INTELLECTUAL PROPERTY LAWS

● STATUTES ON INTELLECTUAL PROPERTY

⮚ 1. RA 8293- Intellectual Property Code of the Philippines
⮚ 2. RA 9150 – An act providing for the Protection of Layout Designs of Integrated Circuits,
amending for the purpose Certain Sections of RA 8293
⮚ 3. RA 9502- An act providing for Cheaper and Quality Medicines, amending for the purpose RA
6675 or the generics Act of 1998 and RA 5921 or the Pharmacy Law
⮚ RA 10372 – An act Amending Certain Provisions of RA 8293 otherwise known as the
Intellectual Property Code of the Philippines.
● INTELLECTUAL CONVENTIONS ON INTELLECTUAL PROPERTY
1. Berne Convention for the Protection of Literary and Artistic Works (1951)
2. Rome Convention for the Protection of Performers, Producers of Programs and Broadcasting
Operations (1954)
3. International Convention creating the World Intellectual Property Organization (1980)
4. Agreement on Trade-Related Aspects of Intellectual Property Rights (1995)

GENERAL PRINCIPLES
STATE POLICIES
⮚ Sec.2 Declaration of State Policy
1. The State recognizes that an effective intellectual and industrial property system
is vital to the development of domestic and creative activity, facilitates transfer of
technology, attracts foreign investments, and ensures market access for our
products. It shall protect and secure the exclusive rights of scientists, investors,
particularly when beneficial to the people, for such period as provided in this act.
2. The use of intellectual property bears a social function. To this end, the State shall
promote the diffusion of knowledge and information for the promotion of national
development and progress and the common good.
3. It is also the policy of the State to streamline administrative procedures of
registering patents, trademarks and copyright, to liberalize the registration on the
transfer of technology and to enhance the enforcement of intellectual property
rights in the Philippines.

⮚ 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.

● PEOPLE ENTITLED TO PROTECTION UNDER THE LAW

⮚ Filipino citizens;
⮚ A citizen or domicile of another country which is a party to a treaty, agreement or convention
pertaining to intellectual property rights protection of which the Philippines is a signatory or a
party; and
⮚ A citizen or domicile of another country which extends the same privilege as the Philippines in
the protection of intellectual property rights.

● SECTION 4. DEFINITONS
⮚ 4.1. The term "intellectual property rights" consists of:
⮚ a. Copyright and Related Rights;
⮚ b. Trademarks and Service Marks;
⮚ c. Geographic Indications;
⮚ d. Industrial Designs;
⮚ e. Patents;
⮚ f. Layout-Designs (Topographies) of Integrated Circuits; and
⮚ g. Protection of Undisclosed Information (n, TRIPS).

● INTELLECTUAL PROPERTY RIGHTS

1. COPYRIGHT: Original intellectual creations in the artistic or literary domain
2. TRADEMARK: A visible sign capable of distinguishing goods and services of an enterprise and
shall include a stamped or marked container of goods.
 3. GEOGRAPHIC INDICATIONS: a sign used on goods that have a specific geographic origin
and possess qualities or a reputation that are due to that place of origin; the sign identifies the
product as originating in a given place.
4. INDUSTRIAL DESIGN: any composition of lines or colors or any three dimensional form,
whether or not associated with colors where such composition or form gives a special
appearance to and can serve as a pattern for an industrial product or handicraft.
5. PATENT: any technical solution to a problem which is new, involves an inventive step and which
is industrially applicable.
6. INTEGRATED CIRCUIT: a product, in its final form, or an intermediate form, in which the
elements, at least one of which is an active element and some or all of the interconnections are
integrally formed in and/or on a piece of material, and which is intended to perform an electronic
function.
7. LAYOUT DESIGN/TOPOGRAPHY: three dimensional disposition, however expressed, of the
elements, at least one of which is an active element, and of some or all of the interconnections
of any integrated circuit, or such a three dimensional disposition prepared for an integrated
circuit intended for manufacture.
8. UNDISCLOSED INFORMATION/TRADE SECRET: secret information that holds a trade value
on account of its secrecy.

● COMPARISON
PATENT TRADEMARK COPYRIGHT
Any technical solution to a A visible sign capable of Original intellectual creations in
problem which is new, involves
distinguishing goods and the artistic or literary domain
an inventive step and which is
services of an enterprise and
industrially applicable stamped or marked container of
goods
Protected from the moment of Protected from the moment of Protected from the moment of
registration registration creation

● THE INTELLECTUAL PROPERTY OFFICE (IPOPHIL)

⮚ Sec.5. Functions of the Intellectual Property Office (IPO)
1. To administer and implement the State policies declared in this Act;
2. To have custody of all records, books, drawings, specifications, documents, and other
papers and things relating to intellectual property rights applications filed with the
office;
3. Examine applications for grant of letters patent for inventions and register utility models
and industrial designs;
4. Examine applications for the registration of marks, geographic indication, integrated
circuits;
● ORGANIZATIONAL STRUCTURE, IPOPHIL
⮚ Sec.6 The Organizational Structure of the IPO.- The Office shall be headed by a Director
General who shall be assisted by two (2) Deputies Director General.
The Director General, Deputies Director General, Director and Assistant Directors shall
be appointed by the President, and the other officers and employees of the Office by the
Secretary of Trade and Industry, conformably with and under the Civil Service Law. (n)

The Office shall be divided into seven (7) Bureaus, each of which shall be headed by a Director
and assisted by an Assistant Director. These Bureaus are:
1. The Bureau of Patents;
2. The Bureau of Trademarks;
3. The Bureau of Legal Affairs;
4. The Documentation, Information and Technology Transfer Bureau;
5. The Management Information System and EDP Bureau;
6. The Administrative, Financial and Personal Services Bureau; and
7. Bureau of Copyright and Related Rights.

● THE DIRECTOR GENERAL, IPOPHIL

⮚ Functions. — The Director General shall exercise the following powers and functions:
o (a) Manage and direct all functions and activities of the Office;
o (b) Exercise exclusive appellate jurisdiction over all decisions rendered by the
Director of Legal Affairs, the Director of Patents, the Director of Trademarks, and
the Director of the Documentation, Information and Technology Transfer Bureau.
NOTE: The decisions of the Director General in the exercise of his appellate jurisdiction in
respect of the decisions of the Director of Patents, and the Director of Trademarks shall be appealable
to the Court of Appeals in accordance with the Rules of Court; and those in respect of the decisions of
 the Director of Documentation, Information and Technology Transfer Bureau shall be appealable to the
Secretary of Trade and Industry.
o (c) Undertake enforcement functions supported by concerned agencies such as
the Philippine National Police, the National Bureau of Investigation, the Bureaus
of Customs, the Optical Media Board, and the Local governments, among others;
o (d) Conduct visits during reasonable hours to establishments and business
engaging in activities violating intellectual property rights and provisions of this
Act base on report, information or complaint received by the office; and
o (e) Such other functions in furtherance of protecting IP rights and objectives of
this Act.

● THE BUREAU OF PATENTS, IPOPHIL

⮚ SECTION 8. The Bureau of Patents. — The Bureau of Patents shall have the following
functions:
⮚ 8.1. Search and examination of patent applications and the grant of patents;
⮚ 8.2. Registration of utility models, industrial designs, and integrated circuits; and
⮚ 8.3. Conduct studies and researches in the field of patents in order to assist the Director
General in formulating policies on the administration and examination of patents. (n)

● THE BUREAU OF TRADEMARKS, IPOPHIL

⮚ SECTION 9. The Bureau of Trademarks. — The Bureau of Trademarks shall have the
following functions:
⮚ 9.1. Search and examination of the applications for the registration of marks, geographic
indications and other marks of ownership and the issuance of the certificates of registration; and
⮚ 9.2. Conduct studies and researches in the field of trademarks in order to assist the Director
General in formulating policies on the administration and examination of trademarks. (n)

● THE BUREAU OF COPYRIGHT AND OTHER RELATED RIGHTS, IPOPHIL

⮚ Sec.9A The Bureau of Copyright and other related rights- The Bureau of Copyright and
other related rights shall have the following functions:
⮚ 9A.1 Exercise original jurisdiction to resolve disputes relating to the terms of a license involving
the authors right to public performance or other communications of his work;
⮚ 9A.2 Accept review and decide on applications for the accreditation of collective management
organizations;
⮚ 9A.3 Conduct researches and studies in the field of copyright and related rights; and
⮚ 9A.4 Provide copyright and other related rights service and charge reasonable fees therefore.

● THE BUREAU OF LEGAL AFFAIRS, IPOPHIL

⮚ SECTION 10. The Bureau of Legal Affairs. — The Bureau of Legal Affairs shall have the
following functions:
⮚ 10.1. Hear and decide opposition to the application for registration of marks; cancellation of
trademarks; subject to the provisions of Section 64, cancellation of patents, utility models, and
industrial designs; and petitions for compulsory licensing of patents;
⮚ 10.2 Exercise original jurisdiction in administrative complaints for violations of laws involving
intellectual property rights: Provided, That its jurisdiction is limited to complaints where the total
damages claimed are not less than Two hundred thousand pesos (P200,000)
⮚ After formal investigation, the Director for Legal Affairs may impose administrative penalties,
which include a cease and desist order, seizure of products and forfeiture of paraphernalia as
well as imposition of administrative fines, suspension or cancellation of any permit, license,
authority granted by the IPO.

● JURISPRUDENCE
⮚ Findings of fact of the Director of Patents, especially when affirmed by the Court of Appeals, are
conclusive upon the Court when supported by substantial evidence.

⮚ The validity of the patent issued by the Philippine Patent Office and the question over the
inventiveness, novelty and usefulness of the improved model of the LPG burner are matters
which are better determined by the Patent Office. The technical staff of the Philippine Patent
Office composed of experts in their field has, by the issuance of the patent in question accepted
private respondent’s model of gas burner as a discovery. There is a presumption that the Office
has correctly determined the patentability of the model and such action must not be interfered
with in the absence of competent evidence to the contrary. (Manzano v CA GR 113388, 05 Sept
1997)

● REMEDIES
 Administrative complaints against violations of
the intellectual Property Code.
BUREAU OF LEGAL AFFAIRS JURISDICTIONAL AMOUNT: up to 200,000.00
Opposition to applications for registration of
trademarks
Petition for cancellation of trademarks, patents
and utility models
BUREAU OF PATENTS Act on applications for registration of patents
BUREAU OF TRADEMARKS Exclusive appellate jurisdiction over decisions of
Director of Patents, Trademarks, Copyrights and
Legal Affairs
BUREAU OF COPYRIGHT Act on disputes pertaining to the terms of a
license of a copyrighted work.
DIRECTOR GENERAL Act on applications for registration of trademarks

● PROCEDURE

1 Decision of Bureau of Legal Affairs

Decision of Bureau of Copyrights, Trademarks, Patents
2 Director General, IPOPHIL
3 Court of Appeals, Rule 43
Supreme Court, Rule 45

THE LAW ON COPYRIGHT, AS AMENDED (RA 8293),

● DEFINITIONS
1. "Author" is the natural person who has created the work
2. A "collective work" is a work which has been created by two (2) or more natural persons at the
initiative and under the direction of another with the understanding that it will be disclosed by the
latter under his own name and that contributing natural persons will not be identified;
3. Communication to the public" or "communicate to the public" means the making of a work
available to the public by wire or wireless means in such a way that members of the public may
access these works from a place and time individually chosen by them;
4. A "computer" is an electronic or similar device having information processing capabilities, and a
"computer program" is a set of instructions expressed in words, codes, schemes or in any other
form, which is capable when incorporated in a medium that the computer can read, of causing
the computer to perform or achieve a particular task or result;
5. "Published works" means works, which, with the consent of the authors, are made available to
the public by wire or wireless means in such a way that members of the public may access
these works from a place and time individually chosen by them: Provided, That availability of
such copies has been such, as to satisfy the reasonable requirements of the public, having
regard to the nature of the work;
6. "Public performance", in the case of a work other than an audiovisual work, is the recitation,
playing, dancing, acting or otherwise performing the work, either directly or by means of any
device or process; in the case of an audiovisual work, the showing of its images in sequence
and the making of the sounds accompanying it audible; and,
In the case of a sound recording, making the recorded sounds audible at a place or at places
where persons outside the normal circle of a family and that family's closest social
acquaintances are or can be present, irrespective of whether they are or can be present at the
same place and at the same time, or at different places and/or at different times, and where the
performance can be perceived without the need for communication within the meaning of
Subsection 171.3;
7. “Reproduction” the making of one (1) or more copies, temporary or permanent, in whole or in
part, of a work or a sound recording in any manner or form without prejudice to the provisions of
Section 185 of this Act
8. A “work of the Government of the Philippines” is a work created by an officer or employee of the
Philippine Government or any of its subdivisions and instrumentalities, including
government-owned or controlled corporations as a part of his regularly prescribed official duties.

SCOPE OF COPYRIGHT

1. ORIGINAL WORKS: original creations of the literary or artistic domain.

2. DERIVATIVE WORKS: modifications or alterations of original works which are also protected in
the same manner as original works.
● ORIGINAL WORKS
⮚ SECTION 172. Literary and Artistic Works. Literary and artistic works, hereinafter referred to as
"works", are original intellectual creations in the literary and artistic domain protected from the
moment of their creation and shall include in particular:
a. Books, pamphlets, articles and other writings;
b. Periodicals and newspapers;
c. Lectures, sermons, addresses, dissertations prepared for oral delivery, whether or not
reduced in writing or other material form;
d. Letters;
e. Dramatic or dramatico-musical compositions; choreographic works or entertainment in dumb
shows;
f. Musical compositions, with or without words;
g. Works of drawing, painting, architecture, sculpture, engraving, lithography or other works of
art; models or designs for works of art;
h. Original ornamental designs or models for articles of manufacture, whether or not
registrable as an industrial design, and other works of applied art;
i. Illustrations, maps, plans, sketches, charts and three-dimensional works relative to geography,
topography, architecture or science;
j. Drawings or plastic works of a scientific or technical character;
k. Photographic works including works including works produced by a process analogous to
photography ; lantern slides;
l. Audiovisual-works and cinematographic works and and works produced by a process
analogous cinematography or any process for making audio-visual recordings;
m. Pictorial illustrations and advertisements;
n. Computer programs; and
o. Other literary, scholarly, scientific and artistic works.

172.2. Works are protected by the sole fact of their creation, irrespective of their mode or form of
expression, as well as of their content, quality and purpose. (Sec. 2, P.D. No. 49a)

● DERIVATIVE WORKS

⮚ Sec.173.2 Derivative works - The following derivative works shall also be protected by
copyright:
a. Dramatizations, translations, adaptations, abridgments, arrangements, and other
alterations of literary or artistic works; and
b. Collections of literary, scholarly or artistic works, and compilations of data and other
materials which are original by reason of the selection or coordination or arrangement of their
contents. (Sec. 2, [P] and [Q], P.D. No. 49)
⮚ The works referred to in paragraphs (a) and (b) of Subsection 173.1 shall be protected as new
works: Provided however, That such new work shall not affect the force of any subsisting
copyright upon the original works employed or any part thereof, or be construed to imply any
right to such use of the original works, or to secure or extend copyright in such original works.
(Sec. 8, P.D. 49; Art. 10, TRIPS)

● SCOPE OF COPYRIGHT

ORIGINAL WORKS DERIVATIVE WORKS

Mainly comprises original intellectual creations in Mainly comprises dramatizations, translations,
the intellectual creations in the literary and artistic adaptations, abridgments, arrangements, and
domain other alterations of literary or artistic works
Protected by copyright Protected only when there are no violations of
copyright over the original works

● WORKS NOT PROTECTED BY COPYRIGHT

1. SYSTEM, FORMAT, METHOD OR OPERATION
SECTION 175. Unprotected Subject Matter. — Notwithstanding the provisions of Sections 172
and 173, no protection shall extend, under this law, to any idea, procedure, system, method or
operation, concept, principle, discovery or mere data as such, even if they are expressed,
explained, illustrated or embodied in a work; news of the day and other miscellaneous facts
having the character of mere items of press information; or any official text of a legislative,
administrative or legal nature, as well as any official translation thereof. (n)
2. SECTION 176. Works of the Government. — No copyright shall subsist in any work of the
Government of the Philippines. However, prior approval of the government agency or office
 wherein the work is created shall be necessary for exploitation of such work for profit. Such
agency or office may, among other things, impose as a condition the payment of royalties. No
prior approval or conditions shall be required for the use for any purpose of statutes, rules and
regulations, and speeches, lectures, sermons, addresses, and dissertations, pronounced, read
or rendered in courts of justice, before administrative agencies, in deliberative assemblies and
in meetings of public character. (Sec. 9, first par., P.D. No. 49)

● JURISPRUDENCE
⮚ The format of a television show is not copyrightable. The general concept or format of the dating
game show “Roda and Me” is not covered under the copyright law. A television show includes
more than mere words can describe because it involves a whole spectrum of visuals and
effects, video and audio, such that no similarity or dissimilarity may be found by merely
describing the general copyright format of both dating game shows. (Joaquin vs Drilon, GR
108946, 28 Jan 1999)

● LIMITATIONS ON COPYRIGHT
⮚ 184.1. Limitations on Copyright. - Notwithstanding the provisions of Chapter V, the following
acts shall not constitute infringement of copyright:
a. The recitation or performance of a work, once it has been lawfully made accessible to
the public, if done privately and free of charge or if made strictly for a charitable or religious
institution or society; (Sec. 10(1), P.D. No. 49)
b. The making of quotations from a published work if they are compatible with fair use
and only to the extent justified for the purpose, including quotations from newspaper articles and
periodicals in the form of press summaries: Provided, That the source and the name of the
author, if appearing on the work, are mentioned; (Sec. 11, third par., P.D. No. 49)
c. The reproduction or communication to the public by mass media of articles on current
political, social, economic, scientific or religious topic, lectures, addresses and other works of
the same nature, which are delivered in public if such use is for information purposes and has
not been expressly reserved: Provided, That the source is clearly indicated; (Sec. 11, P.D. No.
49)
d. The reproduction and communication to the public of literary, scientific or artistic
works as part of reports of current events by means of photography, cinematography or
broadcasting to the extent necessary for the purpose; (Sec. 12, P.D. No. 49)
e. The inclusion of a work in a publication, broadcast, or other communication to the
public, sound recording or film, if such inclusion is made by way of illustration for teaching
purposes and is compatible with fair use: Provided, That the source and of the name of the
author, if appearing in the work, are mentioned;
f. The recording made in schools, universities, or educational institutions of a work
included in a broadcast for the use of such schools, universities or educational institutions:
Provided, That such recording must be deleted within a reasonable period after they were first
broadcast: Provided, further, That such recording may not be made from audiovisual works
which are part of the general cinema repertoire of feature films except for brief excerpts of the
work;
g. The making of ephemeral recordings by a broadcasting organization by means of its
own facilities and for use in its own broadcast; cdt
h. The use made of a work by or under the direction or control of the Government, by the
National Library or by educational, scientific or professional institutions where such use is in the
public interest and is compatible with fair use;
i. The public performance or the communication to the public of a work, in a place where
no admission fee is charged in respect of such public performance or communication, by a club
or institution for charitable or educational purpose only, whose aim is not profit making, subject
to such other limitations as may be provided in the Regulations; (n)
j. Public display of the original or a copy of the work not made by means of a film, slide,
television image or otherwise on screen or by means of any other device or process: Provided,
That either the work has been published, or, that the original or the copy displayed has been
sold, given away or otherwise transferred to another person by the author or his successor in
title; and
k. Any use made of a work for the purpose of any judicial proceedings or for the giving of
professional advice by a legal practitioner.
l. The reproduction or distribution of published articles or materials in a specialized
format exclusively for the use of the blind, visually- and reading-impaired persons:
Provided, That such copies and distribution shall be made on a nonprofit basis and shall
indicate the copyright owner and the date of the original publication

● FAIR USE
 ⮚ SECTION 185. Fair Use of a Copyrighted Work. — The fair use of a copyrighted work for
criticism, comment, news reporting, teaching including multiple copies for classroom
use, scholarship, research, and similar purposes is not an infringement of copyright.
Decompilation, which is understood here to be the reproduction of the code and translation of
the forms of the computer program to achieve the inter-operability of an independently created
computer program with other programs may also constitute fair use under the criteria under the
criteria established by this section, to the extent that such decompilation is done for the purpose
of obtaining the information necessary to achieve such interoperability.

⮚ Fair Use has been defined as a privilege to use the copyrighted material in a reasonable
manner without the consent of the copyright owner or as copying the theme or ideas rather than
their expression ( Habana et al vs Robles et al GR No 131522, 19 July 1999)

⮚ Copyright laws in the Philippines seeks a balance between the interest of the copyright owner
and the publics right to information and self-expression. While the law recognizes that the
copyright owner is entitled to a protection of his/her/its moral and economic rights, so too should
the publics right to information and freedom of expression.

● JURISPRUDENCE
⮚ On July 22, 2004, during the arrival of Angelo dela Cruz at the NAIA ( a truck driver who was
held hostage and threatened with beheading in Iraq abducted by armed rebels west of Baghdad
while trucking fuel from Saudi Arabia), live breaking news coverage was aired on GMA network
and other television stations in the Philippines. GMA Network used audio-video coverage from
Reuters which GMA Network subscribed [Link] the said broadcast, a live feed from Reuters
was simultaneously aired with its own live broadcast. During the first five-second of the live feed,
GMA Network did notice that the live feed from Reuters was also airing at another local stations,
its main competitor ABS-CBN. The live video was restricted only to ABS-CBN and reuters did
not inform GMA Network that the video coverage was only intended for ABS-CBN. ABS-CBN
sued GMA for copyright infringement.
⮚ ISSUE: Is the broadcast by GMA a violation of copyright laws?
⮚ RULING: NO. The broadcast by GMA had only aired a five (5) second footage of the disputed
live video feed that it had received from Reuters and CNN as a subscriber. Indeed, petitioners
had notice of the right of ownership of private respondent over the same. Without notice of the
“No Access Philippines” restriction of the live video feed, petitioner cannot be faulted for airing a
live video from Reuters and CNN (ABS-CBN v Gozon, 753 SCRA 1(2015).

In determining whether the use made of a work in any particular case is fair use, the factor to be considered
shall include;
a) The purpose and character of the use, including whether such use is of a commercial nature or is for
non-profit educational purposes;
b) The nature of the copyrighted work;
c) The amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
d) The effect of the use upon the potential market for or value of the copyrighted work.

⮚ The fact that a work is unpublished shall not by itself bar a finding of fair use if such finding is made
upon consideration of all above factors. (ABS-CBN v Gozon, 753 SCRA 1(2015).

⮚ FAIR USE- For Criticism, Comment, News Reporting, Teaching, Classrrom Use, Scholarship,
Research, Decompilation

● REPRODUCTION
⮚ Sec. 187. Reproduction of Published Work. —
Sec.187.1. Notwithstanding the provision of Section 177, and subject to the provisions of
Subsection 187.2, the private reproduction of a published work in a single copy, where the
reproduction is made by a natural person exclusively for research and private study, shall be
permitted, without the authorization of the owner of copyright in the work
Sec.187.2. The permission granted under Subsection 187.1 shall not extend to the reproduction
of:
a. A work of architecture in the form of building or other construction;
b. An entire book, or a substantial part thereof, or of a musical work in graphic form by
reprographic means;
c. A compilation of data and other materials;
d. A computer program except as provided in Section 189; and
e. Any work in cases where reproduction would unreasonably conflict with a normal exploitation
of the work or would otherwise unreasonably prejudice the legitimate interests of the author. (n)
● SECTION 188. Reprographic Reproduction by Libraries. —
⮚ Sec.188.1. Notwithstanding the provisions of Subsection 177.6, any library or archive whose
activities are not for profit may, without the authorization of the author of copyright owner, make
a single copy of the work by reprographic reproduction:
a. Where the work by reason of its fragile character or rarity cannot be lent to user in its
original form;
b) Where the works are isolated articles contained in composite works or brief portions of
other published works and the reproduction is necessary to supply them, when this is
considered expedient, to persons requesting their loan for purposes of research or study instead
of lending the volumes or booklets which contain them; and
c) Where the making of such limited copies is in order to preserve and, if necessary in
the event that it is lost, destroyed or rendered unusable, replace a copy, or to replace, in the
permanent collection of another similar library or archive, a copy which has been lost, destroyed
or rendered unusable and copies are not available with the publisher.

⮚ SECTION 189. Reproduction of Computer Program. — The reproduction in one (1) back-up
copy or adaptation of a computer program shall be permitted, without the authorization of the
author of, or other owner of copyright in, a computer program: Provided, That the copy or
adaptation is necessary for:
a) The use of the computer program in conjunction with a computer for the purpose, and
to the extent, for which the computer program has been obtained; and
b. Archival purposes, and, for the replacement of the lawfully owned copy of the
computer program in the event that the lawfully obtained copy of the computer program is lost,
destroyed or rendered unusable.

● RIGHTS OF COPYRIGHT OWNERS

Copyright/Economic Rights Moral Rights

The Exclusive right to the works and to allow The right to be recognized, attributed or
the reproduction, publication or dissemination named as the author/creator of the work
of the works subject to the payment of the involved.
corresponding compensation (royalties)

● ECONOMIC RIGHTS

SECTION 177. Copyright or Economic Rights. — Subject to the provisions of Chapter VIII,
copyright or economic rights shall consist of the exclusive right to carry out, authorize or prevent
the following acts:
1) Reproduction of the work or substantial portion of the work;
2) Dramatization, translation, adaptation, abridgment, arrangement or other transformation of
the work;
3) The first public distribution of the original and each copy of the work by sale or other forms of
transfer of ownership;
4) Rental of the original or a copy of an audiovisual or cinematographic work, a work embodied
in a sound recording, a computer program, a compilation of data and other materials or a
musical work in graphic form, irrespective of the ownership of the original or the copy which is
the subject of the rental; (n)
5) Public display of the original or a copy of the work;
6) Public performance of the work; and
7) Other communication to the public of the work.

● MORAL RIGHTS
⮚ SECTION 193. Scope of Moral Rights. — The author of a work shall, independently of the
economic rights in Section 177 or the grant of an assignment or license with respect to such
right, have the right:
1) To require that the authorship of the works be attributed to him, in particular, the right that his
name, as far as practicable, be indicated in a prominent way on the copies, and in connection
with the public use of his work;
2) To make any alterations of his work prior to, or to withhold it from publication;
3) To object to any distortion, mutilation or other modification of, or other derogatory action in
relation to, his work which would be prejudicial to his honor or reputation; and
4) To restrain the use of his name with respect to any work not of his own creation or in a
distorted version of his work. (Sec. 34, P.D. No. 49)

● OWNERSHIP OF COPYRIGHT
 ⮚ SECTION 178. Rules on Copyright Ownership. — Copyright ownership shall be governed by
the following rules:
⮚ Sec.178.1. Subject to the provisions of this section, in the case of original literary and artistic
works, copyright shall belong to the author of the work;
⮚ Sec. 178.2. In the case of works of joint authorship, the co-authors shall be the original owners
of the copyright and in the absence of agreement, their rights shall be governed by the rules on
co-ownership. If, however, a work of joint authorship consists of parts that can be used
separately and the author of each part can be identified, the author of each part shall be the
original owner of the copyright in the part that he has created;

1) In the case of work created by an author during and in the course of his employment, the
copyright shall belong to:
a. The employee, if the creation of the object of copyright is not a part of his regular duties even
if the employee uses the time, facilities and materials of the employer.
b. The employer, if the work is the result of the performance of his regularly-assigned duties,
unless there is an agreement, express or implied, to the contrary.
2) In the case of a work commissioned by a person other than an employer of the author and who
pays for it and the work is made in pursuance of the commission, the person who so commissioned
the work shall have ownership of the work, but the copyright thereto shall remain with the creator,
unless there is a written stipulation to the contrary;
3) In the case of audiovisual work, the copyright shall belong to the producer, the author of the
scenario, the composer of the music, the film director, and the author of the work so adapted.
However, subject to contrary or other stipulations among the creators, the producer shall exercise
the copyright to an extent required for the exhibition of the work in any manner, except for the right
to collect performing license fees for the performance of musical compositions, with or without
words, which are incorporated into the work; and
4) In respect of letters, the copyright shall belong to the writer subject to the provisions of Article 723
of the Civil Code. (Sec. 6, P.D. No. 49a)

SECTION 179. Anonymous and Pseudonymous Works. ‑ For purposes of this Act, the publishers
shall be deemed to represent the authors of articles and other writings published without the names
of the authors or under pseudonyms, unless the contrary appears, or the pseudonyms or adopted
name leaves no doubt as to the author’s identity, or if the author of the anonymous works discloses
his identity.

● DURATION OF COPYRIGHT

1. GENERAL RULE: Copyright in works, including posthumous works, shall be protected during the
life of the author and for fifty (50) years after his death.
2. JOINT AUTHORSHIP: Economic rights shall be protected during the life of the last surviving
author and for fifty (50) years after his death.
3. WORKS OF APPLIED ART: For a period of twenty-five (25) years from the date of making.
4. PHOTOGRAPHIC WORKS: For fifty (50) years from publication of the work and, if unpublished,
fifty (50) years from the making.
5. ANONYMOUS OR PSEUDONYMOUS WORKS: For fifty (50) years from the date on which the
work was first lawfully published, PROVIDED:
(a)That where, before the expiration of the said period, the author's identity is revealed or is no
longer in doubt, the general rule on copyright ownership and joint authorship shall apply;
(b)Works if not published before shall be protected for 50 years counted from the making of the
work.
6. AUDIO-VISUAL WORKS – (Including those produced by process analogous to photography or
any process for making audio-visual recordings): for fifty (50) years from date of publication and, if
unpublished, from the date of making.
7. PERFORMERS, PRODUCERS, BROADCASTING ORGANIZATIONS: shall expire as follows -
(a). For Unrecordded Performance: fifty (50) years from the end of the year in which the
performance took place;
(b). For sound or image and sound recordings and for performances incorporated therein: fifty
(50) years from the end of the year in which the recording took place;
(c) For broadcasts: twenty (20) years from the date the broadcast took place.

● TERM OF MORAL RIGHTS

⮚ SECTION 198. Term of Moral Rights. —
⮚ Sec.198.1. The rights of an author under this chapter shall last during the lifetime of the author
and for fifty (50) years after his death and shall not be assignable or subject to license. The
person or persons to be charged with the posthumous enforcement of these rights shall be
named in writing to be filed with the National Library. In default of such person or persons, such
 enforcement shall devolve upon either the author's heirs, and in default of the heirs, the Director
of the National Library.

● COPYRIGHT REGISTRATION AND DEPOSIT

⮚ Sec. 191- Deposit and Notice of Deposit with the National Library and the Supreme Court
Library--- At any time during the subsistence of the copyright, the owner of the copyright or any
exclusive right in the work may, for the purpose of completing the records of the National
Library and the Supreme Court Library, registered and deposit with them, by personal
delivery or by registered mail, two (2) complete copies or reproductions of the work in such form
as the Directors of the said libraries may prescribe in accordance with regulations: Provided,
that only works in the field of law shall br deposited with the Supreme Court Library. Such
registration and deposit is not condition of copyright protection.
⮚ SECTION 192. Notice of Copyright. — Each copy of a work published or offered for sale may
contain a notice bearing the name of the copyright owner, and the year of its first publication,
and, in copies produced after the creator's death, the year of such death. (Sec. 27, P.D. No.
49a)

● REGISTRATION

1 Dissemination or performance of a literary or artistic work

2 Registration and deposit of work at the National and Supreme Court Library of two complete
copies of the work within three weeks after public dissemination and performance
Payment of prescribed fees
3 Issuance of the Certificate of Registration and Deposit
Notice of Copyright

● AUTOMATIC PROTECTION
⮚ Berne Convention- The enjoyment and exercise of copyright, including moral rights, shall not be
the subject of any formality

● INFRINGEMENT VS PLAGIARISM

PLAGIARISM INFRINGEMENT
Practice of claiming or implying original authorship A violation of the rights of the copyright holder,
of someone else’s written or creative work, in when material is used without the copyright
whole or in part, into one’s own without adequate owner’s consent
acknowledgement
Founded upon false claims of ownership Not necessarily founded upon false claims
ownership

INFRINGEMENT
SEC. 216. Infringement – A person infringes a right protected under this Act when one:
a) Directly commits an infringement;
b) Benefits from the infringing activity of another person who commits an infringement if the person
benefitting has been given notice of the infringing activity and has the right and ability to control the
activities of the other person;
c) With knowledge of infringing activity, induces, causes or materially contributes to the infringing
conduct of another.

REMEDIES AGAINST INFRINGEMENT OF COPYRIGHT

1. Civil Action For Damages
2. Criminal Action For Infringement
3. Administrative Action for Infringement
4. Injunction

1. CIVIL ACTION FOR DAMAGES

The offended party in an action for copyright infringement may demand from the court the payment to
him/her/it of either-
a) Actual damages; or
b) Statutory damages.

An action for damages may be filed seeking as a relief the payments to the copyright
proprietor/s, his heirs and assigns such actual damages, including legal expenses as he may have
 incurred due to the infringement as well as the profits the infringer may have made due to the
infringement.
In proving profits the plaintiff shall be required to prove sales. The plaintiff can also claim such
other damages as the court shall appear to be just, which shall not, however be regarded as penalty.
Jurisdiction is with the regular courts. Action must be instituted within 4 years from the time the
cause of action arose.

● The offender is liable to pay to the copyright proprietor or his assigns or heirs such actual damages,
including legal costs and other expenses, as he may have incurred due to the infringement as well as
the profits the infringer may have made due to such infringement, and in proving profits the plaintiff shall
be required to prove sales only and the defendant shall be required to prove every element of cost
which he claims, or, in lieu of actual damages and profits, such damages which to the court shall
appear to be just and shall not be regarded as penalty.

● The copyright owner may elect, at any time before final judgment is rendered, to recover instead of
actual damages and profits, an award of statutory damages for all infringements involved in an action in
a sum equivalent to the filing fee of the infringement action but not less than Php50,000.00. In awarding
statutory damages, the court may consider the following factors:
(1) the nature and purpose of the infringing act;
(2) the flagrancy of the infringement;
(3) Whether the defendant acted in bad faith;
(4) the need for deterrence;
(5) Any loss that the plaintiff has suffered or is likely to suffer by reason of the infringement; and
(6) Any benefit shown to have accrued to the defendant by reason of the infringement.

● In case the infringer was not aware and had no reason to believe that his acts constitute an
infringement of copyright, the court in its discretion may reduce the award of statutory damages to a
sum of not more than Ten thousand pesos (Php10,000.00): Provided, That the amount of damages to
be awarded shall be doubled against any person who:
"(i) Circumvents effective technological measures; or
"(ii) Having reasonable grounds to know that it will induce, enable, facilitate or conceal the
infringement, remove or alter any electronic rights management information from a copy of a work,
sound recording, or fixation of a performance, or distribute, import for distribution, broadcast, or
communicate to the public works or copies of works without authority, knowing that electronic rights
management information has been removed or altered without authority.

2. CRIMINAL ACTION FOR INFRINGEMENT

● Any person infringing any right under RA 8293 or aiding or abetting such infringement shall be guilty of a
crime punishable by:
(a) Imprisonment of one (1) year to three (3) years plus a fine ranging from Fifty thousand pesos (P50,000)
to One hundred fifty thousand pesos (P150,000) for the first offense.
(b) Imprisonment of three (3) years and one (1) day to six (6) years plus a fine ranging from One hundred
fifty thousand pesos (P150,000) to Five hundred thousand pesos (P500,000) for the second offense.
(c) Imprisonment of six (6) years and one (1) day to nine (9) years plus a fine ranging from five hundred
thousand pesos (P500,000) to One million five hundred thousand pesos (P1,500,000) for the third and
subsequent offenses.
(d) In all cases, subsidiary imprisonment in cases of insolvency.

3. ADMINISTRATIVE ACTION FOR INFRINGEMENT

● The Bureau of Legal Affairs of the IPO exercises exclusive original jurisdiction over administrative
complaints involving violations of intellectual property rights; provided, the total damages claimed are
not less than Php200,000.00. The availment of provisional remedies may be granted.
● After formal investigation, the Director for Legal Affairs may impose one (1) or more of the following
penalties:

o (i) issuance of a cease and desist or order;

o (ii) acceptance of a voluntary assurance of compliance or discontinuance;

o (iii) condemnation or seizure of goods subject of the offense;

4. INJUNCTION

● The court may order the defendant to desist from an infringement, among others, to prevent the entry into
the channels of commerce of imported goods that involve an infringement, immediately after customs
clearance of such goods.
 ● This is a remedy common to the civil, criminal and administrative remedies available to the
plaintiff/complaint.

JURISPRUDENCE

● Pearl and Dean secured its copyright under the classification Class “O” work. This being so, its protection
extended only to the technical drawings and not to the light box itself. Pearl and Dean cannot exclude others
from the manufacture, sale and commercial use over the light boxes on the sole basis of its copyright,
certificated over the technical drawings. It cannot be intention of the law that the right of exclusivity would be
granted for a longer time through the simplified procedure of copyright registration with with the National
Library without the rigor of defending the patentability of its “invention” before the IPO and the public. (Pearl
& Dean Philippines Inc. v. Shoemart Inc, GR No. 148222, August 15, 2003)

● Kho is not entitled to the exclusive use of the trademark Chin Chun Su based on copyright and patent
registration over the product.

Trademark, copyright and patents are different intellectual property rights that cannot be interchanged with
one another. A trademark is any visible sign capable of distinguishing the goods (trademark) or services
(service mark) of an enterprise and shall include a stamped or marked container of goods. In relation
thereto, a trade name means the name or designation identifying or distinguishing an enterprise. Meanwhile,
the scope of a copyright is confined to literary and artistic works which are original intellectual creations in
the literary and artistic domain protected from the moment of their creation. Patentable inventions, on the
other hand, refer to any technical solution of a problem in any field of human activity which is new, involves
an inventive step and is industrially applicable. (Kho v. CA, GR No. 115758, March 19, 2002)

THE LAW ON TRADEMARKS, SERVICE MARKS AND SERVICE NAMES; RA 8293

AS AMENDED
DEFINITIONS
● MARK: any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an
enterprise and shall include a stamped or marked container of goods;
● COLLECTIVE MARK: means any visible sign designated as such in the application for registration and
capable of distinguishing the origin or any other common characteristic, including the quality of goods or
services of different enterprises which use the sign under the control of the registered owner of the collective
mark;
● TRADE NAME: the name or designation identifying or distinguishing an enterprise.

OWNERSHIP OF A TRADEMARK

● 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.

REGISTRATION OF TRADEMARK
⮚ WHO: Filipino national; Aliens subject to reciprocity
⮚ WHAT: Anything except those prohibited under Section 123, RA 8293
⮚ WHEN: Anytime subject to the rule of actual use
⮚ WHERE: IPOPHIL; Bureau of Trademarks
⮚ WHY: To be entitled to rights granted to holders of certificates of registration of trademarks under Section
138, RA 8293
⮚ HOW: Subject to procedure under Sections 132-137 of RA 8293

1. WHO
WHO can apply for registration of trademark
1. Filipino national
2. Alien national, subject to the reciprocity rule

2. WHAT
WHAT CAN BE REGISTERED –
Sec. 123.1. A mark CANNOT be registered if it:
(a) Consists of immoral, deceptive or scandalous matter, or matter which may disparage or falsely
suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them
into contempt or disrepute;
(b) Consists of the flag or coat of arms or other insignia of the Philippines or any of its political
subdivisions, or of any foreign nation, or any simulation thereof;
 (c) Consists of a name, portrait or signature identifying a particular living individual except by his
written consent, or the name, signature, or portrait of a deceased President of the Philippines, during the life
of his widow, if any, except by written consent of the widow;
(d) Is identical with a registered mark belonging to a different proprietor or a mark with an earlier
filing or priority date, in respect of:
(i) The same goods or services, or
(ii) Closely related goods or services, or
(iii) If it nearly resembles such a mark as to be likely to deceive or cause confusion;
(e) Is identical with, or confusingly similar to, or constitutes a translation of a mark which is
considered by the competent authority of the Philippines to be well-known internationally and in the
Philippines, whether or not it is registered here, as being already the mark of a person other than the
applicant for registration, and used for identical or similar goods or services: Provided, That in determining
whether a mark is well-known, account shall be taken of the knowledge of the relevant sector of the public,
rather than of the public at large, including knowledge in the Philippines which has been obtained as a result
of the promotion of the mark;
(f) Is identical with, or confusingly similar to, or constitutes a translation of a mark considered
well-known in accordance with the preceding paragraph, which is registered in the Philippines with respect
to goods or services which are not similar to those with respect to which registration is applied for: Provided,
That use of the mark in relation to those goods or services would indicate a connection between those
goods or services, and the owner of the registered mark: Provided further, That the interests of the owner of
the registered mark are likely to be damaged by such use;
(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;
(SEE DOCTRINE OF SECONDARY MEANING)
(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 other characteristics of the goods or services;
(k) Consists of shapes that may be necessitated by technical factors or by the nature of the goods
themselves or factors that affect their intrinsic value;
(l) Consists of color alone, unless defined by a given form; or
(m) Is contrary to public order or morality.
3. WHEN
WHEN A MARK CAN BE REGISTERED: Anytime, subject to the rule on actual use.
Sec. 124.2. The applicant or the registrant shall file a declaration of actual use of the mark with evidence to
that effect, as prescribed by the Regulations within three (3) years from the filing date of the application.
Otherwise, the application shall be refused or the mark shall be removed from the Register by the Director.

4. WHERE
WHERE THE REGISTRATION OF THE MARK SHALL BE FILED:
The application for registration shall be filed with the Bureau of Trademarks, IPOPHIL.

5. WHY
WHY: For the issuance of a certificate of registration
Sec. 138. Certificates of Registration. - A certificate of registration of a mark shall be:
1) prima facie evidence of the validity of the registration;
2) the registrant's ownership of the mark; and
3) of the registrant's exclusive right to use the same in connection with the goods or services and
those that are related thereto specified in the certificate.

6. HOW
HOW REGISTRATION IS EFFECTED: (Sec. 132-137)
1. Filing of the application for the registration of the trademark;
2. Examination to determine whether the application satisfies the requirements for the grant of a
filing date;
3. Examination to determine whether the application meets the requirements for registrability;
4. Denial, amendment or publication of the application;
5. Opposition to the application; notice; hearing; Decision of the Bureau of Trademarks; Appeal to
the IPO Director General; Appeal to the Court of Appeals;
6. Issuance of certificate of registration;
7. Publication in the IPO Gazette of the fact of registration.

REGISTRATION OF TRADEMARK, PROCEDURE

1. Filing of the Application for Registration with the Bureau of Trademarks and Servicemarks
2. Examination of the application to determine compliance with criteria for registrability
3. Opposition to the Application
4. Notice and Hearing on the Opposition
 5. Issuance of the Certificate of Registration
6. Publication of the Registration
7. Appeal to the IPOPHIL Director General
8. Court of Appeals (Rule 43)
9. Supreme Court (Rule 45)

JURISPRUDENCE
● The term “Wellington” is either a geographical name (the capital of New Zealand) or the surname of a
person. Mere geographical names are ordinarily regarded as common propery, and it is a general rule that
the same cannot be appropriated as the subject of an exclusive trademark or a tradename. As the term
cannot be appropriated as atrademark or a trade name, no action for violation thereof can be maintained as
none is granted by the statute in such cases. The right to damages and for an injunction of infringement of a
trademark or a tradename is granted only to those entitled to the exclusive use of a registered trademark or
trade name. Therefore, no action may lie for damages or injunctive relief for the use of the word
“Wellington”. (Ang Si sheng v. Weellington Department Store, Inc., GR No. 4531, January 10, 1953)
● “Lyceum" is in fact as generic in character as the word "university." "Lyceum," or "Liceo" or "Lycee"
frequently denotes a secondary school or a college. It may be that the use of the word "Lyceum" may not yet
be as widespread as the use of "university," but it is clear that a not inconsiderable number of educational
institutions have adopted "Lyceum" or "Liceo" as part of their corporate names. Since "Lyceum" or "Liceo"
denotes a school or institution of learning, it is not unnatural to use this word to designate an entity which is
organized and operating as an educational institution. (Lyceum of the Philippines Inc. v. CA, GR No. 101897,
March 5, 1993)
● “Ang Tibay” is not a descriptive term within the meaning of the Intellectual Property Law. It is a coined
phrase which may be adopted as a trademark or a trade name. For 22 years, “Ang Tibay” was already used
by Teodoro to designate his merchandise and it has gained recognition throughout the Philippines as
products of the “Ang Tibay” factory which he owns and operates.
● The doctrine of secondary meaning is applicable to the case. The doctrine states that a word or phrase
originally incapable of exclusive appropriation with reference to an article of the market, because
geographically or otherwise descriptive, might nevertheless have been used so long and so exclusively by
one producer with reference to his article that, in that trade and to that branch of the purchasing public, the
word or phrase has come to mean that the article was his product. Indeed, the long and exclusive use by
Teodoro of the phrase “Ang Tibay” has already gained propriety connotation and such term already created
significant association with his business and with the merchandise and products produced by the factory.
(Ang v. Teodoro, GR No. 48226, December 14, 1942)
● The trademark sought to be registered resembles “Selecta” used by the Arce and Sons Company in its milk
and ice cream products so that its use by the respondent (for bakery goods) will cause confusion as to the
origin of the goods.
● The word “Selecta”, it is true, may be an ordinary or common word in the sense that may be used or
employed by any one in promoting his business or enterprise, but once adopted or coined in connection with
one's business as an emblem, sign or device to characterize its products, or as a badge of authenticity, it
may acquire a secondary meaning as to be exclusively associated with its products and business. In this
sense, its used by another may lead to confusion in trade and cause damage to its business. (Arce Sons
and Company v. Selecta Biscuit Company Inc., GR No. 14761, January 28, 1961)

III. RIGHTS OF TRADEMARK OWNERS

IV. REMEDIES AGAINST INFRINGEMENT OF TRADEMARK

1. Civil Action for Damages

2. Civil Action for Infringement
3. Criminal Action for Infringement
4. Administrative Action for Infringement
5. Injunction
6. Criminal Action for Unfair Competition

1. CIVIL ACTION FOR DAMAGES

An action for damages may be filed by the trademark owner either for reasonable profit that the owner would
have made had the defendant not infringed his rights, or the profit which the registered owner actually made
out of the infringement.
If the damages cannot be ascertained, the court may award a reasonable percentage based on the amount
of the gross sales of the defendant or the value of services in connection with the trademark in question. In
cases where actual intent to mislead the public or to defraud the complainant is shown, the damages may
be doubled.

2. CIVIL ACTION FOR INFRINGEMENT

ELEMENTS OF INFRINGEMENT
1. The trademark being infringed is registered with the IPO (trade name need not be registered);
 2. The trademark is reproduced, counterfeited, copied or colorably imitated by the infringer;
3. The infringing mark or trade name is used in connection with the sale, offering for sale or advertising of
any goods, business or services, or the infringing mark is applied to labels, signs, prints, packages,
wrappers, receptacles or advertisements intended to be used upon or in connection with goods,
business or services.
4. The use or application of the infringing mark or trade name is likely to cause confusion or to deceive the
purchasers or others as to the goods or services themselves or as to the source of origin of such goods
or services or the identity of such business; AND
5. It is without the consent of the trademark or trade name owner or assignee.

3. CRIMINAL ACTION FOR INFRINGEMENT

Any person infringing any right under RA 8293 or aiding or abetting such infringement shall be guilty a crime
punishable by -
(a) Imprisonment of one (1) year to three (3) years plus a fine ranging from P50,000 to P150,000 for
the first offense;
(b) Imprisonment of 3 years and 1 day to 6 years plus a fine ranging from P150,000 to P500,000 for
the second offense;
(c) Imprisonment of 6 years and 1 day to 9 years plus a fine ranging from P500,000 to P1,500,000
for the third and subsequent offenses;
(d) In all cases, subsidiary imprisonment in cases of insolvency.

4. ADMINISTRATIVE ACTION FOR INFRINGEMENT

The Bureau of Legal Affairs of the IPO exercises exclusive original jurisdiction over administrative
complaints involving violations of intellectual property rights; provided the total damages claimed are not less
than P200,000. The availment of provisional remedies may be granted.

After formal investigation, the Director for Legal Affairs may impose one (1) or more of the following
penalties –
1. issuance of a cease and desist order;
2. acceptance of a voluntary assurance of compliance or discontinuance;
3. condemnation or seizure of goods subject to the offense;

5. INJUNCTION
● The court may order the defendant to desist from any infringement, among others, to prevent the
entry into the channels of commerce of imported goods that involve an infringement, immediately
after customs clearance of such goods.
● This is a remedy common to the civil, criminal and administrative remedies available to the
plaintiff/complainant.

6. CRIMINAL ACTION FOR UNFAIR COMPETITION

Article 189, RPC. Unfair competition, fraudulent registration of trademark, tradename or service
mark, fraudulent designation of origin, and false description. - The penalty provided in the next
proceeding article shall be imposed upon:
1. Any person who, in unfair competition and for the purpose of deceiving or defrauding another of
his legitimate trade or the public in general, shall sell his goods giving them the general appearance of
goods of another manufacturer or dealer, either as to the goods themselves, or in the wrapping of the
packages in which they are contained, or the device or words thereon, or in any other feature of their
appearance which would be likely to induce the public to believe that the goods offered are those of a
manufacturer or dealer other than the actual manufacturer or dealer, or shall give other persons a chance or
opportunity to do the same with a like purpose.
2. Any person who shall affix, apply, annex, or use in connection with any goods or services or any
container or containers for goods, a false designation of origin, or any false description or representation,
and shall sell such goods or services.
3. Any person who, by means of false or fraudulent representation or declarations, orally or in
writing, or by other fraudulent means shall procure from the patent office or from any other office which may
hereafter be established by law for the purposes, the registration of a tradename, trademark or service mark
or of himself as the owner of such tradename, trademark or service mark or an entry respecting a
tradename, trademark or service mark.

Article 187, RPC. Importation and disposition of falsely marked articles or merchandise made of gold, silver,
or other precious metals or their alloys. - The penalty of prision correccional or a fine ranging from 200 to
1,000 pesos, or both, shall be imposed upon any person who shall knowingly import or sell or dispose of any
article or merchandise made of gold, silver, or other precious metals, or their alloys, with stamps, brands, or
marks which fail to indicate the actual fineness or quality of said metals or alloys.

Any stamp, brand, label, or mark shall be deemed to fail to indicate the actual fineness of the article on
which it is engraved, printed, stamped, labeled or attached, when the test of the article shows that the quality
 or fineness thereof is less by more than one-half karat, if made of gold, and less by more than four
one-thousandth, if made of silver, than what is shown by said stamp, brand, label or mark. But in case of
watch cases and flatware made of gold, the actual fineness of such gold shall not be less by more than three
one-thousandth than the fineness indicated by said stamp, brand, label, or mark.

Article 188. Substituting and altering trademarks, tradenames, or service marks. - The penalty of prision
correccional in its minimum period or a fine ranging from 500 to 2,000 pesos, or both, shall be imposed
upon:
1. Any person who shall substitute the tradename or trademark of some other manufacturer or
dealer or a colorable imitation thereof, for the tradename or trademark of the real manufacturer or
dealer upon any article of commerce and shall sell the same;
2. Any person who shall sell such articles of commerce or offer the same for sale, knowing that the
tradename or trademark has been fraudulently used in such goods as described in the preceding
subdivision;
3. Any person who, in the sale or advertising of his services, shall use or substitute the service mark
of some other person, or a colorable imitation of such mark; or
4. Any person who, knowing the purpose for which the tradename, or trademark, or service mark of
a person is to be used, prints, lithographs, or in any way reproduces such tradename, trademark, or
service mark, or a colorable imitation thereof, for another person, to enable that other person to
fraudulently use such tradename, trademark, or service mark on his own goods or in connection with
the sale or advertising of his services.

● A tradename or trademark as herein used is a word or words, name, title, symbol, emblem, sign or
device, or any combination thereof used as an advertisement, sign, label, poster, or otherwise, for
the purpose of enabling the public to distinguish the business of the person who owns and uses said
tradename or trademark.
● A service mark as herein used is a mark used in the sale or advertising of services to identify the
services of one person and distinguish them from the services of others and includes without
limitation the marks, names, symbols, titles, designations, slogans, character names, and distinctive
features of radio or other advertising.

V. TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION

INFRINGEMENT VS UNFAIR COMPETITION

1. INFRINGEMENT : There is an unauthorized use of a trademark; a violation of IPC
2. UNFAIR COMPETITION: There is an act of passing of one’s goods as those of another; a violation of
RPC

INFRINGEMENT UNFAIR COMPETITION

Restricted in its technical meaning involving Wrongful acts of competition not involving any
violations of tradename or trademark rights under violation of trademark laws
the Intellectual Property Code
Remedies include civil action for damages, Remedies include criminal liabilities under the
injunction and criminal liabilities under the IPC RPC
Presupposes that the injured party has a duly No propriety interest in the words, names or labels
registered trademark/tradename by which fraud is perpetrated is prerequisite to its
maintenance
The offending party should have used the The mere fact that a merchant owns the mark
trademark to goods of similar kind to those sold by does not preclude an action due to unfair
the owner of the trademark competition
The cause does not take into account the actual Actual intent to defraud and mislead the public is
intent of infringer to mislead the public and defraud an essential element to the maintenance of the
the owner of trademark action
Involves different elements 1. The person complained of shall have given
his goods the general appearance of the
goods of the complaining party
2. The party complained of should have
clothed the goods with such appearance
as to deceive the complainant

TESTS TO DETERMINE SIMILARITY OF MARKS

1. DOMINANCY TEST:
⮚ If the competing trademark contains the main or essential features of another and confusion or
deception is likely to result, infringement takes place.
⮚ The focus is on the MAIN and ESSENTIAL features of a mark taken together.
 ● Applying the dominancy test, the Court finds that respondents' use of the "Big Mak" mark results in
likelihood of confusion. Aurally the two marks are the same, with the first word of both marks
phonetically the same, and the second word of both marks also phonetically the same. Visually, the
two marks have both two words and six letters, with the first word of both marks having the same
letters and the second word having the same first two letters. In spelling, considering the Filipino
language, even the last letters of both marks are the same. Clearly, respondents have adopted in
"Big Mak" not only the dominant but also almost all the features of "Big Mac." Applied to the same
food product of hamburgers, the two marks will likely result in confusion in the public mind. Certainly,
"Big Mac" and "Big Mak" for hamburgers create even greater confusion, not only aurally but also
[Link], a person cannot distinguish "Big Mac" from "Big Mak" by their sound. (Mc Donalds
Corporation v. LC Big Mak Burger Inc., GR. No. 143993, 18 August 2004)

● In the trademarks FRUIT OF THE LOOM and FRUIT FOR EVE, the lone similar word is FRUIT.
Mere pronouncing the two marks could hardly be said that it will provoke confusion as to mistake
one for the other. Standing by itself, FRUIT OF THE LOOM is wholly different from FRUIT FOR EVE.
The Court does not agree with petitioner that the dominant feature of both trademarks is the word
FRUIT.

● As to the design and coloring scheme of the hang tags, while there are similarities in the two
trademarks like the red apple at the center of each mark, the dissimilarities are more impressive than
the similarities appearing therein. The ordinary purchaser must be thought of as having, and credited
with, at least a modicum of intelligence to be able to see the obvious differences between the two
trademarks in question. It is believed that the persons buying these products will not be confused
and reach out for other garments. (Fruit of the Loom Inc. v. CA, GR. No. 32747, 29 Nov 1984)

2. HOLISTIC TEST:
⮚ The mark is considered as a whole and not as dissected. If a buyer is deceived, it is attributed to
the mark as a whole and not as dissected.

● To determine whether a trademark has been infringed, we must consider the mark as a whole and
not as dissected. If the buyer is deceived, it is attributable to the marks as a totality, not usually to
any part of it. The court therefore should be guided by its first impression, for a buyer acts quickly
and is governed by a casual glance, the value of which may be dissipated as soon as the court
assumes to analyze carefully the respective features of the mark.

● The Sunshine label is a colorable imitation of the Del Monte trademark. The predominant colors
used in the Del Monte label are green and red-orange, the same with Sunshine. The word "catsup"
in both bottles is printed in white and the style of the print/letter is the same. Although the logo of
Sunshine is not a tomato, the figure nevertheless approximates that of a tomato. (Del Monte
Corporation v. CA, GR No. 78325, 25 January 1990)

DOMINANCY TEST HOLISTIC TEST

The dominant or prevalent features and The two marks taken in their entirety, are examined
distinguishing characteristics of the marks are taken to determine whether their concurrent subsistence
into consideration in deciding whether or not there is will result in confusion or will likely mislead the
infringement. public.

TYPES OF CONFUSION

CONFUSION OF GOODS CONFUSION OF SERVICES

The public is more likely led to believe that the goods The public is more likely led to believe that the
of person/establishment emanated from the other. person/establishment providing services is
connected or affiliated with the other.

INTERNATIONAL KNOWN MARKS

● Rolex and the Crown device is well-known internationally and in the Philippines. A junior user of a
well-known mark on goods or services which are not similar to the goods or services, and are
therefore unrelated, to those specified in the certificate of registration of the well-known mark is
precluded from using the same on the entirely unrelated goods or services, subject to the following
requisites:
1. The mark is well-known internationally and in the Philippines;
 2. The use of the well-known mark on the entirely unrelated goods or services would
indicate a connection between such unrelated goods or services and those goods or
services specified in the certificate of registration in the well-known mark; and
3. The interests of the owner of the well-known mark are likely to be damaged. (246
Corporation v. Daway, GR No. 157216, 20 November 2003)

● Petitioner La Chemise Lacoste is a foreign corporation and the owner of trademarks “Lacoste”,
“Chemise Lacoste”, “Crocodile Device” and a mark consisting of the word “Lacoste” with a crocodile
make used on clothing and other goods sold in many parts of the world and in the Philippines since
1964. The Philippines is a signatory of the Paris Convention for the Protection of Intellectual
Property. In line with this principle, the Ministry of Trade issued a memorandum addressed to the
Director of the Patents Office directing the latter to reject all pending applications for the Philippine
registration of signature and world famous trademarks by applicants other than its original owners or
users.
● Lacoste is one of the well-known trademarks, therefore, applications for registration of trademarks
must be rejected or refused pursuant to the treaty obligations of the Philippines (La Chemise
Lacoste S.A. v. Fernandez, GR No. 633796-97, 02 May 1984)

LAW ON PATENTS
PATENTABLE INVENTIONS

● SECTION 21. PATENTABLE INVENTIONS. - Any technical solution of a problem in any field of
human activity which is new, involves an inventive step and is industrially applicable shall be
Patentable.

It may be, or may relate to, a product, or process, or an improvement of any of the foregoing.

DEFINITIONS

1. NOVEL: One which does not for, part of a prior art

● SECTION 23. NOVELTY. . - An invention shall not be considered new if it forms part of a prior
art.
● SECTION 24. PRIOR ART. - Prior art shall consist of:

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

24.2. The whole contents of an application for a patent, utility model, or industrial design
registration, published in accordance with this Act, filed or effective in the Philippines, with a filing
or priority date that is earlier than the filing or priority date of the application: Provided, That the
application which has validly claimed the filing date of an earlier application under Section 31 of
this Act, shall be prior art with effect as of the filing date of such earlier application: Provided
further, That the applicant or the inventor identified in both applications are not one and the
same.

2. INVENTIVE STEP
● SECTION 26. INVENTIVE STEP. - An invention involves an inventive step if, having regard to
prior art, it is not obvious to a person skilled in the art at the time of the filing date or priority date
of the application claiming the invention.

3. INDUSTIALLY APPLICABLE
● SECTION 27. INDUSTRIAL APPLICABILITY. - An invention that can be produced and used in
any industry shall be industrially applicable.

NON-PATENTABLE INVESTIONS

SECTION 22. NON-PATENTABLE INVENTIONS. - The following shall be excluded from patent protection:

22.1. Discoveries, scientific theories and mathematical methods;

22.2. Schemes, rules and methods of performing mental acts, playing games or doing
business, and programs for computers;
 22.3. Methods for treatment of the human or animal body by surgery or therapy and
diagnostic methods practiced on the human or animal body. This provision shall not apply to
products and composition for use in any of these methods;

22.4. Plant varieties or animal breeds or essentially biological process for the production of
plants or animals. This provision shall not apply to micro-organisms and non-biological and
microbiological processes.

22.5. Aesthetic creations; and

22.6. Anything which is contrary to public order or morality.

PATENT RIGHTS

RIGHT TO A PATENT

● SECTION 28. RIGHT TO A PATENT. - The right to a patent belongs to the inventor, his heirs, or
assigns. When two (2) or more persons have jointly made an invention, the right to a patent shall
belong to them jointly. (Sec. 10, R.A. No. 165a)

● SECTION 29. FIRST TO FILE RULE. - If two (2) or more persons have made the invention
separately and independently of each other, the right to the patent shall belong to the person who
filed an application for such invention, or where two or more applications are filed for the same
invention, to the applicant who has the earliest filing date or, the earliest priority date.

● SECTION 71. RIGHTS CONFERRED BY PATENT. –

71.1. A patent shall confer on its owner the following exclusive rights:

(a) Where the subject matter of a patent is a product, to restrain, prohibit and prevent any
unauthorized person or entity from making, using, offering for sale, selling or importing that product;

(b) Where the subject matter of a patent is a process, to restrain, prevent or prohibit any
unauthorized person or entity from using the process, and from manufacturing, dealing in, using,
selling or offering for sale, or importing any product obtained directly or indirectly from such process.

71.2. Patent owners shall also have the right to assign, or transfer by succession the patent, and to
conclude licensing contracts for the same.

LIMITATIONS TO PATENT RIGHTS

LIMITATIONS OF PATENT RIGHTS

● SECTION 72. LIMITATIONS OF PATENT RIGHTS. - The owner of a patent has no right to prevent
third parties from performing, without his authorization, the acts referred to in Section 71 hereof in
the following circumstances:

72.1. Using a patented product which has been put on the market in the Philippines by the owner of
the product, or with his express consent, insofar as such use is performed after that product has
been so put on the said market;

72.2. Where the act is done privately and on a non-commercial scale or for a non-commercial
purpose: Provided, That it does not significantly prejudice the economic interests of the owner of the
patent;

72.3. Where the act consists of making or using exclusively for the purpose of experiments that
relate to the subject matter of the patented invention;

72.4. Where the act consists of the preparation for individual cases, in a pharmacy or by a medical
professional, of a medicine in accordance with a medical prescription or acts concerning the
medicine so prepared;

72.5. Where the invention is used in any ship, vessel, aircraft, or land vehicle of any other country
entering the territory of the Philippines temporarily or accidentally: Provided, That such invention is
used exclusively for the needs of the ship, vessel, aircraft, or land vehicle and not used for the
manufacturing of anything to be sold within the Philippines.

COMPULSORY LICENSING
 ● The IPO Director of Legal Affairs may grant a license to exploit a patented invention without the
agreement of the patent owner, in favor of any person who has shown his capability to exploit the
invention, under any of the following grounds:
a) National emergency or other circumstances of extreme urgency;
b) Where the public interest so requires, in particular, on considerations of national security,
nutrition, health or the development of other vital sectors of the national economy;
c) Where a judicial or administrative body has determined that the manner of exploitation by the
owner of the patent or his licensee is anti-competitive;
d) In case of public non-commercial use of the patent by the patentee, without satisfactory reason;
e) If the patented invention is not being worked in the Philippines on a commercial scale, although
capable of being worked, without satisfactory reason; however, the importation of the patented
article shall constitute working or using the patent.

● The compulsory license is granted only after the petitioner has made unsuccessful efforts to obtain
authorization from the patent owner on reasonable commercial terms within a reasonable time.
● EXCEPTIONS:
a) In situations of national emergency or other circumstances of extreme urgency, in which case the
right holder shall be notified as soon as reasonably practicable;
b) Where the petition for compulsory license seeks to remedy a practice determined after judicial or
administrative process to be anti-competitive; or
c) In cases of public non-commercial use.

DURATION OF PATENT

TERM OF A PATENT
● SECTION 54. TERM OF PATENT. - The term of a patent shall be twenty (20) years from the filing
date of the application.

REMEDIES OF PATENT OWNER

1. Civil Action for Infringement of Patent

2. Injunction for the protection of his rights
3. Criminal Action – imprisonment in the event that infringement is repeated by offender

1. CIVIL ACTION FOR INFRINGEMENT

● SECTION 76. CIVIL ACTION FOR INFRINGEMENT. - 76.1. The making, using, offering for sale,
selling, or importing a patented product or a product obtained directly or indirectly from a patented
process, or the use of a patented process without the authorization of the patentee constitutes
patent infringement.

76.2. Any patentee, or anyone possessing any right, title or interest in and to the patented invention,
whose rights have been infringed, may bring a civil action before a court of competent jurisdiction, to
recover from the infringer such damages sustained thereby, plus attorney's fees and other expenses
of litigation, and to secure an injunction for the protection of his rights.

76.3. If the damages are inadequate or cannot be readily ascertained with reasonable certainty, the
court may award by way of damages a sum equivalent to reasonable royalty.

76.4. The court may, according to the circumstances of the case, award damages in a sum above
the amount found as actual damages sustained: Provided, That the award does not exceed three (3)
times the amount of such actual damages.

76.5. The court may, in its discretion, order that the infringing goods, materials and implements
predominantly used in the infringement be disposed of outside the channels of commerce or
destroyed, without compensation.

76.6. Anyone who actively induces the infringement of a patent or provides the infringer with a
component of a patented product or of a product produced because of a patented process knowing it
to be especially adopted for infringing the patented invention and not suitable for substantial
non-infringing use shall be liable as a contributory infringer and shall be jointly and severally liable
with the infringer.

TESTS FOR PATENT INFRINGEMENT

 1. LITERAL INFRINGEMENT : There is infringement of patent under this tests if one make, uses or
sells an item that contains all the elements of the patent claim.

2. DOCTRINE OF EQUIVALENTS : An infringement also takes place when a device appropriates a

prior invention by incorporating its innovative concept and although with some modification and
change, performs substantially the same function in substantially the same way to achieve the same
result.

2. INJUNCTION
● The court may order the defendant to desist from any infringement, among others, to prevent the
entry into the channels of commerce of imported goods that involve an infringement, immediately
after customs clearance of such goods.
● This is a remedy common to the civil, criminal and administrative remedies available to the
plaintiff/complainant.

3. CRIMINAL ACTION FOR REPETITION OF INFRINGEMENT

● SECTION 84. CRIMINAL ACTION FOR REPETITION OF INFRINGEMENT. - If infringement is
repeated by the infringer or by anyone in connivance with him after finality of the judgment of the
court against the infringer, the offenders shall, without prejudice to the institution of a civil action for
damages, be criminally liable therefor and, upon conviction, shall suffer imprisonment for the period
of not less than six (6) months but not more than three (3) years and/or a fine of not less than One
hundred thousand pesos (P100,000) but not more than Three hundred thousand pesos (P300,000),
at the discretion of the court. The criminal action herein provided shall prescribe in three (3) years
from date of the commission of the crime.