)
The Act carves out an important exception, however, for
Whether or not DC-790 system is a work made for hire?
"works made for hire."
No. Plaintiff purchased a personal computer with his own
If the work is for hire, "the employer or other person for
funds. In October 1988, he purchased software using his
whom the work was prepared is considered the author," and
own funds. Plaintiff taught himself how to program
owns the copyright, unless there is a written agreement to the
computers using books that he purchased with his own
contrary. Classifying a work as "made for hire" determines
funds. He spent approximately 3,000 hours creating the
not only the initial ownership of its copyright, but also the
various modules necessary to complete the DC-790
copyright's duration, and the owners' renewal rights,
program, and creating enhancements to the system. He
termination rights, and right to import certain goods bearing
completed the final module in January, 1991, although most
the copyright,
of the modules were completed by 1990. Plaintiff did all of
The contours of the work for hire doctrine therefore carry this work at home. He also tested each module at home,
profound significance for freelance creators -- including using hypothetical data. Nobody at D.O.E.S. directed
artists, writers, photographers, designers, composers, and plaintiff to create the DC-790 system, supervised his doing
computer programmers -- and for the publishing, advertising, so, or assisted him in doing so. He was not offered
music, and other industries which commission their works. compensation for the creation of the system.

Section 101 of the 1976 Act provides that a work is "for hire" Plaintiff was hired as a labor economist, not as a computer
under two sets of circumstances: programmer. There is no reference in his job description to
computer programming; nor was his supervisor aware of
(1) a work prepared by an employee within the scope of his or whether plaintiff had any programming skills when he was
her employment; or hired. Plaintiff was hired to improve certain aspects of the
CES survey and develop projections based on that survey.
(2) a work specially ordered or commissioned for use as a
He was not hired to create a computer program that would
contribution to a collective work, as a part of a motion picture
assist the entire office and receive, process, and transmit the
or other audiovisual work, as a translation, as a
survey results. Developing computer software is not the
supplementary work, as a compilation, as an instructional
kind of work plaintiff was employed to perform.
text, as a test, as answer material for a test, or as an atlas, if
the parties expressly agree in a written instrument signed by
Conduct of a servant is within the scope of employment if,
them that the work shall be considered a work made for hire.
but only if:
11 Factors to determine whether the hired party is an
1. it is within the kind he is employed to perform;
employee:
2. it occurs substantially within the authorized time
1. the skill required and space limits;
2. the source of the instrumentalities and tools; 3. it is actuated, at least in part, by a purpose to serve
3. the location of the work; the master.
4. the duration of the relationship between the parties;
5. whether the hiring party has the right to assign
additional projects to the hired party; Plaintiff testified that he created the program for two reasons:
6. the extent of the hired party's discretion over when (1) to create job opportunities for himself; and (2) to prove it
and how long to work; could be done. The Court finds that plaintiff was motivated
7. the method of payment; by each of these purposes. To be sure, the DC-790 system
8. the hired party's role in hiring and paying assistants; benefitted his employer, and the Court could fairly infer that
part of plaintiff's motivation was to achieve this result.

20
However, the Court finds that plaintiff was primarily source and of the name of the author, if appearing in the
motivated by self-fulfilling purposes. work, are mentioned;

On the whole, then, the Court finds that defendant has not (f) The recording made in schools, universities, or educational
established that the DC-790 system was a work made for hire. institutions of a work included in a broadcast for the use of
The program was not the type of work plaintiff was employed such schools, universities or educational institutions:
to perform, nor was it incidental to his job duties. Moreover, Provided, That such recording must be deleted within a
the substantial proportion of the creating of the program took reasonable period after they were first broadcast: Provided,
place outside the office during non-office hours. Finally, the further, That such recording may not be made from audio-
plaintiff was primarily motivated to create the system for his visual works which are part of the general cinema repertoire
own benefit. of feature films except for brief excerpts of the work;

Note: (g) The making of ephemeral recordings by a broadcasting


organization by means of its own facilities and for use in its
Computer programming is a technical skill that involves own broadcast;
adding "source code" in a computer language. Source code is
a series of language specific commands ordered in a logical (h) The use made of a work by or under the direction or
series to produce a specific result. Computer programming is control of the Government, by the National Library or by
the method by which computer software applications are educational, scientific or professional institutions where such
created. Using computers and computer software is not the use is in the public interest and is compatible with fair use;
same as programming computers, as defense witnesses
conceded at trial. (i) The public performance or the communication to the
public of a work, in a place where no admission fee is
LIMITATIONS ON COPYRIGHT charged in respect of such public performance or
communication, by a club or institution for charitable or
Section 184. Limitations on Copyright. - 184.1. educational purpose only, whose aim is not profit making,
Notwithstanding the provisions of Chapter V, the following subject to such other limitations as may be provided in the
acts shall not constitute infringement of copyright: Regulations; (n)

(a) The recitation or performance of a work, once it has been (j) Public display of the original or a copy of the work not
lawfully made accessible to the public, if done privately and made by means of a film, slide, television image or otherwise
free of charge or if made strictly for a charitable or religious on screen or by means of any other device or process:
institution or society; (Sec. 10(1), P.D. No. 49) Provided, That either the work has been published, or, that
the original or the copy displayed has been sold, given away
(b) The making of quotations from a published work if they
or otherwise transferred to another person by the author or his
are compatible with fair use and only to the extent justified
successor in title; and
for the purpose, including quotations from newspaper articles
and periodicals in the form of press summaries: Provided, (k) Any use made of a work for the purpose of any judicial
That the source and the name of the author, if appearing on proceedings or for the giving of professional advice by a legal
the work, are mentioned; (Sec. 11, third par., P.D. No. 49) practitioner.

(c) The reproduction or communication to the public by mass 184.2. The provisions of this section shall be interpreted in
media of articles on current political, social, economic, such a way as to allow the work to be used in a manner which
scientific or religious topic, lectures, addresses and other does not conflict with the normal exploitation of the work and
works of the same nature, which are delivered in public if does not unreasonably prejudice the right holder's legitimate
such use is for information purposes and has not been interests.
expressly reserved: Provided, That the source is clearly
indicated; (Sec. 11, P.D. No. 49) Section 185. Fair Use of a Copyrighted Work. - 185.1. The
fair use of a copyrighted work for criticism, comment, news
(d) The reproduction and communication to the public of reporting, teaching including multiple copies for classroom
literary, scientific or artistic works as part of reports of use, scholarship, research, and similar purposes is not an
current events by means of photography, cinematography or infringement of copyright. Decompilation, which is
broadcasting to the extent necessary for the purpose; (Sec. 12, understood here to be the reproduction of the code and
P.D. No. 49) translation of the forms of the computer program to achieve
the inter-operability of an independently created computer
(e) The inclusion of a work in a publication, broadcast, or
program with other programs may also constitute fair use. In
other communication to the public, sound recording or film, if
determining whether the use made of a work in any particular
such inclusion is made by way of illustration for teaching
case is fair use, the factors to be considered shall include:
purposes and is compatible with fair use: Provided, That the

21
(a) The purpose and character of the use, including whether (a) Where the work by reason of its fragile character or rarity
such use is of a commercial nature or is for non-profit cannot be lent to user in its original form;
educational purposes;
(b) Where the works are isolated articles contained in
(b) The nature of the copyrighted work; composite works or brief portions of other published works
and the reproduction is necessary to supply them, when this is
(c) The amount and substantiality of the portion used in considered expedient, to persons requesting their loan for
relation to the copyrighted work as a whole; and purposes of research or study instead of lending the volumes
or booklets which contain them; and
(d) The effect of the use upon the potential market for or
value of the copyrighted work. (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
185.2. The fact that a work is unpublished shall not by itself
rendered unusable, replace a copy, or to replace, in the
bar a finding of fair use if such finding is made upon
permanent collection of another similar library or archive, a
consideration of all the above factors.
copy which has been lost, destroyed or rendered unusable and
Section 186. Work of Architecture. - Copyright in a work of copies are not available with the publisher.
architecture shall include the right to control the erection of
188.2. Notwithstanding the above provisions, it shall not be
any building which reproduces the whole or a substantial part
permissible to produce a volume of a work published in
of the work either in its original form or in any form
several volumes or to produce missing tomes or pages of
recognizably derived from the original: Provided, That the
magazines or similar works, unless the volume, tome or part
copyright in any such work shall not include the right to
is out of stock: Provided, That every library which, by law, is
control the reconstruction or rehabilitation in the same style
entitled to receive copies of a printed work, shall be entitled,
as the original of a building to which that copyright relates.
when special reasons so require, to reproduce a copy of a
(n)
published work which is considered necessary for the
collection of the library but which is out of stock. (Sec. 13,
Section 187. Reproduction of Published Work. - 187.1.
Notwithstanding the provision of Section 177, and subject to P.D. 49a)
the provisions of Subsection 187.2, the private reproduction
Section 189. Reproduction of Computer Program. - 189.1.
of a published work in a single copy, where the reproduction
Notwithstanding the provisions of Section 177, the
is made by a natural person exclusively for research and
reproduction in one (1) back-up copy or adaptation of a
private study, shall be permitted, without the authorization of
computer program shall be permitted, without the
the owner of copyright in the work.
authorization of the author of, or other owner of copyright in,
a computer program, by the lawful owner of that computer
187.2. The permission granted under Subsection 187.1 shall
program: Provided, That the copy or adaptation is necessary
not extend to the reproduction of:
for:
(a) A work of architecture in the form of building or other
(a) The use of the computer program in conjunction with a
construction;
computer for the purpose, and to the extent, for which the
(b) An entire book, or a substantial part thereof, or of a computer program has been obtained; and
musical work in graphic form by reprographic means;
(b) Archival purposes, and, for the replacement of the
(c) A compilation of data and other materials; lawfully owned copy of the computer program in the event
that the lawfully obtained copy of the computer program is
(d) A computer program except as provided in Section 189; lost, destroyed or rendered unusable.
and
189.2. No copy or adaptation mentioned in this Section shall
(e) Any work in cases where reproduction would be used for any purpose other than the ones determined in this
unreasonably conflict with a normal exploitation of the work Section, and any such copy or adaptation shall be destroyed
or would otherwise unreasonably prejudice the legitimate in the event that continued possession of the copy of the
interests of the author. (n) computer program ceases to be lawful.

Section 188. Reprographic Reproduction by Libraries. - 189.3. This provision shall be without prejudice to the
188.1. Notwithstanding the provisions of Subsection 177.6, application of Section 185 whenever appropriate. (n)
any library or archive whose activities are not for profit may,
without the authorization of the author of copyright owner, Section 190. Importation for Personal Purposes. - 190.1.
make a single copy of the work by reprographic reproduction: Notwithstanding the provision of Subsection 177.6, but
subject to the limitation under the Subsection 185.2, the
importation of a copy of a work by an individual for his

22
personal purposes shall be permitted without the rejected Napster‘s request for a compulsory license, citing
authorization of the author of, or other owner of copyright in, that such a device would provide Napster with an ―easy out‖
the work under the following circumstances: while seemingly punishing the copyright holders.

(a) When copies of the work are not available in the Case: ABS-CBN vs Gozon
Philippines and:
Whether or not the news footage is copyrightable?
(i) Not more than one (1) copy at one time is imported for
strictly individual use only; or The news footage is copyrightable.

(ii) The importation is by authority of and for the use of the The Intellectual Property Code is clear about the rights
Philippine Government; or afforded to authors of various kinds of work.

(iii) The importation, consisting of not more than three (3) Under the Code, "works are protected by the sole fact of their
such copies or likenesses in any one invoice, is not for sale creation, irrespective of their mode or form of expression, as
but for the use only of any religious, charitable, or well as of their content, quality and purpose.‖ These include
educational society or institution duly incorporated or "audio-visual works and cinematographic works and works
registered, or is for the encouragement of the fine arts, or for produced by a process analogous to cinematography or any
any state school, college, university, or free public library in process for making audio-visual recordings.
the Philippines.
Contrary to the old copyright law, the Intellectual Property
(b) When such copies form parts of libraries and personal Code does not require registration of the work to fully recover
baggage belonging to persons or families arriving from in an infringement suit. Nevertheless, both copyright laws
foreign countries and are not intended for sale: Provided, That provide that copyright for a work is acquired by an
such copies do not exceed three (3). intellectual creator from the moment of creation.

190.2. Copies imported as allowed by this Section may not It is true that under Section 175 of the Intellectual Property
lawfully be used in any way to violate the rights of owner the Code, "news of the day and other miscellaneous facts having
copyright or annul or limit the protection secured by this Act, the character of mere items of press information" are
and such unlawful use shall be deemed an infringement and considered unprotected subject matter. However, the Code
shall be punishable as such without prejudice to the does not state that expression of the news of the day,
proprietor's right of action. particularly when it underwent a creative process, is not
entitled to protection.
190.3. Subject to the approval of the Secretary of Finance, the
Commissioner of Customs is hereby empowered to make An idea or event must be distinguished from the expression
rules and regulations for preventing the importation of articles of that idea or event. An idea has been likened to a ghost in
the importation of which is prohibited under this Section and that it "must be spoken to a little before it will explain itself."
under treaties and conventions to which the Philippines may It is a concept that has eluded exact legal definition.
be a party and for seizing and condemning and disposing of
DEPOSIT AND NOTICE
the same in case they are discovered after they have been
imported. (Sec. 30, P.D. No. 49)
Section 191. Registration and Deposit with National Library
and the Supreme Court Library. - After the first public
Case: A&M Records vs Napster (Doctrine of Fair Use)
dissemination of performance by authority of the copyright
Whether or not Napster violated one of the exclusive owner of a work falling under Subsections 172.1, 172.2 and
copyright of A&M? Yes 172.3 of this Act, there shall, for the purpose of completing
the records of the National Library and the Supreme Court
Whether or not it constitutes fair use? Yes Library, within three (3) weeks, be registered and deposited
with it, by personal delivery or by registered mail two (2)
The court also examined Napster‘s fair use claims using the complete copies or reproductions of the work in such form as
four fair use factors: purpose and character of the use, the directors of said libraries may prescribe. A certificate of
nature of the use, portion used, effect of use on the market. deposit shall be issued for which the prescribed fee shall be
The court decided that Napster‘s argument for sampling did collected and the copyright owner shall be exempt from
not hold, because the ―samples‖ were in fact permanent and making additional deposit of the works with the National
complete files on the users‘ hard drives. Also, Napster‘s Library and the Supreme Court Library under other laws. If,
space-shifting argument did not hold, because the users were within three (3) weeks after receipt by the copyright owner of
not just simply converting their media between formats for a written demand from the directors for such deposit, the
storage, but were sharing the files as well. No decision was required copies or reproductions are not delivered and the fee
made on the argument of permissive reproduction, because is not paid, the copyright owner shall be liable to pay a fine
the plaintiffs did not challenge this use. Finally, the court
23
equivalent to the required fee per month of delay and to pay Section 194. Breach of Contract. - An author cannot be
to the National Library and the Supreme Court Library the compelled to perform his contract to create a work or for
amount of the retail price of the best edition of the work. thepublication of his work already in existence. However, he
Only the above mentioned classes of work shall be accepted may be held liable for damages for breach of such contract.
for deposit by the National Library and the Supreme Court (Sec. 35, P.D. No. 49)
Library. (Sec. 26, P.D. No. 49a)
Section 195. Waiver of Moral Rights. - An author may waive
Section 192. Notice of Copyright. - Each copy of a work his rights mentioned in Section 193 by a written instrument,
published or offered for sale may contain a notice bearing the but no such waiver shall be valid where its effects is to permit
name of the copyright owner, and the year of its first another:
publication, and, in copies produced after the creator's death,
the year of such death. (Sec. 27, P.D. No. 49a) 195.1. To use the name of the author, or the title of his work,
or otherwise to make use of his reputation with respect to any
Section 227. Ownership of Deposit and Instruments. - All version or adaptation of his work which, because of
copies deposited and instruments in writing filed with the alterations therein, would substantially tend to injure the
National Library and the Supreme Court Library in literary or artistic reputation of another author; or
accordance with the provisions of this Act shall become the
property of the Government. (Sec. 60, P.D. No. 49) 195.2. To use the name of the author with respect to a work
he did not create. (Sec. 36, P.D. No. 49)
Section 228. Public Records. - The section or division of the
National Library and the Supreme Court Library charged with Section 196. Contribution to Collective Work. - When an
receiving copies and instruments deposited and with keeping author contributes to a collective work, his right to have his
records required under this Act and everything in it shall be contribution attributed to him is deemed waived unless he
opened to public inspection. The Director of the National expressly reserves it. (Sec. 37, P.D. No. 49)
Library is empowered to issue such safeguards and
Section 197. Editing, Arranging and Adaptation of Work. -
regulations as may be necessary to implement this Section
In the absence of a contrary stipulation at the time an author
and other provisions of this Act. (Sec. 61, P.D. No. 49)
licenses or permits another to use his work, the necessary
Section 229. Copyright Division; Fees. - The Copyright editing, arranging or adaptation of such work, for publication,
Section of the National Library shall be classified as a broadcast, use in a motion picture, dramatization, or
Division upon the effectivity of this Act. The National mechanical or electrical reproduction in accordance with the
Library shall have the power to collect, for the discharge of reasonable and customary standards or requirements of the
its services under this Act, such fees as may be promulgated medium in which the work is to be used, shall not be deemed
by it from time to time subject to the approval of the to contravene the author's rights secured by this chapter. Nor
Department Head. (Sec. 62, P.D. 49a) shall complete destruction of a work unconditionally
transferred by the author be deemed to violate such rights.
MORAL RIGHTS (Sec. 38, P.D. No. 49)

Section 193. Scope of Moral Rights. - The author of a work Section 198. Term of Moral Rights. - 198.1. The rights of an
shall, independently of the economic rights in Section 177 or author under this chapter shall last during the lifetime of the
the grant of an assignment or license with respect to such author and for fifty (50) years after his death and shall not be
right, have the right: assignable or subject to license. The person or persons to be
charged with the posthumous enforcement of these rights
193.1. To require that the authorship of the works be shall be named in writing to be filed with the National
attributed to him, in particular, the right that his name, as far Library. In default of such person or persons, such
as practicable, be indicated in a prominent way on the copies, enforcement shall devolve upon either the author's heirs, and
and in connection with the public use of his work; in default of the heirs, the Director of the National Library.

193.2. To make any alterations of his work prior to, or to 198.2. For purposes of this Section, "Person" shall mean any
withhold it from publication; individual, partnership, corporation, association, or society.
The Director of the National Library may prescribe
193.3. To object to any distortion, mutilation or other
reasonable fees to be charged for his services in the
modification of, or other derogatory action in relation to, his
application of provisions of this Section. (Sec. 39, P.D. No.
work which would be prejudicial to his honor or reputation;
49)
and 193.4. To restrain the use of his name with respect to any
work not of his own creation or in a distorted version of his Section 199. Enforcement Remedies. - Violation of any of
work. (Sec. 34, P.D. No. 49) the rights conferred by this Chapter shall entitle those charged
with their enforcement to the same rights and remedies
available to a copyright owner. In addition, damages which

24
may be availed of under the Civil Code may also be 202.6. "Publication of a fixed performance or a sound
recovered. Any damage recovered after the creator's death recording" means the offering of copies of the fixed
shall be held in trust for and remitted to his heirs, and in performance or the sound recording to the public, with the
default of the heirs, shall belong to the government. (Sec. 40, consent of the right holder: Provided, That copies are offered
P D No. 49) to the public in reasonable quality;

Section 226. Damages. - No damages may be recovered 202.7. "Broadcasting" means the transmission by wireless
under this Act after four (4) years from the time the cause of means for the public reception of sounds or of images or of
action arose. (Sec. 58, P.D. No. 49) representations thereof; such transmission by satellite is also
"broadcasting" where the means for decrypting are provided
RIGHTS TO PROCEEDS IN SUBSE QUENT to the public by the broadcasting organization or with its
TRANSFERS consent;

Section 200. Sale or Lease of Work. - In every sale or lease 202.8. "Broadcasting organization" shall include a natural
of an original work of painting or sculpture or of the original person or a juridical entity duly authorized to engage in
manuscript of a writer or composer, subsequent to the first broadcasting; and
disposition thereof by the author, the author or his heirs shall
have an inalienable right to participate in the gross proceeds 202.9 "Communication to the public of a performance or a
of the sale or lease to the extent of five percent (5%). This sound recording" means the transmission to the public, by
right shall exist during the lifetime of the author and for fifty any medium, otherwise than by broadcasting, of sounds of a
(50) years after his death. (Sec. 31, P.D. No. 49) performance or the representations of sounds fixed in a sound
recording. For purposes of Section 209, "communication to
Section 201. Works Not Covered. - The provisions of this the public" includes making the sounds or representations of
Chapter shall not apply to prints, etchings, engravings, works sounds fixed in a sound recording audible to the public.
of applied art, or works of similar kind wherein the author
primarily derives gain from the proceeds of reproductions. Section 203. Scope of Performers' Rights. - Subject to the
(Sec. 33, P.D. No. 49) provisions of Section 212, performers shall enjoy the
following exclusive rights:
RIGHTS OF PERFORMERS, PRODUCERS OF
SOUND RECORDINGS AND BROADCASTING 203.1. As regards their performances, the right of authorizing:
ORGANIZATIONS
(a) The broadcasting and other communication to the public
Section 202. Definitions. - For the purpose of this Act, the of their performance; and
following terms shall have the following meanings:
(b) The fixation of their unfixed performance.
202.1. "Performers" are actors, singers, musicians, dancers,
and other persons who act, sing, declaim, play in, interpret, or 203.2. The right of authorizing the direct or indirect
otherwise perform literary and artistic work; reproduction of their performances fixed in sound recordings,
in any manner or form;
202.2. "Sound recording" means the fixation of the sounds of
a performance or of other sounds, or representation of sound, 203.3. Subject to the provisions of Section 206, the right of
other than in the form of a fixation incorporated in a authorizing the first public distribution of the original and
cinematographic or other audiovisual work; copies of their performance fixed in the sound recording
through sale or rental or other forms of transfer of ownership;
202.3. An "audiovisual work or fixation" is a work that
consists of a series of related images which impart the 203.4. The right of authorizing the commercial rental to the
impression of motion, with or without accompanying sounds, public of the original and copies of their performances fixed
susceptible of being made visible and, where accompanied by in sound recordings, even after distribution of them by, or
sounds, susceptible of being made audible; pursuant to the authorization by the performer; and

202.4. "Fixation" means the embodiment of sounds, or of the 203.5. The right of authorizing the making available to the
representations thereof, from which they can be perceived, public of their performances fixed in sound recordings, by
reproduced or communicated through a device; wire or wireless means, in such a way that members of the
public may access them from a place and time individually
202. 5. "Producer of a sound recording" means the person, or chosen by them. (Sec. 42, P.D. No. 49a)
the legal entity, who or which takes the initiative and has the
responsibility for the first fixation of the sounds of a Section 204. Moral Rights of Performers. - 204.1.
performance or other sounds, or the representation of sounds; Independently of a performer's economic rights, the
performer, shall, as regards his live aural performances or
performances fixed in sound recordings, have the right to
25
claim to be identified as the performer of his performances, publicly performed with the intention of making and
except where the omission is dictated by the manner of the enhancing profit, a single equitable remuneration for the
use of the performance, and to object to any distortion, performer or performers, and the producer of the sound
mutilation or other modification of his performances that recording shall be paid by the user to both the performers and
would be prejudicial to his reputation. the producer, who, in the absence of any agreement shall
share equally. (Sec. 47, P.D. No. 49a)
204.2. The rights granted to a performer in accordance with
Subsection 203.1 shall be maintained and exercised fifty (50) Section 210. Limitation of Right. - Sections 184 and 185
years after his death, by his heirs, and in default of heirs, the shall apply mutatis mutandis to the producer of sound
government, where protection is claimed.(Sec. 43, P.D. No. recordings. (Sec. 48, P.D. No. 49a)
49)
BROADCASTING ORGAN IZATIONS
Section 205. Limitation on Right. - 205.1. Subject to the
provisions of Section 206, once the performer has authorized Section 211. Scope of Right. - Subject to the provisions of
the broadcasting or fixation of his performance, the Section 212, broadcasting organizations shall enjoy the
provisions of Sections 203 shall have no further application. exclusive right to carry out, authorize or prevent any of the
following acts:
205.2. The provisions of Section 184 and Section 185 shall
apply mutatis mutandis to performers. (n) 211.1. The rebroadcasting of their broadcasts;

Section 206. Additional Remuneration for Subsequent 211.2. The recording in any manner, including the making of
Communications or Broadcasts. - Unless otherwise provided films or the use of video tape, of their broadcasts for the
in the contract, in every communication to the public or purpose of communication to the public of television
broadcast of a performance subsequent to the first broadcasts of the same; and
communication or broadcast thereof by the broadcasting
211.3. The use of such records for fresh transmissions or for
organization, the performer shall be entitled to an additional
fresh recording. (Sec. 52, P.D. No. 49)
remuneration equivalent to at least five percent (5%) of the
original compensation he or she received for the first
LIMITATIONS ON PROT ECTION
communication or broadcast. (n)
Section 212. Limitations on Rights. - Sections 203, 208 and
Section 207. Contract Terms. - Nothing in this Chapter shall
209 shall not apply where the acts referred to in those
be construed to deprive performers of the right to agree by
Sections are related to:
contracts on terms and conditions more favorable for them in
respect of any use of their performance. (n) 212.1. The use by a natural person exclusively for his own
personal purposes;
PRODUCERS OF SOUND RECORDINGS
212.2. Using short excerpts for reporting current events;
Section 208. Scope of Right. - Subject to the provisions of
Section 212, producers of sound recordings shall enjoy the 212.3. Use solely for the purpose of teaching or for scientific
following exclusive rights: research; and

208.1. The right to authorize the direct or indirect 212.4. Fair use of the broadcast subject to the conditions
reproduction of their sound recordings, in any manner or under Section 185. (Sec. 44, P.D. No. 49a)
form; the placing
these reproductions in the market and the right of rental or TERM OF PROTECTION
lending;
Section 213. Term of Protection. - 213.1. Subject to the
208.2. The right to authorize the first public distribution of provisions of Subsections 213.2 to 213.5, the copyright in
the original and copies of their sound recordings through sale works under Sections 172 and 173 shall be protected during
or rental or other forms of transferring ownership; and the life of the author and for fifty (50) years after his death.
This rule also applies to posthumous works. (Sec. 21, first
208.3. The right to authorize the commercial rental to the sentence, P.D. No. 49a)
public of the original and copies of their sound recordings,
even after distribution by them by or pursuant to 213.2. In case of works of joint authorship, the economic
authorization by the producer. (Sec. 46, P.D. No. 49a) rights shall be protected during the life of the last surviving
author and for fifty (50) years after his death. (Sec. 21, second
Section 209. Communication to the Public. - If a sound sentence, P.D. No. 49)
recording published for commercial purposes, or a
reproduction of such sound recording, is used directly for 213.3. In case of anonymous or pseudonymous works, the
broadcasting or for other communication to the public, or is copyright shall be protected for fifty (50) years from the date
26
on which the work was first lawfully published: Provided, (b) Pay to the copyright proprietor or his assigns or heirs such
That where, before the expiration of the said period, the actual damages, including legal costs and other expenses, as
author's identity is revealed or is no longer in doubt, the he may have incurred due to the infringement as well as the
provisions of Subsections 213.1. and 213.2 shall apply, as the profits the infringer may have made due to such infringement,
case may be: Provided, further, That such works if not and in proving profits the plaintiff shall be required to prove
published before shall be protected for fifty (50) years sales only and the defendant shall be required to prove every
counted from the making of the work. (Sec. 23, P.D. No. 49) element of cost which he claims, or, in lieu of actual damages
and profits, such damages which to the court shall appear to
213.4. In case of works of applied art the protection shall be be just and shall not be regarded as penalty.
for a period of twenty-five (25) years from the date of
making. (Sec. 24(B), P.D. No. 49a) (c) Deliver under oath, for impounding during the pendency
of the action, upon such terms and conditions as the court
213.5. In case of photographic works, the protection shall be may prescribe, sales invoices and other documents evidencing
for fifty (50) years from publication of the work and, if sales, all articles and their packaging alleged to infringe a
unpublished, fifty (50) years from the making. (Sec. 24(C), copyright and implements for making them.
P.D. 49a)
(d) Deliver under oath for destruction without any
213.6. In case of audio-visual works including those produced compensation all infringing copies or devices, as well as all
by process analogous to photography or any process for plates, molds, or other means for making such infringing
making audio-visual recordings, the term shall be fifty (50) copies as the court may order.
years from date of publication and, if unpublished, from the
date of making. (Sec. 24(C), P.D. No. 49a) (e) Such other terms and conditions, including the payment of
moral and exemplary damages, which the court may deem
Section 214. Calculation of Term. - The term of protection proper, wise and equitable and the destruction of infringing
subsequent to the death of the author provided in the copies of the work even in the event of acquittal in a criminal
preceding Section shall run from the date of his death or of case.
publication, but such terms shall always be deemed to begin
on the first day of January of the year following the event 216.2. In an infringement action, the court shall also have the
which gave rise to them. (Sec. 25, P.D. No. 49) power to order the seizure and impounding of any article
which may serve as evidence in the court proceedings. (Sec.
Section 215. Term of Protection for Performers, Producers 28, P.D. No. 49a)
and Broadcasting Organizations. - 215.1. The rights granted
to performers and producers of sound recordings under this Section 217. Criminal Penalties. - 217.1. Any person
law shall expire: infringing any right secured by provisions of Part IV of this
Act or aiding or abetting such infringement shall be guilty of
(a) For performances not incorporated in recordings, a crime punishable by:
fifty (50) years from the end of the year in which the
performance took place; and (a) Imprisonment of one (1) year to three (3) years plus a fine
ranging from Fifty thousand pesos (P50,000) to One hundred
(b) For sound or image and sound recordings and for fifty thousand pesos (P150,000) for the first offense.
performances incorporated therein, fifty (50) years
from the end of the year in which the recording took (b) Imprisonment of three (3) years and one (1) day to six (6)
place. years plus a fine ranging from One hundred fifty thousand
pesos (P150,000) to Five hundred thousand pesos (P500,000)
215.2. In case of broadcasts, the term shall be twenty (20) for the second offense.
years from the date the broadcast took place. The extended
term shall be applied only to old works with subsisting (c) Imprisonment of six (6) years and one (1) day to nine (9)
protection under the prior law. (Sec. 55, P.D. No. 49a) years plus a fine ranging from five hundred thousand pesos
(P500,000) to One million five hundred thousand pesos
INFRINGEMENT (P1,500,000) for the third and subsequent offenses.

Section 216. Remedies for Infringement. - 216.1. Any (d) In all cases, subsidiary imprisonment in cases of
person infringing a right protected under this law shall be insolvency.
liable:
217.2. In determining the number of years of imprisonment
(a) To an injunction restraining such infringement. The court and the amount of fine, the court shall consider the value of
may also order the defendant to desist from an infringement, the infringing materials that the defendant has produced or
among others, to prevent the entry into the channels of manufactured and the damage that the copyright owner has
commerce of imported goods that involve an infringement, suffered by reason of the infringement.
immediately after customs clearance of such goods.
27
217.3. Any person who at the time when copyright subsists in manner as the author shall, in the absence of proof to the
a work has in his possession an article which he knows, or contrary, be presumed to be the author of the work.
ought to know, to be an infringing copy of the work for the
purpose of: This provision shall be applicable even if the name is a
pseudonym, where the pseudonym leaves no doubt as to the
(a) Selling, letting for hire, or by way of trade offering or identity of the author.
exposing for sale, or hire, the article;
219.2. The person or body corporate whose name appears on
(b) Distributing the article for purpose of trade, or for any audio-visual work in the usual manner shall, in the absence
other purpose to an extent that will prejudice the rights of the of proof to the contrary, be presumed to be the maker of said
copyright owner in the work; or work. (n)

(c) Trade exhibit of the article in public, shall be guilty of an Section 220. International Registration of Works. - A
offense and shall be liable on conviction to imprisonment and statement concerning a work, recorded in an international
fine as above mentioned. (Sec. 29, P.D. No. 49a) register in accordance with an international treaty to which
the Philippines is or may become a party, shall be construed
Section 218. Affidavit Evidence. - 218.1. In an action under as true until the contrary is proved except:
this Chapter, an affidavit made before a notary public by or
on behalf of the owner of the copyright in any work or other 220.1. Where the statement cannot be valid under this Act or
subject matter and stating that: any other law concerning intellectual property.

(a) At the time specified therein, copyright subsisted in the 220.2. Where the statement is contradicted by another
work or other subject matter; statement recorded in the international register. (n)

(b) He or the person named therein is the owner of the SCOPE OF APPLICATION
copyright; and
Section 221. Points of Attachment for Works under Sections
(c) The copy of the work or other subject matter annexed 172 and 173. - 221.1. The protection afforded by this Act to
thereto is a true copy thereof, shall be admitted in evidence in copyrightable works under Sections 172 and 173 shall apply
any proceedings for an offense under this Chapter and shall to:
be prima facie proof of the matters therein stated until the
contrary is proved, and the court before which such affidavit (a) Works of authors who are nationals of, or have their
is produced shall assume that the affidavit was made by or on habitual residence in, the Philippines;
behalf of the owner of the copyright.
(b) Audio-visual works the producer of which has his
218.2. In an action under this Chapter: headquarters or habitual residence in the Philippines;

(a) Copyright shall be presumed to subsist in the work or (c) Works of architecture erected in the Philippines or other
other subject matter to which the action relates if the artistic works incorporated in a building or other structure
defendant does not put in issue the question whether located in the Philippines;
copyright subsists in the work or other subject matter; and
(d) Works first published in the Philippines; and
(b) Where the subsistence of the copyright is established, the
(e) Works first published in another country but also
plaintiff shall be presumed to be the owner of the copyright if
published in the Philippines within thirty days, irrespective of
he claims to be the owner of the copyright and the defendant
the nationality or residence of the authors.
does not put in issue the question of his ownership.
221.2. The provisions of this Act shall also apply to works
(c) Where the defendant, without good faith, puts in issue the
that are to be protected by virtue of and in accordance with
questions of whether copyright subsists in a work or other
any international convention or other international agreement
subject matter to which the action relates, or the ownership of
to which the Philippines is a party. (n)
copyright in such work or subject matter, thereby occasioning
unnecessary costs or delay in the proceedings, the court may
Section 222. Points of Attachment for Performers. - The
direct that any costs to the defendant in respect of the action
provisions of this Act on the protection of performers shall
shall not be allowed by him and that any costs occasioned by
apply to:
the defendant to other parties shall be paid by him to such
other parties. (n) 222.1. Performers who are nationals of the Philippines;

Section 219. Presumption of Authorship. - 219.1. The 222.2. Performers who are not nationals of the Philippines but
natural person whose name is indicated on a work in the usual whose performances:

28
(a) Take place in the Philippines; or transmission by satellite is also ‗broadcasting‘ where the
means for decrypting are provided to the public by the
(b) Are incorporated in sound recordings that are protected broadcasting organization or with its consent.‖
under this Act; or
On the other hand, rebroadcasting as defined in Article 3(g)
(c) Which has not been fixed in sound recording but are of the International Convention for the Protection of
carried by broadcast qualifying for protection under this Act. Performers, Producers of Phonograms and Broadcasting
(n) Organizations, otherwise known as the 1961 Rome
Convention, of which the Republic of the Philippines is a
Section 223. Points of Attachment for Sound Recordings. -
signatory, is ―the simultaneous broadcasting by one
The provisions of this Act on the protection of sound
broadcasting organization of the broadcast of another
recordings shall apply to:
broadcasting organization.‖
223.1. Sound recordings the producers of which are nationals
PMSI would not qualify as a broadcasting organization
of the Philippines; and
because it does not have the aforementioned responsibilities
223.2. Sound recordings that were first published in the imposed upon broadcasting organizations, such as ABS-CBN.
Philippines. (n)
ABS-CBN creates and transmits its own signals; PMSI
merely carries such signals which the viewers receive in its
Section 224. Points of Attachment for Broadcasts. - 224.1.
unaltered form. PMSI does not produce, select, or determine
The provisions of this Act on the protection of broadcasts
the programs to be shown in Channels 2 and 23. Likewise, it
shall apply to:
does not pass itself off as the origin or author of such
(a) Broadcasts of broadcasting organizations the headquarters programs. Insofar as Channels 2 and 23 are concerned, PMSI
of which are situated in the Philippines; and merely retransmits the same in accordance with
Memorandum Circular 04-08-88. With regard to its premium
(b) Broadcasts transmitted from transmitters situated in the channels, it buys the channels from content providers and
Philippines. transmits on an as-is basis to its viewers. Clearly, PMSI does
not perform the functions of a broadcasting organization;
224.2. The provisions of this Act shall also apply to thus, it cannot be said that it is engaged in rebroadcasting
performers who, and to producers of sound recordings and Channels 2 and 23.
broadcasting organizations which, are to be protected by
virtue of and in accordance with any international convention The retransmission of ABS-CBN‘s signals by PMSI – which
or other international agreement to which the Philippines is a functions essentially as a cable television – does not therefore
party. (n) constitute rebroadcasting in violation of the former‘s
intellectual property rights under the IP Code.
INSTITUTION OF ACTIONS
Case: Microsoft vs Hwang
Section 225. Jurisdiction. - Without prejudice to the
provisions of Subsection 7.1(c), actions under this Act shall Whether or not Beltron and TMC are liable for copyright
be cognizable by the courts with appropriate jurisdiction infringement and unfair competition?
under existing law. (Sec. 57, P.D. No. 49a)
The gravamen of copyright infringement is not merely the
Section 226. Damages. - No damages may be recovered unauthorized "manufacturing" of intellectual works but rather
under this Act after four (4) years from the time the cause of the unauthorized performance of any of the acts covered by
action arose. (Sec. 58, P.D. No. 49) Section 5. Hence, any person who performs any of the acts
under Section 5 without obtaining the copyright owner‘s prior
consent renders himself civilly and criminally liable for
copyright infringement.
Case: ABS-CBN vs PMSI (Limitation on Rights)
Infringement of a copyright is a trespass on a private domain
Whether or not PMSI’s unauthorized rebroadcasting of
owned and occupied by the owner of the copyright, and,
Channels 2 and 23 is an infringement of its broadcasting
therefore, protected by law, and infringement of copyright, or
rights and copyright under the Intellectual Property Code?
piracy, which is a synonymous term in this connection,
PMSI did not infringe on ABS-CBN‘s intellectual property consists in the doing by any person, without the consent of
the owner of the copyright, of anything the sole right to do
rights under the IP Code.
which is conferred by statute on the owner of the copyright.
Section 202.7 of the IP Code defines broadcasting as ―the
transmission by wireless means for the public reception of
sounds or of images or of representations thereof; such
29
Significantly, under Section 5(A), a copyright owner is vested petitioners‘ other witness, John Benedict Sacriz, admitted that
with the exclusive right to "copy, distribute, multiply, [and] he did not buy counterfeit goods from Maxicorp. We rule that
sell" his intellectual works. the Court of Appeals erred in reversing the RTC‘s findings.

The elements of unfair competition under Article 189(1)43 of The offense charged against Maxicorp is copyright
the Revised Penal Code are: infringement under Section 29 of PD 49 and unfair
competition under Article 189 of the RPC. To support these
(a) That the offender gives his goods the general appearance charges, petitioners presented the testimonies of NBI Agent
of the goods of another manufacturer or dealer; Samiano, computer technician Pante, and Sacriz, a civilian.
The offenses that petitioners charged Maxicorp contemplate
(b) That the general appearance is shown in the (1) goods
several overt acts. The sale of counterfeit products is but one
themselves, or in the (2) wrapping of their packages, or in the
of these acts. Both NBI Agent Samiano and Sacriz related to
(3) device or words therein, or in (4) any other feature of their
the RTC how they personally saw Maxicorp commit acts of
appearance;
infringement and unfair competition.
(c) That the offender offers to sell or sells those goods or
During the preliminary examination, the RTC subjected the
gives other persons a chance or opportunity to do the same
testimonies of the witnesses to the requisite examination. NBI
with a like purpose; and
Agent Samiano testified that he saw Maxicorp display and
offer for sale counterfeit software in its premises. He also saw
(d) That there is actual intent to deceive the public or defraud
how the counterfeit software were produced and packaged
a competitor.
within Maxicorp‘s premises. NBI Agent Samiano
Case: Microsoft vs. Maxicorp categorically stated that he was certain the products were
counterfeit because Maxicorp sold them to its customers
Whether or not Maxicorp committed copyright infringement without giving the accompanying ownership manuals, license
and unfair competition? agreements and certificates of authenticity.

Copyright infringement and unfair competition are not Sacriz testified that during his visits to Maxicorp, he
limited to the act of selling counterfeit goods. They cover a witnessed several instances when Maxicorp installed
whole range of acts, from copying, assembling, packaging to petitioners‘ software into computers it had assembled. Sacriz
marketing, including the mere offering for sale of the also testified that he saw the sale of petitioners‘ software
counterfeit goods. within Maxicorp‘s premises. Petitioners never authorized
Maxicorp to install or sell their software.
WHETHER THE PETITION RAISES QUESTIONS OF
LAW; Indeed, this case falls under one of the exceptions The testimonies of these two witnesses, coupled with the
because the findings of the Court of Appeals conflict with the object and documentary evidence they presented, are
findings of the RTC. Since petitioners properly raised the sufficient to establish the existence of probable cause. From
conflicting findings of the lower courts, it is proper for this what they have witnessed, there is reason to believe that
Court to resolve such contradiction. Maxicorp engaged in copyright infringement and unfair
competition to the prejudice of petitioners. Both NBI Agent
WHETHER PETITIONERS HAVE LEGAL Samiano and Sacriz were clear and insistent that the
PERSONALITY TO FILE THE PETITION: We ruled in counterfeit software were not only displayed and sold within
Columbia Pictures Entertainment, Inc. v. Court of Appeals Maxicorp‘s premises, they were also produced, packaged and
that the petitioner-complainant in a petition for review under in some cases, installed there.
Rule 45 could argue its case before this Court in lieu of the
Solicitor General if there is grave error committed by the For purposes of determining probable cause, the sales receipt
lower court or lack of due process. This avoids a situation is not the only proof that the sale of petitioners‘ software
where a complainant who actively participated in the occurred. During the search warrant application
prosecution of a case would suddenly find itself powerless to proceedings, NBI Agent Samiano presented to the judge
pursue a remedy due to circumstances beyond its control. The the computer unit that he purchased from Maxicorp, in
circumstances in Columbia Pictures Entertainment are which computer unit Maxicorp had pre-installed
sufficiently similar to the present case to warrant the petitioners’ software.[27] Sacriz, who was present when
application of this doctrine. NBI Agent Samiano purchased the computer unit,
affirmed that NBI Agent Samiano purchased the
WHETHER THERE WAS PROBABLE CAUSE TO ISSUE computer unit.[28] Pante, the computer technician,
THE SEARCH WARRANTS: The Court of Appeals based demonstrated to the judge the presence of petitioners’
its reversal on two factual findings of the RTC. First, the fact software on the same computer unit.[29] There was a
that the sales receipt presented by NBI Agent Samiano as comparison between petitioners’ genuine software and
proof that he bought counterfeit goods from Maxicorp was in Maxicorp’s software pre-installed in the computer unit
the name of a certain ―Joel Diaz.‖ Second, the fact that
30
that NBI Agent Sambiano purchased.[30] Even if we creator thereof, conformably with Republic Act No. 8293,
disregard the sales receipt issued in the name of ―Joel Diaz,‖ otherwise known as the Intellectual Property Code, Section
which petitioners explained was the alias NBI Agent Samiano 172.2 of which reads:
used in the operation, there still remains more than sufficient
evidence to establish probable cause for the issuance of the 172.2. Works are protected by the sole fact of their creation,
search warrants. irrespective of their mode or form of expression, as well as of
their content, quality and purpose.
The fact that Sacriz did not actually purchase counterfeit
software from Maxicorp does not eliminate the existence of The copyrights obtained by Bayanihan on the basis of the
probable cause. Copyright infringement and unfair selfsame two (2) contracts, suffice it to say 'that such
competition are not limited to the act of selling counterfeit purported copyrights are not presumed to subsist in
goods. They cover a whole range of acts, from copying, accordance with Section 218[a] and [b], of the Intellectual
assembling, packaging to marketing, including the mere Property Code, because respondent Chan had put in issue the
offering for sale of the counterfeit goods. The clear and firm existence thereof.
testimonies of petitioners‘ witnesses on such other acts stand
BMG Arguments:
untarnished
(1) the acts of recording and publication sought to be enjoined
WHETHER THE SEARCH WARRANTS ARE ―GENERAL
had already been consummated, thereby rendering moot
WARRANTS.‖: However, we find paragraph (c) of the
Bayanihan's prayer for TRO and/or preliminary injunction;
search warrants lacking in particularity. Paragraph (c) states:
c) Sundry items such as labels, boxes, prints, packages,
(2) there is no clear showing that petitioner Bayanihan would
wrappers, receptacles, advertisements and other paraphernalia
be greatly damaged by the refusal of the prayed for TRO
bearing the copyrights and/or trademarks owned by
and/or preliminary injunction.
MICROSOFT CORPORATION;

The scope of this description is all-embracing since it covers


property used for personal or other purposes not related to
copyright infringement or unfair competition. Moreover, the
description covers property that Maxicorp may have bought
legitimately from Microsoft or its licensed distributors.
Paragraph (c) simply calls for the seizure of all items bearing
the Microsoft logo, whether legitimately possessed or not.
Neither does it limit the seizure to products used in copyright
infringement or unfair competition.

All articles seized under paragraph (c) of the search warrants,


not falling under paragraphs a, b, d, e or f, are ordered
returned to Maxicorp, Inc. immediately.

Case: Bayanihan vs BMG

Whether or not Bayanihan as assignee of the copyrights over


the musical compositions in question has a clear legal right
to a writ of preliminary injunction?

No, Bayanihan has no right for right for injunction over the
subject musical compositions.

The issuance of an injunctive writ if the following requisites


provided for by law are:

(1) there must be a right in esse or the existence of a right to


be protected;

(2) the act against which the injunction is to be directed is a


violation of such right, the trial court threaded the correct
path in denying petitioner's prayer therefor.

Chan, the composer and author of the lyrics of the two (2)
songs, is protected by the mere fact alone that he is the
31
Chan Arguments: Property Code, because respondent Chan had put in issue the
existence thereof.
(1) it was never his intention to divest himself of all his rights
and interest over the musical compositions in question; It is noted that Chan revoked and terminated said contracts,
along with others, on July 30, 1997, or almost two years
(2) the contracts he entered into with Bayanihan are mere before petitioner Bayanihan wrote its sort of
music publication agreements giving Bayanihan, as assignee, complaint/demand letter dated December 7, 1999 regarding
the power to administer his copyright over his two songs and the recent "use/recording of the songs 'Can We Just Stop and
to act as the exclusive publisher thereof; Talk A While' and 'Afraid for Love to Fade,'" or almost three
(3) years before petitioner filed its complaint on August 8,
(3) he was not cognizant of the application made by and the
2000, therein praying, inter alia, for injunctive relief.
subsequent grant of copyrights to Bayanihan;

(4) Bayanihan was remissed in its obligations under the


contracts because it failed to effectively advertise his musical
compositions for almost twenty (20) years, hence, he caused
the rescission of said contracts in 1997.

A court should, as much as possible, avoid issuing the writ


which would effectively dispose of the main case without
trial.

(1) there must be a right in esse or the existence of a right to


be protected; and (2) the act against which the injunction is to
be directed is a violation of such right, the trial court threaded
the correct path in denying petitioner's prayer therefor. For,
such a writ should only be granted if a party is clearly entitled
thereto.

Of course, while a clear showing of the right to an injunctive


writ is necessary albeit its existence need not be conclusively
established, as the evidence required therefor need not be
conclusive or complete, still, for an applicant, like petitioner
Bayanihan, to be entitled to the writ, he is required to show
that he has the ostensible right to the final relief prayed for in
its complaint. Here, the trial court did not find ample
justifications for the issuance of the writ prayed for by
petitioner.

Respondent Chan, being undeniably the composer and author


of the lyrics of the two (2) songs, is protected by the mere fact
alone that he is the creator thereof

An examination of petitioner's verified complaint in light of


the two (2) contracts sued upon and the evidence it adduced
during the hearing on the application for preliminary
injunction, yields not the existence of the requisite right
protectable by the provisional relief but rather a lingering
doubt on whether there is or there is no such right. xxx It
would thus appear that the two (2) contracts expired on
October 1, 1975 and March 11, 1978, respectively, there
being neither an allegation, much less proof, that petitioner
Bayanihan ever made use of the compositions within the two-
year period agreed upon by the parties

Anent the copyrights obtained by petitioner on the basis of


the self same two (2) contracts, suffice it to say 'that such
purported copyrights are not presumed to subsist in
accordance with Section 218[a] and [b], of the Intellectual

32
THE LAW ON TRADEMARKS, SERVICE
MARKS AND TRADE NAMES

Purpose of the Trademark Law


Case: Philip Morris vs. Fortune Tobacco
short-cut which induces a purchaser to select what he wants, or what he has
This is a petition for review under Rule 45 of the Rules of Court, to seek been led to believe what he wants. The owner of a mark exploits this human
the reversal and setting aside of the following issuances of the Court of propensity by making every effort to impregnate the atmosphere of the
Appeals (CA). market with the drawing power of a congenial symbol. Whatever the means
employed the aim is the same - to convey through the mark, in the minds of
Petitioner Philip Morris, Inc., a corporation organized under the laws of the potential customers, the desirability of the commodity upon which it
State of Virginia, United States of America, is, per Certificate of appears. Once this is attained, the trade-mark owner has something of
Registration No. 18723 issued on April 26, 1973 by the Philippine Patents value. If another poaches upon the commercial magnetism of the symbol he
Office (PPO), the registered owner of the trademark MARK VII for has created, the owner can obtain legal redress.
cigarettes. Similarly, petitioner Benson & Hedges (Canada), Inc., a
subsidiary of Philip Morris, Inc., is the registered owner of the
trademark MARK TEN for cigarettes as evidenced by PPO Certificate of
Registration No. 11147. And as can be seen in Trademark Certificate of
Definitions of marks, collective marks, trade
Registration No. 19053, another subsidiary of Philip Morris, Inc., the Swiss names (Memorize)
company Fabriques de Tabac Reunies, S.A., is the assignee of the
trademark LARK, which was originally registered in 1964 by Ligget and Section 121. Definitions. - As used in Part III, the
Myers Tobacco Company. On the other hand, respondent Fortune Tobacco following terms have the following meanings:
Corporation, a company organized in the Philippines, manufactures and
sells cigarettes using the trademark MARK.
121.1. "Mark" means any visible sign capable of
Philip Morris, Inc. and two other petitioners are ascribing whimsical distinguishing the goods (trademark) or services (service
exercise of the faculty conferred upon magistrates by Section 6, Rule 58 of mark) of an enterprise and shall include a stamped or
the Revised Rules of Court when respondent Court of Appeals lifted the marked container of goods; (Sec. 38, R.A. No. 166a)
writ of preliminary injunction it earlier had issued against Fortune Tobacco
Corporation, from manufacturing and selling ―MARK‖ cigarettes in the
local market. Banking on the thesis that petitioners‘ respective symbols
121.2. "Collective mark" means any visible sign
―MARK VII‖, ‗MARK TEN‖, and ―MARK‖, also for cigarettes, must be designated as such in the application for registration and
protected against unauthorized appropriation. capable of distinguishing the origin or any other common
characteristic, including the quality of goods or services of
All petitioners are not doing business in the Philippines but are suing on an
isolated transaction, They Invoked provisions of the Paris Convention for
different enterprises which use the sign under the control
the Protection of Industrial and Intellectual Property. As corporate of the registered owner of the collective mark; (Sec. 40,
nationals of member-countries of the Paris Union, they can sue before R.A. No.166a)
Philippine courts for infringement of trademarks, or for unfair competition,
without need of obtaining registration or a license to do business in the 121.3. "Trade name" means the name or designation
Philippines, and without necessity of actually doing business in the
Philippines.
identifying or distinguishing an enterprise; (Sec. 38, R.A.
No. 166a)
Philip Morris and its subsidiaries filed the complaint for infringement and
damages against Fortune Tobacco before the Pasig Regional Trial Court 121.4. "Bureau" means the Bureau of Trademarks;
(RTC) for manufacturing and selling cigarettes bearing the trademark
―Mark‖ which is identical and confusingly similar to Philip Morris 121.5. "Director" means the Director of Trademarks;
trademarks. The said act was dismissed. Hence, this petition at bar.
121.6. "Regulations" means the Rules of Practice in
Issue/s: Whether or not there has been an invasion of plaintiffs‘ right of
property to such trademark or trade name. Trademarks and Service Marks formulated by the Director
of Trademarks and approved by the Director General; and
Discussions:
121.7. "Examiner" means the trademark examiner. (Sec.
Following universal acquiescence and comity, our municipal law on
trademarks regarding the requirement of actual use in the Philippines must
38, R.A. No. 166a)
subordinate an international agreement inasmuch as the apparent clash is Case: Mirpuri vs CA
being decided by a municipal tribunal. Withal, the fact that international
law has been made part of the law of the land does not by any means imply In 1970, Escobar filed an application with the Bureau of Patents for the
the primacy of international law over national law in the municipal sphere. registration of the trademark ―Barbizon‖ for use in horsiers and ladies
Under the doctrine of incorporation as applied in most countries, rules of undergarments (IPC No. 686). Private respondent reported Barbizon
international law are given a standing equal, not superior, to national Corporation, a corporation organized and doing business under the laws of
legislative enactments New York, USA, opposed the application. It was alleged that its trademark
is confusingly similar with that of Escobar and that the registration of the
The protection of trademarks is the laws recognition of the psychological said trademark will cause damage to its business reputation and goodwill. In
function of symbols. If it is true that we live by symbols, it is no less true 1974, the Director of Patents gave due course to
that we purchase goods by them. A trade-mark is a merchandising 33
the application. Escobar later assigned all his rights and interest over the
trademark to petitioner. In 1979, Escobar failed to file with the Bureau the
affidavit of use of the trademark required under the Philippine Trademark
Law. Due to this failure, the Bureau cancelled Escobar‘s certificate of
registration. In 1981, Escobar and petitioner separately filed
this application for registration of the same trademark. (IPC 2049). Private
respondent opposed again. This time it alleged (1) that the said trademark
its use on the same class of goods amounts to a violation of the Trademark
Law and Art. 189 of the RPC. Petitioner raised the defense of Res Judicata.

Issue: One of the requisites of res judicata is identical causes of action. Do


IPC No. 686 and IPC No. 2049 involve the same cause of action?

Held: No. The issue of ownership of the trademark was not raised in IPC
686. IPC 2049 raised the issue of ownership, the first registration and use of R.A. No. 8293 defines a mark as any visible sign capable of distinguishing
the trademark in the US and other countries, and the international recognition the goods (trademark) or services (service mark) of an enterprise and shall
of the trademark established by extensive use and advertisement of include a stamped or marked container of goods. It also defines a collective
respondents products for over 40 years here and abroad. These are different
mark as any visible sign designated as such in the application for registration
from the issues of confessing similarity and damage in IPC 686. The issue of
prior use may have been raised in IPC 686 but this claim was limited to prior and capable of distinguishing the origin or any other common characteristic,
use in the Philippines only. Prior use in IPC 2049 stems from the respondents including the quality of goods or services of different enterprises which use
claims originator of the word and symbol ―Barbizon‖, as the first the sign under the control of the registered owner of the collective mark.
and registered user of the mark attached to its products which have been sold
and advertised would arise for a considerable number of years prior to According to Section 123.1(d) of R.A. No. 8293, a mark cannot be registered
petitioner‘s first application. Indeed, these are substantial allegations that if it is identical with a registered mark belonging to a different proprietor
raised new issues and necessarily gave respondents a new cause of action.
with an earlier filing or priority date, with respect to: (1) the same goods or
Moreover, the cancellation of petitioner‘s certificate registration for failure services; (2) closely related goods or services; or (3) near resemblance of
to file the affidavit of use arose after IPC 686. This gave respondent another such mark as to likely deceive or cause confusion.
cause to oppose the second application.
In determining similarity and likelihood of confusion, jurisprudence has
It is also to be noted that the oppositions in the first and second cases are developed tests: the Dominancy Test and the Holistic or Totality Test.
based on different laws. Causes of action which are distinct and independent
from each other, although out of the same contract, transaction, or state Dominancy Test focuses on the similarity of the prevalent or dominant
of facts, may be sued on separately, recovery on one being no bar to
subsequent actions on others. The mere fact that the same relief is sought in features of the competing trademarks that might cause confusion, mistake,
the subsequent action will not render the judgment in the prior action and deception in the mind of the purchasing public. Duplication or imitation
operating as res judicata, such as where the actions are based on different is not necessary; neither is it required that the mark sought to be registered
statutes. suggests an effort to imitate. Given more consideration are the aural and
visual impressions created by the marks on the buyers of goods, giving little
Issue: Whether or not the treaty (Paris Convention) affords protection to a weight to factors like prices, quality, sales outlets, and market segments.
foreign corporation against a Philippine applicant for the registration of a
similar trademark.
Holistic or Totality Test necessitates a consideration of the entirety of the
Held: marks as applied to the products, including the labels and packaging, in
determining confusing similarity. The discerning eye of the observer must
The Court held in the affirmative. RA 8293 defines trademark as any visible focus not only on the predominant words but also on the other features
sign capable of distinguishing goods. The Paris Convention is a multilateral appearing on both labels so that the observer may draw conclusion on
treaty that seeks to protect industrial property consisting of patents, utility whether one is confusingly similar to the other.
models, industrial designs, trademarks, service marks, trade names and
indications of source or appellations of origin, and at the same time aims to
Case: Canon Kabushiki vs. CA
repress unfair competition. In short, foreign nationals are to be given the
same treatment in each of the member countries as that country makes
available to its own citizens. Nationals of the various member nations are On January 15, 1985, private respondent NSR Rubber Corporation filed an
thus assured of a certain minimum of international protection of their application for registration of the mark CANON for sandals in the Bureau of
industrial property. Patents, Trademarks, and Technology Transfer (BPTTT). Canon Kabushiki
Kaisha filed a Verified Notice of Opposition alleging that it will be damaged
by the registration of the trademark CANON in the name of private
respondent since they were using the same trademark for their footwear line
Case: Berris Agricultural vs. Norby Abyadang
of products. The private respondent will also use the name Canon for its
footwear products.
Abyadang filed a trademark application with the IPO for the mark "NS D-10
PLUS" for use in connection with Fungicide. Berris Agricultural Co., Inc.
Based on the records, the evidence presented by petitioner consisted of its
filed an opposition against the trademark citing that it is confusingly similar
certificates of registration for the mark CANON in various countries
with their trademark, "D-10 80 WP" which is also used for Fungicide also
covering goods belonging to class 2, paints, chemical products, toner, and
with the same active ingredient.
dye stuff. Petitioner also submitted in evidence its Philippine Trademark
Registration No. 39398, showing its ownership over the trademark CANON.
The IPO ruled in favor of Berries but on appeal with the CA, the CA ruled in
favor of Abyadang.
The BPTTT, on November 10, 1992, issued its decision dismissing the
opposition of petitioner and giving due course to NSR's application for the
Issue: Whether there is confusing similarity between the trademarks.
registration of the trademark CANON. Canon Kabushiki Kaisha filed an
appeal with the Court of Appeals that eventually affirmed the decision of the
Held:
BPTTT.
Yes. The SC found that both products have the component D-10 as their
The BPTTT and the Court of Appeals share the opinion that the trademark
ingredient and that it is the dominant feature in both their marks. Applying
"CANON" as used by petitioner for its paints, chemical products, toner, and
the Dominancy Test, Abyadang's product is similar to Berris' and that
dyestuff, can be used by private respondent for its sandals because the
confusion may likely to occur especially that both in the same type of goods.
products of these two parties are dissimilar. Petitioner protests the
Also using the Holistic Test, it was more obvious that there is likelihood of
appropriation of the mark CANON by private respondent on the ground that
confusion in their packaging and color schemes of the marks. The SC states
petitioner has used and continues to use the trademark CANON on its wide
that buyers would think that Abyadang's product is an upgrade of Berris'.
range of goods worldwide. Allegedly, the corporate name or trade name of
34 petitioner is also used as its trademark on diverse goods including footwear
and other related products like shoe polisher and polishing agents. To lend
credence to its claim, petitioner points out that it has branched out in its
business based on the various goods carrying its trademark CANON,
including footwear which petitioner contends covers sandals, the goods for
which private respondent sought to register the mark CANON. For
petitioner, the fact alone that its trademark CANON is carried by its other
products like footwear, shoe polisher and polishing agents should have
Issue: Is the use of trademark, CANON, by the private respondent affects
the business of Canon Kabushiki Kaisha who has an existing ownership of a
trademark also known as CANON?

Held:

The Supreme Court says that ordinarily, the ownership of a trademark or


trade name is a property right that the owner is entitled to protect as purchasers.
mandated by the Trademark Law. However, when a trademark is used by a
party for a product in which the other party does not deal, the use of the same In addition, the word ―MASTER‖ is neither a generic nor a descriptive term.
trademark on the latter's product cannot be validly objected to. As such, said term cannot be invalidated as a trademark and, therefore, may
be legally protected.
The BPTTT correctly ruled that since the certificate of registration of
petitioner for the trademark CANON covers class 2 (paints, chemical Generic terms are those which constitute ―the common descriptive name of
products, toner, dyestuff), private respondent can use the trademark CANON an article or substance,‖ or comprise the ―genus of which the particular
for its goods classified as class 25 (sandals). Clearly, there is a world of product is a species,‖ or are ―commonly used as the name or description of a
difference between the paints, chemical products, toner, and dyestuff of kind of goods,‖ or ―imply reference to every member of a genus and the
petitioner and the sandals of private respondent. exclusion of individuating characters,‖ or ―refer to the basic nature of the
wares or services provided rather than to the more idiosyncratic
Undoubtedly, the paints, chemical products, toner and dyestuff of petitioner characteristics of a particular product,‖ and are not legally protectable.
that carry the trademark CANON are unrelated to sandals, the product of
private respondent. We agree with the BPTTT, following the Esso doctrine, On the other hand, a term is descriptive and therefore invalid as a trademark
when it noted that the two classes of products in this case flow through if, as understood in its normal and natural sense, it ―forthwith conveys the
different trade channels. The products of petitioner are sold through special characteristics, functions, qualities or ingredients of a product to one who has
chemical stores or distributors while the products of private respondent are never seen it and does not know what it is,‖ or ―if it forthwith conveys an
sold in grocery stores, sari-sari stores and department stores. immediate idea of the ingredients, qualities or characteristics of the goods,‖
or if it clearly denotes what goods or services are provided in such a way that
Guidelines in the implementation of Article 6bis (sic) of the Treaty of the consumer does not have to exercise powers of perception or imagination.
Paris. These conditions are:
Rather, the term ―MASTER‖ is a suggestive term brought about by the
a) the mark must be internationally known; advertising scheme of Nestle. Suggestive terms are those which, in the
phraseology of one court, require ―imagination, thought and perception to
b) the subject of the right must be a trademark, not a patent or copyright or reach a conclusion as to the nature of the goods.‖ Such terms, ―which subtly
anything else; connote something about the product,‖ are eligible for protection in the
absence of secondary meaning. While suggestive marks are capable of
c ) the mark must be for use in the same or similar kinds of goods; and shedding ―some light‖ upon certain characteristics of the goods or services in
dispute, they nevertheless involve ―an element of incongruity,‖
d) the person claiming must be the owner of the mark (The Parties ―figurativeness,‖ or ‖ imaginative effort on the part of the observer.‖
Convention Commentary on the Paris Convention. Article by Dr. Bogsch, Case: Coffee Partners Inc. vs San Francisco Coffee
Director General of the World Intellectual Property Organization, Geneva, Section 122. How Marks are Acquired. - The rights in a
Switzerland, 1985) Petitioner Coffee Partners entered into a franchise agreement with Coffee
mark shall
Partners Ltd. tobe acquired
operate through
coffee shops in theregistration
country using made validly
the trademark ‗San
Case: Societe des Produits vs. CA in accordance
Francisco Coffee.‘with the provisions
Respondent of this
on the other hand,law.
is a(Sec.
local 2-A, R
corporation
engaged
A. No.in166a)
the wholesale and retail sale of coffee and uses the business name
In 1984, CFC Corporation filed with the Bureau of Patents, Trademarks, and ‗San Francisco Coffee & Roastery‘ registered with the DTI. Later,
Technology Transfers an application for the registration of its trademark respondent filed an infringement and/or unfair competition complaint against
―Flavor Master‖ – an instant coffee. Nestle opposed the application as it petitioner alleging that the latter was about to open a coffee shop under the
alleged that ―Flavor Master‖ is confusingly similar to Nestle coffee products name ‗San Francisco Coffee‘ causing confusion in the minds of the public as
like Master Blend and Master Roast. Nestle alleged that in promoting their it bore a similar name and is engaged also in selling of coffee. Petitioner
products, the word Master has been used so frequently so much so that when contended no infringement would arise because respondent‘s tradename was
one hears the word Master it connotes to a Nestle product. They provided as not registered.
examples the fact that they‘ve been using Robert Jaworski and Ric Puno Jr.
as their commercial advertisers; and that in those commercials Jaworski is a Issue: Whether or not petitioner‘s trademark would infringe respondent‘s
master of basketball and that Puno is a master of talk shows; that the brand of tradename.
coffee equitable or fit to them is Master Blend and Master Roast. CFC
Corporation on the other hand alleged that the word ―Master‖ is a generic Held:
and a descriptive term, hence not subject to trademark. The Director of
YES. In Prosource International, Inc. v. Horphag Research Management
Patents ruled in favor of Nestle but the Court of Appeals, using the Holistic
SA, this Court laid down what constitutes infringement of an unregistered
Test, reversed the said decision.
trade name, thus:
Issue: Whether or not the Court of Appeals is correct.
(1) The trademark being infringed is registered in the Intellectual Property
Held: Office; however, in infringement of trade name, the same need not be
registered;
No. The proper test that should have been used is the Dominancy Test. The
application of the totality or holistic test is improper since the ordinary (2) The trademark or trade name is reproduced, counterfeited, copied, or
purchaser would not be inclined to notice the specific features, similarities or colorably imitated by the infringer;
dissimilarities, considering that the product is an inexpensive and common
(3) The infringing mark or trade name is used in connection with the sale,
household item. The use of the word Master by Nestle in its products and
commercials has made Nestle acquire a connotation that if it‘s a Master 35 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,
product it is a Nestle product. As such, the use by CFC of the term
wrappers, receptacles, or advertisements intended to be used upon or in
―MASTER‖ in the trademark for its coffee product FLAVOR MASTER is
connection with such goods, business, or services;
likely to cause confusion or mistake or even to deceive the ordinary
Section 123. Registrability. - 123.1. A mark cannot be
(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
registered if it:
or services themselves or as to the source or origin of such goods or services
or the identity of such business; and (a) Consists of immoral, deceptive or scandalous matter,
or matter which may disparage or falsely suggest a
(5) It is without the consent of the trademark or trade name owner or the connection with persons, living or dead, institutions,
assignee thereof.
beliefs, or national symbols, or bring them into contempt
RA 8293, which took effect on 1 January 1998, has dispensed with the or disrepute;
registration requirement. Section 165.2 of RA 8293 categorically states that
trade names shall be protected, even prior to or without registration with the (b) Consists of the flag or coat of arms or other insignia of
IPO, against any unlawful act including any subsequent use of the trade name the Philippines or any of its political subdivisions, or of
by a third party, whether as a trade name or a trademark likely to mislead the
public.
any foreign nation, or any simulation thereof;

It is the likelihood of confusion that is the gravamen of infringement. (c) Consists of a name, portrait or signature identifying a
Applying the dominancy test or the holistic test, petitioner‘s ―SAN particular living individual except by his written consent,
FRANCISCO COFFEE‖ trademark is a clear infringement of respondent‘s or the name, signature, or portrait of a deceased President
―SAN FRANCISCO COFFEE & ROASTERY, INC.‖ trade name. The
descriptive words ―SAN FRANCISCO COFFEE‖ are precisely the dominant of the Philippines, during the life of his widow, if any,
features of respondent‘s trade name. Petitioner and respondent are engaged in except by written consent of the widow;
the same business of selling coffee, whether wholesale or retail. The
likelihood of confusion is higher in cases where the business of one (d) Is identical with a registered mark belonging to a
corporation is the same or substantially the same as that of another different proprietor or a mark with an earlier filing or
corporation. In this case, the consuming public will likely be confused as to
the source of the coffee being sold at petitioner‘s coffee shops.
priority date, in respect of:

Prior IPO Registration is Not Required for Trade Name Infringement (i) The same goods or services, or

In this case, the Supreme Court reiterated its 2009 ruling that the local prior (ii) Closely related goods or services, or
registration of a trade name is not a requisite for its owner to hold an
unauthorized user liable for infringement. The Court emphasized that, unlike (iii) If it nearly resembles such a mark as to be
in the case of trademark infringement which requires the prior registration
likely to deceive or cause confusion;
with the Intellectual Property Office (IPO) of the trademark or service mark
being enforced, all that is required in a case of trade name infringement is
that the trade name being enforced was previously used in trade or commerce (e) Is identical with, or confusingly similar to, or
in the Philippines. constitutes a translation of a mark which is considered by
the competent authority of the Philippines to be well-
The foregoing doctrine finds basis under Section 165.2 of the IP Code, which
known internationally and in the Philippines, whether or
provides that, notwithstanding any laws or regulations providing for any
obligation to register trade names, such names shall be protected, even prior not it is registered here, as being already the mark of a
to or without registration, against any unlawful act committed by third person other than the applicant for registration, and used
parties; and that any subsequent use of a trade name by a third party, whether for identical or similar goods or services: Provided, That
as a trade name or a mark or collective mark, or any such use of a similar
in determining whether a mark is well-known, account
trade name or mark, that is likely to mislead the public, is deemed unlawful.
shall be taken of the knowledge of the relevant sector of
Under the old trademark law, Republic Act No. 166 the registration of a trade the public, rather than of the public at large, including
name was required as a condition for the institution of an infringement suit. knowledge in the Philippines which has been obtained as a
In Prosource International, Inc. vs. Horphag Research Management SA
(G.R. No. 180073), which was promulgated late last year, the Court laid
result of the promotion of the mark;
down the elements of infringement of an unregistered trade name: (1) the
trade name is reproduced, counterfeited, copied, or colorably imitated by the (f) Is identical with, or confusingly similar to, or
infringer; (2) the infringing mark or trade name is used in connection with the constitutes a translation of a mark considered well-known
sale, offering for sale, or advertising of any goods, business or services; or is in accordance with the preceding paragraph, which is
applied to labels, signs, prints, packages, wrappers, receptacles, or
registered in the Philippines with respect to goods or
advertisements intended to be used upon or in connection with such goods,
business, or services; (3) the use or application of the infringing mark or trade services which are not similar to those with respect to
name is likely to cause confusion or mistake or to deceive purchasers or which registration is applied for: Provided, That use of the
others as to the goods or services themselves or as to the source or origin of mark in relation to those goods or services would indicate
such goods or services or the identity of such business; and (4) the use of the
a connection between those goods or services, and the
mark or trade name is without the consent of the trade name owner or the
assignee thereof. owner of the registered mark: Provided further, That the
interests of the owner of the registered mark are likely to
In this regard, the Court also clarified that it is the likelihood of confusion be damaged by such use;
that is the gravamen of trade name infringement.

36
(g) Is likely to mislead the public, particularly as to the
nature, quality, characteristics or geographical origin of
the goods or services;

(h) Consists exclusively of signs that are generic for the


goods or services that they seek to identify;

(i) Consists exclusively of signs or of indications that have


become customary or usual to designate the goods or
services in everyday language or in bona fide and
established trade practice;

(j) 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 Section 124. Requirements of Application. - 124.1. The
other characteristics of the goods or services; application for the registration of the mark shall be in
Filipino or in English and shall contain the following:
(k) Consists of shapes that may be necessitated by
technical factors or by the nature of the goods themselves (a) A request for registration;
or factors that affect their intrinsic value;
(b) The name and address of the applicant;
(l) Consists of color alone, unless defined by a given form;
(c) The name of a State of which the applicant is a national
or
or where he has domicile; and the name of a State in
(m) Is contrary to public order or morality. which the applicant has a real and effective industrial or
commercial establishment, if any;
123.2. As regards signs or devices mentioned in
paragraphs (j), (k), and (l), nothing shall prevent the (d) Where the applicant is a juridical entity, the law under
registration of any such sign or device which has become which it is organized and existing;
distinctive in relation to the goods for which registration is
(e) The appointment of an agent or representative, if the
requested as a result of the use that have been made of it in
applicant is not domiciled in the Philippines;
commerce in the Philippines. The Office may accept as
prima facie evidence that the mark has become distinctive, (f) Where the applicant claims the priority of an earlier
as used in connection with the applicant's goods or application, an indication of:
services in commerce, proof of substantially exclusive and
continuous use thereof by the applicant in commerce in the (i) The name of the State with whose national
Philippines for five (5) years before the date on which the office the earlier application was filed or if filed with an
claim of distinctiveness is made. office other than a national office, the name of that office,

123.3. The nature of the goods to which the mark is ii) The date on which the earlier application was
applied will not constitute an obstacle to registration. (Sec. filed, and
4,R.A. No. 166a)
iii) Where available, the application number of
the earlier application;

(g) Where the applicant claims color as a distinctive


feature of the mark, a statement to that effect as well as the
name or names of the color or colors claimed and an
indication, in respect of each color, of the principal parts
of the mark which are in that color;

(h) Where the mark is a three-dimensional mark, a


statement to that effect;

(i) One or more reproductions of the mark, as prescribed in


the Regulations;

37
(j) A transliteration or translation of the mark or of some (a) An express or implicit indication that the registration of
parts of the mark, as prescribed in the Regulations; a mark is sought;

(k) The names of the goods or services for which the (b) The identity of the applicant;
registration is sought, grouped according to the classes of
the Nice Classification, together with the number of the (c) Indications sufficient to contact the applicant or his
class of the said Classification to which each group of representative, if any;
goods or services belongs; and
(d) A reproduction of the mark whose registration is
(l) A signature by, or other self-identification of, the sought; and
applicant or his representative.
(e) The list of the goods or services for which the
124.2. The applicant or the registrant shall file a registration is sought.
declaration of actual use of the mark with evidence to that
127.2. No filing date shall be accorded until the required
effect, as prescribed by the Regulations within three (3)
fee is paid. (n)
years from the filing date of the application. Otherwise,
the application shall be refused or the mark shall be Section 128. Single Registration for Goods and/or
removed from the Register by the Director. Services. - Where goods and/or services belonging to
several classes of the Nice Classification have been
124.3. One (1) application may relate to several goods
included in one (1) application, such an application shall
and/or services, whether they belong to one (1) class or to
result in one registration. (n)
several classes of the Nice Classification.
Section 129. Division of Application. - Any application
124.4. If during the examination of the application, the
referring to several goods or services, hereafter referred to
Office finds factual basis to reasonably doubt the veracity
as the "initial application," may be divided by the
of any indication or element in the application, it may
applicant into two (2) or more applications, hereafter
require the applicant to submit sufficient evidence to
referred to as the "divisional applications," by distributing
remove the doubt. (Sec. 5, R.A. No. 166a)
among the latter the goods or services referred to in the
Section 125. Representation; Address for Service. - If the initial application.
applicant is not domiciled or has no real and effective
The divisional applications shall preserve the filing date of
commercial establishment in the Philippines, he shall
the initial application or the benefit of the right of
designate by a written document filed in the Office, the
priority.(n)
name and address of a Philippine resident who may be
served notices or process in proceedings affecting the Section 130. Signature and Other Means of Self-
mark. Such notices or services may be served upon the Identification. - 130.1. Where a signature is required, the
person so designated by leaving a copy thereof at the Office shall accept:
address specified in the last designation filed. If the person
so designated cannot be found at the address given in the (a) A hand-written signature; or
last designation, such notice or process may be served
upon the Director. (Sec. 3, R.A. No. 166a) (b) The use of other forms of signature, such as a printed
or stamped signature, or the use of a seal instead of a
Section 126. Disclaimers. - The Office may allow or hand-written signature: Provided, that where a seal is used,
require the applicant to disclaim an unregistrable it should be accompanied by an indication in letters of the
component of an otherwise registrable mark but such name of the signatory.
disclaimer shall not prejudice or affect the applicant's or
owner's rights then existing or thereafter arising in the 130.2. The Office shall accept communications to it by
disclaimed matter, nor such shall disclaimer prejudice or telecopier, or by electronic means subject to the conditions
affect the applicant's or owner's right on another or requirements that will be prescribed by the Regulations.
application of later date if the disclaimed matter became When communications are made by telefacsimile, the
distinctive of the applicant's or owner's goods, business or reproduction of the signature, or the reproduction of the
services. (Sec. 13, R.A. No. 166a) seal together with, where required, the indication in letters
of the name of the natural person whose seal is used,
Section 127. Filing Date. - 127.1. Requirements. - The appears. The original communications must be received by
filing date of an application shall be the date on which the the Office within thirty (30) days from date of receipt of
Office received the following indications and elements in the telefacsimile.
English or Filipino:
38
130.3. No attestation, notarization, authentication, Section 133. Examination and Publication. - 133.1. Once
legalization or other certification of any signature or other the application meets the filing requirements of Section
means of self-identification referred to in the preceding 127, the Office shall examine whether the application
paragraphs, will be required, except, where the signature meets the requirements of Section 124 and the mark as
concerns the surrender of a registration. (n) defined in Section 121 is registrable under Section 123.

Section 131. Priority Right. - 131.1. An application for 133.2. Where the Office finds that the conditions referred
registration of a mark filed in the Philippines by a person to in Subsection 133.1 are fulfilled, it shall upon payment
referred to in Section 3, and who previously duly filed an of the prescribed fee, forthwith cause the application, as
application for registration of the same mark in one of filed, to be published in the prescribed manner.
those countries, shall be considered as filed as of the day
the application was first filed in the foreign country. 133.3. If after the examination, the applicant is not entitled
to registration for any reason, the Office shall advise the
131.2. No registration of a mark in the Philippines by a applicant thereof and the reasons therefor. The applicant
person described in this section shall be granted until such shall have a period of four (4) months in which to reply or
mark has been registered in the country of origin of the amend his application, which shall then be re-examined.
applicant. The Regulations shall determine the procedure for the
reexamination or revival of an application as well as the
131.3. Nothing in this section shall entitle the owner of a appeal to the Director of Trademarks from any final action
registration granted under this section to sue for acts by the Examiner.
committed prior to the date on which his mark was
registered in this country: Provided, That, notwithstanding 133.4. An abandoned application may be revived as a
the foregoing, the owner of a well-known mark as defined pending application within three (3) months from the date
in Section 123.1(e) of this Act, that is not registered in the of abandonment, upon good cause shown and the payment
Philippines, may, against an identical or confusingly of the required fee.
similar mark, oppose its registration, or petition the
cancellation of its registration or sue for unfair 133.5. The final decision of refusal of the Director of
competition, without prejudice to availing himself of other Trademarks shall be appealable to the Director General in
remedies provided for under the law. accordance with the procedure fixed by the Regulations.
(Sec. 7, R.A. No. 166a)
131.4. In like manner and subject to the same conditions
and requirements, the right provided in this section may be Section 134. Opposition. - Any person who believes that
based upon a subsequent regularly filed application in the he would be damaged by the registration of a mark may,
same foreign country: Provided, That any foreign upon payment of the required fee and within thirty (30)
application filed prior to such subsequent application has days after the publication referred to in Subsection 133.2,
been withdrawn, abandoned, or otherwise disposed of, file with the Office an opposition to the application. Such
without having been laid open to public inspection and opposition shall be in writing and verified by the oppositor
without leaving any rights outstanding, and has not served, or by any person on his behalf who knows the facts, and
nor thereafter shall serve, as a basis for claiming a right of shall specify the grounds on which it is based and include
priority. (Sec. 37, R.A. No. 166a) a statement of the facts relied upon. Copies of certificates
of registration of marks registered in other countries or
Section 132. Application Number and Filing Date. - other supporting documents mentioned in the opposition
132.1. The Office shall examine whether the application shall be filed therewith, together with the translation in
satisfies the requirements for the grant of a filing date as English, if not in the English language. For good cause
provided in Section 127 and Regulations relating thereto. shown and upon payment of the required surcharge, the
If the application does not satisfy the filing requirements, time for filing an opposition may be extended by the
the Office shall notify the applicant who shall within a Director of Legal Affairs, who shall notify the applicant of
period fixed by the Regulations complete or correct the such extension. The Regulations shall fix the maximum
application as required, otherwise, the application shall be period of time within which to file the opposition. (Sec. 8,
considered withdrawn. R.A. No. 165a)

132.2 Once an application meets the filing requirements of Section 135. Notice and Hearing. - Upon the filing of an
Section 127, it shall be numbered in the sequential order, opposition, the Office shall serve notice of the filing on the
and the applicant shall be informed of the application applicant, and of the date of the hearing thereof upon the
number and the filing date of the application will be applicant and the oppositor and all other persons having
deemed to have been abandoned. (n) any right, title or interest in the mark covered by the
39
application, as appear of record in the Office. (Sec. 9, R.A. the mark, and of the registrant's exclusive right to use the
No. 165) same in connection with the goods or services and those
that are related thereto specified in the certificate. (Sec. 20,
Section 136. Issuance and Publication of Certificate. - R.A. No. 165)
When the period for filing the opposition has expired, or
when the Director of Legal Affairs shall have denied the Section 139. Publication of Registered Marks; Inspection
opposition, the Office upon payment of the required fee, of Register. - 139.1. The Office shall publish, in the form
shall issue the certificate of registration. Upon issuance of and within the period fixed by the Regulations, the marks
a certificate of registration, notice thereof making registered, in the order of their registration, reproducing all
reference to the publication of the application shall be the particulars referred to in Subsection 137.2.
published in the IPO Gazette. (Sec. 10, R.A. No. 165)
139.2. Marks registered at the Office may be inspected
Section 137. Registration of Mark and Issuance of a free of charge and any person may obtain copies thereof at
Certificate to the Owner or his Assignee. - 137.1. The his own expense. This provision shall also be applicable to
Office shall maintain a Register in which shall be transactions recorded in respect of any registered mark. (n)
registered marks, numbered in the order of their
registration, and all transactions in respect of each mark, Section 140. Cancellation upon Application by
required to be recorded by virtue of this law. Registrant; Amendment or Disclaimer of Registration. –
Upon application of the registrant, the Office may permit
137.2. The registration of a mark shall include a any registration to be surrendered for cancellation, and
reproduction of the mark and shall mention: its number; upon cancellation the appropriate entry shall be made in
the name and address of the registered owner and, if the the records of the Office. Upon application of the
registered owner's address is outside the country, his registrant and payment of the prescribed fee, the Office for
address for service within the country; the dates of good cause may permit any registration to be amended or
application and egistration; if priority is claimed, an to be disclaimed in part: Provided, That the amendment or
indication of this fact, and the number, date and country of disclaimer does not alter materially the character of the
the application, basis of the priority claims; the list of mark.
goods or services in respect of which registration has been
granted, with the indication of the corresponding class or Appropriate entry shall be made in the records of the
classes; and such other data as the Regulations may Office upon the certificate of registration or, if said
prescribe from time to time. certificate is lost or destroyed, upon a certified copy
thereof (Sec. 14, R.A. No. 166)
137.3. A certificate of registration of a mark may be issued
to the assignee of the applicant: Provided, That the Section 141. Sealed and Certified Copies as Evidence. -
assignment is recorded in the Office. In case of a change Copies of any records, books, papers, or drawings
of ownership, the Office shall at the written request signed belonging to the Office relating to marks, and copies of
by the owner, or his representative, or by the new owner, registrations, when authenticated by the seal of the Office
or his representative and upon a proper showing and the and certified by the Director of the Administrative,
payment of the prescribed fee, issue to such assignee a Financial and Human Resource Development Service
new certificate of registration of the said mark in the name Bureau or in his name by an employee of the Office duly
of such assignee, and for the unexpired part of the original authorized by said Director, shall be evidence in all cases
period. wherein the originals would be evidence; and any person
who applies and pays the prescribed fee shall secure such
137.4. The Office shall record any change of address, or copies. (n)
address for service, which shall be notified to it by the
registered owner. Section 142. Correction of Mistakes Made by the Office.
- Whenever a material mistake in a registration incurred
137.5. In the absence of any provision to the contrary in through the fault of the Office is clearly disclosed by the
this Act, communications to be made to the registered records of the Office, a certificate stating the fact and
owner by virtue of this Act shall be sent to him at his last nature of such mistake shall be issued without charge,
recorded address and, at the same, at his last recorded recorded and a printed copy thereof shall be attached to
address for service. (Sec. 19, R.A. No. 166a) each printed copy of the registration. Such corrected
registration shall thereafter have the same effect as the
Section 138. Certificates of Registration. - A certificate of original certificate; or in the discretion of the Director of
registration of a mark shall be prima facie evidence of the the Administrative, Financial and Human Resource
validity of the registration, the registrant's ownership of Development Service Bureau a new certificate of
40
registration may be issued without charge. All certificates (e) Where the right holder has a representative, the name
of correction heretofore issued in accordance with the and address of that representative;
Regulations and the registration to which they are attached
shall have the same force and effect as if such certificates (f) The names of the recorded goods or services for which
and their issuance had been authorized by this Act. (n) the renewal is requested or the names of the recorded
goods or services for which the renewal is not requested,
Section 143. Correction of Mistakes Made by Applicant. grouped according to the classes of the Nice Classification
- Whenever a mistake is made in a registration and such to which that group of goods or services belongs and
mistake occurred in good faith through the fault of the presented in the order of the classes of the said
applicant, the Office may issue a certificate upon the Classification; and
payment of the prescribed fee: Provided, That the
correction does not involve any change in the registration (g) A signature by the right holder or his representative.
that requires republication of the mark. (n)
146.2. Such request shall be in Filipino or English and
Section 144. Classification of Goods and Services. - may be made at any time within six (6) months before the
144.1. Each registration, and any publication of the Office expiration of the period for which the registration was
which concerns an application or registration effected by issued or renewed, or it may be made within six (6)
the Office shall indicate the goods or services by their months after such expiration on payment of the additional
names, grouped according to the classes of the Nice fee herein prescribed.
Classification, and each group shall be preceded by the
146.3. If the Office refuses to renew the registration, it
number of the class of that Classification to which that
shall notify the registrant of his refusal and the reasons
group of goods or services belongs, presented in the order
therefor.
of the classes of the said Classification.
146.4. An applicant for renewal not domiciled in the
144.2. Goods or services may not be considered as being
Philippines shall be subject to and comply with the
similar or dissimilar to each other on the ground that, in
requirements of this Act. (Sec. 15, R.A. No. 166a)
any registration or publication by the Office, they appear
in different classes of the Nice Classification. (Sec. 6, R.A. Section 147. Rights Conferred. - 147.1. The owner of a
No. 166a) registered mark shall have the exclusive right to prevent
all third parties not having the owner's consent from using
Section 145. Duration. - A certificate of registration shall
in the course of trade identical or similar signs or
remain in force for ten (10) years: Provided, That the
containers for goods or services which are identical or
registrant shall file a declaration of actual use and
similar to those in respect of which the trademark is
evidence to that effect, or shall show valid reasons based
registered where such use would result in a likelihood of
on the existence of obstacles to such use, as prescribed by
confusion. In case of the use of an identical sign for
the Regulations, within one (1) year from the fifth
identical goods or services, a likelihood of confusion shall
anniversary of the date of the registration of the mark.
be presumed.
Otherwise, the mark shall be removed from the Register
by the Office. (Sec. 12, R.A. No. 166a) 147.2. The exclusive right of the owner of a well-known
mark defined in Subsection 123.1(e) which is registered in
Section 146. Renewal. - 146.1. A certificate of registration
the Philippines, shall extend to goods and services which
may be renewed for periods of ten (10) years at its
are not similar to those in respect of which the mark is
expiration upon payment of the prescribed fee and upon
registered: Provided, That use of that mark in relation to
filing of a request. The request shall contain the following
those goods or services would indicate a connection
indications:
between those goods or services and the owner of the
(a) An indication that renewal is sought; registered mark: Provided further, That the interests of the
owner of the registered mark are likely to be damaged by
(b) The name and address of the registrant or his such use. (n)
successor-in-interest, hereafter referred to as the "right
holder"; Section 148. Use of Indications by Third Parties for
Purposes Other than those for which the Mark is Used. -
(c) The registration number of the registration concerned; Registration of the mark shall not confer on the registered
owner the right to preclude third parties from using bona
(d) The filing date of the application which resulted in the fide their names, addresses, pseudonyms, a geographical
registration concerned to be renewed; name, or exact indications concerning the kind, quality,
quantity, destination, value, place of origin, or time of
41
production or of supply, of their goods or services: (a) Within five (5) years from the date of the registration
Provided, That such use is confined to the purposes of of the mark under this Act.
mere identification or information and cannot mislead the
public as to the source of the goods or services. (n) (b) At any time, if the registered mark becomes the generic
name for the goods or services, or a portion thereof, for
Section 149. Assignment and Transfer of Application which it is registered, or has been abandoned, or its
and Registration. - 149.1. An application for registration registration was obtained fraudulently or contrary to the
of a mark, or its registration, may be assigned or provisions of this Act, or if the registered mark is being
transferred with or without the transfer of the business used by, or with the permission of, the registrant so as to
using the mark. (n) misrepresent the source of the goods or services on or in
connection with which the mark is used. If the registered
149.2. Such assignment or transfer shall, however, be null mark becomes the generic name for less than all of the
and void if it is liable to mislead the public, particularly as goods or services for which it is registered, a petition to
regards the nature, source, manufacturing process, cancel the registration for only those goods or services
characteristics, or suitability for their purpose, of the may be filed. A registered mark shall not be deemed to be
goods or services to which the mark is applied. the generic name of goods or services solely because such
mark is also used as a name of or to identify a unique
149.3. The assignment of the application for registration of
product or service. The primary significance of the
a mark, or of its registration, shall be in writing and
registered mark to the relevant public rather than
require the signatures of the contracting parties. Transfers
purchaser motivation shall be the test for determining
by mergers or other forms of succession may be made by
whether the registered mark has become the generic name
any document supporting such transfer.
of goods or services on or in connection with which it has
149.4. Assignments and transfers of registrations of marks been used. (n)
shall be recorded at the Office on payment of the
(c) At any time, if the registered owner of the mark
prescribed fee; assignment and transfers of applications for
without legitimate reason fails to use the mark within the
registration shall, on payment of the same fee, be
Philippines, or to cause it to be used in the Philippines by
provisionally recorded, and the mark, when registered,
virtue of a license during an uninterrupted period of three
shall be in the name of the assignee or transferee.
(3) years or longer.
149.5. Assignments and transfers shall have no effect
151.2. Notwithstanding the foregoing provisions, the court
against third parties until they are recorded at the Office.
or the administrative agency vested with jurisdiction to
(Sec. 31, R.A. No. 166a)
hear and adjudicate any action to enforce the rights to a
Section 150. License Contracts. - 150.1. Any license registered mark shall likewise exercise jurisdiction to
contract concerning the registration of a mark, or an determine whether the registration of said mark may be
application therefor, shall provide for effective control by cancelled in accordance with this Act. The filing of a suit
the licensor of the quality of the goods or services of the to enforce the registered mark with the proper court or
licensee in connection with which the mark is used. If the agency shall exclude any other court or agency from
license contract does not provide for such quality control, assuming jurisdiction over a subsequently filed petition to
or if such quality control is not effectively carried out, the cancel the same mark. On the other hand, the earlier filing
license contract shall not be valid. of petition to cancel the mark with the Bureau of Legal
Affairs shall not constitute a prejudicial question that must
150.2. A license contract shall be submitted to the Office be resolved before an action to enforce the rights to same
which shall keep its contents confidential but shall record registered mark may be decided. (Sec. 17, R.A. No. 166a)
it and publish a reference thereto. A license contract shall
have no effect against third parties until such recording is Section 152. Non-use of a Mark When Excused. - 152.1.
effected. The Regulations shall fix the procedure for the Non-use of a mark may be excused if caused by
recording of the license contract. (n) circumstances arising independently of the will of the
trademark owner. Lack of funds shall not excuse non-use
Section 151. Cancellation. - 151.1. A petition to cancel a of a mark.
registration of a mark under this Act may be filed with the
Bureau of Legal Affairs by any person who believes that 152.2. The use of the mark in a form different from the
he is or will be damaged by the registration of a mark form in which it is registered, which does not alter its
under this Act as follows: distinctive character, shall not be ground for cancellation
or removal of the mark and shall not diminish the
protection granted to the mark.
42
152.3. The use of a mark in connection with one or more 155.1 or this subsection are committed regardless of
of the goods or services belonging to the class in respect of whether there is actual sale of goods or services using the
which the mark is registered shall prevent its cancellation infringing material. (Sec. 22, R.A. No 166a)
or removal in respect of all other goods or services of the
same class. Section 156. Actions, and Damages and Injunction for
Infringement. - 156.1. The owner of a registered mark
152.4. The use of a mark by a company related with the may recover damages from any person who infringes his
registrant or applicant shall inure to the latter's benefit, and rights, and the measure of the damages suffered shall be
such use shall not affect the validity of such mark or of its either the reasonable profit which the complaining party
registration: Provided, That such mark is not used in such would have made, had the defendant not infringed his
manner as to deceive the public. If use of a mark by a rights, or the profit which the defendant actually made out
person is controlled by the registrant or applicant with of the infringement, or in the event such measure of
respect to the nature and quality of the goods or services, damages cannot be readily ascertained with reasonable
such use shall inure to the benefit of the registrant or certainty, then the court may award as damages a
applicant. (n) reasonable percentage based upon the amount of gross
sales of the defendant or the value of the services in
Section 153. Requirements of Petition; Notice and connection with which the mark or trade name was used in
Hearing. - Insofar as applicable, the petition for the infringement of the rights of the complaining party.
cancellation shall be in the same form as that provided in (Sec. 23, first par. R.A. No. 166a)
Section 134 hereof, and notice and hearing shall be as
provided in Section 135 hereof. 156.2. On application of the complainant, the court may
impound during the pendency of the action, sales invoices
Section 154. Cancellation of Registration. - If the Bureau and other documents evidencing sales. (n)
of Legal Affairs finds that a case for cancellation has been
made out, it shall order the cancellation of the registration. 156.3. In cases where actual intent to mislead the public or
When the order or judgment becomes final, any right to defraud the complainant is shown, in the discretion of
conferred by such registration upon the registrant or any the court, the damages may be doubled. (Sec. 23, first par.,
person in interest of record shall terminate. Notice of R.A. No. 166)
cancellation shall be published in the IPO Gazette. (Sec.
19, R.A. No. 166a) 156.4. The complainant, upon proper showing, may also
be granted injunction. (Sec. 23, second par., R.A. No.
Section 155. Remedies; Infringement. - Any person who 166a)
shall, without the consent of the owner of the registered
mark: Section 157. Power of Court to Order Infringing
Material Destroyed. - 157.1 In any action arising under
155.1. Use in commerce any reproduction, counterfeit, this Act, in which a violation of any right of the owner of
copy, or colorable imitation of a registered mark or the the registered mark is established, the court may order that
same container or a dominant feature thereof in connection goods found to be infringing be, without compensation of
with the sale, offering for sale, distribution, advertising of any sort, disposed of outside the channels of commerce in
any goods or services including other preparatory steps such a manner as to avoid any harm caused to the right
necessary to carry out the sale of any goods or services on holder, or destroyed; and all labels, signs, prints, packages,
or in connection with which such use is likely to cause wrappers, receptacles and advertisements in the possession
confusion, or to cause mistake, or to deceive; or of the defendant, bearing the registered mark or trade
name or any reproduction, counterfeit, copy or colorable
155.2. Reproduce, counterfeit, copy or colorably imitate a imitation thereof, all plates, molds, matrices and other
registered mark or a dominant feature thereof and apply means of making the same, shall be delivered up and
such reproduction, counterfeit, copy or colorable imitation destroyed.
to labels, signs, prints, packages, wrappers, receptacles or
advertisements intended to be used in commerce upon or 157.2. In regard to counterfeit goods, the simple removal
in connection with the sale, offering for sale, distribution, of the trademark affixed shall not be sufficient other than
or advertising of goods or services on or in connection in exceptional cases which shall be determined by the
with which such use is likely to cause confusion, or to Regulations, to permit the release of the goods into the
cause mistake, or to deceive, shall be liable in a civil channels of commerce. (Sec. 24, R.A. No. 166a)
action for infringement by the registrant for the remedies
hereinafter set forth: Provided, That the infringement takes Section 158. Damages; Requirement of Notice. - In any
place at the moment any of the acts stated in Subsection suit for infringement, the owner of the registered mark

43
shall not be entitled to recover profits or damages unless Section 160. Right of Foreign Corporation to Sue in
the acts have been committed with knowledge that such Trademark or Service Mark Enforcement Action. - Any
imitation is likely to cause confusion, or to cause mistake, foreign national or juridical person who meets the
or to deceive. Such knowledge is presumed if the requirements of Section 3 of this Act and does not engage
registrant gives notice that his mark is registered by in business in the Philippines may bring a civil or
displaying with the mark the words '"Registered Mark" or administrative action hereunder for opposition,
the letter R within a circle or if the defendant had cancellation, infringement, unfair competition, or false
otherwise actual notice of the registration. (Sec. 21, R.A. designation of origin and false description, whether or not
No. 166a) it is licensed to do business in the Philippines under
existing laws. (Sec. 21-A, R.A. No. 166a)
Section 159. Limitations to Actions for Infringement. -
Notwithstanding any other provision of this Act, the Section 161. Authority to Determine Right to
remedies given to the owner of a right infringed under this Registration. - In any action involving a registered mark,
Act shall be limited as follows: the court may determine the right to registration, order the
cancellation of a registration, in whole or in part, and
159.1. Notwithstanding the provisions of Section 155 otherwise rectify the register with respect to the
hereof, a registered mark shall have no effect against any registration of any party to the action in the exercise of
person who, in good faith, before the filing date or the this. Judgment and orders shall be certified by the court to
priority date, was using the mark for the purposes of his the Director, who shall make appropriate entry upon the
business or enterprise: Provided, That his right may only records of the Bureau, and shall be controlled thereby.
be transferred or assigned together with his enterprise or (Sec. 25, R.A. No. 166a)
business or with that part of his enterprise or business in
which the mark is used. Section 162. Action for False or Fraudulent Declaration.
- Any person who shall procure registration in the Office
159.2. Where an infringer who is engaged solely in the of a mark by a false or fraudulent declaration or
business of printing the mark or other infringing materials representation, whether oral or in writing, or by any false
for others is an innocent infringer, the owner of the right means, shall be liable in a civil action by any person
infringed shall be entitled as against such infringer only to injured thereby for any damages sustained in consequence
an injunction against future printing. thereof (Sec. 26, R.A. No. 166)

159.3. Where the infringement complained of is contained Section 163. Jurisdiction of Court. - All actions under
in or is part of paid advertisement in a newspaper, Sections 150, 155, 164, and 166 to 169 shall be brought
magazine, or other similar periodical or in an electronic before the proper courts with appropriate jurisdiction
communication, the remedies of the owner of the right under existing laws. (Sec. 27, R.A. No. 166)
infringed as against the publisher or distributor of such
newspaper, magazine, or other similar periodical or Section 164. Notice of Filing Suit Given to the Director. -
electronic communication shall be limited to an injunction It shall be the duty of the clerks of such courts within one
against the presentation of such advertising matter in (1) month after the filing of any action, suit, or proceeding
future issues of such newspapers, magazines, or other involving a mark registered under the provisions of this
similar periodicals or in future transmissions of such Act, to notify the Director in writing setting forth: the
electronic communications. The limitations of this names and addresses of the litigants and designating the
subparagraph shall apply only to innocent infringers: number of the registration or registrations and within one
Provided, That such injunctive relief shall not be available (1) month after the judgment is entered or an appeal is
to the owner of the right infringed with respect to an issue taken, the clerk of court shall give notice thereof to the
of a newspaper, magazine, or other similar periodical or an Office, and the latter shall endorse the same upon the
electronic communication containing infringing matter filewrapper of the said registration or registrations and
where restraining the dissemination of such infringing incorporate the same as a part of the contents of said
matter in any particular issue of such periodical or in an filewrapper. (n)
electronic communication would delay the delivery of
such issue or transmission of such electronic Section 165. Trade Names or Business Names. - 165.1. A
communication is customarily conducted in accordance name or designation may not be used as a trade name if by
with the sound business practice, and not due to any its nature or the use to which such name or designation
method or device adopted to evade this section or to may be put, it is contrary to public order or morals and if,
prevent or delay the issuance of an injunction or in particular, it is liable to deceive trade circles or the
restraining order with respect to such infringing matter. (n) public as to the nature of the enterprise identified by that
name.
44
165.2.(a) Notwithstanding any laws or regulations (b) The registered owner of a collective mark shall notify
providing for any obligation to register trade names, such the Director of any changes made in respect of the
names shall be protected, even prior to or without agreement referred to in paragraph (a).
registration, against any unlawful act committed by third
parties. 167.3. In addition to the grounds provided in Section 149,
the Court shall cancel the registration of a collective mark
(b) In particular, any subsequent use of the trade name by if the person requesting the cancellation proves that only
a third party, whether as a trade name or a mark or the registered owner uses the mark, or that he uses or
collective mark, or any such use of a similar trade name or permits its use in contravention of the agreements referred
mark, likely to mislead the public, shall be deemed to in Subsection 166.2 or that he uses or permits its use in
unlawful. a manner liable to deceive trade circles or the public as to
the origin or any other common characteristics of the
165.3. The remedies provided for in Sections 153 to 156 goods or services concerned.
and Sections 166 and 167 shall apply mutatis mutandis.
167.4. The registration of a collective mark, or an
165.4. Any change in the ownership of a trade name shall application therefor shall not be the subject of a license
be made with the transfer of the enterprise or part thereof contract. (Sec. 40, R.A. No. 166a)
identified by that name. The provisions of Subsections
149.2 to 149.4 shall apply mutatis mutandis. Section 168. Unfair Competition, Rights, Regulation and
Remedies. - 168.1. A person who has identified in the
Section 166. Goods Bearing Infringing Marks or Trade mind of the public the goods he manufactures or deals in,
Names. - No article of imported merchandise which shall his business or services from those of others, whether or
copy or simulate the name of any domestic product, or not a registered mark is employed, has a property right in
manufacturer, or dealer, or which shall copy or simulate a the goodwill of the said goods, business or services so
mark registered in accordance with the provisions of this identified, which will be protected in the same manner as
Act, or shall bear a mark or trade name calculated to other property rights.
induce the public to believe that the article is
manufactured in the Philippines, or that it is manufactured 168.2. Any person who shall employ deception or any
in any foreign country or locality other than the country or other means contrary to good faith by which he shall pass
locality where it is in fact manufactured, shall be admitted off the goods manufactured by him or in which he deals,
to entry at any customhouse of the Philippines. In order to or his business, or services for those of the one having
aid the officers of the customs service in enforcing this established such goodwill, or who shall commit any acts
prohibition, any person who is entitled to the benefits of calculated to produce said result, shall be guilty of unfair
this Act, may require that his name and residence, and the competition, and shall be subject to an action therefor.
name of the locality in which his goods are manufactured,
a copy of the certificate of registration of his mark or trade 168.3. In particular, and without in any way limiting the
name, to be recorded in books which shall be kept for this scope of protection against unfair competition, the
purpose in the Bureau of Customs, under such regulations following shall be deemed guilty of unfair competition:
as the Collector of Customs with the approval of the
(a) Any person, who is selling his goods and gives them
Secretary of Finance shall prescribe, and may furnish to
the general appearance of goods of another manufacturer
the said Bureau facsimiles of his name, the name of the
or dealer, either as to the goods themselves or in the
locality in which his goods are manufactured, or his
wrapping of the packages in which they are contained, or
registered mark or trade name, and thereupon the Collector
the devices or words thereon, or in any other feature of
of Customs shall cause one (1) or more copies of the same
their appearance, which would be likely to influence
to be transmitted to each collector or to other proper
purchasers to believe that the goods offered are those of a
officer of the Bureau of Customs. (Sec. 35, R.A. No. 166)
manufacturer or dealer, other than the actual manufacturer
Section 167. Collective Marks. - 167.1. Subject to or dealer, or who otherwise clothes the goods with such
Subsections 167.2 and 167.3, Sections 122 to 164 and 166 appearance as shall deceive the public and defraud another
shall apply to collective marks, except that references of his legitimate trade, or any subsequent vendor of such
therein to "mark" shall be read as "collective mark". goods or any agent of any vendor engaged in selling such
goods with a like purpose;
167.2.(a) An application for registration of a collective
mark shall designate the mark as a collective mark and (b) Any person who by any artifice, or device, or who
shall be accompanied by a copy of the agreement, if any, employs any other means calculated to induce the false
governing the use of the collective mark. belief that such person is offering the services of another

45
who has identified such services in the mind of the public;
or

(c) Any person who shall make any false statement in the
course of trade or who shall commit any other act contrary
to good faith of a nature calculated to discredit the goods,
business or services of another.

168.4. The remedies provided by Sections 156, 157 and


161 shall apply mutatis mutandis. (Sec. 29, R.A. No. 166a)

Section 169. False Designations of Origin; False


Description or Representation. - 169.1. Any person who,
on or in connection with any goods or services, or any
container for goods, uses in commerce any word, term,
name, symbol, or device, or any combination thereof, or
any false designation of origin, false or misleading
description of fact, or false or misleading representation of
fact, which:

(a) Is likely to cause confusion, or to cause mistake, or to


deceive as to the affiliation, connection, or association of
such person with another person, or as to the origin,
sponsorship, or approval of his or her goods, services, or
commercial activities by another person; or

(b) In commercial advertising or promotion, misrepresents


the nature, characteristics, qualities, or geographic origin
of his or her or another person's goods, services, or
commercial activities, shall be liable to a civil action for
damages and injunction provided in Sections 156 and 157
of this Act by any person who believes that he or she is or
is likely to be damaged by such act.

169.2. Any goods marked or labelled in contravention of


the provisions of this Section shall not be imported into
the Philippines or admitted entry at any customhouse of
the Philippines. The owner, importer, or consignee of
goods refused entry at any customhouse under this section
may have any recourse under the customs revenue laws or
may have the remedy given by this Act in cases involving
goods refused entry or seized. (Sec. 30, R.A. No. 166a)

Section 170. 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)

46