Review of Philippine Intellectual Property Law

1. Trademarks
A mark is any visible sign capable of distinguishing the goods or services of an enterprise.
Trademark refers to any distinctive words, letters, numerals, drawings, pictures, shapes, colors,
logotypes, labels or combinations used to distinguish goods or services.

How ownership of trademark is acquired

There are provisions that govern how ownership of a trademark is acquired. First is provided by
Sec 122 of RA 8293:

“Section 122. How Marks are Acquired. - The rights in a mark shall be acquired through
registration made validly in accordance with the provisions of this law.”

The other mode is provided by Sec. 2-A of RA 166 which states that:

“Section 2-A. Ownership of trademarks, trade names and service marks; how
acquired. Anyone who lawfully produces or deals in merchandise of any kind or who
engages in any lawful business, or who renders any lawful service in commerce, by
actual use thereof in manufacture or trade, in business, and in the service rendered,
may appropriate to his exclusive use a trademark, a trade name, or a service mark from
the merchandise, business, or service of others. The ownership or possession of a
trademark, trade name or service mark not so appropriated by another, to distinguish
his merchandise, business or service from the merchandise, business or services of
others. The ownership or possession of a trademark, trade name, service mark,
heretofore or hereafter appropriated, as in this section provided, shall be recognized
and protected in the same manner and to the same extent as are other property rights
known to this law.”

These two provisions are not inconsistent. Reconciled together, it means that there are two ways of
acquiring ownership of a mark, namely: (1) by registration and (2) by actual use of the mark in trade or
commerce.

Registration under Sec 122 of RA 8293 does not confer upon the registrant an absolute right to the
registered mark. The certificate of registration is merely prima facie evidence that the registrant is the
owner of the registered mark or trade name. Proof of actual use must be submitted within 3 years from
the filing of application.

As to actual use, in order to confer ownership of a trademark, actual use must be in commerce within
the PH and not abroad. Foreign used creates no trademark right in Philippines. Also, actual use must not
be by mere adoption of the name and making of advertisements but by the actual sale of goods and
services in the market.

Importance of registration
Registration of trademark or tradename is important because they are treated as special properties
under the Civil Code. Thus, the goodwill of a business is considered as appropriable property. A
trademark or tradename duly registered is owned by and pertains to the person or corporation
registering the same.
However, the ownership acquired by registration is temporary, unless it is coupled with actual use.
Section 138 of RA 8293 provides that the certificate of registration is prima facie evidence of validity of
the registration, registrant’s ownership of the mark, and the registrant’s exclusive tight to use the same.

Legal basis of rights of foreign nationals

There are two sources of rights of foreign nationals with. First is Sec. 3 of the IP Code which states that if
the country of domicile of the foreign national extends reciprocal rights to citizens of the Philippines by
law of such foreign country, the foreign national shall be treated to the rights provided for in RA 8293.

Section 3. International Conventions and Reciprocity. - Any person who is a national or

who is domiciled or has a real and effective industrial establishment in a country which
is a party to any convention, treaty or agreement relating to intellectual property rights
or the repression of unfair competition, to which the Philippines is also a party, or
extends reciprocal rights to nationals of the Philippines by law, shall be entitled to
benefits to the extent necessary to give effect to any provision of such convention,
treaty or reciprocal law, in addition to the rights to which any owner of an intellectual
property right is otherwise entitled by this Act.

The foreign national will be entitled to the enjoyment of rights granted by Sec. 3 upon showing a
certified true copy of the law of his country granting reciprocal rights to Philippine Nationals.

The second source of rights of foreign nationals is convention, treaty or agreement relating to
intellectual property rights or the repression of unfair competition, to which the Phlippines is also a
party. An example is the Convention of Paris which provides for the protection of industrial property
concerned with patents, trademarks, servicemarks, among others.

Legal requirements before a foreign national may maintain a suit

Before we determine the requirements that must be complied with before a foreign national may
maintain a suit, we must first distinguish a suit maintained by a foreign corporation not doing nor
licensed to do business in the Philippines and one that is brought by a foreign national doing business in
the country.

In the former, it was held in the case of Leviton Industries vs. Salvador that a foreign corporation not
doing nor licensed to do business in the country may bring an action for infringement by alleging and
showing that:

1. Its mark is registered in the Philippines or it is the assignee of such mark, or it has been in use in
commerce therein; and
2. The country of which it is a citizen or is domiciled grants Filipino corporations the same
reciprocal treatment, either by law or treaty.

On the other hand, when a foreign national is doing business in the country, it must have a license to do
business secured in accordance with Philippine laws, otherwise it will have no legal personality to bring
actions for infringement.
Legal remedies of foreign nationals
The legal remedies available to foreign nationals against invasion of their trademark or trade name
rights are the following:
1. Damages and Injunction
a. Based on Infringement
The plaintiff foreign corporation should either be a registrant or an assignee of record of
the registered mark or trade name, and should be a national of or should have his domicile in a
country adhered to the Paris Convention or in a country granting reciprocity rights to Philippine
nationals.
b. Based on unfair competition
A person who has identified in the mind of the public the goods he manufactures or
deals in, his business or services from those of others, whether or not a registered mark
is employed, has a property right in the goodwill of the said goods, business or services
so identified, which will be protected in the same manner as other property rights.

168.2. Any person who shall employ deception or any other means contrary to good
faith by which he shall pass off the goods manufactured by him or in which he deals, or
his business, or services for those of the one having established such goodwill, or who
shall commit any acts calculated to produce said result, shall be guilty of unfair
competition, and shall be subject to an action therefor.
c. Based on false designation and false description
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)
2. Petition to oppose registration
Any person who believes that he would be damaged by the registration of a mark may, upon
payment of the required fee and within thirty (30) days after the publication referred to in
Subsection 133.2, file with the Office an opposition to the application. Such opposition shall be
in writing and verified by the oppositor or by any person on his behalf who knows the facts, and
 shall specify the grounds on which it is based and include a statement of the facts relied upon.
Copies of certificates of registration of marks registered in other countries or other supporting
documents mentioned in the opposition shall be filed therewith, together with the translation in
English, if not in the English language. For good cause shown and upon payment of the required
surcharge, the time for filing an opposition may be extended by the Director of Legal Affairs,
who shall notify the applicant of such extension. The Regulations shall fix the maximum period
of time within which to file the opposition.
3. Petition to cancel registration
A petition to cancel a registration of a mark may be filed with the Bureau of Legal Affairs of the
IPO by any person who believes that he is or will be damaged by the registration of a mark. A
period of at least five years from the date of registration shall be allowed for seeking the
cancellation of such a mark. No time limit shall be fixed for seeking the cancellation or the
prohibition of the use of marks registered or used in bad faith.
4. Petition for seizure of prohibited goods
No article of imported merchandise which shall copy or simulate the name of any domestic
product, or manufacturer, or dealer, or which shall copy or simulate a mark registered in
accordance with the provisions of IP Code, or shall bear a mark or trade name calculated to
induce the public to believe that the article is manufactured in the Philippines, or that it is
manufactured in any foreign country or locality other than the country or locality where it is in
fact manufactured, shall be admitted to entry at any custom house of the Philippines.

Infringement vs Unfair Competition

The term “infringement” of trademark or trade name is restricted to its proper technical meaning
involving violation of trademark or trade name right established by registration. The term “unfair
competition” includes wrongful acts of competition not involving any violation of trademark right.

Thus, an owner of a trademark may bring an action for unfair competition even though he has not
registered such trademark but he cannot institute an action for infringement of trademark because
registration is a condition precedent to maintain such action, except infringement of trade name which
requires no registration thereof to maintain it.

2. Patent
It is a right granted to an inventor by the State or by the regional office acting for several States,
which allows the inventor to exclude anyone else from commercially exploiting his invention for a
limited period.

Three-fold purpose
1. Foster and reward invention
2. Promote disclosures of inventions to stimulate further innovation and to permit the public to
practice the invention once the patent expires
3. Ensure that the ideas in the public domain remain there for the free use of the public

Aspects of Compulsory licensing

1. Procedural: Considered on its individual merits on a case to case basis
2. Substantive: Terms of the license
3. Non-exclusive and non-transferable
4. Adequate remuneration to the patentee based upon the economic value of the authorization
Rights of foreigners under Paris convention
 Right to enjoy same rights, protection and legal remedy
 Right of the inventor to be mentioned as such in the patent
 Right not to be denied of patent on the ground that the sale of the patented product is subject
to restrictions of domestic law
 Right against forfeiture in case the patentee imports manufactured articles into the country
where the patent has been granted
 Right to protection of industrial designs
 Right to file an action for infringement

3. Copyright
It is a right granted by statute to the author or originator of literary, scholarly, scientific, or artistic
productions, including computer programs. It gives him the legal right to determine how the work is
used and to obtain the economic benefits from the work.

Its primary purpose is not to reward the labor of authors, but to promote the progress of science and
useful arts.

The requisites for the creation of a copyrightable work are: (1) Originality, which means that the work
owes its origin to the author; and (2) Expression, which means that there must be “fixation.” To be fixed,
a work must be embodied in a medium sufficiently permanent or stable to permit it to be perceived,
reproduced, or otherwise communicated for a period of more than transitory duration.

Remedy for infringement

The author or his heir is entitled to the remedy against infringement, which consists not only of an
action for damages and injuction but also of criminal prosecution against the infringer.