INTELLECTUAL

PROPERTY
LAW
 INTELLECTUAL PROPERTY
OFFICE
The Intellectual Property Office of the Philippines is the lead
agency responsible for handling the registration and conflict
resolution of intellectual property rights. It was created by virtue
of Republic Act No. 8293 or the Intellectual Property Code of the
Philippines, which took effect on January 1, 1998 under the
presidency of Fidel V. Ramos.
INTELLECTUAL PROPERTIES IN
A GLANCE
Subject Copyright Patent Trademark
matter of the New, useful
right and Goods
Literary,
industrially manufactured
scientific or
applicable or produced
artistic work
inventions
Where right is National Library IPO IPO
to be
registered
Protection starts Creation Application Issuance of CoR
Duration of right Lifetime of 20 years 10 years
the author +
Generally 50
years after
death of the
author
PATENTS
PATENT
A patent is a grant issued by the government giving, an inventor,
designer or maker, the right to exclude others from making,
using or selling his invention, design or utility model within the
country for a specific term, in exchange of his patentable
disclosure.

An invention is a technical solution of a problem in any field of

human activity.
KINDS OF PATENTS AND
APPLICABLE REQUISITES
1. Invention Patent: Novelty, Inventive Step, Industrial
 Applicability;
2. Design Patent: Novelty and Ornamentality;
3. Utility Model: Novelty and Industrial Applicability.
ELEMENTS OF A PATENT
1. Novelty: An invention shall not be considered new if it forms
part of a prior art.

Prior Art:
a. Everything which has been made available to the public
anywhere in the world before application
b. Already covered by an earlier application;

Non-prejudicial disclosure: Disclosure within 12 months prior

to application, of the information in the application itself made
by the:
a. Inventor
b. The patent office (IPO)
 c. Third party who obtained the information directly or
indirectly from the inventor
ELEMENTS OF A PATENT
2. Inventive Step: - An invention involves an inventive step if,
having regard to prior art, it is not obvious to a person
skilled in the art at the time of the filing date or priority
date of the application claiming the invention.

3. Industrial Applicability: An invention that can be

produced and used in any industry shall be industrially
applicable.
NON-PATENTABLE INVENTIONS
The following shall be excluded from patent protection: 1.
Discoveries, scientific theories and mathematical methods; 2.
Schemes, rules and methods of performing mental acts,
playing games or doing business, and programs for
 computers;
3. Methods for treatment of the human or animal body by
surgery or therapy and diagnostic methods practiced on the
human or animal body. This provision shall not apply to
products and composition for use in any of these methods;
4. Plant varieties or animal breeds or essentially biological
process for the production of plants or animals. This provision
shall not apply to micro-organisms and non-biological and
microbiological processes.
5. Aesthetic creations; and
6. Anything which is contrary to public order or morality.
QUESTION
Which of the following cannot be patented?
A. Micro-organisms and non-biological and microbiological
processes
B. An improvement in mascots used in restaurants by the use of
a device to move facial parts of the mascot
C. Aesthetic creations
D. Anything which is not contrary to public order or morality
QUESTION
Which of the following cannot be patented?
A. Micro-organisms and non-biological and microbiological
processes
B. An improvement in mascots used in restaurants by the use of
a device to move facial parts of the mascot
C. Aesthetic creations
D. Anything which is not contrary to public order or morality
APPLICATION PROCESS
1. Filing date requirements
2. Payment of fees
3. Formal examination
4. Search of Prior Art
5. 1st publication
 a. within 18 months from filing date
b. After publication, any interested party may inspect documents c.
Publication may be prohibited or restricted if it would be prejudicial
to the national security and interests
d. After publication, applicant acquires rights of a patentee – i.e.,
to exclude anyone from using the invention (if they have actual
knowledge or written notice)
e. But no action can be filed until the grant of the patent
(prescription 4 years from commission)
6. Substantive Examination (which must be done within 6 months
from first publication)
7. Publication of Patent
APPLICATION PROCESS
Contents of Application:
1. A request for the grant of a patent;
2. A description of the invention (sufficiently clear and
complete for it to be carried out by a person skilled in the
 art);
3. Drawings necessary for the understanding of the invention;
4. One or more claims (define the matter for which protection is
sought; clear and concise); and
5. An abstract (concise summary of the disclosure of the
invention as contained in the description, claims, and
drawings in preferably not more than 150 words)
APPLICATION PROCESS
First to File Rule: if two or more persons separately made the
same invention, priority is given to one who filed first.

Right of Priority/Priority Claim: - Application made locally

when an earlier application is filed abroad. Process: 1. A CLAIM
of priority based on an earlier filing date abroad. 2. A local
application is filed within 12 months from priority date
(application date of foreign application for patent)
3. Certified copy of priority application and English translation
 thereof within 6 months from filing date.

Priority date: date of filing of FOREIGN application for the same

invention.
APPLICATION PROCESS
Actual Inventor; Remedies:
1. Application still pending – file an action in court to prove
that he is the actual inventor within 1 year from first
publication. Once declared that he is the true inventor: a.
Request that the application be refused
b. File a new application but filing date will retroact to original
filing date
2. Patent already granted – within 1 year from publication
of the patent, he can either:
a. Be substituted as patentee; or
b. Seek cancellation of patent.
APPLICATION PROCESS
Unity of Invention – one application = one invention (group
of inventions forming a single general inventive concept)

Divisional Application - may be allowed if there is more than

one invention, either voluntarily or within 4 months from
recommendation of the Director.
APPLICATION PROCESS
Grounds for Cancellation of Patent:
1. Invention is not new (no novelty)
2. The patent did not disclose the invention in a manner
sufficiently clear and complete for it to be carried out by any
person skilled in the art.
3. Contrary to public order or morality
PATENT OWNERSHIP
The patent belongs to the inventor, his heirs or assigns.

If two or more persons jointly make an invention, the patent

belongs to them jointly.
COMMISSIONED WORK
The person who commissions the work shall own the
patent, unless otherwise provided in the contract.
EMPLOYEE INVENTOR
In case the employee made the invention in the course of his
employment contract, the patent shall belong to: 1. The
employee, if the inventive activity is not a part of his
regular duties even if the employee uses the time, facilities
and materials of the employer.
2. The employer, if the invention is the result of the
performance of his regularly-assigned duties, unless
 there is an agreement, express or implied, to the contrary.
QUESTION
Which of the following statements regarding patent ownership is
incorrect?
A. The person who commissioned an invention will own the
patent
B. When two or more persons jointly make an invention, the
patent belongs to them jointly
C. The patent belongs to the inventor, his heirs or assigns D.
Even if the contract provides otherwise, the patent shall belong
to the person who commissioned the work
QUESTION
Which of the following statements regarding patent ownership is
incorrect?
A. The person who commissioned an invention will own the
patent
B. When two or more persons jointly make an invention, the
patent belongs to them jointly
C. The patent belongs to the inventor, his heirs or assigns D.
Even if the contract provides otherwise, the patent shall
belong to the person who commissioned the work
QUESTION
Juan Dela Cruz commissioned Pedro to invent a machine of
novelty and industrial applicability. Who would own the patent
and the machine?
A Patent Machine
Juan Juan
B Juan Pedro
C Pedro Pedro
D Pedro Juan
QUESTION
Juan Dela Cruz commissioned Pedro to invent a machine of
novelty and industrial applicability. Who would own the patent
and the machine?
A Patent Machine
Juan Juan
B Juan Pedro
C Pedro Pedro
D Pedro Juan

TERM OF PROTECTION
The term of a patent shall be twenty (20) years from the filing
date of the application.
RIGHTS CONFERRED BY PATENT
A patent shall confer on its owner the following exclusive
rights:
1. Where the subject matter of a patent is a product, to
restrain, prohibit and prevent any unauthorized person or
entity from making, using, offering for sale, selling or
importing that product;
2. Where the subject matter of a patent is a process, to
restrain, prevent or prohibit any unauthorized person or entity
from using the process, and from manufacturing, dealing in,
using, selling or offering for sale, or importing any product
obtained directly or indirectly from such process.
3. The right to assign, or transfer by succession the patent,
and
4. The right to conclude licensing contracts for the same.
LIMITATION ON PATENT RIGHTS
The owner of a patent has no right to prevent third parties
from performing, without his authorization, acts mentioned
above in the following circumstances:
1. Using a patented product which has been put on the
market in the Philippines by the owner of the product, or
with his express consent, insofar as such use is performed
after that product has been so put on the said market;
2. Where the act is done privately and on a non-commercial
scale or for a non-commercial purpose: Provided, That it
does not significantly prejudice the economic interests of the
owner of the patent;
3. Where the act consists of making or using that relate to the
subject matter of the patented invention exclusively for the
purpose of experiments;
LIMITATION ON PATENT RIGHTS
4. Where the act consists of the preparation for individual
 cases, in a pharmacy or by a medical professional, of a
medicine in accordance with a medical prescription or acts
concerning the medicine so prepared;
5. Where the invention is used in any ship, vessel, aircraft, or
land vehicle of any other country entering the territory
of the Philippines temporarily or accidentally: Provided,
that such invention is used exclusively for the needs of the
ship, vessel, aircraft, or land vehicle and not used for the
manufacturing of anything to be sold within the Philippines.
LIMITATION ON PATENT RIGHTS
PRIOR USER
• in good faith was
• using the invention or has undertaken serious preparations to
use the invention in his enterprise or business,
• before the filing date or priority date of the application •
shall have the right to continue the use
TRANSFER: only with the business itself
USE BY THE GOVERNMENT
A Government agency or third person authorized by the
Government may exploit the invention even without agreement
of the patent owner where:
1. The public interest, in particular, national security,
nutrition, health or the development of other sectors,
as determined by the appropriate agency of the government,
so requires; or
2. A judicial or administrative body has determined that the
manner of exploitation, by the owner of the patent or his
licensee is anti-competitive.
INFRINGEMENT
The making, using, offering for sale, selling, or importing a
patented product or a product obtained directly or indirectly from
a patented process, or the use of a patented process without
the authorization of the patentee constitutes patent
infringement.
INFRINGEMENT
LITERAL INFRINGEMENT
1. Exactness Rule – the item that is being sold, made or used
conforms exactly to the patent claim of another.

2. Addition Rule - one makes, uses or sells an item that has all
the elements of the patent claim of another plus other
elements.
INFRINGEMENT
DOCTRINE OF EQUIVALENTS - with some modification and
change, but SUBSTANTIALLY THE SAME:
1. Function
2. Way/Means/Principle or Mode of Operation
3. Result

Applying the Functions-Means-Results Test.

CASE
SMITH KLINE BECKMAN CORP (SKBC) vs. CA and TRYCO
PHARMA): SKBC was granted a patent for a compound that is
claimed to have an active ingredient in fighting various parasites
in certain types of domestic and livestock animals which they
claim includes a new compound named methyl 5 propylthio-2-
benzimidazole carbamate.

Tryco Pharma sells veterinary products including IMPREGON

which contains ALBENDAZOLE as an active ingredient which
fights against parasites in animals.

SKBC sued Tryco Pharma for Infringement and Unfair

Competition claiming that its patent covers or includes the
substance Albendazole.
CASE
HELD: The doctrine of equivalents provides that an infringement
also takes place when a device appropriates a prior invention by
incorporating its innovative concept and, although with some
modification and change, performs substantially the same function
in substantially the same way to achieve substantially the same
result.
Yet again, a scrutiny of petitioners evidence fails to convince this
Court of the substantial sameness of petitioners patented
compound and Albendazole. While both compounds have the effect
of neutralizing parasites in animals, identity of result does not
amount to infringement of patent unless Albendazole operates in
substantially the same way or by substantially the same means as
the patented compound, even though it performs the same
function and achieves the same result. In other words, the
principle or mode of operation must be the same or
substantially the same.
CASE
The doctrine of equivalents thus requires satisfaction of
the function-means-and-result test, the patentee having the
burden to show that all three components of such equivalency
test are met.

Apart from the fact that Albendazole is an anthelmintic agent like

methyl 5 propylthio-2-benzimidazole carbamate, nothing more is
asserted and accordingly substantiated regarding the method or
means by which Albendazole weeds out parasites in animals,
thus giving no information on whether that method is
substantially the same as the manner by which petitioners
compound works.
REMEDIES OF A PATENTEE
1. Civil action to recover damages (not exceeding 3 times the
 actual damages) plus attorney’s fees and other expenses of
litigation or reasonable royalty.
2. Injunction for the protection of rights.
3. The court may, in its discretion, order that the infringing
goods, materials and implements predominantly used in the
infringement be disposed of outside the channels of
commerce or destroyed, without compensation.
4. Criminal Action, if repetitive, where the penalty can be:
Imprisonment of 6 mos to 3 years; Fine of 100,000 to
300,000 fine; or both.

Prescription: 3 years for the criminal action; 4 years for the

other remedies.
VOLUNTARY LICENSING
Mandatory Provisions:
1. Jurisdiction of disputes – Philippines; Venue – principal place
of business of patentee
2. Continuous access to improvements in techniques and
processes
3. If it includes Arbitration – venue: PH or other neutral
countries, and the following laws are applicable:
a. the Procedure of Arbitration of the Arbitration Law of the
Philippines or
b. the Arbitration Rules of the United Nations Commission on
International Trade Law (UNCITRAL) or
c. the Rules of Conciliation and Arbitration of the International
Chamber of Commerce (ICC)
4. Taxes – borne by the licensor
COMPULSORY LICENSING
Issuance of a license by the Director General of the IPO to
exploit a patented invention without the permission of the
patent holder, either by manufacture or through parallel
importation.
Grounds:
1. National emergency/circumstances of extreme urgency
2. Public interest so requires
3. The use of the patent is anti-competitive
4. Public non-commercial use without satisfactory reasons 5.
Invention is not being worked in the PH on a commercial scale
without satisfactory reasons (importation counts as working or
using)
6. Demand for patented drugs and medicine is not being met to
an adequate extent and or reasonable terms, as determined
by DOH.

TRADEMARKS
DEFINITION OF TERMS
“Mark” means any visible sign capable of distinguishing the
goods (trademark) or services (service mark) of an enterprise
and shall include a stamped or marked container of goods.

"Collective mark" means any visible sign designated as such in

the application for registration and capable of distinguishing the
origin or any other common characteristic, including the quality
of goods or services of different enterprises which use the sign
under the control of the registered owner of the collective mark.

“Trade name” means the name or designation identifying or

distinguishing an enterprise.
HOW RIGHTS ARE
ACQUIRED The rights in a mark shall be
acquired through registration.
MARKS WHICH CANNOT
BE REGISTERED
1. Consists of immoral, deceptive or scandalous matter, or
matter which may disparage or falsely suggest a
connection with persons, living or dead, institutions, beliefs,
or national symbols, or bring them into contempt or
disrepute;
CASE
FREDCO MANUFACTURING CORPORATION vs. HARVARD
UNIVERSITY:
Petitioner FMC filed a petition for cancellation of Harvard’s
Certificate of Registration alleging that:
1. Such COR was issued on November 25, 1993 for the mark
“Harvard Veritas Shield Symbol” for decals, tote bags, serving
 trays, sweatshirts, t-shirts, hats and flying discs.
2. The mark “Harvard” for t-shirts, polo shirts, sandos, briefs,
jackets and slacks was first used in the Philippines on Jan. 2,
1982 by New York Garments Manufacturing & Export Co., Inc.
(New York Garments), Fredco’s predecessor-in-interest.
3. On Jan. 24, 1985, New York Garments filed for trademark
registration of the mark "Harvard" and such matured into a
registration and a Certificate of Registration was issued on
Dec. 12, 1988, with a 20-year term subject to renewal at the
end of the term.
CASE
Harvard University, on the other hand, alleged that it is the lawful
owner of the name and mark "Harvard" in numerous countries
worldwide, including the Philippines.

The name and mark "Harvard" was adopted in 1639 as the name of
Harvard College of Cambridge, Massachusetts, U.S.A. The name and
mark "Harvard" was allegedly used in commerce as early as 1872.

Harvard University alleged that in March 2002, it discovered, through

its international trademark watch program, Fredco’s website
www.harvard-usa.com. The website’s main page shows an oblong
logo bearing the mark "Harvard Jeans USA®," "Established 1936,"
and "Cambridge, Massachusetts." On April 20, 2004, Harvard
University filed an administrative complaint against FMC before the
IPO for trademark infringement and/or unfair competition with
damages.

CASE
HELD: In favor of Harvard. Fredco’s registration of the mark
"Harvard" and its identification of origin as "Cambridge,
Massachusetts" falsely suggest that Fredco or its goods are
connected with Harvard University, which uses the same mark
"Harvard" and is also located in Cambridge, Massachusetts. This
can easily be gleaned from the oblong logo of Fredco that it
attaches to its clothing line:

“Fredco’s registration of the mark "Harvard" should not have

been allowed because Section 4(a) of R.A. No. 166 prohibits the
registration of a mark "which may disparage or falsely suggest
a connection with persons, living or dead, institutions,
beliefs x x x."
CASE
Fredco’s use of the mark "Harvard," coupled with its claimed
origin in Cambridge, Massachusetts, obviously suggests a
false connection with Harvard University. On this ground
alone, Fredco’s registration of the mark "Harvard" should have
been disallowed.

Indisputably, Fredco does not have any affiliation or connection

with Harvard University, or even with Cambridge, Massachusetts.
Fredco or its predecessor New York Garments was not
established in 1936, or in the U.S.A. as indicated by Fredco in its
oblong logo. Fredco offered no explanation to the Court of
Appeals or to the IPO why it used the mark "Harvard" on its
oblong logo with the words "Cambridge, Massachusetts,"
"Established in 1936," and "USA."
MARKS WHICH CANNOT
BE REGISTERED
2. Consists of the flag or coat of arms or other insignia of the
Philippines or any of its political subdivisions, or of any
foreign nation, or any simulation thereof;
3. Consists of a name, portrait or signature identifying a
particular living individual except by his written consent, or
the name, signature, or portrait of a deceased President of
the Philippines, during the life of his widow, if any, except by
written consent of the widow;
4. Is identical with a registered mark belonging to a different
proprietor or a mark with an earlier filing or priority date, in
respect of:
a. The same goods or services, or
b. Closely related goods or services, or
c. If it nearly resembles such a mark as to be likely to
deceive or cause confusion;
CASE
MARVEX COMMERCIAL CO., INC. VS. PETRA HAWPIA and
Co. and Director of Patents (1966)
Petra Hawpia sought the registration of its trademark “LIONPAS”
used on medical plaster which was opposed by Marvex claiming
that it would violate its right to and interest in the registration of
“SALONPAS” used on another medical plaster.

ISSUE: WON LIONPAS is confusingly similar to SALONPAS

HELD: Yes, in sound. Both these words have the same suffix,
"PAS", which is used to denote a plaster that adheres to the body
with curative powers. "Pas, being merely descriptive, furnishes no
indication of the origin of the article and therefore is open for
appropriation by anyone.
CASE
Two letters of "SALONPAS" are missing in "LIONPAS"; the first
letter a and the letter s. Be that as it may, when the two words
are pronounced, the sound effects are confusingly similar. And
where goods are advertised over the radio, similarity in sound is
of especial significance.

"SALONPAS" and "LIONPAS", when spoken, sound very much

alike. Similarity of sound is sufficient ground for this Court to rule
that the two marks are confusingly similar when applied to
merchandise of the same descriptive properties.
CASE
ESSO STANDARD EASTERN, INC. vs. CA and UNITED
CIGARETTE CORPORATION (1982)
Petitioner ESSO Standard Eastern Inc. (ESSI) is engaged in the
sale of petroleum products which are identified by its trademark
ESSO.

Private Respondent United Cigarette Corporation (UCG), on the

other hand, is engaged in the manufacture and sale of cigarettes
when it acquired La Oriental Tobacco Corporation including the
trademark ESSO on its cigarettes.

ESSI filed an infringement case against UCG.

ISSUE: WON the use of ESSO by UCG in its cigarettes infringes

on the trademark of ESSI?
CASE
HELD: No. As to whether trademark infringement exists depends
for the most part upon whether or not the goods are so
related that the public may be, or is actually, deceived
and misled that they came from the same maker or
manufacturer. For non-competing goods may be those which,
though they are not in actual competition, are so related to each
other that it might reasonably be assumed that they originate
from one manufacturer. Non-competing goods may also be
those which, being entirely unrelated, could not reasonably
be assumed to have a common source. in the former case of
related goods, confusion of business could arise out of the use of
similar marks; in the latter case of non-related goods, it could not
CASE
In the situation before us, the goods are obviously different
from each other with "absolutely no iota of similitude" as
stressed in respondent court's judgment. They are so foreign to
each other as to make it unlikely that purchasers would think
that petitioner is the manufacturer of respondent's goods.
The mere fact that one person has adopted and used a trademark on
his goods does not prevent the adoption and use of the same
trademark by others on unrelated articles of a different kind.

The public knows too well that petitioner deals solely with petroleum
products that there is no possibility that cigarettes with ESSO brand
will be associated with whatever good name petitioner's ESSO
trademark may have generated. Although petitioner's products are
numerous, they are of the same class or line of merchandise which
are non-competing with respondent's product of cigarettes, which as
pointed out in the appealed judgment is beyond petitioner's "zone of
potential or natural and logical expansion"

CASE
Aside from the above, the Court also held that there is no
infringement on the following grounds:
1. Goods involved are non-competitive and non-related is the
appellate court's finding that they flow through different
channels of trade.
2. Considering the general appearances of each mark as a whole,
the possibility of any confusion is unlikely.
CASE
ETEPHA, A.G. vs. DIRECTOR OF PATENTS and WESTMONT
PHARMACEUTICALS, INC.

Respondent Westmont sought the registration of its cough syrup

“ATUSSIN” which was objected to by Petitioner Etepha claiming that it
will damage its registered trademark “PERTUSSIN”

ISSUE: WON “Atussin” is likely to cause confusion with/infringes with

the use of “Pertussin”?
CASE
HELD: No. Likelihood of confusion will not happen:
▪ Respondent's label underscores the trademark Atussin in bold,
block letters horizontally written. In petitioner's, on the other
hand, Pertussin is printed diagonally upwards and across in
semiscript style with flourishes and with only the first letter "P"
capitalized. Each label plainly shows the source of the
medicine. Printed prominently along the left, bottom and right
edges of petitioner's label are indications of the use. The two
labels are entirely different in colors, contents,
arrangement of words thereon, sizes, shapes and
general appearance. The contrasts in pictorial effects and
appeals to the eye is so pronounced that the label of one
cannot be mistaken for that of the other, not even by persons
unfamiliar with the two trademarks.
CASE
▪ As we take up Pertussin and Atussin once again, we cannot
escape notice of the fact that the two words do not sound
alike — when pronounced. There is not much phonetic
similarity between the two.
CASE
▪ In the solution of a trademark infringement problem, regard too should
be given to the class of persons who buy the particular product and
the circumstances ordinarily attendant to its acquisition. The
medicinal preparation clothed with the trademarks in question, are
unlike articles of everyday use which may be freely obtained by
anyone, anytime, anywhere. Petitioner's and respondent's products
are to be dispensed upon medical prescription. The respective
labels say so. An intending buyer must have to go first to a licensed
doctor of medicine; he receives instructions as to what to purchase;
he reads the doctor's prescription; he knows what he is to buy. He is
not of the incautious, unwary, unobservant or unsuspecting type;
he examines the product sold to him; he checks to find out whether it
 conforms to the medical prescription. The common trade channel is
the pharmacy or the drugstore. Similarly, the pharmacist or druggist
verifies the medicine sold. The margin of error in the acquisition of
one for the other is quite remote.

MARKS WHICH CANNOT

BE REGISTERED
5. Is identical with, or confusingly similar to, or constitutes a
translation of a mark which is considered by the competent
authority of the Philippines to be well-known
internationally and in the Philippines, whether or not it
is registered here, as being already the mark of a person
other than the applicant for registration, and used for
identical or similar goods or services: Provided, That in
determining whether a mark is well-known, account shall be
taken of the knowledge of the relevant sector of the public,
rather than of the public at large, including knowledge in the
 Philippines which has been obtained as a result of the
promotion of the mark;
MARKS WHICH CANNOT
BE REGISTERED
6. Is identical with, or confusingly similar to, or constitutes a
translation of a mark considered well-known in
accordance with the preceding paragraph, which is
registered in the Philippines with respect to goods or
services which are not similar to those with respect to which
registration is applied for: Provided, That use of the mark in
relation to those goods or services would indicate a
connection between those goods or services, and the owner
of the registered mark: Provided further, That the interests of
the owner of the registered mark are likely to be damaged by
such use;
7. Is likely to mislead the public, particularly as to the nature,
quality, characteristics or geographical origin of the goods or
services;
8. Consists exclusively of signs that are generic for the goods
or services that they seek to identify;
MARKS WHICH CANNOT
BE REGISTERED
9. Consists exclusively of signs or of indications that have become
customary or usual to designate the goods or services in
everyday language or in bona fide and established trade
practice;
10. Consists exclusively of signs or of indications that may serve
in trade to designate the kind, quality, quantity, intended
purpose, value, geographical origin, time or
production of the goods or rendering of the services,
 or other characteristics of the goods or services;
11. Consists of shapes that may be necessitated by technical
factors or by the nature of the goods themselves or
factors that affect their intrinsic value;
12. Consists of color alone, unless defined by a given form;
or 13. Is contrary to public order or morality.
MARKS WHICH CANNOT
BE REGISTERED
EXCEPTION TO GENERIC/DESCRIPTIVE TERMS:

DOCTRINE OF SECONDARY MEANING: In Philippine Nut

Industry, Inc. v. Standard Brands, Inc., the doctrine of secondary
meaning was elaborated in the following terms: “xxx a word or
phrase originally incapable of exclusive appropriation
with reference to an article on the market, because
geographically or otherwise descriptive, might
nevertheless have been used so long and so exclusively
by one producer with reference to his article that, in that
trade and to that branch of the purchasing public, the
word or phrase has come to mean that the article was his
product."
DURATION OF PROTECTION
AND RIGHTS
The rights to a trademark shall be 10 years from registration.

Renewal: the rights to a trademark in a certificate of

registration may be renewed for periods of 10 years at its
expiration upon payment of the prescribed fee and upon filing a
request at any time within 6 months before expiration or within 6
months after such exploration upon payment of an additional
fee.
QUESTION
The duration of protection for a trade mark.
A. 10 years and non-renewable
B. 10 years and renewable for another 10 years twice C. 10
years and renewable for another 10 years thrice D. 10 years
and renewable for another 10 years in perpetuity
QUESTION
The duration of protection for a trade mark.
A. 10 years and non-renewable
B. 10 years and renewable for another 10 years twice C. 10
years and renewable for another 10 years thrice D. 10 years
and renewable for another 10 years in perpetuity
DECLARATION OF ACTUAL USE
The registrant shall file a declaration of actual use and evidence
of actual use, or shall show valid reasons based on the existence
of obstacles to such use:
1. Within 3 years from application
2. Within 1 year from the 5th anniversary of the registration
3. Within 1 year from renewal of the registration.

Otherwise, the application will be deemed abandoned or the

registration cancelled.
RIGHTS CONFERRED BY
REGISTRATION
The owner of a registered mark shall have the exclusive right to
prevent all third parties not having the owner’s consent from using
in the course of trade identical or similar signs or containers for goods or
services which are identical or similar to those in respect of which the
trademark is registered where such use would result in a likelihood of
confusion. In case of the use, of an identical sign for identical goods or
services, a likelihood of confusion shall be presumed.
RIGHTS OF AN OWNER OF A
WELL KNOWN MARK
The exclusive right of the owner of a well-known mark which is
registered in the Philippines, shall extend to goods and services
which are not similar to those in respect of which the mark is
registered: Provided, That use of that mark in relation to those goods
or services would indicate a connection between those goods or
services and the owner of the registered mark: Provided, further, That
the interests of the owner of the registered mark are likely to be
damaged by such use.
RIGHTS OF AN OWNER OF A
WELL KNOWN MARK
Under Philippine law, a trade name of a national of a State that is a
party to the Paris Convention, whether or not the trade name forms
part of a trademark, is protected "without the obligation of filing or
registration.” (FREDCO vs. HARDVARD)
"Harvard" is the trade name of the world famous Harvard University,
and it is also a trademark of Harvard University. Under Article 8 of
the Paris Convention, as well as Section 37 of R.A. No. 166,
Harvard University is entitled to protection in the Philippines of
its trade name "Harvard" even without registration of such trade
name in the Philippines. This means that no educational entity in the
Philippines can use the trade name "Harvard" without the consent of
Harvard University. Likewise, no entity in the Philippines can
claim, expressly or impliedly through the use of the name and
mark "Harvard," that its products or services are authorized,
approved, or licensed by, or sourced from, Harvard
University without the latter’s consent.
CANCELLATION OF REGISTRATION
A petition to cancel registration of a mark under this act may be
filed with the Bureau of Legal Affairs by any person who believes
that he is or will be damaged by the registration of a mark.
Period to File: within 5 years from the date of the
registration of the mark. Except in the following cases:
1. If the registered owner of the mark without legitimate reason
fails to use the mark within the Philippines during an
uninterrupted period of three (3) years or longer.
2. If the registered mark becomes the generic name for the
goods or services, or a portion thereof, for which it is
registered, or has been abandoned, or its registration was
obtained fraudulently or contrary to the IP Law, or if the
registered mark is being used by, or 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.
CANCELLATION OF REGISTRATION
3. In any action to enforce the rights to a registered mark –
the court or the administrative agency vested with jurisdiction
to hear and adjudicate any action to enforce the rights to a
 registered mark shall likewise exercise jurisdiction to
determine whether the registration of said mark may be
cancelled in accordance with the Intellectual Property Law.
TRADEMARK INFRINGMENT
Any person who shall, without the consent of the owner of
the registered mark:
1. Use in commerce any reproduction, counterfeit, copy, or
colorable imitation of a registered mark or the same container
or a dominant feature thereof in connection with the sale,
offering for sale, distribution, advertising of any goods or
services including other preparatory steps necessary to
carry out the sale of any goods or services on or in
connection with which such use is likely to cause
confusion, or to cause mistake, or to deceive; or
TRADEMARK INFRINGMENT
2. Reproduce, counterfeit, copy or colorably imitate a
 registered mark or a dominant feature thereof and apply
such reproduction, counterfeit, copy or colorable imitation to
labels, signs, prints, packages, wrappers, receptacles or
advertisements intended to be used in commerce upon
or in connection with the sale, offering for sale, distribution,
or advertising of goods or services on or in connection with
which such use is likely to cause confusion, or to cause
mistake, or to deceive.
TRADEMARK INFRINGMENT
HOLISTIC OR TOTALITY TEST: considers the entirety of
the marks in question.

DOMINANCY TEST: focus is on prevalent or dominant

features. Confusing similarity is to be determined not only on
the visual but also on the aural and connotative comparisons and
overall impressions between the two trademarks..
TRADEMARK INFRINGMENT
CASE: DEL MONTE CORPORATION and PHILIPPINE
PACKING CORPORATION vs. CA and SUNSHINE SAUCE
MANUFACTURING INDUSTRIES

Petitioner Del Monte and PhilPack (authorized to manufacture

and sell Del Monte products) sued respondent Sunshine Sauce
for infringement and unfair competition, among others, for using
a logo similar to del monte.

ISSUE: WON Sunshine Sauce is guilty of infringement for the

use of a logo similar to that of Del Monte?

HELD: Yes. Totality Test was applied.

TRADEMARK INFRINGMENT
It has been held that in making purchases, the consumer must
depend upon his recollection of the appearance of the product which
he intends to purchase. The buyer having in mind the
mark/label of the respondent must rely upon his memory of
the petitioner's mark. Unlike the judge who has ample time to
minutely examine the labels in question in the comfort of his sala,
the ordinary shopper does not enjoy the same opportunity.

A number of courts have held that to determine whether a

trademark has been infringed, we must consider the mark as
a whole and not as dissected. If the buyer is deceived, it is
attributable to the marks as a totality, not usually to any part of it.
The court therefore should be guided by its first impression, for a
buyer acts quickly and is governed by a casual glance, the value of
which may be dissipated as soon as the court assumes to analyze
carefully the respective features of the mark.
TRADEMARK INFRINGMENT
If the labels were analyzed together it is not difficult to see that
the Sunshine label is a colorable imitation of the Del
Monte trademark. The predominant colors used in the Del
Monte label are green and red-orange, the same with Sunshine.
The word "catsup" in both bottles is printed in white and the
style of the print/letter is the same. Although the logo of
Sunshine is not a tomato, the figure nevertheless approximates
that of a tomato.
TRADEMARK INFRINGMENT
CASE: MCDONALD’S CORPORATION vs. LC BIGMAK
BURGER, INC.

Petitioner McDonald’s is the owner of a family of marks including

that for “Big Mac” sued respondent LC BigMak for infringement
and unfair competition for using “Big Mak”.

ISSUE: WON the use of “Big Mak” can cause confusion that will
amount to infringement?
HELD: Yes. Dominancy Test applied.
TRADEMARK INFRINGMENT
Respondents assert that their "Big Mak" hamburgers cater mainly
to the low-income group while petitioners' "Big Mac" hamburgers
cater to the middle and upper income groups. Even if this is true,
the likelihood of confusion of business remains, since the
low-income group might be led to believe that the "Big
Mak" hamburgers are the low-end hamburgers marketed
by petitioners. After all, petitioners have the exclusive right to
use the "Big Mac" mark. On the other hand, respondents would
benefit by associating their low end hamburgers, through
the use of the "Big Mak" mark, with petitioners' high-end
"Big Mac" hamburgers, leading to likelihood of confusion in
the identity of business.
TRADEMARK INFRINGMENT
Respondents use their "Big Mak" mark on hamburgers, the same
food product that petitioners' sell with the use of their registered
mark "Big Mac." Whether a hamburger is single, double or triple
decker, and whether wrapped in plastic or styrofoam, it remains
the same hamburger food product. Even respondents' use of
the "Big Mak" mark on non-hamburger food products cannot
excuse their infringement of petitioners' registered mark,
otherwise registered marks will lose their protection under the
law.