——== MERCANTILE LAW 1 NTE — MECTUAL PROPERTY Cope Basic Princ! a shal accord OED ,al Treatment - A Member country shi ertctaher emer cures weasen nae eens favorable than it accords to its own national SSS | emerson fost Fovored Nation - Any advantage favor, privilege or \ Ironuntygraated by 4 Member fo the nationals of any Copyright and Ret Ther "country. shall be accorded immediately an and Relate F 2 Trademarks and Seve fs 2, any tothe anata oter Mebers fe reperaphic indications; : industrial design 5 I designs; 6 Patents; Layout designs (Topographies) of Integrated Gireuits; Protection of Undisclosed information (TRIPS). Pay bags e aCe sake Copyright and Related | exists over original and derivative intellectual creations in the literary and artistic domain, Rights. protected from the moment of their creation. Trademarks and Service | any visible sign capable of distinguishing the goods (trademark) or services (service mark) Marks, of an enterprise and shall include a stamped or marked container of goods. indications which identify a good as originating in the territory of a Member of the — Agreement. or a region or locality in that territory, where a given quality, reputation or Geographic indtcations | her characteristic ofthe good is essentially attritutable tits geographical origin. (Article 22, TRIPS Agreement) ‘any composition of lines or colors or any three-dimensional form, whether or nat associated with lines or colors, provided that such composition or form gives a special Industrial Peslons | appearance to and can serve as pattern for an industrial product or handicraft. It must be ‘new or ornamental ‘any technical solution ofa problem In any field of human activity which is new. Involves an Patents inventive step and ts industrially applicable. It may be, or may relate to, a product, or process, or an improvement of any of the foregoing. synonymous with ‘Topography’ and means the three-dimensional disposition, however | expressed, of the elements, at least one of which is an active element, and of some or all of Layout Designs the interconnections of an integrated circuit, or such a three-dimensional disposition prepared for an integrated circuit intended for manufacture, protection of information lawfully held from being disclosed to, acquired by, or used by ‘others without their consent ina manner contrary to honest commercial practices so long as such information: (a) is secretin the sense that it is not. as a body or in the precise Protection of Undisclosed | configuration and assembly of its components, generally known among or readily Information accessible to persons within the circles that normally deal with the kind of information in question; (b) has commercial value because it is secret; and (c) has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret (Article 39, TRIPS Agreement) a plan or process, tool, mechanism or compound known only tots owner and those of his employees to whom itis necessary to confide it. The definition also extends to: (a) a secret formula or process not patented, but known only to certain individuals using it in ‘compounding some article of trade having a commercial value: or (b) any formula, pattern, Trade Secrets device, or compilation of information that: (1) is used in one’s business: and (2) gives the ‘employer an opportunity to obtain an advantage over competitors who do not possess the information. (Air Philippines Corporation v. Pennwell, Inc, GR. No. 172635 December 13, Ee 2007) 2 TIMMONS property rights, including licensing of computer software except computer software developed for mass market -chnology transfer arrangement (PC See4.2). Contracts or agreements involving the transfer of Nature of technology transfer arrangement systematic knowledge for the manufacture of a product, the application of the process. or rendering of a service Its in the nature of a Voluntary License Contract. Its 3 including management contracts; and the transfer, ‘contract between an intellectual property right owner assignment_or licensing of all forms of intellectual (licensor) and a second party (licensee), authorizing the py, UNIVERSITY oF SANTO Tomas 322 2016 Gotven NotesINTELLECTUAL PROPERTY Cope $$ ROPERTY CODE later to conunecaly exploit the same reionua property ght wader speclied terms tos "ena (aloo, 2012). “ Undisclosed information 1. a secret in the sense that itis not, as a body or in recise configuration and assembly of components Benerally known among, or readily accessible to Persons within the circles that normally deal withthe kind of information in question; 2. Has commercial value because it isa secret: Has been subjected to reasonable steps under the ficumtances. by the person wll ia contol of Meggan coke ea secret TRIPS Aareemen: Nature of undisclosed information or trade secret Thode trade secrets are of a privileged nature. The Protection of industrial property encourages investments jin new ideas and inventions and stimulates creative efforts for the satisfaction of human needs. It speeds up ‘transfer of technology and industrialization, and theresby, ‘bring about social and economic progress. Verily, the protection of industrial secrets is inextricably linked to the advancement of our economy and fosters healthy competition in trade (Air Philippines Corporation Pennswelt Inc, GR No. 172835, Dec. 13, 2007). fo PATENTS General Principles The primary purpose of the pateut system is uot the ‘reward of the individual but the advancement of the arts and sciences. The function of a patent isto add to the sum ‘of useful knowledge and one of the purposes of the patent system is to encourage dissethination of information concerning discoveries and inventions (Manzano vs. Court of Appeals, G.R No. 113388, September 5, 1997). ‘The patent law has a threefold purpose: 1. Patent law seeks to foster and reward invention: 2 It promotes disclosures of inventions to stimulate further innovation and to permit the public to ractice the invention once the patent expires: and 3. The stringent requirements for patent protection seek to ensure that ideas in the public domain remain there for the free use of the public (Pear! & Dean (Phil), Incorporated v. Shoemart, Incorporated, GR No. 148222, August 15, 2003). Coverage of patents 1. Invention - any technical solution of a problem in any field of human activity which is new, involves an inventive step and is industrially applicable. It may be, or may relate-to, a product, or process, or an improvement of any of the foregoing (Sec. 21, 1P0. Usiligy Model An invention qualifies for registration as a utility model if it is new and industrially applicable. (Sec. 109, PC) 323 3 11310, Generally speaking. an 7 industrial design is the ‘ornamental or aesthetic aspect of a of zane Ct of 4 seta sce An industrial designs not considered new fit fers tromprlr designs ety amma expe that cae mistaken as sich prior desig by on ane observe (World Intellectual - een Property Organ Se Patentable inventions Any technical solution ofa probl also Foblem in any field of human activity which is new. involves an inventive step and it industrially applicoble. it may be, or may relate to, 2 product, or process, or an improvement of any of the foregoing (1C Sec. 21) Product patent vs. Process patent ‘The right to make, use, sell. and import the product. ‘The right 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, o importing any product obtained directly or indirectly from such process. (IPC. Sec. mm 9. machine, a device, a microorganism. 9. a method of use, a methed of manufacturing, a non- Biological process, a) ‘microbiological process. Improvement - enhancement or modification of any of the foregoing subject to patentability criteria. Criteria for Patentability 1. Novelty - An invention sha. aot be considered new iff forms part ofa prior art (Sec. 23,1PC). 2. Inventive Step ~if,having regard to prior art itis not obvious toa person skilled in the art atthe time of the filing date or priority date ofthe application claiming the invention. 3. Industrially Applicable ~ An invention that can be produced and used in any industry (IPC, Sec. 27). ‘The burden of proving want of novelty of an invention is ‘on the person who avers it and the burden is a heavy one which is met only by clear and satisfactory proof which UNIVERSITY oF SANTO TOMAS pehlrieiy? tee peetmarae 2 {te duke mney cx cm Prior Art MF eT stalk Cul & Everything ) ‘vervthing which has been made available to the trans sathere inthe world before the ling date rahe brerty date of the application caming the The whole ‘contents of an earlier published Philippine application or application with eller Driority date of a different javentor. Only prior art made available to the public before the fling date or priority date is considered in assessing ‘nwentive step (Revised IRR for RA 8295, Rule 206) Public disclosure ‘The ultimate goal of a patent system is to bring’new designs and technologies into the public through disclosure; hence ideas, once disclosed to the public without protection of a valid patent. are subject to Appropriation without significant restraint (Pear! & Dean vs Shoemart Inc. GR No. 148222, August 15, 2003). GR: When a work has already been made available to the public, shall be non-patentabe for absence of novelty. XPNs: Non-prejudicial disclosure - the disclosure of information contained in the application during the 12- ‘month period before the fling date or the priority date of the application if such disclosure was made by: 1. ‘The inventor: 2A patent office and the information was contained: ‘In another application filed by the inventor and should have not have been disclosed by the office, or b, In an application filed without the knowledge or uy mit indite consent of the inventor by a third party which HY "obtained the information directly or indirectly Somauten javentor; obtained the information directly of indirectly from the inventor (IPC Sec. 25) If the disclosure was made by the designer in the case of industrial design, the period is 6 months. In other words, the application must be filed within 6 months after disclosure for itto be non-prejudicial. Inventive step GR: An invention involves an inventive step if, having regard to prior art, itis 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 (IPC Sec 26). =) prt elt ar Me Hay MS an Fe gp XPN: In the case of drugs dnd medicines, there is no inventive step if the invention results from the mere discovery of a new form or new property of a known ‘substance which does not result in the enhancement of the known efficacy of that substance (IPC, as amended by RA 9502, Sec 26.2) MERCANTILE LAW eam Ue BL = Sep On wy 2 anette] gaye Test of Non om ae fany person possessing ordinary sillin the art was able to draw the inferences and he constructs that the Supposed inventor drew from prior ar then the latter did not really invents Persomskilled inthe art = prwsr Witmy poufrea? Lr mel ey 7 ‘person with ordinary sis in a certain ator field who {s aware of what is a common general knowledge inthe field at the time of the application. “He is presumed to hhave knowledge of all references that are sufficiently felatedto one another and tothe pertinent artand to have Knowledge of all arts reasonably pertinent to the pardcular_ problems with which the inventor was Involved, Hes presumed also to have had a his disposal the normal means and capacity for routine work and experimentation” (Revised IRR for RA No. £293, Rule 207) [A process pertaining to an Improvement of the old process of tle making is patentable ‘An improvement in the tile making process Is indeed lnventive and goes beyond the exercise of mechanical sil. The applicant has introduced a new kind of tile for 2 new purpose He has improved the old method of making, tiles and pre-cast articles which were not satisfactory because ofan intolerable numberof breakages especially ifdeep engravings are made on the tle. He has overcome the problem of producing decorative tiles with deep ‘engraving but with sufficient durability Aguas w. De Leon, GR No. L-32160, January 30, 1982). Unitity model ‘Aname given to inventions a the mechanical field. Usility models differ from inventions for which patents for invention ae available mainly in two respects. First the technological progress required is smaller than the technological progress (“inventive step”) required in the ‘ase of an invention for which a patent for invention is, available. Second, the maximum term of protection provided in the law fora utility model is generally much shorter than the maximum term of protection provided in the law for an invention for which a patent for invention is available (WIPO Handbook Chapter 2, “Fields of Intellectual Property Protection”, WIPO Publication No. 489 (E), 2 Edition p. 40.). ‘The provisions regarding non-patentable subject-matter, Industrial applicability, novelty and sufficiency of disclosure under invention patent will apply, mutatis ‘mutandis, to utility models (Revised Implementing Rules & Regulations for RA 8293, pp. 36°38.). Requisites for an invention to be considered as a utility mode! If it is new and industrially applicable. A model of implement or tools of any industrial product even if not possessed of the quality of invention but which is of practical utility (IPC Sec. 109.1) p, UNIVERSITY oF SANTO TOMAS |) 2016 Goren Notes 324 — dimine ot Teputeat > eardavey = psn pm Gn ageted)INTELLECTUAL PROPERTY CODE Industrial Applicability ‘An invention that can be produced and used in any industry meets the industrial application requirement of patent registrability. This means an invention is not ‘merely theoretical, but also has a practical purpose Ifthe invention is a product. it should be able to produces product and ifthe invention is a process, it should be able to lay out a process (WIPO, IP Handbook 2~ Edition, Chapter 2: “Fields of Intellectual Property Protection” Publication No. 49(E).p. 18) Term ofa utility mode! 7 years from date of filing of the application (IPC, Sec 109.3), Other forms of patentable inventions tegrated circuit - A product. in its final form, or an intermediate form, in which the elements. at least ‘one of which is an active elements and some ofall of the interconnections are integrally formed in and or ‘on a piece of material, and in which is intended to perform an electronic function. 2 Layout design/topography - The three dimensional disposition, however expressed, of the ‘elements, atleast one of which is an active element, and of some or all of the interconnections of an integrated circuit, or such a. three-dimensional disposition prepared for an integrated circuit intended for manufacture, Registration is valid for 10 years without renewal counted from date of ‘commencement of protection. Invention vs. Utility model vs. Industrial design New Twenty (20) yeors | Inventive Step | from the date of Industrial filing with Applicability | payment of annuities No renewal (IPC Sec 54). New ‘Seven (7)_years Industrial from the date of Applicability | filing without renewal (IPC, Sec 1093) New or Five (3) _years Ornamental | from the date of filing with 2 five year term renewals upon payment of fees (1PG Sec. 118.2) Non-patentable inventions 1. 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 2. Aesthetic creations 3. Discoveries, scientific theories and mathematical methods 4. Schemes, rules and methods of performing mental acts, playing games or doing business, and programs for computers 5. Anything which is Contrary to public order or ‘morality (IPC as amended by RA. 9502, Sec. 22). 6. Methods for treatment ofthe human or animal body Inthe case of drugs and medicines, mere discovery of a new form or new property of 3 known substance which does not result in the enhancement of the efcacy ofthat substance Patentability of computer programs GR: Computer programs are not patentable but are copyrightable. XPN: They can be patentable ifthey are part of a process (ea. business process with a step involving the use of a ‘computer program), Supposing Albert Einstein were alive today and he filed with the Intellectual Property Office (IPO) an application for patent for his theory of relativity expressed in the formula E=mc2. The IPO isapproved Einstein's application on the ground that 1is theory of relativity is not patentable. Is the 1PO's action correct? (2006 Bar) A: Yes, the IPO is correct because under the Intellectual Property Code, discoveries, scientific theories and mathematical methods are classified to be as “non patentable inventions”. Einstein's theory of relativity falls, within the category of being a non-patentable “scientific theory”. Persons entitled to a patent Inventor, his heirs, or assigns (IPC, Sec 28): Joint invention - jointly by the inventors (IPC. Sec. 2 3. Two or more persons invented separately ond independently of each other - To the person who filed an application; 4. Two or more applications are filed - the applicant who has the earliest filing date or, the earliest priority date. First to file rule (IPC. Sec. 29}. 1 2 325 University oF Santo Tomas Facuury or Civit Law vw{Ceo (2) oF mor ie Persons have made the iavention arately and independent ofechoshe henson ‘to the patent 4 Whe Se rma pie el tae ingen sac) MCE ME P 2 commission: The person who Sommissions the work shall own the patent. unless ‘otherwise provided in the contract. Pursuant to employment: In case the employee made the invention in the course of his employment contract, the patent shall belong to: . a The employee, ifthe inventive activity is not a part cof his regular duties even ifthe employee uses the time, facilities and materials ofthe employer b. The employer. ifthe inventive activity isthe resuk of the performance of his regularly-assigned duties, unless there is an agreement, express or implied, to the contrary (IPC Sec. 30) Priority date {An application for patent filed by any person who has previously applied for the same invention in another country which by treaty, convention, or law affords similar privileges to Filipino citizens, shall be considered as filed as of the date of filing the foreign application(IPC, See. 31). Filing Date is accorded only when all the requirements provided under Section ‘40 are present. Priority Date comes into play when there is an application for patent for the same invention that was filed in another country (Saloo, 2012). Conditions in availing of priority date 1. The local application expressly claims priority; 2. tis filed within 12 months from the date the earliest foreign application was filed; and 3. A-certified copy of the foreign application together with an English translation is fled within 6 months froin the date of filing in the Philippines (Sec. 31, 1C). Three (3) Main Areas of Activity in the Grant of Invention Patent 1. Examination as to form or formality examination; 2. Classification, search and first publication; and 3. Examination as to substance or substantive examination Se So et Steps In the registration ofa patent “The procedure for the grantof patent may be summarized asfollows: Filing of the application ‘Accordance ofthe fling date Formality examination {lassification and Search Publication of application Substantive examination Grant of Patent Publication upon grant Issuance of certificate (Salao, 2008). eee meen Manner of making disclosure ‘The application shall disclose the Invention in a manner _nuffciently cleor and complete for ito be carried out by a person skilled in the art aim Defines the matter for which protection is sought. Each claim shall be clear and concise, and shall be supported by the description It must point out and distinctly show the part improvement, or combination which the applicant regards as his invention. Abstract, ‘Acconcise summary of the disclosure of the invention as Contained in the description, claims and merely serves as, technical information. The purpose of requiring a definite and accurate description of the process isto apprise the public of what the patentee claims as his invention, to inform the Courts ‘asto what they are called upon to construe, and to convey to competing manufacturers and dealers information of exactly what they are bound to avoid. Unity of invention The application shall relate to one invention only or to a group of inventions forming a single general inventive concept (IPC Sec. 32.1). If several independent inventions which do not form a single general inventive concept are claimed in one application, the application must be restricted to a single invention (IPC, Sec 382) Divisional applications. Divisional applications come into play when two or more inventions are claimed in a single application but are of ‘such a nature that a single patent may not be issued for them, The applicant. is thus required to "divide", thats to limit the claims to whichever invention he may elect. whereas those inventions not elected may be made the subject of separate applications which are called “divisional applications” (Smith-Kline Beckman Corp. v.CA, GR No, 126627, August 14, 2003), Q Leonard and Marvin applied for Letters Patent claiming the right of priority granted to foreign fgg, Univensiry of Sanro Tomas pore cpap canton 326applicants. Receipt of petitioners application was acknowledged by respondent Director ren March 6, i954. Thetr Application fr Leters Patera ake Us forthe same invention indicated thatthe spolinios im the US was Bled om March 16,195), Tey ert ‘aed ta the Speicno they had sabe sas “incomplete” and that responsive schon be fled with them four months from date of meting shich was August 5, 1959. On july 31962 pete, Submitted two complete copies ofthe Specitvaden, Director of patents held that petitioners application say not be treated as fled lsthe director oovaty A: Yes. itis imperative thatthe application be complete in order thatitmay be accepted. Kis essental tthe eat of Letters Patent that the specifications be fall deta and specific Tobe eatied tothe ling datco the patent application, an invention disclosed in a previously hed application must be described. within the, insect application in such a manner as to enable one skied ie the at to use the same for a legally adequate wai (Boothe v. Director of Patents, GR: No. £24919 Jon 28 1380) First publication ‘The applicant shal have all the rights ofa patentee against any person who, without his authorization, exercised any of the rights conferred under Section 71 in relation to the invention claimed in the published patent application, as ifa patent had been granted for that invention, provided that the said person had: 1. Actual knowledge that the invention that he was using was the subject matter of a published application; or 2. Received written notice that the invention was the subject matter of a published application being identified in the said notice by its serial number. The action may not be filed until after the grant ofa patent ‘on the published application and within four (4) years from the commission of the acts complained of (IPC, Sec 46). Effectivity of a patent A patent shall take effect on the date of the publication of the grant of the patent in the IPO Gazette (1PC, Sec. 50.3). PGROVNDS FOR CANCELLATION OF APATENT ‘Any interested party may petition to cancel any patent or any claim or parts of a claim any of the following grounds: 1. The invention is not new or patentable: 2 The patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by any person skilled inthe art: or 3. Contrary to public order or morality (IPC Sec. 61-1): 4 Patent is found invalid in an action for infringement IPC, Sec. 82) 5. The patent inches matters ouside the coe of the disclosure contained in the application (IPC, Sec 21, Regulations on Incer Partes Proceeding, Sec) INTELLECTUAL PROPERTY Cope 327 the round for cancion rete tsomeof the tern tan same othe aims nly. canton may esas, ‘such extent only (IPC Sec. 61.2) meme Grounds for cancellation of a utility model 1 The aveton does net tame the description and the clams dono com whe presrbed requremenae 2" “OMY 3. Any drawing which 6 neesary or’ the understanding of the imenton beg moe vena furnished; 4. Thathe owner ofthe tliy mde restrain nt theinventr orbs sceserin ae ne Se 5 ‘qualify for registration as a Grounds for cancellation of an industrial design 1. The subject matter of the industrial"design is not registrabe, 2 The subject matter is not new, or 3. The subject matter of the industrial design extends beyond the content of the application as originally filed (1PC, Sec. 120), Grounds for Cancellation of Layout.Design of Integrated Circuits a 1. The layout-design is not protectable 2. The right holder is not enstied to protection 3. Where the application for registration of the layout design, was not fled within two (2) years from its first commercial exploitation anywhere inthe world Where the grounds tor cancellation are established with respect only to a part of the layout-design, only the corresponding part of the registration shall be cancelled (UPC, Sec. 1203, TPC, as amended by RA 9150) TENET Ca IE Remedies of persons with aright toa patent If a person other than the applicant is declared by final court order or decision as having the right toa patent, he may within 3 months after such decision has become final: Prosecute the application as his own File a new patent application Request the application to be refused; or Seek cancellation of the patent (1PC, Se” 67.1). pene Remedies of the crue and actual inventor (1993, 2005, Bar) person, who was derived fhe patent whoo bs tenor rough aud seared by fal court rer irdeto tobe the tv daca venta the cout Stotordr ors sutton pater Fah opt wrne occ ventor cane te pte an ad 23 sees vo waranted 8 he GCs (1PC, Sec 68) Vv University oF SANTO TOMAS Facuety of Crvin LAWTime to file action in court ‘The actions indicated in re cated in Sections 67 and 68 shal be filed ithin one (1) year from the date of publication made in = ice with Sections 44 and S1, respectively (IPC & Cezar works in a car manufacturing company ‘owned by Joab. Cezar is quite innovative and loves to tinker with things. With the materials and parts of the ‘car, he was able to invent a gas-saving device that will, ‘enable cars to consume less gas. Francis, a co-worker, saw how Cezar created the device and likewise, came up with a similar gadget, also using scrap materials and spare parts of the company. Thereafter, Francis iled an application for registration of his device with the Bureau of Patents. Eighteen months later, Cezar filed his application for the registration of his device with the Bureau of Patents. a. Is the gas-saving device patentable? Explain. b. Assuming that i is patentable, who is entitled to the patent? What, if any, is the remedy of the Josing party? (2005 Bar) Yes. For the gas saving device to be patentable invention it must be new; must involve an inventive step: and must be industrially applicable. In the given case, It shows thatthe gas saving device is new land with the innovativeness of Cezar using certain materials of the car, it provides a useful application to save on the consumption of gas. b. Cezar is entitled to the patent because he isthe true and actual inventor. While iti true that Francis was the first to file the application for registration of patent, the same will not work in his favor because the was in bad faith. However, considering that under the IP Code, it adcpts the first to file rule, Cezar will hhave to take action against Francis within one (1) ‘year from the date of publication. If he is declared by final court order or decision as having the right to a patent, he may within 3 months after such decision has become final: a) prosecute the application as his ‘own application in place of the applicant; ) file a new patent application in respect of the same invention; c) request the application to be refused: 4) seek cancellation of the patent, if one has already been issued. DREN PMO eed ma) RA. No 6293 is silent with respect to any remedy available to litigants who intend to question an inter: locutory order issued by the BLA-IPO. Moreover Section 1(9, Rule 1 of the Rules and Regulations on Administrative Complaints for Violation of Laws Involving Intellectual Property Rights simply provides pS, UNIVERSITY OF Santo Tomas WE! 2016 Gotvew Notes 328 that interlocutory orders shall not be appeatable. The said Rules and Regulations do not prescribe a procedure within the administrative machinery to be followed in assailing orders issued by the BLA-IPO pending final resolution of acase filed with them. Hence, in the absence of such a remedy, the provisions ofthe Rules of Court shall apply in a suppletory manner, as provided under Section 3, Rule 1 ofthe same Rules and Regulations. Hence, in the present case, respondents correctly resorted to the fling (of a special civil action for certiorari with the CA to ‘question the as-sailed Orders of the BLA-IPO, as they ‘cannot appeal therefrom and they have no other plain, speedy and adequate remedy in the ordinary course of law, This is consistent with Sections 1 and 4, Rule 65 of the Rules of Court, as amended (Philippine Pharmawealth Pfizer Inc, C.R. No, 167715, November 17, 2010, in Divina, 2014). @ Pfizer Is the registered owner of a patent pertaining to Sulbactam Ampicillia. It is marketed under the brand name “Unasyn.” Pfizer later on discovered that Pharmawealth submitted bids fr the supply of Sulbactam Ampicillin to several hospitals without the Pfizer's consent. Pfizer filed a complaint for patent lfringement with a prayer for permanent injunction and forfeiture of the infringing products. A preliminary injunction effective for 90 days was granted by the 1P0's Bureau of Legal Affairs (1PO- BLA). Aggrieved by the denial of the motion for extension of the preliminary injunction, Pfizer then filed » Special Civil Action for Certiorari in the Court of Appeals (CA) assailing the denial The CA subsequently issued a temporary restraining orderin favor of Pfizer. While the case was pending im the CA, Pfizer filed with the Regional Trial Court of Makati (RTC) 2 complaint for infringement and unfair competition against Pharmawealth. Pending the said ‘ase, a motion to dismiss the case was filed for being ‘moot and academic, contending that Pfizer's patent had already lapsed. In the same manner, *harmawealth also moved for the reconsideration of the temporary restraining order issued by the CA on the same basis that the patent right sought to be protected has been extinguished due to the lapse of the patent license and on the ground that the CA has jurisdiction to review the order of the BLA-IPO as sald jurisdiction is vested by law in the Office of the Director General of the_———«IPO. a. Gan Pfizer validly seek for the issuance of a restraining order or injunction to enjoin Pharmawealth from selling the product when the patent allegedly infringed has already lapsed? b. Did the Court of Appeals have jurisdiction to rule the order of the IPO-BLA? a No. The exclusive right to make, use and sell the Patented machine, article, product, and to use the patented process for the purpose of industry or commerce, throughout the territory of the Philippines exists only during the term ofthe patent. Since the patent has expired, there is no more basis for the issuance of a restraining order or injunctionagainst Pharmawealth insofar asthe disputed patent te concerned. b. Yes In the case at bar, the question in the CA concerns an interlocutory order, and not a decision. ‘Accordieg to IP Code, tis the Director Genera ofthe (PO that exercises exclusive jurisdiction over decisions of the 1PO-BLA. However, the IP Code and ‘the Rules and Regulations are bereft of any remedy regarding interlocutory orders of the IPO-BLA, the ‘only remedy available to Pfize¢ isto apply the Rules ‘of Court suppletorily. Under the Rules of Court, 2 petition fr certiorari t the CA isthe proper remedy. Hence, the CA had jurisdiction to rule on the order. Rights conferred by a patent 1, Im case of Product - Right to restrain, prohibit and prevent ay- unauthorized person or entity from imaking using offering forsale selling or importing the product. 2. Im case of Process - Right to restrain prohibit and ‘prevent any unauthorized person or entity from ‘manufacturing, dealing in, using, offering for sale, selling or importing any product obtained directly or indirectly from such process (IPC. Sec. 71). 3. Right w assign the patent to transfer by succession, ‘and to conclude licensing contract (IPC Sec. 71.2) ‘The rights conferred by a patent application take effect after publication in the Official Gazette (1PC. Sec 46). NON TATY ‘The owner of apatent has no rightto prevent third partes from making using offering for sale, selling or importing a patented product inthe following circumstance ‘a. Using a patented product after it has been put on the ‘market inthe Philippines by the owner of the product, ‘or with his express consent. In case of drugs or medicines, the said limitation applies after a drug or medicine has been introduced inthe Philippines or anywhere else in the world by the patent owner. or by any party authorized to use the invention. This allows parallel importation for drugs and medicines. ‘The right ws import the drugs and medicines shall be avallable to any government agency or any private ‘third party (1PC Sec. 72.1, as amended by RA No. 9502) b, Where the act is done privately and on 2 non- ‘commercial zcale or for a non-commercial purpose (1G, Sec. 72.2) Exclusively for experimental use of the invention for scientific purposes or educational purposes. (IPC, Sec. 723). In the case of drugs and medicines, where the act includes testing using making or selling the invention including any data related thereto, solely {for purposes reasonably related to the development and submission of information and issuance of 329 ELLECTUAL PROPERTY CODE approvals by government regulatory agencies seer under any law of the Philippines oF of SEEMS" counery hat regulates the manufacture Seovructin ase or tale of any product. “The data submitted by the original patent holder may be protected from unfair commercial use provided in [ticle 393 ofthe TRIPS Agreement (IPC. Sec. 724) Where the act consists: of the preparation for individual cases, ina pharmacy or by a medical professional, of a medicine in accordance with 2 ‘medical prescription (Sec. 72-5, IPC). i. Where the invention is used in any ship, vessel, ‘ircraft 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 ofthe ship, vessel, aircraft. br land vehicle and net used for the manufacturing of anything to be sold within the Philippines (IPC"Sec 725). Prior user Person other than the applicant, who in good faith, started tusing the invention in the Philippines. or undertaken serious preparations to use the same, before the filing date or priority date of the application shall have the right to continue the use thereof, but this right shall only be transferred or assigned further with his enterprise or business (JPC Sec. 73). @: Xinvented a device which, through the use of noise, ‘can recharge a cellphone battery. He applied for and ‘was granted a patent on his device, effective within the Philippines. Asit turns out, a year before the grant ‘of X's patent, ¥, also an inventor, invented a similar device which he used in his celiphone business in Manila, But X files an injunctive suit against Y to stop hhim from using the device on the ground of patent infringement. Will the suit prosper? (2011 Bar) ‘A: No, since Visa prior user in good faith, Use by Government A Government agency or third person authorized by the Government may exploit the invention even without agreement of the patent owner where: 2. The publ intrest. in particular, national secur hutetion health the development of ether secory 4 determined by the appropriate ageney Wt the fovernment so equres or A judicial or administrative body has determined thatthe manera exploitation bythe owner of the patent ori iense is ant compettive or Inthecas of drugs and medicines theres national tmereeney or other circumstance of entreme Urgency requiring the us of the invention or ine se a ds ad meine rea pb an-commercial ure af the patent bythe patentee, wethout satisfactory reason or : Inthe case of drugs and medicines the demand fr the patented arte inthe Philippines isnot being University oF SANTO TOMAS Facuury oF Civit Lawei MELA ‘on reasonable terms, Health, ‘Secretary ofthe Department of The sey the Goverment 1 thicd person authorized by jet where applicable, tothe 4m situations of ational emerge 2 jency_ or other Clreumstances of extreme urgency, the right heldet shall be notified as soon as reatonably practicable ‘the ease of pubic non-commercial ue ofthe patent by the patente, without satisfactory reason, the right ‘holder shal be informed promptly, 3. W the demand for the patented article in the Philippines isnot being met to an adequate extent fand on reasonable terms as. determined by the Secretary of Health, the sight holder shall be informed promptly: 4 The scope and duration of such use shall be limited tothe purpose for which was authorized: 5. Such use shall be non-exchsive, 6 The right holder shall be paid adequate remuneration in the circumstances of each cate, taking into account the economic valve of the authorization: 3nd 7. The existence of 2 national emergency oF other circumstances of extreme urgency. in the case of Gdnigs and medicines shall be subject to the ‘dtermination ofthe President of the Philippines for the purpose of determining the need for such use of other exploitation, which shall be immediately executory. Reverse reciprocity of foreign law ‘Any condition, rest/iction, limitation. diminution, ‘requirement. penalty or any similar burden imposed by the law of 2 foreign country on 2 Philippine national seeking protection of intellectual property rights in that ‘country, shall reciprocally be enforceable upon nationals of said country, within Philippine jurisdiction (Sec. 231, 19. Doctrine of exhaustion ‘Also known asthe doctrine offs sale, I provides that the patent holder has control of the frst sale of his invention. He has the opportunity to recive the full consideration {for his invention from his sale. Hence, he exhausts his rights in the future control of his invention. It espouses that the patentee who has already sold his invention and has received all the royalty and consideration for the same will be deemed to have released the invention from his monopoly. The invention. thus becomes open to the use of the purchaser without further restriction (Adams v. Burke, 84 US. 17, 1873) GR: Patent rights are exhausted by first sale in the Philippines (Domestic exhaustion). XPN: On drugs and medicines: frst sale in any jurisdiction exhausts the rights of the owner thereof (International exhoustion) (RA No. 9502) ivi infringement “The making using offering forsale, sling o importing 2 patented product of a product obtained directly oF Indirecy from 2 patented proces. of the use of 3 patented. process without the authorization of the patentee consitues patent infringement. exemptions: 2 Parallel importation for patented drugs and medicines: Poralel importer is one which imports dstibutes. and. sells genuine products in the market, Independently of an_exchasive disrbutorship oF tency agreement with the manufacturer bh In the case of drugs and medicines. where the act Includes testing. using makong ot selling, the invention including any data related thereto, solely for purposes reasonably related tothe development and submission of information and issuance of pprovals, by. government regulatory agencies equired under any law of the Philippines or of fnother country that regulates the manufacture, ‘construction. use or sale of any product: & Use of tavention by Government: 4 Compulsory licensing: ‘& Procedures on Issuance of 3 Special Compulsory LUcense under the TRIPS Agreement for patented drugs nd medicines. Contributory Infringement Anyone who acively induces the infringement of a patent ‘or provides the inringer with a component of patented product or of a product produced because of a patented ‘Process lnowing itto be especially adopted for infringing the patented invention and not suitable for substantial nor-infringing use shall be liable as 2 contributory Infringer and shall be jointly and severally able with the lnfringer (See. 7.6 1°C) Criminal Infringement ‘infringement is cepeated 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 (IPC, Sec. 84). Litera takingement ‘hn eat of promcian cared yn pee eal bo ‘determined by the claims, which are to be interpreted in ‘the light of description and drawings (Sec. 75, IPC). p University of Santo Tomas * 2016 Gotoen Notes 330tn using literal infringement, resort must be had, in the frst instance, to the words ofthe claim. If accused mater clearly falls within the claim, infringement is made out Sind that is the end. of (t. To determine whether the particular item falls within the literal meaning of the patent claims, the Court mast juxtapose the claims of the patent and the accused product within the overall context ff the claims and specications, to determine whether there is exactly identity of all material elements (Gadines CA. GR No. 97343, September 13, 1993) Doctrine of Equivalents (2015 Bar) ‘Account shall be taken of elements which are equivalent to the elements expressed in the claims, so that a claim shall be considered to cover not only all the elements ‘expressed therein, but also equivalents (Sec 75, 1PC). [According to the doctrine of equivalents, an infringement alse occurs when 3 device appropriates a prior invention by incorporating ts innovative concept and, despite some modification and change, performs substantially the same function in substantially the same way to achieve ‘substantially the same resule (Gadines v. CA GR No. 97343, September 13, 1993). ‘The doctrine of equivalents thus requires satisfaction of the funetion-means- and-resut test, the patentee having the burden to show that all three components of such equivalency test are met (Smithkiine Beckman Corporation v. CA, GR No. 126627, August 14,2003). Meaning of “equivalent device” Itis such as a mechanic of ordinary skill in construction of similar machinery, having the forms, specifications and ‘machine before him, could substitute in the place of the mechanism described without the exercise ofthe inventive faculty. ; Does the use of a patented process by a third person constitute an infringement when the alleged infringer has substituted, in lieu of some unessential part of the patented process, a well-known ‘mechanical equivalent? ‘A: Yes, under the doctrine of mechanical equivalents the patentee is protected from colorable invasions of his patent under the guise of substitution of some part of his invention by some well-known mechanical equivalent. It isan infringement ofthe patent ifthe substitute performs the same function and was well known at che date of the patent as a proper substitute for the omitted ingredient (Gsellv. Yap:Jue, GR. No. i-4720, Jon. 19, 1909). Doctrine of file wrapper estoppel This doctrine balances the doctrine of equivalents. Patentee is precluded from claiming as part of patented product that which he had to excise or modify in order to avoid patent office rejection, and he may omit any additions that he was compelled to add by patent office regulations. INTELLECTUAL PROPERTY CODE Remedies of the owner of the patent against infringers The owner may being a 1. Chil action for infringement - The y fil action with the appropriate Regional Trial Court cn aever from inringer the damages sustained DY the former plus attorney's fees and other litigation Cupenses, and to secure an injunction for the protection of his rights (IPC, See 762) the damages adequate or cannot be reasonably ascertained sith reasonable certainty, the court may award by Way of damages a. sum equivalent to reasonable royalty (IPC Sec 763). No damages can be recovered for acts of Infringement committed more than four (4) years before the filing of the action for infringement (1PC Sec. 73). 2. Criminal action for infringement Ifthe infringement fs repeated, the infringer shall be criminally liable tnd upon conviction, shall suffer imprisonment of ‘ot less than six (6) months but not more than three {3) years and/or a fine not less than P100,000.00 but ‘not more than P300,000.00. “The criminal action prescribes in three (3) years from the commission ofthe crime (IPC, Se. 84) 3. Administrative remedy ~ Where the amount of damages claimed is not less than P200,000.00. the patentee may choose to file an administrative action ‘Against the infringer with the Bureau of Legal Affairs (BLA). The BLA can issue injunctions, order direct infringer to pay patentee damages, but unlike regular courts, the BLA may not issue search and seizure warrants or warrants of arrest. 4. Destruction of Infringing material- The court may. in its discredon, order that the infringing goods, ‘materials and implements predominantly used inthe infringement be disposed of outside the channels of commerce of destroyed, without compensation (IPC, Sec 763) Persons who can file an acti (or infringement ‘The patentee or his successors-in-interest may file an action for infringement (Creser Precision Systems, nc. ¥.CAGR No. 118708, Feb 2, 1998) A licensee cannot be considered a successor: interest. GR: A licensee may NOT maintain a suit for infringement. Only the patentees, his heirs, assignee, grantee or personal representatives may bring an action for infringement. XPN: If the licensing agreement provides that the licensee may bring an action for infringement or if he ‘was authorized to do so by the patentee through 2 special power of attorney. 331 Univensirver Sanvo Tomes GE) teenrear tun one a2 Any foreign nations whether oF not it is ic Dristnest in is licensed to do iness inthe Philippines (19 Sec 77), Lemna ACHON FOR NSN INN] Detensesin actin fr nthingement Layette, = 2 Any ofthe rounds fr cancel pater: 27 That ced ase enon e204 orparmic ‘That the patent does not disclose the invention inane sted anacanplafo tobe carried gut by any person silledin the art: & © That the patent is contrary to public order of morality (700. Sec 61) 3 Prescription ‘The burden of proof to substantiate 2 charge of Infringement is with the plaintfl But where the plaintif introduces the patenc in evidence. and the same sin due form, there is created 2 prima facie presumption ofits ‘correctness and validity. The decision ofthe Director of Patent in granting the patent is presumed to be correct. ‘The burden of going forward with the evidence (burden of evidence) then shifts to the defendant to overcome by competent evidence this legal presumption (Maguan v. (A GR NaL-45101, November 2% 1986). Modes of obi ng license to exploit patent rights 1. Voluntary licensing (1PC Sec 85) and 2 Compulsory licensing (PC. Sec. 93). IMPORTANT NOTE: Licensing is EXCLUDED from the coverage of 2016 Bar Examinations. ‘The grant by the patent owner to a third person of the right to exploit a patented invention. Rights ofa licensor in voluntary licensing In the absence of any provision to the contrary in the technology transfer arrangement the grant af a license shall not prevent the licensor from granting further licenses to third person nor from exploiting the subject mater of he technology tanser aangenent hel (IPC, Sec. 89). = 2 Prohibited clauses 1 ‘Those which impose upon the licensee the obligation to acquire from a specific source capital goods, intermediate products, raw materials, and other technologies, or of permanently employing personnel indicated by the licensor; UNIVERSITY oF Santo TOMAS 2016 GoLoen Notes 332 MERCANTILE LAW Those pursuant to which the licensor reserves the right to fx the sale or resale prices of the products manufactured on the bass ofthe cense: 3. Those that contain restrictions regarding the volume and structure of production: 4. Those. that prohibit the use of competitive technologies in 2 non-exclusive technology transfer : Ee cana starrer on Team «RE ume t t eta ops Sinan at Toe ht = 1 ES ses mm of sw, er ct aera . Samaras sa Sr er pte Scopes eran to countries where exclusive licenses to manufacture sere an pee ieee 1 RRSP cw of ge cant Pe Te at OS Sens re eno Sea Se err alec so Recent ne ccs Sy ae acon si ome 1 RT a mca ct Drceser aneear aoe caret hcg oo so SET nr drm eed ee seas ae seo es ce oa Se Srers mtorr nope See ar meee yee —a va SET tte in one a cate c ocean ret Sai we ase sins oe ee 1 Rata cunts hy Ca a wey cue setpe mar hay altaya Seay et tae pease aes whe oe —-- Exception on prohibited clauses In exceptional or meritorious cases where substantial benefits will accrue to the economy, such as high technology content, increase in foreign exchange ‘earings, employment generation, regional dispersal of industries and/or substitution with or use of local raw materials, or in the case of Board of investments, registered companies with pioneer status, exemption from any of the above requirements may be allowed by the Documentation, Information and Technology Transfer Bureau after evaluation thereof on a case by case basis (PC Sec 91).INTELLECTUAL PROPERTY CODE Mandatory L ‘That the laws of the Philippines shall govern the interpretation of the same. and in the event of litigation, the venue shall be the proper court in the place where the licensee has its principal office Continued access to improvement in techniques and Drocesses related to the technology shall be made _allable during the period ofthe technology transfer arrangement In the event the technology transfer arrangement shall provide for arbitration the Procedure of ‘Acbitration of the Arbitration Law of the Philippines for the Arbitration Rules of the United Nations Commission on International Trade Law (UNCITRAL) or the Rules of Conciliation and Arbitration. of the International Chamber of Commerce (ICC) shall apply and the venue of arbitration shall be the Philippines or any neutral ‘country, and : The Philippine taxes on all payments relating tothe technology transfer arrangement shall be borne by the licensor (IPC. See 8}. Effect of non-conformance with the prohibited clauses and mandatory provisions GBR; Non-conformance shall automatically render the techaology transfer arrangement unenforceable. XPM: Unless said technology transfer arrangement is approved and. registered with the Documentation Information and Technology Transfer Buceau under the provisions of Section 91 on exceptional cases (IPC Sec: m2). Pes COMPULSORY LICENSING Jurisdiction 1, The Director of Legal Affairs may grant a license to exploit a patented invention, even without the agreement of the patent owner, in favor of any person who has shown his capability to exploit the Invention (1PC Sec $3) RA Na. 9502 (Universally Accessible Cheaper and Quality Medicines Act of 2008} however amended Sec. 93 so that itis the Director General ofthe IPO who may grant a license to exploit patented invention ‘under the grounds enumerated therein. NOTE: Clarification either by legislation or judicial interpretation as to who has jurisdiction should be re ‘0 avoid confusion (Salaa, 2012). ‘The Director General ofthe Intellectual Property Office may grant a license to exploit a patented invention, even ‘without che agreement ofthe patent owner. in favor of any person who has shown his capability to exploit the invention, under any ofthe following circumstances: 1. National emergency or other circumstances of extreme urgency: Where the public interest in particular, national security, nutrition, health or the development of 2 ther vital sectors of the national economy 25 determined by the appropriate agency of the Government so requires: oF Where a judicial of administrative body has determined thatthe manner of exploitation by the {nctoe of public non-commercial use ofthe patent thepatetee wathout ststoctory reason: Iteve patented invention isnot being worked nthe Prippines on a commercial sae though capable of being, worked, without satisfactory ces Provided thatthe importation ofthe patented ace Thal constate working or using the patent and ‘Where the demand for patented drugs and mediines toot being met tan adequate extent and 8 esuonabe terms as determined by the Secretary of the Deparment ofleaR (IPSec. 93,05 mended by RA 9502) Procedure on Issuance of » Special Compulsory License under the TRIPS Agreement ‘The Director General of the Intellectial Property Office upon the written recommendation ofthe Secretary ofthe Department of Health shall upon filing ofa petition. grant 12 special compulsory license for the importation of patented drugs and medicines. The special compulsory license for the importation contemplated under this provision shall be an additional special alternative Procedure to ensure access to quality affordable medicines and shall be primarily for domestic consumption: Provided, that adequate remuneration shall bbe paid to the patent owner either by the exporting oF importing country. The compulsory license shall also ‘contain a provision directing the grantee the license to exercise reasonable measures to prevent the re- exportation of the products imported under this provision. ‘The grant of a special compulsory license shall be immediately executory. No court. except the Supreme Court of the Philippines, shall issue any temporary restraining order or preliminary injunction or such other provisional Femedies that will prevent the grant of the special «compulsory license. ‘A compulsory license shall also be available for the ‘manufacture and export of drugs and medicines to any country having insufficient or no manufacturing capacity im the pharmaceutical sector to address public health problems: Provided. That. a compulsory license has been granted by such country or such country has, by Aotification or otherwise, allowed importation into its jurisdiction ofthe patented drugs and medicines from the Philippines in compliance with the TRIPS Agreement. The righ to grant a pecal compulsory cen under this section shall not limit or prejudice the rights. obligations and flexibilities provided under the TRIPS Agreement and under Philippine laws, particularly Section 72.1 and Section 74 ofthe Intellectual Property Code, as amended under this Act. Ii also without prejudice to the extent to v un SiTY OF SANTO TOMAS Facutry of Civit Law 333Denes a Seana DELe Daas heres — ee ee ee eee ee he eee oe et ee ee a = eee ee ee ee SS See (meee Sass sew ee ee eg ee ee ee See Se ee fe ee ee ee ge ae ee ee Ee Se a ey eS ee Pe PRG I Sc Ee (Sy weer we eres neem et ee ter pees eee 2 eee geet ee Seer get eee ey eee Pome eer Tat De ae me eR we cdheme et ne icmer « seeen Ter cectForm of Assignment ‘The assignment must be r im writing. acknowledged before S.RRTMY Public or other officer authorized to administer Gath or Perform notarial acts, and certified under the and official seal of the notary or such other officer Manner of effecting transfer of rights 1. By inheritance or bequest 2 License contract Effect of an assignment of a patent ‘The assignment works as an estoppel by deed, preventing, the assignor from denying the novelty and utility of the patented invention when sued by the assignee for infringement. Effect if the assignment was not recorded in the IPO ‘A deed of assignment affecting title shall be void as against purchaser or mortgagee for valuable consideration and without notice unless, it is so recorded out recording, the imortgage. However, even without rec instruments are binding upon the parties. Rdveteni: tract cesignate, the : ree, Poem Octon nel TENN Tene Tory oF he in| 2) fe OSSure tre public? ir ore ae et Oe ut re {a view of the obligations under the Part Convennon. the > FWY OrhEre, | Philippines is obligated” tovasture ‘nations Gtitie 2°) To Pre ink proud ae ee ‘Pritippine nationals “Thus under — he ee FF. fname of a national ofa Stte that isa party tothe Paris OT IMFENOT 5 cage,” —— ae a trademark, is, e orice, FS his peduc ‘or registration. Thus, the od bang i ‘eutzied to registration ifthe trademark has bese’ poe’ ele De Covine ante ne fenoed ‘Cointreau & Cie and Le Condron Bleu Int! B.V. GR 185830, une 5, 2013, in Divina, 2014). RAAT Kshs Ina) mark os) righ regater a tedemach she oi OS OSE TEAC wnte te apptean ot the ower af oe FEVER mode Trademark being applied for, he has no right to apply for oT (au 9 the registration of the same. Under the Trademark Law. © [rts nas been validly assigned to him (oper Me pencil Encerprses, Inc. v. Kunnan Enterprises ‘No. 169974, April 20, 2010). FeMERCANTILE LAW ro le rir in Xt ow eo seeps Tegistered mark. The ceriste of merely prima facie roo’ that the bison isthe omer af he rgtered mark or tae = ‘continuous use of the mark reps may vry el ena ‘ormertobededared owner man appropriate case. @ Birkenstock, applied for various trademark Fepistrations before the IPO. However, registration plications were Accordingly, the cancellation case was dismissed for ‘being moet and academic. ‘The aforesaid cancellation payed the way for the Publication of the subject applications In the IPO e- Gazette, In response, respondent filed three (3) ‘separate Inter Partes Cases. The BLA.IPO sustained STIIC/PSEMC's “opposition. {PO Director General reversed and set aride the ruling of the BLA. The CA reversed and set aside the ruling of the IPO Director General and reinstated that’ of the BLA. Di Birkenstock acquire ownership over the said marks by mere application or registration? ‘wademark that vests ownership thereat, but itis the: ‘ownership of 2 trademark that confers the right to register the same. A trademark isan industrial property over which its owner is entitied to property rights which cannot be appropriated ‘one way or another, happen to register such ahead of its true and lawful owner. The presumption of ‘ownership accorded to a registrant must ten necessarily ‘yield t superior evidence of actual and real ownership of a trademark (Birkenstock Orthopaedie GMBH and Co.KG v. Philippine Shoe Expo Marketing Corporation GR No. 194307, November 20,2013, in Divina, 2014). % ‘A: GoDié is not the application or registration of 2 Q: EY. Industrial isa domestic corporation engaged in the production, distribution and sale of air compressors and other industrial tools and equipment. Shen Dar is a Taiwan-based foreign Corporation engaged in the manufacture of air compressors. Both companies claimed to have the right to register the trademark "VESPA" for air compressors. On June 9, 1997, Shen Dar filed Trademark Application with the IPO for the mark “VESPA, Chinese Characters and Device” for use on air compressors and welding machines. On July 28, 1999, EVIS filed Trademark Application also for the mark “VESPA,” for use on air compressors. _ presumptive ownership of the registrant and be held “the owner of the mark Registration, without more, does ‘On June 21, 2004, Shen Dar fled a Petites (Cancellation of EVIS COR Shen Dar arly argued Intellectual Property Code (1P Code), having Mist fled ‘an application forthe mark. ‘Who Is the true owner of the mark? ¥. Industrial isthe trve owner ofthe mark Under the Intellectual Property Code, ea eee prevented with the filing of an earlier application | for ‘Fegatration, This musty however, be ited 10 imean that ownership should be based upon an earlier fing de. Nob, he Cour hasruled ta the prior and 3k ‘ot confer upon the registrant an absolute right.10 the ‘epistered mark The cerufcate of registration i merely a prima facie proof tht the registrant isthe owner ofthe ‘egistered mark or rade mame. Evidence of prior and ‘continous use ofthe mark or trade name by another can ‘overcome the presumptive ownership ofthe registrant nd may very wellentite the former tobe declared owner nan appropriate case. mereradecemeninromsidases The wie by EY. Industral inthe concept of owner is shown by commercial documents, sales invoices unambiguously . UniveRsiTy oF Santo Tomas 2016 Govoew Notes 10" s writen with a bigger font than the “90 We, ‘deed, the "D0" be the dominant fate athe Imark The "0-10" beg at the Benning of the marc ‘what bs most remembered of Ahoogh # appears la Berne cerefcate of registration nthe same foe size at {he “80 WP.” is domunancy inthe "D-10 80 WP” mark ands since the ference inthe form doesnot es ‘itnctive character. ‘pling the Dominancy Test. cannot be gains that ‘Abyadang's"¥S 0-10 PLUS is sir to Bers "0-10 80 WP. that confusion or mistake Is more likely @ occ "Undeniably. both marks pertain tothe sams ype of foods ~Tangicide with 80% Mancezeh as an active ingredient and used fr the same group offi, crops egeables, tnd ormamental plans, using the tame dosage and ‘manner of application. They aso belong tothe same Clasication of goods under RA. No. 6293. Both tepictions of “0-10 as found in both marks, are silat inSizg, such that eis portion what catches the eye of the purchaser. Undeniably, the Uelihood of contusion ts reset (Berrs Agricultural Co. Inc. w. Nor Abyodang. ER Ne, 183404, October 13,2010) 2 Nesle's “NAN” ve SM Enterprise “NANNY” he ominncy ‘lets ar np a's ta the prea estar af Nesebar fn powdered tat peda is rin nol deed a predce The ne cossef PRE-NAN, NANA AN [sed hancs esr, MANO conte he praen featur RAM The ee ees of MANY ay ‘Sesmmearte loner ofMAN Whcsatond RANTS emroncnd enol ee © coteagy eal Kaan wahave hese cst deere Properics snd pil stots Both ae acid “ner Cas 6 bth aes prada aed tthe powder form An, NaN 00 NAM 3 played oe St Seton of es thet sete ey Dt Pot Nerve Dy) €R ha 17227 hag 210) 2. Sketeher’s “5* rubber shoes ve Inter Pacific Industrial Trading Corp.'s (PITC) “Strong” rubber shoes of the {infringes on the mark already registered by Sketcher with ‘theIPD. While itis undisputed that Sketcher's stylized "S" iswithn an oval design, othe Court's mind, the feaore ot the werk i Pr eae wich ct ote orca, hu, evn PTC en Seer fh osed the sme spied the same being the dominant feature of Sketcher's trademark, already constitutes infringement under the Dominancy Text PITC di not simply use the letter “S” but it appears that, ‘based onthe font and the site of the lettering the stylized “*S" utlized by PITC isthe very same stylized "S" used by ‘Sketcher; a stylized"S" which is unique and distinguishes ‘Sketcher's trademark. Indubitably, the likelihood: of «confusion is present as purchasers will asociate the neabeanee eensof acta treie Uaim cf bill ack op ACTA AL i t foiture, fo present POP Confusion does nor negoke Wooemark infiagtmenr= INTELLECTUAL PROPERTY CODE se 2. ies ee, = pues see. 22 I onde (1icrusetnsninds shinee ruadby | bain ofthe“ a? mar or a mbar YESS, SEMOY SY Ssther er that PTCY prodec ie connecied wih | Sandwiches which was eppased by McDonald's Of Uke) rede, F i Serchers buns eortysion [ort sO dual Appin sn ominny nL ign rgrsuse al insjc poor OF OC 4 Socete Des Produits Neste's “MASTER Roast | the "Big Mak” mark reais in Ukebod of confusion. gre We, fand “MASTER BLEND” va. CFC Corp's “FLAVOR NasreR” (CEC Corporation led an application for the registration of the trademark "FLAVOR MASTER’ for insant coffe. Societe Des Produits Nese filed an unverified Notice of ‘Opporition, claiming thatthe trademark of CFC Corp's product is “confusingly similar to ts trademarks for Coffe and coffee extracts, to wit MASTER ROAST and MASTER BLEND” Westie claimed that the uses any, by CRC of the trademark FLAVOR MASTER and fs Fegistration would likely cause confusion in the rade: oF deceive purchasers and would falsely suggest to the ‘parchasing public a connection in the business of Neste, |sthe dominant word present nthe cree (3) trademarks Is "MASTER or thatthe goods of CFC might be mistakes shaving originated frm the ater, 1 the ordinary purchaser is “undisceringly rash” fa buying. such "common and. inexpensive, household products as instant coffe, aud would therefore be "ess Inclined to cosely examine specific detail of similarities and dissimilarities" between the two competing products, ‘hem it would be less kel forthe rdinary purchaser to notice that CFCs trademark FLAVOR MASTER carries the colors orange and mocha while that of NesUe's uses red ‘and brown. The application ofthe totaly or halite tes {s improper since the ordinary purchaser would not be inclined to notice the specific features. similarities o¢ Aissimlarves, considering that the product is. an Inexpensive and comamon household item ence, in applying the dominancy test. is slfcently ‘established that the word MASTER is the dominant feature of opposer's mark The word MASTER ix printed across the middle portion ofthe label in beld letters Bimast twice the sie ofthe printed word ROAST. Further, ‘Aucally eewo marks are the same, withthe ist word of both marks phonetically the same and the second word of both marks ala phonetically the tame. Visually the thee marks have both two words and sx eter, with the Seat word of both marks having the same letters and the Second word. having the same first two leters (McDonald's Corp ¥. LC Big Mak Barger, Inc. CR NO. 143993 August 18, 2004) 6 UFC Philippines (aow merged with Nutri-Asia) “PAPA” vs" Barto Fiesta Manutactucing's “PAPA pov Denice Barrio Fiest Manufacturing Corporation filed aplication foc the mark PAPA BOY k DEVICE" for goods under Claes 30, specfialy for lechon sauce. Mutr-Asla opposed the application. contending that “Papa Boy & Device” is Confusingly simular with is "Papa marks, considering that its ketchup product and Barro Fiesta’ lechon sauce product are related articles that fll under the samme Clase 5, Applying the dominancy tet it is found thatthe word “Papa” is the dominant feature of UFC's mark “Papa Ketsarap” Contrary to Barrio Flesta's contention. “etsarap" canna be the dominant feature ofthe mark as itis merely descriptive ofthe product Furthermore. tis the “Papa” mark that has been in commercial use for decades and has established awareness and. goodwill among consumers Also. the word “Papa” isthe dominant fearure of Barrio Fiesa's “Papa Boy & Device” mark subject of the application, such thatthe word “Papa is ‘written on top of and belore the other words such that ‘5 the first word/figure that catches the eyes. The part of Barrio Fiesta's mark which appears prominently to the the word MASTER has always ecll not the: ewer ban ive emits i th smiling hog in the ogo, ‘ade in promoting the product This canbe gleaned from Since UFC's product a ‘the fact that Robert Jaworski and Atty, Rie Puno J the found onthe same he Personahites engaged to promote the product are given {he tides Matter ofthe Game and Master ofthe Talk Show, respectively. In due time, Schemes the mind of the buying pubic ‘w associate the word MASTER with the (Societe Des Produits Nestle, 5A and Nestle Pils» CA GR No 112012, April 4, 2001). 5. MeDonald's Corp's “BIG MAC” vs. LC. Big Mak ‘Burger, c's “BIG MAK™ McDonald's owns the “Big Mac” mark for its “double: decker hamburger sandwich. Based on this Home Registration, McDonald's applied forthe registration of the same mark in the PBFTT (now IPO). PAPTT allowed registration of the “Big Mac. On the other hand, LC Big Mak Burger. Inc isa demestic corporation which operates fastfood outlets and snack vars in Metro Manila and nearby provinces. It applied with the PBPTT for the 341 publi ine bon ep yan sauce Is now part of the “Papa” sauces (UFC Philippines ve Barrio Pesta Monufacturing, GR No 19888 Jomvary 20,2016). & On October 21, 2006, Dermaline, in. fled before the Intellectual Property Office (IPO) am application for registration of the trademark DERMALINE INC On May 8, 2007, Myra Pharmaceuticals, Inc. filed a Verified Oppositio alleging thatthe trademark sought to be registered! Dermaline so resembles its trademark DERMALIN and will likely cause confusion, mistake and ‘deception to the purchasing public. Myra claimed that, despite Dermatine's attempt to diferentiate its applied mark. the dominant feature is the term DERMALINE, which is practically identical with its ‘own DERMALIN, more particularly that the est cight Univenstty oF Santo Tomas Pacuary ov Civit Law i j‘A: Ne. Dermatine’s insistence that fs applied trademark DERMALINE DERMALINE. INC. had differences too by the rest of the letters in lower case, and the portion DERMALINE. INC. is written in upper case leters. below ‘and smaller than the long-tand portion: while Myra's mark DERMALIN is written in an upright font, with a connected to or associated with Myra such that, ‘topical applications for the skin to health and beauty services (Dermoline, Inc v. Myra Pharmaceuticals, Inc, GR No. 190065, August 16 2010). OC *< to which they are attache The discerning eye of the bverver must focus nat only oe the predommant wordt brut also on the other features appearing in both labels ta ‘order that he may draw his conchusion whether one i ‘confusingly similar to the other (Bristol Myers Cat Director of Patents, 17 SCRA 131; See alse Fret of the Loom ne 04 CAG No. 32747, November 29, 1904) ‘The dominancy test only relies on visual comparisons between two trademarks whereas the between the two trademarks (Societe Des Produits Nest, SAWCAGR No. 112012, Apr. 4 2001) Instances when Holistic testis applied. 1, Emerald Garment’s “STYLISTIC MR LEE” wx 1.0. Lee's LE" HD. Lee Co. inc, a foreign corporation, fled » petition to ‘cancel the registration OF the trademark “STYLISTIC MR LEE" issued in the mame of Emerald Garment Manufacturing Corp. HD. Lee asserts that Emerald's \vademark tends to mislead and confuse the public and ‘thus constitutes aa infringement of ts own mark, since the dominaet feature therein is the word “LEE” Emerald ‘contends that its trademark “STYLISTIC MR. LEE" is entirely different from aad not confusingly similar to HD. (Lee's “LEE” trademark, The in question similarity. Applying the foregoing, Emerald's “STYLISTIC MR. LEE” ts not confusingly similar to MLD, Lee's “LEE trademark, Emeral's trademark is the whole “STYUSTIC MR. LEE” Although omits label the word, "LEE" is prominent. the trademark should be considered as a ‘whole and wot piecemeal The issimlarises between the two marks become conspicuous in view of the folowing varlables. Fist the products involved tn the case at bar are. im the main, various kinds of jeans. These are not your ‘ordinary household items like catsup, soysauce of 039 ‘which are of minimal cost Maong pasts or jeans are not {neapensive. Accordingly the casual buyer is predispased. tw be more cautious and discriminating in and would prefer to mull over bis purchase. Confusion: and deception, then, is less likely. Second. lke his beer, the average Filipino consumer generally buys his jeans by ‘brand. He does not ask the sales clerk for generic jeans but for, say. Levis, Guess, Wrangler or even an Armani: He is therefore, more or less knowledgeable and familiar with his preference and will not easly be distracted. Finally. ‘more credit should be given to the ordinary purchaser who is nat the “completely uawary consumer” but is the “ordinarily inteligent buyer" considering the type of 342*, x Product involved (Emerald Garment v.CA, GR No. 100098, December 29, 1995) 2. Mighty Corp's "GALLO" for cigarettes vz. E. & "GALLO" for wines Mighty Corporation is engaged in the cultivation ‘manufacture, distribution and sale of tobacco products for which they have been using the GALLO trademark for their cigaretes. E Gallo sued Mighty Corporation for ‘trademark infringement and unfair competition, when ‘one oftheir employees saw the Gallo cigarettes dispiayed together with Gallo wines in a supermarket. Applying the holistic test wines and cigarettes are not "lente or competing products nether do they belong the same class of goods. Product cannot serve as the decisive factor to determine if wines and cigarettes are related goods. Emphasis should be on {he similarity of the products involved and not on the arbitrary dassification or general description of their properties or characterises, The mere fact that one person has adopted and used = parcalar trademark or Is goods does not prevent the adoption and use ofthe ‘ame trademark by others on ares of + diferent description defendant (Mighty Corp v. E.& J Gallo Winery, GR. to. 154342, July 14, 2004). 3. Philip Morris’ “MARK VII" and “MARK TEN” vs. Fortune Tobacco's “MARKC for both cigarettes Philip Morris, Inc. is the the registered owner of the trademark “MARK Vil" for cigarettes. Two of its subsidiaries are the registered owner of the trademarks, “MARK TEN" and "LARK", On the other hand, Fortune Tobacco manufactures and sells cigarettes using the trademark “MARK Philip Mortis filed a Complaint for Infringement of Trademark and Damages against Fortune arguing thatthe laters use ofthe trademark “MARK is likely to cause confusion or would deceive purchasers and the publicin general into buying these products under the impression and mistaken belief that they are buying Phitip's products. The btn ee cme cmaernn ett i packaping n determining confsing similar. In and igheot the pecalarty of ts ese there no hikelnood dissimilarities are significant enough to warn any ‘that one is different from the other. Indeed, ithough the perceived offending word "MARK" is itself prominent in Philip's trademarks “MARK VII" and “MARK TEN, the entire marking system should be considered as. a whole and not dissected, because a discerning eye ‘would focus not only on the predominant word but also tn the other features appearing in the labels. Only then ‘would such discerning observer draw his conclusion ‘whether one mark would be confusingly similar to the other and whether or not sufficient differences existed INTELLECTUAL PROPERTY CODE between the marks (Philp Morris v Furtune Tobacco, Inc: GR No. 158589, June 27, 2006). Q:N Corporation manufactures rubber shoes under the trademark “Jordana” which hit the Philippine market in 1985, and registered its trademark with the Bureau of Patents, Trademarks and Technology in 1990. PK Company also manufactures rubber shoes with the trademark “Javorstc” which It registered ‘with BPTTT in 1978. In 1992, PK Co adopted and copied the design of N Corporation's “Jordana” rubber shoes, both as to shape and color, but retained the in general appearance, not {Converse Rubber Co. v Jacinto Rubber & Plastics Co. GR Nos. 27425, 30505, April 28,1980). {quality They may also be related because they serve the same purpose or are sold in grocery stores (Esso Standard Eastern, Inc. vz. The Honorable Court of Appeals: Canon ‘Kabushiki Kaisha v. Court of Appeals, GR. No. 120900, July 154342, July 14,2004), University oF SanTo TOMAS Facutry of Civie Law 343oh eter fc sed at hy oa lon-competiog rods being ental nected cold hat Fermecthsemmed whe commen re inte stisegut ofthe use ofsimilar mane nthe Westen ‘Non-related goods, Weicouldymot (Esso Standard Eastern, ‘Inc v. The Honorable Court of Appeals, GR. No. 1-29971, lugust 31,1982). tn ect the requirement im qunton and eopanded ts scope to mca Sch seo the mar a corale imation that key Co esa In cenfon on he sture or ogo sch gas or src oy of Such bane” Tus we re canon fos ‘hen the produces ae compete. teow when the produc at nw-cmpting bt raed ‘enough to produce confusion of afliation. Modern law recognizes that the ‘owner ofa trademarks ented wnot timed tie roods or business from atu! market competion sith denial oc sma producs of Me partes, but Chends to aM tases which the We Trademark or traéename i hey to lead ¥ eonison of source. ar where prospective 2 frrchasers would be misled into thang tha te complaining party has extended his business into the field Connected with the-acunues of the taf “forestalls the normal potential 2 ‘expansion’ RE"busiaess (Mcdonal's Corporation v.L & Big Mak Burger, nc August 18 2004). trademark of petitioner is used in the sale of leather wallets, key cases, money folds made of leather, bets. men's briefs, neckties, handkerchiefs and men’s socks, and the trademark of registrant-appellant is used in the ‘sale of shoes, which have different channels of trade the Director of Patents ought to have reached a different conclusion (Hickok Manufacturing Co, v. CA GR No. L: 44707, August 31, 1982). See = ae. Thus, a generic figure as, that of a shark if employed and designed in a distinctive ‘manner, can be a registrable trademark device, subject to the provisions of the IP Code (Great White Sherk —MERCANTILELAW CC -—_——<<<_ Enterprises, In. v Danilo M Ceralde, Jr, CR No. 192204 November 21.2012) ‘Two names are said tobe “idem sonontes” the attentive ‘Pronounced (Martin State, 541 SW. 24605). of “the same’ descriptive properties (Marvex Commercial v. Director of Potent GR Na 1-19297, December 22,1966) EE ‘Such a clase or ingenious imitation as tobe calculated to “deceive ordinary persons, or such a resemblance to the ‘original as to deceive an ordinary purchaser giving sach tention a5 him to urehase (ociete des Produits Nestle SA %.CA. GR No. 112012, April 4, 2001) Doctrine of Secondary Meaning ‘one producer with reference to his. product (Ang vs. Teodore, G R No. 48226, December 14, 1942), Instances when there Is no confusing similarity between the trademarks 1, Great White Shark’s “GREG NORMAN SHARK LOGO ‘v2 Caralde's “SHARK & LOGO” While both marks use the shape of a shark, the Court noteddistinct visual and aural differences between them. iv Great White Shark's “GREG NORMAN LOGO: there is an tlie ofa shark formed withthe use of green, yellow. blue and red lines/strokes. In contrast. the shark in CCarade's “SHARK & LOGO” mark is illustrated in letters ‘utlined in the form ofa shark with the letter “S" forming ‘thehead,theleter “forming the fins, the letters A" and “R-forming the body and the leter“K" forming the tal In addition, the latter mark inchudes several mare elements suchas the word "SHARK" in a different font underneath the shark outline, layers of waves, and a tree onthe right side, and liberally used the color bive with some parts io eh frags ae neice ee ‘i jesbetween thetwo(2) marks arkevident and significant, the possibilty or confusion in the minds of the ordinary purchaser, especially considering the aural diflerence betwees the marks (Great White Enterprises v. Caralde, GR No. 192294, ‘November 21, 2012) University of Savto Tomas 2016 Go.oen Nores 2 “LEVIS vs. Diaz's “LS JEANS” 344INTELLECTUAL PROPERTY CODE ‘The jeans trademarks of Levi's Philippines and Diaz must be considered as a whole in determining the likelihood of confusion between them. The consuming public could tasily discern if the jeans were orginal or fake or were ‘manufactured by other brands of jeans. Confusion and deception werefematebince maong leans are expgnsive fad the casual buyer is predisposed tol a and discriminating fer wo mill ov" is purchase Rite iat used the "TALORING® forthe jeans he produced and sold is rademark was sully and Suraltyiferen from the Meee ND nts ‘origi! jeans Diz ls apy note that the design used Uy LEVI was anlage foro horses bute evidence wil Sow tat there wa 6 such deagn nthe Sctd jena instead, whot ts shewa-Wuflalg_desiga Moreover based on the certieatelasued byt nce Property CS TEANS Office, “LS JEANS TAILORING” was registered trademark of Diaz He had his trademark prigeto the fling fof the present cales The Intellectual Property Office ‘would certainly not have allowed the registration had Diaz's trademark been confusingly similar with the registered trademark for LEVIS 501 jeans (Diaz vs People ofthe Philippines and Levi Strauss (Phi), GR NO. 180677, February 18,2013, in Divina, 2014). ‘Such use begins after the mark has become famous and ‘causes dilution ofthe distinctive quality of the mark (Levi Strauss & Co, vs Clinton Appareil, Inc. .R No. 138900, ‘September 20, 2005). (Sehwont Incorporated vs. In-N-Out Burger, ia 171082, ‘October 15,2007) ‘A junior user of a well-known mark on goods or services, aces 200%) The maneTrwerseowerTenatonany and the Ears FRAP OVUM (246 Corporation. doing business under the name ond soyle of Rolex Music Lounge v. Hon Reynaldo B. Dawe, in is capacity Presihing Judge of BTC Branch 99, Quezon City. GR 57216 November 20, 2003) ‘The following constitutes internationally well-known mark 345 UNIVERSITY OF SANTO TOMAS Facutry of Civit LawM ERCANTILE LAW ) ——— eo es So eercemeqererusmreree == Seka, l © SSoreereerreeren im (© caemecorsecesserprorenrorormerienrinshe (Gi) catesiremerenagusansstestionwithethenisuese! _MeHEF te HaPIa well-known markrand al Provided further, that the mark is well-known both andi the Philippines (Sec. 2, Rule 1, AM. ‘No, 10-3-10-5C, October 18 2021) In Fredco Manufacturing Corporation vs. President and Fellows of Harvard College, GR No. 185917, june 1, 2011, Fredco Manufacturing Corporation (Fredo) filed before the IPO a Petition for Cancellation of Registration issued to Harvard University for the mark “Harvard Veritas Shield Symbol. Fredco claims that as early as 1982 the mark was afready) used in the Philippines by its predecessor-invinterest Harvard University, on the other hand, claimed that the name and mark “Harvard” was adopted in 1639 as the name af Harvard College of Cambridge. Massachusetts, USA. The magk had been used. in commerce since 1872, and was registered in more than 50 counyries. 12B.(e) of RA. No. 8293 now categorically states that “s ‘mark which is considered by the me raliplees to be ethno the Philippines, whether or not itis registered here,” cannot be registered by another in the Philippines. Diviston of application _Any-"applieation” Teen to” Several goods Gr-serviCed, hereafter referred ro as the “initial application,” may'be hereafter referred to as the “ "by in. The divisions application or the benefit athe right of prionity (Sec. 123, mn Priority right Philippines by axparson-tefernedtasinSectomootsh: |? SS ‘mark shall be granted until such mark has been registered inthe country of origin ofthe applicant (Sec. 131, IPC). tome trace commas parte eto eh ‘mark was registered inthe Philippines: except inthe ase of an owner of well-known mark UniveRstty oF SANTO TOMAS 2016 GoLoen Notes 346 Es registered at the Office Somte. Tas provstor sal see he applica’ transactions recorded in respect of any registered mark. (PC, Sec. 138). Duration of a certificate of trademark registrationws A certificate of registration ‘(HOP years, provided that shall remain in force for'ten the registrant shall fle a ‘within one (1) year from the ith anniversary ofthe date tithe cegistration ofthe mark Otherwise; the markshall (PC Sec. 145) por Recaps othe emne shan(igh dectaration of rrr ene abaliaameres ‘The applicant or the regitrant shalf ils declaration of se (DAUD f the mark ith bvideace to that fee. ith years from the filing date of the SPlenion cnc pptenton ch ceed the mark shall be removed from the Register by the Director (IPC Sec. 1242) *« This is done by registration. The ‘That said drugs and medicines: bear the Goibe (Sec. 147, PQ), INTELLECTUAL PROPERTY CODE * ace: et {or the goods or services, ora portion thereof, or which its registered; bf the mark has been abandoned; 6 Wits registration was obtained fraudulently or trary tothe provisions ofthe IPC “dete registered mark being used by, oF with the permission of, the registrant so as to misrepresent the source of the goods or services ‘on or in connection with which the mark is used: 8 Non-use of the mark within the Philippines, without legitimate reason, for an uninterrupted period of 3 years. Note: (EY. Industral Sales, Inc v. Shen Dar ‘Electricity and Machinery Ca Ltd. GR. No. 184850, October 20,2010). ‘oridentityof such business (Esso Standard Eastern v. CA, supra). ees a pee ee A7 University of Santo TomasPrecedents must be studied Inthe light of each case (Mighty Co n the light of each particular 154342, Tay Joona YE Gallo Winery. GR Na confusion is the best evidence of ‘isinconsequential (McDonalds Corporation v. LC Big Mak Burger, Inc, G.R No. 143993, August 18, 2004). iness; and f (Prosource International, Inc. vs. Horphag Research Management ‘SA GR No. 180073, November 25,2009; Diaz v. People of the Philippines and Levi-Strauss (Phil). G. R No 180677, February 18.2013). ONY OTT uidePethienTawe-of-the | No. 100098, December 29, such @ trademark, and | weisaataestascahsnans [etter qin country of importation il MERCANTILE LAW distribution or advertising of goods oF services which is likely to cause confusion, mistake or deception among the bbayers or consumers can be infringement (Republic Gas Corporation v. Petron Corporation, G.R No. 194062, June 17, 2013) ‘The trademark “Marlboro” is not only valid for Sing ‘neither generic nor descriptive, it was also exclusively owned by PMPL, as evidenced by the certificate of fegistraion issued by the Intellectual Property Office. Tniringement of trademark clearly lies since the Counterfeit cigarettes were intended to, confuse and Geceive the public as to the origin of the cigar intended to be sold, as they not only bore PMPI's trademark but they were packaged almost exactly 25 PMPI's products (Ong v. People of the Philippines, GR No. 169440, November 23,2011) REMEDIES el (5 sete ERE RECS, iv petentey tenon icky infringer from causing damage to his business. Fur the provi is presumed if a letter R within a circle is appended) and stop him ‘permanently from using the mark, orm the @ “court to issue 2 © The reasomabtenprefc which the complaining party ‘would have made, had the defendant not infringed his said rights; or ‘may/awardasrdammages”# reasonable (gereentage based upon the amount of gross sales of the defendant or the value of the services in connection with which the mark or trade name was issued.INTELLECTUAL PROPERTY CODE In cases where actual inteat to mislead the public or to defraud the complainant is shown, inthe discretion of the ‘court. the damages may be doubled (IPC, Sec. 156.3) avatcton over vlos of intact propery ‘ets property lodged with thé Regional Trial Court even ‘f-the penalty therefore is imprisonment of less than six Pon000 P7000. “ RA.No. 8293 and RA. No. 166 are special laws conferring jurisdiction over violations of intellectual property rights to the Regional Trial Court. They should therefore prevail ‘over RA. No. 7691, which is a general law (Samson v. away, G.R No. 1600S4-SS, July 21, 2004). @: K-9 Corporation, a foreign corporation alleging itself to be the registered owner of trademark "K-9" and logo “KC, fled an Inter Partes case with the Intellectual "Property Office against Kanin Corporation for the cancellation of the latter's mark “K-9" and logo “K." During the pendency of the case before the IPO, Kania Corporation brought suit against K-9 Corporation before the RTC for infringement and damages. Could the action before the RTC prosper? Why? (2003 Bar) ‘A: Yes. the action before the RTC can prosper. According to Section 151.2 ofthe IPO, the fling of a suit to enforce the registered mark with the proper court or agency shall exclude any other court or agency from assuming Jurisdiction over a subsequently filed petition to cancel the same mark. On the other hand, the of petition to cancel the mark with Affairs shall not constitute a prejudicial question that ‘must be resolved before an action to enforce the rights to ‘same registered mark may be ‘The issues raised before the different the IPO and the RTC are different. The issue raised before the IPO is whether or not the cancellation of the subsequent trademark is proper because of the prior ownership of the disputed mark by K-9, While the issue raised before the RTC pertains to infringement. Furthermore, (Shangri-la International Hotel Management, Led, v. Makati Shangri-la Hotel and Resort Inc, GR No. 111580. June 21, 2001). ‘AM. 02-1-06-SC (The Rule on Search and Seizure in Civil Acctions for Infringement of Intellectual Property Rights) ‘governs the issuance of a writ of search and seizure in a vil action for infringement fled by an intellectual Dropery ight owner aganethe spose inner oft wrademark or name ade, is ue However, Philip Morris, the manufacturer of Marlboro CGgarettes did not go by this route. Philip Morris did not Sie a civil action for infringement ofits trademark against the Del Rosarios before the RTC of Angeles City. Instead, Philip Morris sought assistance from the NBI for the apprehension and criminal prosecution of those reportedly appropriating its trademark and selling fake Marlboro cigarettes. In turn, the NBI instituted 2 police action that included applying for a search and seizure warrant under Sections 3, 4, 5 and 6 of Rule 126 of the Rules of Criminal Procedure (not under the provisions of ‘AM. 02-1-06-SC) against the Del Rosarios upon the belief that they were storing and selling fake Marlboro Cigarettes in violation of the penal provisions of the {intelectual property law. ‘The proceeding under Rule 126, limited criminal one does not provide for the filing of counterclaims fo: damages against those who may have improperly sought theissuance ofthe searchwarrant. Consequently, the Del Rosarios had the right to seek damages, if the circumstances warranted, by separate civil action for the wrong inflicted on them by an improperly obtained or enforced search warrant (Del Razari, etal v Doanto, Jr etal, GR No, 180595, March $, 2010, in Divina, 2014). Limitations onthe actions for infringement ® ® 9 upped bins 06 Se 1531) [ (IPC, See. 159.3) Empioying deception or any other means contrary to Tony aiming off) Petron Corporation, . R No. 194062, June 17, 2013) University oF Santo Tomas 349MERCANTILE LAW DOr: a nut na COMPETITION Corp. v. CA, GR No. 76325, January 23. 1990) XPN: Well-known marks & tn what way is an infringement of a trademark similar to that which pertains to unfair competition? (2003 Bar) A: The similarity lies in both their ability to disrupt fair competition amongst business enterprises and other ‘businesses. They can also create confusion, mistake. and deception as to the minds of the consumers with regard to the source or identity oftheir products or services due to its similarity in appearance or packaging. . Igneproteced under nficompetiion 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. ae oe which they are contained, or the devices or words vase 6 Ty NTC PRT > (UPC, Sec. 168.3) UnivERsity OF SANTO TOMAS 2016 GoLDEN Notes Trademark infringement is more limited but it recognizes 1a more exclusive right derived from the trademark, ‘adoption and registration by the person whose goods or business is first associated with it Hence, even fone fats to establish his exclusive property right to a trademark, hemay: = f another No, 154342, July 14, = en purct rs desing co uy the {goods ofthe latter would be induced to buy the goods of (Caterpillar, Inc. vs. Samson, G.R No. 1 2006) “WRut Tes nether the acts of the defendant have the of ar ceated deci the ordinary buyer making his purchases under the “ordinary conditions of the particular trade to which the xe Controversy relates. : (Superior Enterprises, Inc vs Kunnan Enterprises Ld. sup). "Enema Bementsofan ation fr unfair competiton The similarity may. or may not result from. ‘rary inthe marks but may rei from other enteral {actors in the packaging or presentation of the goods. The intent to deceive and defraud may be inferred from the similarity of the appearance of the goods as offered for \saleto the public (McDonalds Corporation vs. L.C Big Mak Burger, Inc, GR No, 143993, August 18, 2004). The element of passing off Fechner Q The NBI found that SG Feproduction and distribution of counterfeit “playstation games” and thus applied with the Manila RTC warrants to search respondent's premises in Cavite, RTC granted such warrants and thus, the NBI served the search warrants on the subject premises. ‘SG Inc. questioned the validity of the warrants due to wrong venue since the RTC of Manila had no ic. is engaged in the 350Jurisdiction to iamue a search warrant Cavite ethe contention af lnc correct ® ‘A: No, onfatr cornet W's WARLHOEY BF Citing offense, under Section 168 of Republic Act No. 8293. AS Such, petitioner may apply for @ search warrant in any court where any element of the alleged offense. was commutted, including any of the courte within Metro Manila. and. may. be. validly-enforced tn Cavite (Sony Computer Entertainment tne. v: Supergreen inc. GR No 161823, Mar. 22,2007). _p PINOTE: Section 2, Rule 10 ofthe Rules of Procedure on 1? oP Cases (AM. No. 10-3-10 SC, October 18, 2011) provides ‘hat Special Commercial Courts in Quezon City, Manila, Makati, and- Pasig” shall have authority to act on deceiving or are calculated to deceive the ordinary buyer making his purchases under the ordinary conditions of the particular trade to which the controversy relates” It “ss therefore essential tw prove the existence of fraud the ineot to deceive, actual or probable, determined (Shang Properties Realy Semesters (ang Popes hay Corporation (formerly The Shang Grand Tower Corporation) and Shang Properties. Inc. (formerly EDSA Properties Holdings, Inc) v. St Francs Development Corporation, GR. No. 190706, july 21. 2014). ‘distinction should be made between suit for tradentark Infringement and unfair competition: (a) the former isthe Unauthorized use ofa trademark, whereas the ater isthe passing off of one's goods 25 those of another: (b) Fraudulent intent is unnecessary in the former, while itis essential in the latter: and (c), in the former, prior ‘epistration of the trademark is a pre-requisite to the ‘ction. while itis not necessary inthe latter (Roberta Co v. Keng Hoan Jerry Yeung and Emma Yeung, GR No. 212705, September 10,2014). mesa Marae” Sie eens warrants -were-not-applied-based..thereon, but i” ! anticipation of criminal acbons for violation of intellectual per hs ude RA S23, was enables Set respondent ‘he NBI for assistance to conduct investigation and search warrant implementation fr possible of several ‘owners Pong mitadon or counterfeit TOP GEL .G.& DEVICE OF LEAF papaya whitening soap f ire. A core requisite before a warrant shail validly issue is the existence of 351 INTELLECTUAL PROPERTY CODE Bephabl cuse The pendency tama acion-or the very person who applied for search warrant doesnot bar the isuance of the warrant It is based on probable scause (Century Chinese Medicine Co. etal v. People ofthe Philippines and Ling Wo Lau GR No 188526, November 11, 2013.1m Dring 2014) ‘Any individual name or surname. firm name, device sot 2caupants (Converse Rubber Corp. vx Universal Rubber Products, GR Na 2742S, L-30505, april 28,1980) ea (27 Use name if he words gener (Lyceum of he PlippnrsCA GR Me 10197, March 1993) ©? Use ty sare inicting 3 grorapne ations (ang Heng Wigton Departnent Stare pa) <2 Geese cnr a Vee nnameiitistble te dcsve rae circesorte pubic ast the nar of the emp ened) Enteame 0c ser 1653) Subsequently use a trade name likely to mislead the ic sear py (I Se 1652) ex Copy ox slate the name of any Gomer product fo imparted proses) apy of snnlra 2 mark rgtre in accordance wih he poses oF (or inpored produce) Use manor de mane cleated to ince the pablo breve thatthe aie ie manuacrd on Se Plippnes ota ts manufactured toy foreign coun or lealiy ete than the Cov or Tocty where sinc manared NOTE:ttems 4,5 nd 6only applies to imported prods seany customhouse of the Philippines (/FC Sec 166) | ‘tame (1PC Sec. 1654). 166, Sec 40) ere am The application shall designate the mark as 2 collective mark: : ; (ccompanied by 8 copy of the agreement. if any. ‘governing the use of the collective mark (IPC. See 1672) University of Santo Tomas Facuury oF Civit Law‘steuceseomeemes (IPC Sec 167.3) The registration of #'€6liéctive mark &¢ SW Sppliction ‘therefore shall not be the subject ofa icense contract protected from the moment of creation (IPC Sec. 171.1). a t (Ching Kian Chuan v. CA, G.R. No. 130360, Aug. 15, 2001). (iggy, University oF Sa seo: Copyright, in the strict sense of the term, Is purely 2 stahitory right. Being a mere statutory grant, CHETIEMS ae lite to what the statute confers. tt may be obtained and enjoyed only with respect to the subjects and by the persons. and on terms and conditions spewed 19 the Statute. Accordingly, s€ can only caver the works fate “within the statutory enumeration oF descriptor ‘idea tel (Pear! & Dean (Phil} Incorporated vs. Shoemart, Incorporeted, CR. No. 148222, August 15. 2003: Joaquin Ir. vt Drilon, GR No. 108946, January 28, 1999; Ching v5 Salinas, GR. No. 161295, June 29, 2005). aro! ong! rermmiemsrrrcoic mee sal KS Sac kanr ae apres erTeIy STE ‘evasively imitating the work of another (Kian Chuan ¥ Hon. Court of Appeals, GR No. 130360, August 15, 2001: ‘Sambar ¥. Levi Strauss & Ca, GR No. 132604, March 6, 2002). Funconal components ef seul arcs, no mates bow artistically designed, have generally been deni copyright protection unless they are separable from the ‘useful article (Ching v. Salinas, GR No. 161295, June 29, 2005). Whe works of pple rt. organ itnlecn Sera and artistic ge eee copyrightable only cay woe coe Serene ca oe tecaaed Sraaly tn aoe capable of existing independently of the utilitarian aspects of the article (Ching v. Salinos, GR No. 161295, June 29, 2005), Works are (PC, Sec. 172.2). infringement of his rights. These conditions are merely ‘presrequisites to'aiaction fondamages. So, as long as the proscribed acts are shown to exist an action for infringement may be initiated (Columbia Pictures, Inc. v. CA. GR No, 110318, August 28, 1996).Period only makes the copyright owner Hable ta pay afife (Manly Sportswear Manufocturing Inc v. Dadodette Enterprises and/or Hermes Sports Center, GR Na. 165308, September 20, 2005). The copyrights distinct from the property inthe material ‘object subject. to it “Consequently, thes transfe; “Hicerising of the copyright (1PC, as amended by RA 10372, Sec. 181), © eerrnerantcanasew aris “A Books, pamphlets, articles and other writings “bh Lectures, sermons, addresses, dissertations prepared for Oral delivery, whether oF not ‘reduced in writing or other material form “© Levers Dramatic choreographic works Muncal compositions Works of Art “g Penedicals and Newspapers “Works relative to Geography, topography, arenstecture or science “Works of Applied art “Works ofa Scientific or technical character “Je Photographic works 1 Audiovisual works arid cinematographic works “Pictorial illustrations and advertisements INTELLECTUAL PROPERTY CODE ‘A: No. PRO'S copyright protection extended only to the technical drawings and not tothe light box itsell.The light box was not a literary or artistic piece which could be copyrighted under the copyright law. If SMI reprinted PD's technical drawings forsale to the public without License from PRD, then no doubt they would have been guilty of copyright infringement. Onlythe expression ofan idea ts protected by copyright. not the idea itself If what PRO sought was exclusivity over the lightboxes, it should hhave instead procured a patent over the light boxes itself (pt rd er Ma 68 6072 ‘Auguste 15,2003) Q; Juan Xavier wrote and published a story similar to an unpublished copyrighted story of Manoling ‘Santiago. It was, however, conclusively proven that Juan Xavier was not aware thatthe story of Manoling Santiago was protected by copyright. Manoling ~ Santiago sued Ivan Xavier for infringement of ‘copyright Is Juan Xavier liable? (1998 Bar) {A Yes. juan Xavier is lable for infringement of copyright. Iris nat necessary that Juan Xavier is aware that the story ‘of Manoling Santiago was protected by copyright. The ‘work of Manoling Santiago is protected from the time of, its ereation (Habana w. Robles, GR No. 131522. July 19, 1999). ‘oer erin safc art copyright protection if-the author, through hs skill and ‘effort has contributed a distinguishable variation from thesolder-works.in such a case, of course, only those parts which are new are protected by the new copyright. Hence, in such a case, there is no case of infringement. Jan Xavier is no less an “author” because others have Samper ronan preceded him. Other literary, scholarly, scenic and artistic Autor oie oun tine be aay ood j- cannot idenbty Resimtinniiones il Cone) ON Non-copyrightable works “4 Dramatizations, translations, adaptations, abridgements, arrangements, and other | alterations of literary or artistic works; -b. Collections of literary, scholarly, oF artistic works and compilations of data and other materials which are original by reason of the selection or coordination or arrangement of their contents (1PC, Sec. 173). Derivative works shall be protected as new works, provided 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, orto secure or ‘extend copyright in such original works (1PC, Sec. 173.2). @: PAD was granted a copyright on the technical drawings of light boxes as “advertising display units” SMI, however, manufactured similar or identical to the Hight box illustrated in the technical drawings copyrighted by P&D for leasing out to different advertisers. Was this an infringement of P&D's copyright over the technical drawings? idea, procedure, system method or operation, ‘concept principle, discovery or mere data as such "News ofthe day and other items of press information Any official text of a legislative, administrative or {egal nature, as well as any offical translation thereof @® Pleadings QBwPer'sions of courts and tribunals ~ this refers to ‘original decisions and not to annotated decisions. such as the SCRA or SCAD as these already fall under the cassification of derivative works, hence copyrightable rr ‘work of the government of the Philippines GR: cA to “ie in i 353 University or Santo Towss @ Facuury or civit Law GFprotection, for the copyright does not extend to facts contained in the compilation (Feist Publications, Inc. v. Rural Telephone Service Co, 499 US. 340). TY oF SANTO TOMAS Pm Work of Architecture - Copyright wo 5 work” of Toes cen ones oe et Spee etaay tree oe se ‘Provided. That the copyright ta any such work indhude the right to contol the CecoDSmUKEOR oF ie the same style as the original of » relates (IPC Sec. 186) clers te bterary and arse works ‘opening that resembles » window ‘scape for ese in cave of fire or emergency. 11s thus by nature fenctional and utilitarian serving a5 egress access daring emergency. Its not primarily an artistic creation but rather an object of utility designed to have aesthetic 195835, March 14, 2016). aa “The natural person whose name is indicated on a work in’ ‘the usual manner as the author shall in the absence of ‘proof to the contrary, presumed to be the author of the “work This is applicable even if the name is a pseudonym. where the pseudonym | author (1PC Sec. 219.1). The maker of said work (IPC, Sec 219.2). (2 setae 1 ree eryoaetarce orprevent thefoll: agacts: “a Reproduction of the work or substantial portion “b Cary-out derivative work (dramatization, translation, adaptation, ——_abridgement, arrangement or other transformation of the work) |G First distribution of the original and each copy of the work by sale or other forms of transfer of ‘ownership -d Rental right “Public display 354“Public performance <> Other communications tothe pubic. |) To require that the authorship of the works be attributed to him (attribution right) be To make any alterations of his work prior to, or {0 withhold it from publication fo preserve integrity of work, object to any distortion, mutilation or other modification which would be prejudicial to his honor or reputation; and ‘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 (IPC. Sec.193). © scream sce eer, provided the work is still in copyright (David Bainbridge, Intellectual Property, 3 Ed, p. 220 1995, also cited in Copyright Law of the Philippines by D. Funa). In every sale or lease of an original work of painting ‘or sculpture or of the original manuscript ofa writer ‘or composer, subsequent to the first disposition thereof by the author, the author or his heirs shal hhave an inalienable right to participate in the gross proceeds of the sale or lease to the extent of five percent (5%) (Sec. 200, PC). : ‘ughts which are not covered under a Droit de suite a Prints be Etchings vings SG) Works of applied art “e Similar works wherein the author primarily derives gain from the proceeds of reproductions (PC See. 201). Q ABC is the owner of certain musical among which are the songs entitled: “Dahil Sa lye’, “Sapagkat Ikaw Ay Akin,” "Sapagkat Kami Ay Tac Lamang” and “The Nearness Of You." Soda Fountain Restaurant hired a combo with professional singers to play and sing musical compositions to entertain and amuse customers. They performed the above- mentioned compositions without any license or permission from ABC to play or sing the same. ‘Accordingly, ABC demanded from Soda Fountain payment of the necessary license fee for the playing and singing of aforesaid compositions but the demand was ignored. ABC filed an infringement case against Soda Fountain, Does the playing and singing fof musical compositions inside an establishment constitute public performance for profit? ‘A: Yes. The patrons of the Soda Fountain pay only for the food and drinks and apparently not for listening to the music, but the music provided is for the purpose of entertaining and amusing the customers in order to make INTELLECTUAL PROPERTY CODE the establishment more attractive and desirable. For the playing and singing the musical compositions involved, the combo was paid as independent contractors by Soda Fountain. It is therefore obvious that the expenses entailed thereby are added to the overhead of the restaurant which are either eventually charged in the price of the food and drinks or to the overall total of Additional income produced by the bigger volume of business which the entertainment was programmed to attract. Consequently, it is beyond question that the playing and singing of the combo in defendant-appellee’s restaurant constituted performance for profit (FILSCAP » Tan, GR. No. L-36402, Mar. 16, 1987). setstchce However breach of Such contract (IPC, Sec. 195). a ‘These are personal rights independent from the economic rights. Being a personal right. itcamonly ber given tO" ‘natural persoal Hence, even if he has licensed or assigned his economic rights, he continues to enjoy the above- mentioned moral nghts (Amador, 2007). Oo author and IN PERPETUITY after his death While the ‘SFaareger nrc oreneumrenatt ‘which shall be filed with the National Library. In default fof 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 (IPC, Sec. 198) reasonable customary 5 e mediugs gam Eon Mea FE EHC PEBFEIUR (es lete destruction of work unconditionally ‘transferred by creators (IPC, Sec. 197) eee GR: peoee $0 pr University oF SANTO TOMAS Facutty of Civit Law 355 vAPN: Even in writing: waiveris not valid 1 Use the nate ofthe author tl fis reputation with respect, aioe {to any version/ adaptation of ‘Ns work which because of alterations. substantially ‘end injre iterary/artisti reputation a nthe 2. Use'name of author in a work that he didnot create Performers shall enjoy the following exclusive rights: bs regards their performances, the right of ‘authorizing the: ‘Broadcasting and other communication to the public oftheir performance; and 1b. Fixation oftheir unfixed performance. G2 The right of authorizing the direct or indirect reproduction oftheir performances fixed in sound Tecordings or audiovisual works or fixations in any manner o form: GF The right of authorizing the frst public distribution of the original and copies oftheir performance fixed in ‘sound recordings or audiovisual works or fixations through sale or rental of other forms of transfer of ownership tof authorizing the commercial rental to the fof the original and copies of their performances fixed in sound. recordings oF Dudiovisual works or fixations, even ater distribution of them by. or pursuant to the authorization by the performer, and 7 he right of authorizing the making available to the public. of their performances fixed in sound Fecordings or audiovisual works or fixations, by wire ‘or wireless means, in such a way that members of the public may access them from a place and time ‘individually chosen by them. (IPC as amended by RA. No. 10372, Sec. 203). “Moralcightot performers ‘The er, shall, a5 regards. his live aural ‘Nis performances; except where the omission is a wremanairtoaan tse pectermasensn: renee performances that would be prejudicial to his reputation (PC Sec. 204), Lae aeomerseh Sere University oF Santo Tomas 2016GoLoEN Notes “application (IPC, Sec 205). ‘matondireo performers (Ibid) qet™ Direct or indivect reproduction of their sound recordings, in any manner or form; the placing of these reproductions in the market and the right of calor ending caer abl disrbuton of the original and copies of eee ecordings through sale or Tent of etc forms of wansferring ownership ee ory Senta we the public ofthe original and connect ther. sound recordings. even. after seen by hem by or pursuant authorization the producer and ee eniaie to the public of thei sound mee gsin such away that members ofthe publi rere the sound cecarding from place andata Tee Teateaduatly chosen or selected by them. as well arteherranmsion of» sound recording with ike ict (IPC Sec 208 IPC as amended by RA. No tos72) atts: E40 Rebcoadcasting oftheir broadcasts; “® Recording in any manner, including the making of films o the use of video tape, oftheir broadcasts for the purpose of communication to the public of television broadcasts of the same; G2 Use of such records for fresh transmissions or for fresh recording (IPC, Sec. 211). = is the transmission by wireless means for ‘representations thereof; such transmission by satelite is also broadcasting where the means for decrypting are provided to the public by the broadcasting organization ‘or with ts consent. Rebroadcasting under the 1961 Rome Convention is the simultaneous broadcasting by one broadcasting organization of the broadcast of another broadcasting organization. While the Rome Convention ives broadcasting organizations the right to authorize or 356INTELLECTUAL PROPERTY CODE prohibit the rebroadcasting ofits broadcast, however, this protection does not extend to cable retransmission (ABS: BN Broadcasting Corporation vs. Philippine Multimedia ‘System, Ine, GR. Nos. 175769-70, January 19, 2009). <> ‘14s limitation on copyright which obligates operators to ‘carry the signals of local channels within their respective systems. This is to give the peopie wider access to more sources of news, infermation, education, sports event and entertainment programs other than those provided forby ‘mass media and afforded television programs to attain 2 ‘well informed.--wellversed...and._culturally. refined citizenny and enhance their socio-economic growth (ABS: CBN Broodeesting Corporation v. Phihppine Multimedia ‘System, GR No. 175763-70, Jan. 18,2003}. It rule mandates that the local television (TV) broadcast signals of an authorized TV broadcast station, such as the GMA Network Inc. should be carried in full by the cable antenna television (CATV) operator, without alteration or deletion. In this case, the Central CATV. Inc. was found not to have violated the must-carry rule when it solicited and showed advertisements in its cable television (CATV) ‘system. Such solicitation and showing of advertisements, did not constitute an infringement of the “television and broadcast markets” under Section 2 of £.0. No. 205 (GMA [Network Inc. v. Central CATV, Inc, G.R No. 176694, July 18, 2018). NE PaRRUSeOPENETFONIERSE (1PC. as amended by RA No. 10372, Sec. 212). ae or performances not incorporated in recordings, 50 years from the end of the year in which the jrmance took place; and For sound or image and sound recordings and for performances incorporated therein, 50 years from the ~nd of the year in which the recording took place. case of broadcasts, the term shall be 20 years from the date the broadcast took place. The extended term shall be applied only to old works with subsisting protection under the prior law (IPC, Sec. 215). yen Forworks “a Works of authors who are nationals of or have their habitual residence in, he Philippines, be Audio-visual works the producer of which has ‘his headquarters or habitual residence in the Philippines: _& Works of architecture erected in the Philippines ‘or other artistic works incorporated in a building or other structure located in the Philippines: ‘Works first published in the Philippines: and Works first published in another country but also published in the Philippines within thirty days, irrespective ofthe nationality or residence ofthe authors (IPC, Sec. 221). “a. Performers who are nationals of the Philippines; Performers who are not nationals of the Philippines but whose performances: i, Take place in the Philippines li Are incorporated in sound recordings ‘that are protected under IPC: or fi, Which has not been fixed in sound recording but are carried by broadcast ‘qualifying for protection under IPC (IPC. Sec. 222) OC eit i pvtacers of tien se nationals of the Philippines; and bef recordings that were fist published 1 Philippines (IPC, Sec. 223). Ogee, crag pun ee pats creer ‘Sec. 2212 and 224.2).JOINT Ai | TOW AU RSI — ssa asc aromas RS SRG ROR ‘rights shall be governed by the rules on co-ownership. 178.1) their NOTE: If work of joint authorship consists of parts that can be wsed separately, then the author of each part shall be the original owner of the copyright in the Part that he has created (1PC Sec. 178.2). AUDIOVISUAL WORK Seneraewoae ae ee XPN: Unless otherwise provided in an agreement, the producers 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 (1PC, Sec. 178.5). ‘ANONYMOUS AND - PSEUDONYMOUS WORKS “The publishers shall be deemed to represent the authors of articles and other writings published 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 (/PC, Sec. 179). COLLECTIVE WORKS COMMISSIONED WORK ‘contrary (JC Sec. 178.4). IN THE COURSE OF EMPLOYMENT (IPG Sec. 178.3). LETTERS Tn respect of letters, the copyright shall belong to the provisions of Article 723 ofthe Civil Cade. (JPC, Sec. 1786). Civil Code of the Philippines Article 723. Letters and other private communications in writing are owned by the person to whom they are addressed and delivered, but they cannot be published or disseminated without the consent of the writer or his heirs. However, the court may authorize their publication or dissemination if the public good or the interest of justice so requires.Collective work vs Joint work. INTELLECTUAL PROPERTY CODE Q: T,an associate attorney in XYZ Law Office, wrote a newspaper publisher a leter disputing a columnist’s claim about an incident In the attorney's family. T computer in preparing the letter. T also requested the firm messenger te deliver the letter to the publisher. Who ‘owns the copyright to the letter? (2011 Bar) A:T, since he is the original creator ofthe contents ofthe letter. id investment House commissioned Mon Blanco and his son Steve, both noted artists, to paint a mural for the Main Lobby of the new building of Solid for a contract price of P2M. a. Who owns the mural? Explain. b. Who owns the copyright of the mural? Explain, (1995 Bar) a 2 The mural is owned by Solid. It commissioned the ‘work and paid Mon and Steve Blanco P2M for the ‘mural Even though Solid owns the mural, the copyright of the mural is jointly owned by Mon and Steve, unless theres awritten stipulation tothe contrary (IPC Sec. 1784). ; Rudy is fine arts student ina universiy. He stays th a boarding house with Bernie as his roommate. is free time, Rudy would paint and leave bis flnlzned works lying around the boarding house. One day, Rudy saw one of his works an abstract painting nvided. Manila ‘Trafic Jam - om display at the niversity cafeteria. The cafeteria operator sald he purchased the painting from Bernie who represented Kimselfas ts painter and owner. Rudy and. the cafeteria operator immediatel Confronted Bernie. While admitting that he didnot the. painting. Bernie claimed ownership of ts Copyright since he had already registered iin his ‘name with the National Library as provided in the Intellectual Property Code. ‘Whe owns the copyright tothe painting? Explain. (Bar 2013) [A: Rudy owns the copyright to the painting because he twas one who actually created it (Section 1781 of the Tncellctual Property Code). Mis rights existed from the moment of its creation (Section 172 of the Intellectual Property Code; Unilever Philippines (PRC) v. Court of ‘Appeal, GR Na. 119280, August 10, 2006). The ‘epstration of the plating by Bernie with the National Library didnot ‘confer copyright upon him. The registration is merely fr the purpose of completing the records ofthe National Library (IPC, Sec. 191). : BR and CT are noted artists whose paintings are highly prized by collectors Dr. DL commissioned them to paint a mural at the main lobby of his new hospital for children. Both agreed to collaborate on the project for a total fee of 2 million pesos to be ‘equally divided between them. It was also agreed that Dr. DLhad to provide all the materials for the painting, and pay for the wages of technicians and laborers needed for the work on the project. ‘Assume that the projectis completed and both BRand (CT are fully paid the amount of P2M as artists’ fee by DL. Under the law on intellectual property, who will ‘own the mural? Who will own the copyright in the ‘mural? Why? Explain. (2004 Bar) ‘A: DL owns the mural, wile both BR and CT jointly own the copyright thereto, Tis is $0 because the mural was ‘commissioned by DL and a consideration was paid to BR and CTin exchange thereof. Aecording to Section 178.4 of the IPC. when the work is commissioned by a person fother than an employer of the author, the owner of the ‘work shal be the one who commissioned the work, but the copyright of the work shall be owned by the person ‘who is responsible for its creation, unless there is a ‘writen stipulation tothe contrary. Eloise, an accomplished writer, was hired by Petong to write a bimonthly newspaper column for Diario de Manila, a newly-established newspaper of which Petong was the Editor-in-chief. Eloise was to be paid P1,000.00 for exch column that was published. tn the course of twa months, Eloise submitted three columns which, after some slight editing were printed in the newspaper. However, Diario de Manila proved wi,.ufitable and closed only after two ‘months. Due to the minimal amounts involved, Eloise chose not to pursue any claim for payment from the newspaper, which was owned by New Media Enterprises, ‘Three years later, Eloise was planning to publish an anthology of her works, and wanted to include the three columns that appeared in the Diario de Manila ‘her anthology. She asks for your legal advice: a. Does Eloise have to secure authorization from New Media Enterprises to be able to publish 359 University oF Santo TOMAS Facutry of Civit LAW ¥No. tn the case ofa work commissioned by 2 person eer than an employer of te author an eps for ie and the work ts made in pursuance ef te Commission, the person whe so commissioned the ‘workshallhave onmership of work but the copyright ‘hereto shal remain with he crestor unless theres 2 written statement tothe contrary (PL, See 1784) Thus, though Diario de Manila commissioned the work iteannot be considered ss owner Deeause did not pay Eloise, Ownership and copyright sll belong to Eloise Authorization snolonger needed publish Diario de Manila im her anthology Because Eloise has moral and economic rights vere work ‘The fac that Elise was not pai, ownership over her work published in the newspaper di not vestupon {he tater. She retains fll moral and economic rights [LIMITATIONS ON COPVIUGIT al General mitatons on copriht The following acts shall not constitute infringement of copyright: 1. Recitation or Performance ofa work once thas been lawfully made accessible to the public if done privately and free of charge or if made strictly fora Charitable or religious institution or society; Making of quotations from 2’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 ame of the author, if appearing on the work, are mentioned; Communication to the public by mass media of Grticles on current politi social, economic, Scientific or religious topic, lectures, addresses and ther works of the same natu” ~vhich are delivered én public if such use is for information purposes and has not been expressly reserved: Provided, That the source is clearly indicated; Reproduction and communication to the public of literary, scientific or artistic works as Part of reports of current events (eg. music played or tunes on the occasion of a sporting event and such tunes were picked up during a new coverage of the event) by means of photography. cinematography or broadcasting tothe extent necessary forthe purpose: Inciusion of a work in a publication, broadcast, or other communication to the public, sound recording for film, if such inclusion is made by way of ilustration for Teaching purposes and is compatible ‘with fair use: Provided, That the source and of the hpame of the author, if appearing in the work, are ‘mentioned; Recording made in Educational institutions ofa work included. in 3 broadcast for the use of such feducational institutions, provided that such fecording must be deleted within a reasonable ‘after they were first broadcast Making of Ephemeral recordings by a broadcasting egantzation by means of ts own facilities and for use Inks own broadcast, ‘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: Public performance or the communication to the place where no admission fee is Tharged in respect of such public performance or Communication, by aclub or institution for charitable tr educational purpose only, whose aim is not profit raking, subject to such other limitations as may be provided in the Regulation Public Display of the original or a copy of the work thot made by means of a film, slide, television image ‘or otherwise on screen or by means of any other device or process (eg. Public display using posters ‘mounted on walls and display boards), Provided. ‘That either the work has been published, or, that original or the copy displayed has been sold, given. Guay or otherwise transferred to another person by the author or his successor in title; “Any use made of a work for the purpose of any Judicial proceedings or forthe giving of professional advice by a legal practitioner. 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 3 nonprofit basis and shall indicate the copyright owner and the date of the original publication (IPC, Sec. 184, as amended by RA. No. 10372). “Other limitations on copyright — Copyright in a work of architecture shall include the right to control the erection of any building which reproduces the whole or a substantial part of the ‘work either in its original form or in any form recognizably derived from the original, provided, that the copyright in any such work shall not include the right to control the reconstruction or rehabilitation in the same style as the original of a ‘building to which that copyright relates (IPC, Sec 186). 10. n re ‘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 but shall not extend to the reproduction of: University oF SANTO TOMAS * 2016 Govoen Notes 360INTELLECTUAL PROPERTY CODE 4 Awork of architecture in the form of building or other construction; An entire book, or a substantial part thereof, or fof a musical work in graphic form by eprographic means ‘A compilation of data and other materials ‘A computer program except as provided in Section 189; and ‘eAny work in eases where reproduction would ‘unreasonably conflict with a normal exploitation of the work or would otherwise ‘unreasonably prejudice the legitimate interests fof the author (IPC, Sec. 187) “The reproduction in one back-up copy or adaptation (of a computer program shall be permitted, without the authorization of the author of, or other owner of copyright in, a computer program, by the lawful ‘owner of that computer program, provided, the copy fof adapeation s necessary for: ‘a Theuse of the computer program in conjunction with 2 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 ofthe computer program is lost destroyed or rendered unusable (IPC Sec. 187). ‘on an industrtal 2 Purpose and character of the use, including whether such use s of commercial nature ors for non-profit ‘educational purpose; ® Nature of the copyrighted work @eHAmount and substantalty of the portion used in relation to the copyrighted work as a whole; and Effect of the use upon the potential market for or value of the copyrighted work. NOTE: Thesset'that'a'work is unpublished shall-not by above 222) {you copy tothe extent that you ofthe book, itis me longer fair use. Pacutry of Crvit Law 361 University of Santo Tomas wowner, make a limited number of copies of the work, as may be necessary for such institutions to fulfil their ‘mandate, by reprographic reproduction: Where the work by reason of its fragile character or rarity cannot be leat to user in its original form: 1b. 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 Where the making of such limited copies isin order to preserve and, if necessary in the event that it is lost, destroyed of rendered unusable, replace a copy. (or to replace, in the permanent collection of another similar library or archive, copy which has been lst, destroyed or rendered unusable and copies are not available with the publisher. laut ft shall not be permissible to produce a volume of a ‘work published in several volumes orto produce missing works, unless tine volume, tome.or part is. out of stock (IPC, Sec. 168, as amended by RA. No, 10372), ats Der Unless a greater right is expressly pranted, such - ‘submission shal constitute only alicense to make a single publication (PC Sec. 1803). ‘hve wate fhe ers ab tid to rast licenses without the prior written consent of the other ‘owner or owners (Ibid) Copyrigh. The act of ling from anothers book Substanal portions of discussions and examples andthe failure to acknowledge the same isan infringement of copyright (Habana v. Robles, GR. No 131522, July 19 1999) ‘The gravamen of copyright infringement is not merely the unauthorized “manufacturing” of intellectual works but infringement (NBI-Microsoft Corp. v. Hwang. GR No 147043, june 21, 2005) nigra faa catia atelier assignee or licensee is entitled to all the rights University oF Santo Tomas / 2016GovoEN Notes ‘eameDirectly commits an infringement; qrtommBenefts from the infringing activity of another person who commits an infringement if the person benefiting has been given notice of the infringing activity and has the right and ability to control the activities ofthe other person; 362INTELLECTUAL PROPERTY CODE Neemalith knowledge of infringing activity, induces, “auses or materially contributes to the infringing conduct of another (IPC Sec. 216, as amended by RA ‘No, 10372). @ Diana and Piolo are famous personalities in showbusiness who kept their love affair secret They ‘use a special instant messaging service which allows them to see one another's typing on their own screen as each letter key is pressed. When Greg. the controller of the service facility, found out their identities, he kept a copy of all the messages Diana and Piolo sent each other and published them. Is Greg, liable for copyright Infringement? Reason briefly (2007 Bar) AA: Yes The messages which Diana and Pablo sent each other fll under the category of leters as provided in Se. 172.1. which provides that literary and artistic works, hereinafter referred to as “works.” are original ‘tellectual creations in the literary and artistic domain protected from the moment of their creation and shall Jnclude in particular, among others, letters. Infringement ‘of such consist in the doing by any person, without the ‘consent ofthe owner of the copyright of anything the sole Fight to do which is conferred by statute on the owner of, the copyright . Reproduction and first public distribution of the work are economic rights of the authors of the ‘work. Such cannot be done by the person not the author fof the work In this instance, Greg isnot the owner of the ‘messages. He merely copied it without the consent of the ‘authors thereof and subsequenty published the same in violation ofthe latter's economic rights. @ In a written legal opinion for a client on the difference between apprenticeship and learnership, Liza quoted without permission a labor law expert's comment appearing in his book entitied “Annotations fon the Labor Code.” Can the labor law expert hold Liza liable for Infringement of copyright for quoting 2 portion of bis book without his permission? (2006 Bar) |A:No. One ofthe limitations on copyright isthe making of ‘quotations from 3 published work if they are compatible with fairuse, provided that the source and the name ofthe author if appearing oa the work are mentioned. The legal ‘opinion made by Liza is consistent with fair use since the (quoted partis merely used to explain a concept of law for the benefit of the client and not to defeat the rights of the author over his copyright (IPC Sec. 184.1 (6). Q The Victoria Hotel chain reproduces videotapes, distributes the copies thereof to its hotels and makes ‘them available to hotel guests for viewing inthe hotel ‘guest rooms. It charges a separate nominal fee fer the tse ofthe videotape player. the Victoria Hotel be enjoined for infringing copyrights and held liable for damages? b, Would it make any difference if Victoria Hotel does not charge any fee for the use of the videotape? (1994 Bar) a. Yes. Vitoria Hotel may be held liable for infringing. copyrights of the said videotapes because the reproduction and distribution thereof are not merely for private viewing. Instead, it was used as a means to gain extra profit by making it as an extra amenity for its hotel services. However, If such performances contained inthe videotapes became availabe to the public even prior to its registration, the there is no copyright infringement because the videotapes are already considered as public property. '. No. Notwithstanding the nop-charging of fee for the use of the videotapes. Victoria Hotel still uses the videotapes for business purposes, serving as an attraction to prospective and current guests, unless the performances in the videotapes had been long, before available Co the public prior to registration; hence, itis already public property (Filipino Socieny of Composers, Authors, Publishers, Inc. v. Benjamin Tan, GR No. L-36402, March 16, 1987) . @ Im an action for damages on account of an infringement of a copyright, the defendant (the alleged pirate) raised the defense that he was aware that what he had copied was a copyright material. Would this defense be valid? (1997 Bar) ‘A: No, In copyright infringement, intent is irelevant. A person may consciously or unconsciously copy or infringe 1 copyrighted material and stil be held liable for such act. Q: Juan Xavier wrote and published a story similar to an unpublished copyrighted story of Manoling Santiago. It was, however, conclusively proven that Juan Xavier was not aware that the story of Manoling Santiago was protected by copyright Manoling Santiago sued Juan Xavier for infringement of copyright Is Juan Xavier liable? (1998 Bar) ‘A: No. Although intent is irrelevant in cases of copyright, infringement, Juan had no access to Manoling’s copyrighted story because itis unpublished. Hence, hecan ‘put up independent creation as a defense being that he has no reasonable access to the unpublished copyrighted story of Mancling. from Bangkok, Thailand. She studies medicine in the Pontifical University of Santo Tomas yrmed that the samé foreign books in UST are 40-50% cheaper in Bangkok. So she ordered 50 copies of each book for herself and her classmates and sold the books at 20% less than the price in the Philippines. XX, the ‘exclusive licensed publisher of the books in the Philippines, sued KK for copyright infringement. Decide. (2014 Bar) A: KK did not commit copyright infringement, Under the “first sale" doctrine, the owner ofa particular copy of phonorecord lawfully made is entitled, without the authority of the copyright owner, to sell or otherwise dispose of the possession of that copy or phonorecord. Hence, there is no infringement by KK since the said doctrine permitted importation and resale without the publisher’ further permission 363 GuvensiiverdanroTomat @ Faceury or Covi Law GF55, WX ee diminished, there isan ine ore Serr eae eget copyright - pirate did nat know whether o not he ‘a5 Tfringg any copyright: ans aeeopedaeua pa ‘cases of infringement. copying alone i not what is Prohibited. ‘must produce an “injurious. ‘leet (Habana v. Robles, GR. No. 131522, July 19, 1999). 1, imecnttience 2 ‘quay (most common test) (Amador, 2007) Canepa nema ao whether there ss reasonable opportunity to copy. @: May a person have photocopies of some pages of the book of Professor Rosario made without violating the copyright law? (1998 Bar) A: Yes a persoa may photocopy some of pages of Professor Rosarie's book for as long asi isnot for public tse of distribution and it does not copy the substantat text or “heart” of the book It is considered as fair use of the copyrighted work, een Plagiarism means taste another Perse SRUIEE ‘To plagiarize, is to take (ideas, send stanewertefober soos oon pine of rer (inte matter of the charges of plagiarism against Associate Jastice Mariano C Del Castilla, AM. No, 10-7-17-5C October 12,2010) Plagiaristh presupposes intent and a deliberate, conscious ‘flor to steal anothers work and pass i off as one's own, in the matter of the charges of plagiarism against ‘Associate justice Mariano C Del Castillo, supra) Copyright Infringement vs. Plagiarism Con Seat ‘The unauthorized use of copyrighted ‘material in a ‘manner that violates one of the copyright owner's exclusive rights, such asthe right to reproduce oF perform the copyrighted work, cron “The use of another's Information, language, oF writing, when done without proper acknowledgmen ofthe original p, Univensity oF Santo Tomas | 2016 GoLoen Notes MERCANTILE LAW eee derivative works that build upon it Copyright Plager infringement isa | specific as ie ery broad term | refersonly to that describesa | using someone warety of acs. | else's work nay be duplication | without proper ofa work, deknowledgeme rewriting plece, | St. performing 2 twritten work or Going anything that s normally considered to be the exclusive right of the copyright holder. ‘There 70 Fable copyeige documents can fafringement on _ | be plagiarized 50 public documents. | long asit is not | acknowledged. Tn copyright In plagiarism the infringement, the | copying need copying must be | not be substantial substantial ‘etme Injunction eaem Damages. including legal costs and other expenses. a5 he may have incurred due tothe infringement as well 2s the profits the infringer may have made due to such infringement eimpounding during the pendency of the action sales, Savoices and other documents evidencing sales etemDestruction without any compensation all infringing copies \qGembloral and Exemplary damages (IPC Sec. 216.1): 0F G26 Seizure and impounding of any article, which may serve as evidence in the court proceedings. (IPC, Sec 2162) ef Wature and purpose ofthe infrng! q ing act: ©® Flagrancy ofthe infringement GH Whether the defendant acted in bad faith; 364INTELLECTUAL PROPERTY CODE Reed for deterrence; 25 Any loss that the plaintiff has suffered or is likely to suffer by reason ofthe infringement: and ‘Any benefit shown to have accrued to the defendant by reason of the infringement | Double damages _ The mmcunt of domages io be swerded shell be doubled Er Creumvents efecive technological measures: or bewtiaving reasonable grounds to know that it will induce, enable, facilitate er conceal the infringement, remove or alter any electronic rights management information from a copy of a work, sound recording. or fixation ofa performance, or distribute, import for distribution, broadcast or communicate tothe public works or copies of works without authority, knowing that electronic rights management information has ‘been removed or altered without authority (IPC as ‘amended by RA. No, 10372, Sec. 216.1). Technological Measure eis any technology, in the ‘normal course of is Y respect of 2 work, performance or sound recording, which are not. ‘authorized by the authors, performers or producers of ‘ound recordings concerned or permitted by law. (IPC Sec 171.12, as amended). Rights Management Information it is information which identifies the work, sound edeet of 0 sanding or pevomer oe “performance: the owner of any right in the work, sound Sees recording or performance; and any number or code that represent such information, when any of these items'is ‘orperformance (JPC Sec. 171.13). Criminal penalties in case of copyright infringement ‘SAP imprisonment of one (1) year to three (3) years plus fine ranging from Fify thousand pesos (P50.000) to One hundred fifty thousand pesos (P150,000) for the first offense. ‘©208 imprisonment of +e (3) years and one (1) day to six (6) years plus a fine ranging from One hundred fifty thousand pesos to Five hundred thousand (P300,000) forthe second offense. GEN imprisonment of six (6) years and one day to nine (9) years ps a fine ranging from Five hundred ‘thousand pesos (PS00,000) to P1,500,000 for the third offense. In all cases, subsidiary imprisonment in cases of om insolvency (IPC, See Sec. 217). eer remem stor preeees produced’ “Manufactured and the damage thatthe copyright owner 1: Provided, {a}, (b) and (c) herein for the fist n subsequent offense, fat Wipe hen he infringement is committed by: demeGircamvention of effective technological measures: GE Removal or alteration of any electronic rights management information from a copy'of 3 work. Sound recording, or fixation of a performance, by 8 person. knowingly and without authority; oF Ge» Dist ibution, importation fer distribution, broadcast. ‘or communication tothe public of works or copies of works, by a person without authority, knowing that clectronic rights management information has been removed or altered without authority (IPC, Sec. 217.2, ‘as amended by RA. No. 10372). Affidavit evidence — ‘underthe (IPC, Sec 216.1). AAs a prima facie proof, the work. Wwe to the amendment of the IP Code under RA 10372 APPROVED ON FEBRUARY 28. 2013, deleting the provision entitling importation in the Philippines of up to three (3) copies of copyrighted works in a personal baggage, can one still be allowed to import books, DVDs, and CDs from abroad? A: Yes. In fact, the amendments to the tntellectoal Property Code have removed the original limitation of three copies when bringing legitimately acquired copies of copyrighted material into the country. Only the importation of pirated or infringed material is illegal. As long as they were legally purchased, you can bring as many copies you want, subject to Customs regulations (pedspo.gov-ph) | infringement. But if multiple copies of the CD were” reproduced forsale, then infringement occurs (Ibid). SEe Toy, The possession of a music file procured through an infringing activity isa violation of the law only ifit can be proven that the person benefitting from the music file has knowledge ofthe infringement, and the power and ability to control the person committing the infringement (ibid). Facucry oF Civit LAW 365 UNIVERSITY oF SANTO TOMAS v