intellectual property law.docx

INTELLECTUAL PROPERTY LAW

C. Related Rights

1. Moral RightsArticle 6bis, BerneSections 193-197, 198 As Amended, 199, IPC

Article 6bis, Berne

Moral Rights:1. To claim authorship; to object to certain modifications and other derogatory actions;2. After the author's death; 3. Means of redress

(1) Independently of the author's economic rights, and even after the transfer of the said rights, the author shall have the right to claim authorship of the work and to object to any distortion, mutilation or other modification of, or other derogatory action in relation to, the said work, which would be prejudicial to his honor or reputation.

(2) The rights granted to the author in accordance with the preceding paragraph shall, after his death, be maintained, at least until the expiry of the economic rights, and shall be exercisable by the persons or institutions authorized by the legislation of the country where protection is claimed. However, those countries whose legislation, at the moment of their ratification of or accession to this Act, does not provide for the protection after the death of the author of all the rights set out in the preceding paragraph may provide that some of these rights may, after his death, cease to be maintained.

(3) The means of redress for safeguarding the rights granted by this Article shall be governed by the legislation of the country where protection is claimed.

Sections 193-197, 198 As Amended, 199, IPC

CHAPTER XMORAL RIGHTS

Section 193. Scope of Moral Rights. - The author of a work shall, independently of the economic rights in Section 177 or the grant of an assignment or license with respect to such right, have the right:

193.1. To require that the authorship of the works be attributed to him, in particular, the right that his name, as far as practicable, be indicated in a prominent way on the copies, and in connection with the public use of his work;

193.2. To make any alterations of his work prior to, or to withhold it from publication;

193.3. To object to any distortion, mutilation or other modification of, or other derogatory action in relation to, his work which would be prejudicial to his honor or reputation; and

193.4. To restrain the use of his name with respect to any work not of his own creation or in a distorted version of his work. (Sec. 34, P.D. No. 49)

Section 194. Breach of Contract. - An author cannot be compelled to perform his contract to create a work or for the publication of his work already in existence. However, he may be held liable for damages for breach of such contract. (Sec. 35, P.D. No. 49)

Section 195. Waiver of Moral Rights. - An author may waive his rights mentioned in Section 193 by a written instrument, but no such waiver shall be valid where its effects is to permit another:

195.1. To use the name of the author, or the title of his work, or otherwise to make use of his reputation with respect to any version or adaptation of his work which, because of alterations therein, would substantially tend to injure the literary or artistic reputation of another author; or

195.2. To use the name of the author with respect to a work he did not create. (Sec. 36, P.D. No. 49)

Section 196. Contribution to Collective Work. - When an author contributes to a collective work, his right to have his contribution attributed to him is deemed waived unless he expressly reserves it. (Sec. 37, P.D. No. 49)

Section 197. Editing, Arranging and Adaptation of Work. - In the absence of a contrary stipulation at the time an author licenses or permits another to use his work, the necessary editing, arranging or adaptation of such work, for publication, broadcast, use in a motion picture, dramatization, or mechanical or electrical reproduction in accordance with the reasonable and customary standards or requirements of the medium in which the work is to be used, shall not be deemed to contravene the author's rights secured by this chapter. Nor shall complete destruction of a work unconditionally transferred by the author be deemed to violate such rights. (Sec. 38, P.D. No. 49)

SEC. 198. Term of Moral Rights . – 198.1. the right of an author under Section 193.1. shall last during the lifetime of the author and in perpetuity after his death while the rights under Sections 193.2. 193.3. and 193.4. shall be coterminous with the economic rights, the moral rights shall not be assignable or subject to license. the person or persons to be charged with the posthumous enforcement of these rights shall be named in a written instrument which shall be filed with the National Library. In default of such person or persons, such enforcement shall devolve upon either the author’s heirs, and in default of the heirs, the Director of the National Library. ( Sec. 17, R.A. 10372 )

Page | 48


Section 199. Enforcement Remedies. - Violation of any of the rights conferred by this Chapter shall entitle those charged with their enforcement to the same rights and remedies available to a copyright owner. In addition, damages which may be availed of under the Civil Code may also be recovered. Any damage recovered after the creator's death shall be held in trust for and remitted to his heirs, and in default of the heirs, shall belong to the government. (Sec. 40, P D No. 49)

2. Rights to Proceeds in Subsequent Transfers (Droit De Suite or Follow Up Rights)

Sections 200-201, IPC

CHAPTER XIRIGHTS TO PROCEEDS IN SUBSEQUENT TRANSFERS

Section 200. Sale or Lease of Work. - In every sale or lease of an original work of painting or sculpture or of the original manuscript of a writer or composer, subsequent to the first disposition thereof by the author, the author or his heirs shall have an inalienable right to participate in the gross proceeds of the sale or lease to the extent of five percent (5%). This right shall exist during the lifetime of the author and for fifty (50) years after his death. (Sec. 31, P.D. No. 49)

Section 201. Works Not Covered. - The provisions of this Chapter shall not apply to prints, etchings, engravings, works of applied art, or works of similar kind wherein the author primarily derives gain from the proceeds of reproductions. (Sec. 33, P.D. No. 49)

3. Neighboring RightsSec. 202, IPCSec. 212, IPC

Sec. 202, IPC

CHAPTER XIIRIGHTS OF PERFORMERS, PRODUCERS OF SOUNDS RECORDINGS AND BROADCASTING ORGANIZATIONS

Section 202. Definitions. - For the purpose of this Act, the following terms shall have the following meanings:

202.1. "Performers" are actors, singers, musicians, dancers, and other persons who act, sing, declaim, play in, interpret, or otherwise perform literary and artistic work;

202.2. "Sound recording" means the fixation of the sounds of a performance or of other sounds, or representation of sound, other than in the form of a fixation incorporated in a cinematographic or other audiovisual work;

202.3. An "audiovisual work or fixation" is a work that consists of a series of related images which impart the impression of motion, with or without accompanying sounds, susceptible of being made visible and, where accompanied by sounds, susceptible of being made audible;

202.4. "Fixation" means the embodiment of sounds, or of the representations thereof, from which they can be perceived, reproduced or communicated through a device;

202. 5. "Producer of a sound recording" means the person, or the legal entity, who or which takes the initiative and has the responsibility for the first fixation of the sounds of a performance or other sounds, or the representation of sounds;

202.6. "Publication of a fixed performance or a sound recording" means the offering of copies of the fixed performance or the sound recording to the public, with the consent of the right holder: Provided, That copies are offered to the public in reasonable quality;

202.7. "Broadcasting" means the transmission by wireless means for the public reception of sounds or of images or of representations thereof; such transmission by satellite is also "broadcasting" where the means for decrypting are provided to the public by the broadcasting organization or with its consent;

202.8. "Broadcasting organization" shall include a natural person or a juridical entity duly authorized to engage in broadcasting; and

202.9 "Communication to the public of a performance or a sound recording" means the transmission to the public, by any medium, otherwise than by broadcasting, of sounds of a performance or the representations of sounds fixed in a sound recording. For purposes of Section 209, "communication to the public" includes making the sounds or representations of sounds fixed in a sound recording audible to the public.

Sec. 212, IPC

CHAPTER XVLIMITATIONS ON PROTECTION

Section 212. Limitations on Rights. - Sections 203, 208 and 209 shall not apply where the acts referred to in those Sections are related to:

212.1. The use by a natural person exclusively for his own personal purposes;

Page | 49


212.2. Using short excerpts for reporting current events;

212.3. Use solely for the purpose of teaching or for scientific research; and

212.4. Fair use of the broadcast subject to the conditions under Section 185. (Sec. 44, P.D. No. 49a)

a. Rights of PerformersSections 203-204, as amended, 205-207, IPCSec. 215, IPC

Section 203. Scope of Performers' Rights. - Subject to the provisions of Section 212, performers shall enjoy the following exclusive rights:

203.1. As regards their performances, the right of authorizing:

(a) The broadcasting and other communication to the public of their performance; and

(b) The fixation of their unfixed performance.

203.2 . the right of authorizing the direct or indirect reproduction of their performances fixed in sound recordings or audiovisual works or fixations in any manner or form;

203.3 . Subject to the provisions of Section 206, the right of authorizing the first public distribution of the original and copies of their performance fixed in sound recordings or audiovisual works or fixations through sale or rental of other forms of transfer of ownership;

203.4 . the right of authorizing the commercial rental to the public of the original and copies of their performances fixed in sound recordings or audiovisual works or fixations, even after distribution of them by, or pursuant to the authorization by the performer; and

203.5 . the right of authorizing the making available to the public of their performances fixed in sound recordings 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. (Sec. 42, P.D. No. 49A) ( Sec. 18, R.A. 10372 )

Section 204. Moral Rights of Performers. - 204.1. Independently of a performer’s economic rights, the performer shall, as regards his live aural performances or performances fixed in sound recordings or in audiovisual works or fixations, have the right to claim to be identified as the performer of his performances, except where the omission is dictated by the manner of the use of the performance, and to object to any distortion, mutilation or other modification of his performances that

would be prejudicial to his reputation. ( Sec. 19, R.A. 10372 )

204.2. The rights granted to a performer in accordance with Subsection 203.1 shall be maintained and exercised fifty (50) years after his death, by his heirs, and in default of heirs, the government, where protection is claimed. (Sec. 43, P.D. No. 49)

Section 205. Limitation on Right. - 205.1. Subject to the provisions of Section 206, once the performer has authorized the broadcasting or fixation of his performance, the provisions of Sections 203 shall have no further application.

205.2. The provisions of Section 184 and Section 185 shall apply mutatis mutandis to performers. (n)

Section 206. Additional Remuneration for Subsequent Communications or Broadcasts. - Unless otherwise provided in the contract, in every communication to the public or broadcast of a performance subsequent to the first communication or broadcast thereof by the broadcasting organization, the performer shall be entitled to an additional remuneration equivalent to at least five percent (5%) of the original compensation he or she received for the first communication or broadcast. (n)

Section 207. Contract Terms. - Nothing in this Chapter shall be construed to deprive performers of the right to agree by contracts on terms and conditions more favorable for them in respect of any use of their performance. (n)

Sec. 215, IPCSection 215. Term of Protection for Performers, Producers and Broadcasting Organizations. - 215.1. The rights granted to performers and producers of sound recordings under this law shall expire:

(a) For performances not incorporated in recordings, fifty (50) years from the end of the year in which the performance took place; and

(b) For sound or image and sound recordings and for performances incorporated therein, fifty (50) years from the end of the year in which the recording took place.

215.2. In case of broadcasts, the term shall be twenty (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. (Sec. 55, P.D. No. 49a)

b. Rights of Producers of Sound RecordingSection 171, IP Code as amendedSections 208 as amended, 209-210, IPCSec. 215, IPC

Page | 50


Section 171. Definitions. - For the purpose of this Act, the following terms have the following meaning:

171.1. "Author" is the natural person who has created the work;

171.2. A "collective work" is a work which has been created by two (2) or more natural persons at the initiative and under the direction of another with the understanding that it will be disclosed by the latter under his own name and that contributing natural persons will not be identified;

171.3 . ‘Communication to the public’ or ‘communicate to the public’ means any communication to the public, including broadcasting, rebroadcasting, retransmitting by cable, broadcasting and retransmitting by satellite, and includes the making of a work available to the public by wire or wireless means in such a way that members of the public may access these works from a place and time individually chosen by them; ( Sec. 4, R.A. 10372 )

171.4. A "computer" is an electronic or similar device having information-processing capabilities, and a "computer program" is a set of instructions expressed in words, codes, schemes or in any other form, which is capable when incorporated in a medium that the computer can read, of causing the computer to perform or achieve a particular task or result;

171.5. "Public lending" is the transfer of possession of the original or a copy of a work or sound recording for a limited period, for non-profit purposes, by an institution the services of which are available to the public, such as public library or archive;

171.6. "Public performance", in the case of a work other than an audiovisual work, is the recitation, playing, dancing, acting or otherwise performing the work, either directly or by means of any device or process; in the case of an audiovisual work, the showing of its images in sequence and the making of the sounds accompanying it audible; and, in the case of a sound recording, making the recorded sounds audible at a place or at places where persons outside the normal circle of a family and that family's closest social acquaintances are or can be present, irrespective of whether they are or can be present at the same place and at the same time, or at different places and/or at different times, and where the performance can be perceived without the need for communication within the meaning of Subsection 171.3;

171.7. "Published works" means works, which, with the consent of the authors, are made available to the public by wire or wireless means in such a way that members of the public may access these works from a place and time individually chosen by them: Provided, That availability of such copies has been such, as to satisfy the reasonable requirements of the public, having regard to the nature of the work;

171.8. "Rental" is the transfer of the possession of the original or a copy of a work or a sound recording for a limited period of time, for profit-making purposes;

171.9. ‘Reproduction’ is the making of one (1) or more copies, temporary or permanent, in whole or in part, of a work or a sound recording in any manner or form without prejudice to the provisions of Section 185 of this Act (Sec. 41[E], P.D. No. 49a) ( Sec. 5, R.A. 10372 ) ;

171.10. A "work of applied art" is an artistic creation with utilitarian functions or incorporated in a useful article, whether made by hand or produced on an industrial scale;

171.11. A "work of the Government of the Philippines" is a work created by an officer or employee of the Philippine Government or any of its subdivisions and instrumentalities, including government-owned or controlled corporations as a part of his regularly prescribed official duties;

171.12 . ‘Technological measure’ means any technology, device or component that, in the normal course of its operation, restricts acts in respect of a work, performance or sound recording, which are not authorized by the authors, performers or producers of sound recordings concerned or permitted by law;

171.13 . ‘Rights management information’ means information which identifies the work, sound recording or performance; the author of the work, producer of the sound recording or performer of the performance; the owner of any right in the work, sound recording or performance; or information about the terms and conditions of the use of the work, sound recording or performance; and any number or code that represent such information, when any of these items is attached to a copy of the work, sound recording or fixation of performance or appears in conjunction with the communication to the public of a work, sound recording or performance. ( Sec. 6, R.A. 10372 )

Sections 208 as amended, 209-210, IPC

CHAPTER XIIIPRODUCERS OF SOUND RECORDINGS

Section 208. Scope of Right. - Subject to the provisions of Section 212, producers of sound recordings shall enjoy the following exclusive rights:

208.1. The right to authorize the direct or indirect reproduction of their sound recordings, in any manner or form; the placing of these reproductions in the market and the right of rental or lending;

208.2. The right to authorize the first public distribution of the original and copies of their sound recordings through sale or rental or other forms of transferring ownership; and

Page | 51


208.3. The right to authorize the commercial rental to the public of the original and copies of their sound recordings, even after distribution by them by or pursuant to authorization by the producer. (Sec. 46, P.D. No. 49a)

208.4 . the right to authorize the making available to the public of their sound recordings in such a way that members of the public may access the sound recording from a place and at a time individually chosen or selected by them, as well as other transmissions of a sound recording with like effect. ( Sec. 20, R.A. 10372 )

Section 209. Communication to the Public. - If a sound recording published for commercial purposes, or a reproduction of such sound recording, is used directly for broadcasting or for other communication to the public, or is publicly performed with the intention of making and enhancing profit, a single equitable remuneration for the performer or performers, and the producer of the sound recording shall be paid by the user to both the performers and the producer, who, in the absence of any agreement shall share equally. (Sec. 47, P.D. No. 49a)

Section 210. Limitation of Right. - Sections 184 and 185 shall apply mutatis mutandis to the producer of sound recordings. (Sec. 48, P.D. No. 49a)

Sec. 215, IPCSection 215. Term of Protection for Performers, Producers and Broadcasting Organizations. - 215.1. The rights granted to performers and producers of sound recordings under this law shall expire:

(a) For performances not incorporated in recordings, fifty (50) years from the end of the year in which the performance took place; and

(b) For sound or image and sound recordings and for performances incorporated therein, fifty (50) years from the end of the year in which the recording took place.


c. Rights of Broadcasting OrganizationsSection 171.3, IPC as amended,Section 211, IPCSec. 215.2, IPCABC-CBN v. Phil. Multi-Media (2009)

Section 171.3, IPC as amended,

171.3 . ‘Communication to the public’ or ‘communicate to the public’ means any communication to the public, including broadcasting, rebroadcasting, retransmitting by cable, broadcasting and retransmitting by satellite, and includes the making of a work available to the public by wire or wireless means in such a way that members of the public may access these works from a place and time individually chosen by them ( Sec. 4, R.A. 10372 )

Section 211, IPCCHAPTER XIVBROADCASTING ORGANIZATIONS

Section 211. Scope of Right. - Subject to the provisions of Section 212, broadcasting organizations shall enjoy the exclusive right to carry out, authorize or prevent any of the following acts:

211.1. The rebroadcasting of their broadcasts;

211.2. The recording in any manner, including the making of films or the use of video tape, of their broadcasts for the purpose of communication to the public of television broadcasts of the same; and

211.3. The use of such records for fresh transmissions or for fresh recording. (Sec. 52, P.D. No. 49)

Sec. 215.2, IPCSection 215. Term of Protection for Performers, Producers and Broadcasting Organizations.


ABS-CBN Broadcasting v. Philippine Multi-Media System (2009)

FACTS: ABS-CBN contends that PMSI’s unauthorized rebroadcasting of Channels 2 and 23 by replaying shows therefrom on digital direct-to-home (DTH) television all over the Philippines is an infringement of ABS-CBN’s broadcasting rights and copyright under the IP Code. PMSI counters that it is merely following the “must-carry” rule, which requires all cable television system operators, to which it is akin, to “must-carry” the television signals of the authorized television broadcast stations

ISSUE: Is PMSI engaged in rebroadcasting and is therefore in violation of ABS-CBN’s rights?

Page | 52


HELD: PMSI is not engaged in rebroadcasting and thus cannot be considered to have infringed ABS-CBN’s broadcasting rights and copyright

Section 202.7 of the IP Code, thus, provides two instances wherein there is broadcasting, to wit:

1. The transmission by wireless means for the public reception of sounds or of images or of representations thereof; and

2. The transmission by satellite for the public reception of sounds or of images or of representations thereof where the means for decrypting are provided to the public by the broadcasting organization or with its consent.

It is under the second category that PMSI’s service must be examined since it is satellite-based. The elements of such category are as follows:

1. There is transmission of sounds or images or of representations thereof;

2. The transmission is through satellite;

3. The transmission is for public reception; and

4. The means for decrypting are provided to the public by the broadcasting organization or with its consent.

On the other hand, rebroadcasting as defined in Article 3(g) of the International Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations, otherwise known as the 1961 Rome Convention, of which the Republic of the Philippines is a signatory, is “the simultaneous broadcasting by one broadcasting organization of the broadcast of another broadcasting organization.”

It is only the presence of all the above elements can a determination that PMSI is broadcasting and consequently, rebroadcasting ABS-CBN’s signals in violation of Sections 211 and 177 of the IP Code, may be arrived at.

Accordingly, the transmission contemplated under Section 202.7 of the IP Code presupposes that the origin of the signals is the broadcaster. Hence, a program that is broadcasted is attributed to the broadcaster. In the same manner, the rebroadcasted program is attributed to the rebroadcaster.

In the case at hand, PMSI is not the origin nor does it claim to be the origin of the programs broadcasted by the Appellee. Appellant did not make and transmit on its own but merely carried the existing signals of the Appellee. When Appellant’s subscribers view Appellee’s programs in Channels 2 and 23, they know that the origin thereof was the Appellee.

ABS-CBN creates and transmits its own signals; PMSI merely carries such signals which the viewers receive in its unaltered form. PMSI does not produce, select, or determine the programs to be shown in Channels 2 and 23. Likewise, it does not pass itself off as the origin or author of such programs. Insofar as Channels 2 and 23 are concerned, PMSI merely retransmits the same in accordance with Memorandum Circular 04-08-88. With regard to its premium channels, it buys the channels from content providers and transmits on an as-is basis to its viewers. Clearly, PMSI does not perform the functions of a broadcasting organization; thus, it cannot be said that it is engaged in rebroadcasting Channels 2 and 23.

PMSI’s services are similar to a cable television system because the services it renders fall under cable “retransmission.” When a radio or television program is being broadcast, it can be retransmitted to new audiences by means of cable or wire. In the early days of cable television, it was mainly used to improve signal reception, particularly in so-called “shadow zones,” or to distribute the signals in large buildings or building complexes. With improvements in technology, cable operators now often receive signals from satellites before retransmitting them in an unaltered form to their subscribers through cable.

In principle, cable retransmission can be either simultaneous with the broadcast over-the-air or delayed (deferred transmission) on the basis of a fixation or a reproduction of a fixation. Furthermore, they might be unaltered or altered, for example through replacement of commercials, etc. In general, however, the term “retransmission” seems to be reserved for such transmissions which are both simultaneous and unaltered.

The Rome Convention does not grant rights against unauthorized cable retransmission. Without such a right, cable operators can retransmit both domestic and foreign over the air broadcasts simultaneously to their subscribers without permission from the broadcasting organizations or other rightholders and without obligation to pay remuneration.

Thus, while the Rome Convention gives broadcasting organizations the right to authorize or prohibit the rebroadcasting of its broadcast, however, this protection does not extend to cable retransmission. The retransmission of ABS-CBN’s signals by PMSI – which functions essentially as a cable television – does not therefore constitute rebroadcasting in violation of the former’s intellectual property rights under the IP Code.

MUST-CARRY RULE

It must be emphasized that the law on copyright is not absolute. The IP Code provides that:

Sec. 184. Limitations on Copyright. -

Page | 53


184.1. Notwithstanding the provisions of Chapter V, the following acts shall not constitute infringement of copyright:

x x x x

(h) The use made of a work by or under the direction or control of the Government, by the National Library or by educational, scientific or professional institutions where such use is in the public interest and is compatible with fair use;

The carriage of ABS-CBN’s signals by virtue of the must-carry rule in Memorandum Circular No. 04-08-88 is under the direction and control of the government though the NTC which is vested with exclusive jurisdiction to supervise, regulate and control telecommunications and broadcast services/facilities in the Philippines.26 The imposition of the must-carry rule is within the NTC’s power to promulgate rules and regulations, as public safety and interest may require, to encourage a larger and more effective use of communications, radio and television broadcasting facilities, and to maintain effective competition among private entities in these activities whenever the Commission finds it reasonably feasible.

The “Must-Carry Rule” favors both broadcasting organizations and the public. It prevents cable television companies from excluding broadcasting organization especially in those places not reached by signal. Also, the rule prevents cable television companies from depriving viewers in far-flung areas the enjoyment of programs available to city viewers. In fact, this Office finds the rule more burdensome on the part of the cable television companies. The latter carries the television signals and shoulders the costs without any recourse of charging. On the other hand, the signals that are carried by cable television companies are dispersed and scattered by the television stations and anybody with a television set is free to pick them up.

Indeed, intellectual property protection is merely a means towards the end of making society benefit from the creation of its men and women of talent and genius. This is the essence of intellectual property laws, and it explains why certain products of ingenuity that are concealed from the public are outside the pale of protection afforded by the law. It also explains why the author or the creator enjoys no more rights than are consistent with public welfare.

NATURE OF FRANCHISE

ABS-CBN was granted a legislative franchise under Republic Act No. 7966, Section 1 of which authorizes it “to construct, operate and maintain, for commercial purposes and in the public interest, television and radio broadcasting in and throughout the Philippines x x x.” Section 4 thereof mandates that it “shall provide adequate public service time to enable the government, through the said broadcasting stations, to reach the population on important public issues; provide at all times sound and balanced programming; promote public participation such as in

community programming; assist in the functions of public information and education x x x.”

A franchise is a mere privilege which may be reasonably burdened with some form of public service. In truth, radio and television broadcasting companies, which are given franchises, do not own the airwaves and frequencies through which they transmit broadcast signals and images. They are merely given the temporary privilege of using them. Since a franchise is a mere privilege, the exercise of the privilege may reasonably be burdened with the performance by the grantee of some form of public service.

D. Presidential Decree No. 285 (Repealed by R.A. 8293, Sec. 239.1)Sec. 239, IPC

PRESIDENTIAL DECREE No. 285 September 3, 1973

AUTHORIZING THE COMPULSORY LICENSING OR REPRINTING OF EDUCATIONAL, SCIENTIFIC OR CULTURAL BOOKS AND MATERIALS AS A TEMPORARY OR EMERGENCY MEASURE WHENEVER THE PRICES THEREOF BECOME SO EXORBITANT AS TO BE DETRIMENTAL TO THE NATIONAL INTEREST

WHEREAS, the spiralling of prices of educational, scientific or cultural books and materials has reached very serious proportion;

WHEREAS, it is in the national interest that such books and materials be made available to everybody at the least cost; and

WHEREAS, this can be achieved by the compulsory licensing and reprinting of both domestic and foreign educational, scientific or cultural books and materials, as a temporary or emergency measure, whenever their prices become exorbitant;

NOW, THEREFORE, I, FERDINAND E. MARCOS, President of the Philippines, by virtue of the powers vested in me by the Constitution as Commander-in-Chief of all the Armed Forces of the Philippines, and pursuant to Proclamation No. 1081 dated September 21, 1972, and General Order No. 1 dated September 22, 1972, do hereby order and decree as follows:

Section 1. Whenever the price of any educational, scientific or cultural book, pamphlet and other written materials, whether of domestic or foreign origin, has become so exorbitant as to be detrimental to the national interest, as determined and declared by a committee composed of the Secretary of Education and Culture, such book, pamphlet or written material may be reprinted by the Government or by

Page | 54


any private printer or printers for a limited period and only for the purpose of making the same available to the people at reasonable cost.

Section 2. The reprinted books, pamphlets and materials shall bear proper acknowledgment of the source, authorship, copyright proprietors and past printers, if known, as well as the names and addresses of the reprinter or reprinters. If abbreviated or edited in any manner, such fact shall be stated be stated. The following inscription shall also appear on the covers thereof: "Export of this Book or material from the Philippines is punishable by law." The export of such reprints under any circumstance is hereby prohibited.

Section 3. The reprinting of the above books, pamphlets and materials shall be subject to the condition that the reprinter shall pay, in local currency, a royalty of three per centum (3%) of the gross selling price, if so demanded by the authors, publishers or copyright proprietors concerned, whoever is legally entitled thereto: Provided, That in the case of non-resident authors, publishers or copyright proprietors, the payment of the royalties shall be made only to them personally in the Philippines or their respective representative or branch offices in the Philippines.

Section 4. Any person, natural or judicial, who shall violate the provisions of this Decree shall, upon conviction thereof, be punished by imprisonment of not less than Five Thousand Pesos nor more than two Ten Thousand Pesos. If the violation is committed by a firm, company or corporation, the manager or person in charge of the management of the business thereof shall be responsible thereof. Books and materials printed or published or exported in violation of this Decree shall be immediately confiscated and the establishment that printed or published or exported them shall forthwith be closed and its operation discontinued.

Section 5. The Committee herein named shall promulgate rules and regulations for the implementation of this Degree.

Section 6. This Decree shall take effect immediately, the provisions of any law, decree, executive order, treaty or executive agreement to the contrary notwithstanding.

Done in the City of Manila, this 3rd day of September, in the year of Our Lord, nineteen hundred and seventy-three.

Sec. 239, IPCSection 239. Repeals. - 239.1. All Acts and parts of Acts inconsistent herewith, more particularly Republic Act No. 165, as amended; Republic Act No. 166, as amended; and Articles 188 and 189 of the Revised Penal Code; Presidential Decree No. 49, including Presidential Decree No. 285, as amended, are hereby repealed.

239.2. Marks registered under Republic Act No. 166 shall remain in force but shall be deemed to have been granted under this Act and shall be due for renewal within the period provided for under this Act and, upon renewal shall be reclassified in accordance with the International Classification. Trade names and marks registered in the Supplemental Register under Republic Act No. 166 shall remain in force but shall no longer be subject to renewal.

239.3. The provisions of this Act shall apply to works in which copyright protection obtained prior to the effectivity of this Act is subsisting: Provided, That the application of this Act shall not result in the diminution of such protection. (n)

E. Republic Act. No. 9239 (Optical Media Act) and the Optical Media Board Rules of ProcedureSee Separate File

F. Republic Act No. 10088 or the Anti-Camcording Act of 2010.

REPUBLIC ACT NO. 10088

AN ACT TO PROHIBIT AND PENALIZE THE UNAUTHORIZED USE, POSSESSION AND/OR CONTROL OF AUDIOVISUAL RECORDING DEVICES FOR THE UNAUTHORIZED RECORDING OF CINEMATOGRAPHIC FILMS AND OTHER AUDIOVISUAL WORKS AND/OR THEIR SOUNDTRACKS IN AN EXHIBITION FACILITY, PROVIDING PENALTIES THEREFOR AND FOR OTHER PURPOSES

Be it enacted by the Senate and House of Representatives of the Philippines in Congress assembled:

Section 1. Short Title. - This Act shall be known as the "Anti-Camcording Act of 2010".

Section 2. Definition of Terms. - For purposes of this Act:

(a)"Audiovisual work" means a work that consists of a series of related images which are intrinsically intended to be shown by the use of machines or devices such as projectors, viewers or electronic equipment, together with accompanying sounds, if any, regardless of the nature of the material objects, such as films or tapes, in which the works are embodied.

(b)"Audiovisual recording device" means a digital or analog photographic or video camera, or any other technology or device capable of enabling the recording or transmission of a cinematographic film or other audiovisual work, or any part thereof, regardless of whether audiovisual recording is the sole or primary purpose of the device.

Page | 55


(c)"Authorized person" means the members of the Philippine National Police (PNP) and the National Bureau of Investigation (NBI) and/or any other person duly authorized by the same to exercise powers conferred upon by this Act.

(d)"Camcording" means any of the unlawful acts enumerated under Section 3 of this Act.

(e)"Cinematographic film" means any audiovisual work consisting of a series of related images which, when shown in succession, impart an impression of motion, together with accompanying sounds, if any.

(f)"Copy" means any article or thing in which the visual images or sounds comprised in any cinematographic film or audiovisual work are embodied, and includes the making of a copy which is in electronic format or transient or incidental to some other use thereof.

(g)"Copyright owner" means any one who has the exclusive rights comprised in a copyright as provided under Republic Act No. 8293, otherwise known as the Intellectual Property Code of the Philippines and related international treaties, conventions or agreements to which the Republic of the Philippines is a party.

(h)"Exclusive licensee" means a licensee who is authorized in writing and who, on behalf of the owner or prospective owner of copyright, to the exclusion of all other persons, is authorized to do an act within the Philippines that, by virtue of this Act, the owner of the copyright would, but for the license, have the exclusive right to do or to perform.

(i)"Exhibition facility" means any cinema, film theater, screening room, projection room or other venue that is used for the public exhibition of a cinematographic film or audiovisual work, whether or not a fee is chargeable.

(j)"Operator of an exhibition facility" means any person or entity who holds or is required to hold a license by the Securities and Exchange Commission CSEC, for companies and partnerships), the Department of Trade and Industry ('DTI', for sole proprietorships), the Movie and Television Review and Classification Board (MTRCB) or any and all other relevant government offices that have, or will have jurisdiction over exhibition facilities to operate the exhibition facility.

(k)"Relevant authority" means the officers, members and responsible personnel of law enforcement agencies such as the PNP and their adjuncts and the NBI.

(l)'Transmit" means to convey by any means, whether over a path or a combination of paths, provided by a material substance or by wireless means or otherwise, and whether or not in response to a request made.

Section 3. Acts Constituting Unauthorized Possession, Use and/or Control of Audiovisual Recording Devices. - It shall be unlawful for any person, at a time when copyright subsists in a cinematographic film or other audiovisual work or its

soundtrack and without the authorization of the copyright owner or exclusive licensee thereof, to:

(a)use or attempt to use an audiovisual recording device to transmit or make a copy of any performance in an exhibition facility of such cinematographic film or other audiovisual work or its soundtrack, or any part thereof;

(b)have in his/her possession, an audiovisual recording device in an exhibition facility, with the intent of using or attempts to use the audiovisual recording device to transmit or make a copy of any performance in the exhibition facility of such cinematographic film or other audiovisual work or its soundtrack, or any part thereof; or

(c) aid, abet or connive in the commission of the acts prohibited under this section.

Section 4. Penalties. - A person who will be found guilty of violating the provisions of Section 3 shall be subject to a fine of Fifty thousand pesos (Php50,000.00) but not exceeding Seven hundred fifty thousand pesos (Php750,000.00) and imprisonment of six (6) months and one (1) day to six (6) years and one (1) day.

If the purpose of the commission of the abovementioned acts is the sale, rental or other commercial distribution of a copy of the cinematographic or audiovisual work or its soundtrack, or any part thereof, the penalty shall be imposed in the maximum.

If the offender is an alien, said person shall immediately be deported after payment of the fine and after serving his/her sentence. He/She shall thereafter be refused entry into the Philippines.

If the offender is a government official or employee, the penalty shall include perpetual disqualification from public office and forfeiture of his/her right to vote and participate in any public election for a period of five (5) years.

Section 5. Presumptions as to the Subsistence of Copyright and/or Ownership of Copyright. - For purposes of Section 3, copyright shall be presumed to subsist in the subject cinematographic film or other audiovisual work or its soundtrack if the accused does not put in issue the question as to whether copyright subsists therein. However:

(a)where the accused puts such question in issue but does not satisfy the court that he/she does so in good faith, the presumption as to the subsistence of copyright herein shall apply, notwithstanding that the accused puts that question in issue;

(b)where the name of a person appears on copies of the subject cinematographic film or other audiovisual work or its soundtrack as made available to the public in such a way as to imply that the person was the maker thereof and, in the case of a person other than a body corporate, that name was his/her true name or a name by which he/she was commonly known, that person shall be presumed to be the

Page | 56


maker thereof and the copyright owner thereof, unless the contrary is established; and/or

(c)where the accused puts in issue the question of whether copyright subsists in the subject cinematographic film or other audiovisual work or its soundtrack, or the ownership of the copyright therein, an affidavit made in behalf of the copyright owner in which he/she makes assertions of facts relevant to showing that: (1) copyright subsists in the work or other subject matter; and/or, as the case may be, (2) he/she is the owner of the copyright, shall be admitted in evidence and shall be prima facie proof of the matters stated therein until the contrary is proved, unless the court requires that oral/testimonial evidence be adduced to prove those matters.

Section 6. No Defense on Account of Use for Private or Domestic Purposes. - It shall not be a defense that the transmission or making of the copy of the cinematographic film or other audiovisual work or its soundtrack, or any part thereof, was for private or domestic purposes or in connection with a fair use deal.

Section 7. Requirement for Posting of Notices in an Exhibition Facility on the Prohibition Against the Bringing into Said Exhibition Facility of Audiovisual Recording Devices and the Like. - All exhibition facilities, cinemas or theaters shall be required to conspicuously post in at least two (2) areas in the exhibition facility including, but not limited to, the areas where tickets are sold and the entrances of the exhibition facilities, notices or signages warning against the bringing of audiovisual recording devices into the cinematographic film/audiovisual screening/exhibition area, with a reservation that the management/operator of the exhibition facility will take into preventive and temporary custody such audiovisual recording device/s until the film/movie theater patron leaves the screening/exhibition area/facility.

Failure of the management/operator of the exhibition facility to comply with the foregoing requirement will subject said management/operator liable to pay a fine of Fifty thousand pesos (Php50,000.00).

Nothing in this Act shall prevent the management from performing such other precautionary measures so as to prevent the commission of the acts punishable herein.

Section 8. Powers of Authorized Persons to Enter an Exhibition Facility and Search the Same. - An authorized person, without a warrant and without payment of any admission fee or other charge, may enter and search any exhibition facility if the authorized person has reasonable ground to believe that any violation of this Act has been or is being committed and, due to the delay necessary to obtain a warrant could result in the loss or destruction of evidence, or for any other reason it would not be reasonably practicable to obtain a warrant.

Section 9. Other Powers of Authorized Persons. - An authorized person who has reasonable ground to believe that a violation under this Act has been or is being committed may:

(a)search any person if the person subject of the search has in his/her actual possession, any audiovisual recording device, in respect of which an offense under this Act has been or is being committed;

(b)seize, remove or detain any audiovisual recording device or other object which appears to contain, or likely to contain evidence of an offense committed under this Act;

(c)use reasonable force to remove any person or object obstructing the authorized person in the exercise of any power conferred upon him/her by this Act;

(d)detain any person, within a reasonable time not exceeding eighteen (18) hours, found in any place which the authorized person is empowered to enter and search if, after inquiry made, said authorized person has reasonable ground to believe that the person subject of the search is connected with the subject matter of the search and it is considered necessary to detain the person subject of the search to be able to adequately perform the search; and

(e)require the operator of an exhibition facility or any other person who appears to be at the time responsible for the control or management of the exhibition facility to give information or render assistance that may be necessary to enable the authorized person to carry out the functions under this Act.

Section 10. Forfeiture and Disposal of Unauthorized Copy of Cinematographic Film or Other Audiovisual Work /Audiovisual Recording Devices Used in the Commission of the Acts Penalized Under this Act. - The court before which a person charged with an offense in violation/contravention of this Act, whether or not said person charged is convicted of the offense, may order that any copy of a cinematographic film or other audiovisual work in which copyright subsists, or parts thereof which appears to the court to be an unauthorized copy, and any audiovisual recording device or other equipment in the possession of the alleged offender or the court, be destroyed or delivered to the owner or the exclusive licensee of the copyright owner concerned or otherwise dealt with in such a manner as the court deems fit.

In the event that the court retains representative samples of the unauthorized copy of a cinematographic film or other audiovisual work, or audiovisual recording devices or other equipment for evidentiary purposes in the prosecution of the offense for which an accused is charged, the retained samples shall remain in custodia legis until the final resolution of the court proceedings thereon.

Section 11. Enforcement. - The PNP, in coordination with the NBI, the Optical Media Board (OMB), operators of the cinemas, theaters or exhibition facilities and owners of the cinematographic films or audiovisual works and other soundtracks,

Page | 57


shall enforce the provisions of this Act. The PNP may deputize, for a defined period, the heads or personnel of such agencies and instrumentalities of government or private sector representatives or stakeholders of rights over cinematographic films/audiovisual works and their soundtracks, to perform, the enforcement functions required under this Act.

Section 12. Separability Clause. - If any provision of this Act is declared invalid, the other parts or provisions hereof not affected thereby shall remain and continue to be in full force and effect.

Section 13. Repealing Clause. - All laws, decrees, ordinances or rules and regulations which are inconsistent with or contrary to the provisions of this Act are hereby amended or repealed.

Section 14. Effectivity. - This Act shall take effect fifteen (15) days after its complete publication in at least two (2) newspapers of national circulation.

Approved: MAY 13 2010

Page | 58


VI. LAW ON TRADEMARKS, TRADENAMES AND SERVICE MARKSA. Legislative HistoryR.A. 166Sec. 239.2, IPCSec. 235.2, IPCSec. 236.2, IPCSec. 236, IPCSec. 241, IPCSec. 239, IPC

Note: R.A. 166 was amended by R.A. 638, AMONG OTHERS, before being repealed.

Sec. 239, IPCSection 239. Repeals. - 239.1. All Acts and parts of Acts inconsistent herewith, more particularly Republic Act No. 165, as amended; Republic Act No. 166, as amended; and Articles 188 and 189 of the Revised Penal Code; Presidential Decree No. 49, including Presidential Decree No. 285, as amended, are hereby repealed.


239.3. The provisions of this Act shall apply to works in which copyright protection obtained prior to the effectivity of this Act is subsisting: Provided, That the application of this Act shall not result in the diminution of such protection.

Sec. 235.2, IPC235.2. All applications for registration of marks or trade names pending in the Bureau of Patents, Trademarks and Technology Transfer at the effective date of this Act may be amended, if practicable to bring them under the provisions of this Act. The prosecution of such applications so amended and the grant of registrations thereon shall be proceeded with in accordance with the provisions of this Act. If such amendments are not made, the prosecution of said applications shall be proceeded with and registrations thereon granted in accordance with the Acts under which said applications were filed, and said Acts are hereby continued in force to this extent for this purpose only, notwithstanding the foregoing general repeal thereof.

Sec. 236, IPCSection 236. Preservation of Existing Rights. Nothing herein shall adversely affect the rights on the enforcement of rights in patents, utility models, industrial designs, marks and works, acquired in good faith prior to the effective date of this Act.

Sec. 241, IPCSECTION 241. Effectivity. This Act shall take effect on 1 January 1998.

B. Definition of trademarksSection 121.1, IPC

Sec. 121.1, IPC121.1. “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

Distilleria Washington v. CANote: Republic Act No. 623 - An Act To Regulate The Use Of Duly Stamped Or Marked Bottles, Boxes, Casks, Kegs, Barrels And Other Similar Containers

C. Functions of trademarksAng v. TeodoroEtepha v. Director of PatentsMirpuri v. CA (1999)

Ang v. Teodoro (1942)Ozaeta, J. (En Banc)

DOCTRINE: The function of a trade-mark is to point distinctively, either by its own meaning or by association, to the origin or ownership of the wares to which it is applied.

DOCTRINE: A descriptive term is one that relate to the quality or description of the merchandise to which a trade-mark has been applied.

DOCTRINE: The doctrine of “secondary meaning” states that a word or phrase originally incapable of exclusive appropriation with reference to an article of the market, because geographically or otherwise descriptive, might nevertheless have been used so long and so exclusively by one producer with reference to his article that, in that trade and to that branch of the purchasing public, the word or phrase has come to mean that the article was his product and has acquired a proprietary connotation.

DOCTRINE: The test employed by the courts to determine whether noncompeting goods are or are not of the same class is confusion as to the origin of the goods of the second user of a trademark.

DOCTRINE:

FACTS: Toribio Teodoro, at first in partnership with Juan Katindig and later as sole proprietor, has continuously used "Ang Tibay," both as a trade-mark and as a

Page | 59


trade-name, in the manufacture and sale of slippers, shoes, and indoor baseballs since 1910. He formally registered it as trade-mark on September 29, 1915, and as trade-name on January 3, 1933. His expenses for advertisement from 1919 to 1938 aggregated P210,641.56.

Ana L. Ang registered the same trade-mark "Ang Tibay" for pants and shirts on April 11, 1932, and established a factory for the manufacture of said articles in the year 1937. The records failed to show how much she has spent on advertisement.

Hence, Teodoro filed a complaint against Ang in the CFI of Manila.

CFI absolved the Ang based on the ground that the two trademarks are dissimilar and are used on different and non-competing goods and that there had been no exclusive use of the trade-mark by the Teodoro.

The CA reversed the CFI’s judgment, holding that by uninterrupted an exclusive use since 191 in the manufacture of slippers and shoes, respondent's trade-mark has acquired a secondary meaning; that the goods or articles on which the two trade-marks are used are similar or belong to the same class.

ISSUE: ISSUE 1 – Is “Ang Tibay” is descriptive term, which cannot be registered? – NO

ISSUE 2 – Had the words “Ang Tibay” acquired secondary meaning? – YES

ISSUE 3 – Is there infringement even if the goods are non-competing? Or, Are, in the one hand, slippers, shoes, and indoor baseballs, and on the other hand, pants and shirts, similar or belonging to the same class? – YES

HELD: ISSUE 1 – A descriptive term is one that relate to the quality or description of the merchandise to which a trade-mark has been applied. The phrase “Ang Tibay” is an exclamation denoting administration of strength or durability. The phrase “ang tibay” is never used adjectively to define or describe an object. One does not say, “ang tibay sapatos” or “sapatos ang tibay” is never used adjectively to define or describe an object. One does not say, "ang tibay sapatos" or “sapatos ang tibay” to mean “durable shoes,” but “matibay na sapatos” or “sapatos na matibay.” From all of this we deduce that “Ang Tibay” is not a descriptive term within the meaning of the Trade-Mark Law but rather a fanciful or coined phrase which may properly and legally be appropriated as a trade-mark or trade-name. Counsel for the petitioner says that the function of a trade-mark is to point distinctively, either by its own meaning or by association, to the origin or ownership of the wares to which it is applied. That is correct, and we find that “Ang Tibay,” as used by the respondent to designate his wares, had exactly performed that function for twenty-two years before the petitioner adopted it as a trade-mark in her own business. Ang Tibay shoes and slippers are, by association, known throughout the Philippines as products of the Ang Tibay factory owned and operated by the respondent Toribio Teodoro.

ISSUE 2 – In view of the SC’s finding that “Ang Tibay” is not a descriptive term, it is unnecessary to apply the doctrine of “secondary meaning,” which states that a word or phrase originally incapable of exclusive appropriation with reference to an article of the market, because geographically or otherwise descriptive, might nevertheless have been used so long and so exclusively by one producer with reference to his article that, in that trade and to that branch of the purchasing public, the word or phrase has come to mean that the article was his product. The phrase “Ang Tibay,” being neither geographic nor descriptive, was originally capable of exclusive appropriation as a trade-mark. But were it not so, the application of the doctrine of secondary meaning made by the Court of Appeals could nevertheless be fully sustained because, in any event, by respondent's long and exclusive use of said phrase with reference to his products and his business, it has acquired a proprietary connotation.

ISSUE 3 – In the present state of development of the law on Trade-Marks, Unfair Competition, and Unfair Trading, the test employed by the courts to determine whether noncompeting goods are or are not of the same class is confusion as to the origin of the goods of the second user. Although two noncompeting articles may be classified under two different classes by the Patent Office because they are deemed not to possess the same descriptive properties, they would, nevertheless, be held by the courts to belong to the same class if the simultaneous use on them of identical or closely similar trade-marks would be likely to cause confusion as to the origin, or personal source, of the second user's goods. They would be considered as not falling under the same class only if they are so dissimilar or so foreign to each other as to make it unlikely that the purchaser would think the first user made the second user's goods.

Such construction of the law is induced by cogent reasons of equity and fair dealing. The courts have come to realize that there can be unfair competition or unfair trading even if the goods are non-competing, and that such unfair trading can cause injury or damage to the first user of a given trade-mark, first, by prevention of the natural expansion of his business and, second, by having his business reputation confused with and put at the mercy of the second user. Then noncompetitive products are sold under the same mark, the gradual whittling away or dispersion of the identity and hold upon the public mind of the mark created by its first user, inevitably results. The original owner is entitled to the preservation of the valuable link between him and the public that has been created by his ingenuity and the merit of his wares or services. Experience has demonstrated that when a well-known trade-mark is adopted by another even for a totally different class of goods, it is done to get the benefit of the reputation and advertisements of the originator of said mark, to convey to the public a false impression of some supposed connection between the manufacturer of the article sold under the original mark and the new articles being tendered to the public under the same or similar mark. As trade has developed and commercial changes have come about, the law of unfair competition has expanded to keep pace with the times and the element of strict competition in itself has ceased to be the determining factor. The

Page | 60


owner of a trade-mark or trade-name has a property right in which he is entitled to protection, since there is damage to him from confusion of reputation or goodwill in the mind of the public as well as from confusion of goods. The modern trend is to give emphasis to the unfairness of the acts and to classify and treat the issue as a fraud.

We think reasonable men may not disagree that shoes and shirts are not as unrelated as fountain pens and razor blades, for instance. The mere relation or association of the articles is not controlling. As may readily be noted from what we have heretofore said, the proprietary connotation that a trade-mark or trade-name has acquired is of more paramount consideration. The Court of Appeals found in this case that by uninterrupted and exclusive use since 1910 of respondent's registered trade-mark on slippers and shoes manufactured by him, it has come to indicate the origin and ownership of said goods. It is certainly not farfetched to surmise that the selection by petitioner of the same trade-mark for pants and shirts was motivated by a desire to get a free ride on the reputation and selling power it has acquired at the hands of the respondent. As observed in another case, the field from which a person may select a trade-mark is practically unlimited, and hence there is no excuse for impinging upon or even closely approaching the mark of a business rival. In the unlimited field of choice, what could have been petitioner's purpose in selecting "Ang Tibay" if not for its fame?

Etepha v. Director of Patents (1966)Sanchez, J.

DOCTRINE: The objects of a trademark are to point out distinctly the origin or ownership of the articles to which it is affixed, to secure to him who has been instrumental in bringing into market a superior article or merchandise the fruit of his industry and skill, and to prevent fraud and imposition. The over-all task is to ascertain whether or not one merchandise so resembles another as to be likely, when applied to or used in connection with the goods of the applicant, to cause confusion or mistake or to deceive purchasers.

DOCTRINE: We are to be guided by the rule that the validity of a cause for infringement is predicated upon colorable imitation. The phrase “colorable imitation” denotes such a close or ingenious imitation as to be calculated to deceive ordinary persons, or such a resemblance to the original as to deceive an ordinary purchaser, giving such attention as a purchaser usually gives, and to cause him to purchase the one supposing it to be the other.

DOCTRINE: A practical approach to the problem of similarity or dissimilarity is to go into the whole of the two trademarks pictured in their manner of display. Inspection should be undertaken from the viewpoint of a prospective buyer. The trademark complained of should be compared and contrasted with the purchaser's memory (not in juxtaposition) of the trademark said to be infringed.

FACTS: Westmont Pharmaceuticals, Inc., a New York corporation, sought registration of trademark “Atussin"” placed on its “medicinal preparation of expectorant antihistaminic, bronchodilator sedative, ascorbic acid (Vitamin C) used in the treatment of cough.” The trademark has been used exclusively in the Philippines since January 21, 1959.

Etepha, A. G., a Liechtenstin corporation, objected and claimed that it will be damaged because Atussin is so confusedly similar to its Pertussin (Registration No. 6089, issued on September 25, 1957) used on a preparation for the treatment of coughs, that the buying public will be misled into believing that Westmont's product is that of petitioner's which allegedly enjoys goodwill.

ISSUE: ISSUE 1 – Are “Atussin” or “”Pertussin” non-descriptive words and registrable in the first place? – YES

ISSUE 2 – W/N the trademark “Atussin” should be denied registration for being confusingly similar to “Pertussin”, which has a prior registration. – NO

HELD: ISSUE 1 – That the word "tussin" figures as a component of both trademarks is nothing to wonder at. It is the common practice in the drug and pharmaceutical industries to fabricate marks by using syllables or words suggestive of the ailments for which they are intended and adding thereto distinctive prefixes or suffixes. Concededly, the "tussin" (in Pertussin and Atussin) was derived from the Latin root-word "tussis" meaning cough. "Tussin" is merely descriptive; it is generic; it furnishes to the buyer no indication of the origin of the goods; it is open for appropriation by anyone. It is accordingly barred from registration as trademark. With jurisprudence holding the line, we feel safe in making the statement that any other conclusion would result in "appellant having practically a monopoly" of the word "tussin" in a trademark. While "tussin" by itself cannot thus be used exclusively to identify one's goods, it may properly become the subject of a trademark "by combination with another word or phrase". And this union of words is reflected in petitioner's Pertussin and respondent's Atussin, the first with prefix "Per" and the second with Prefix "A".

ISSUE 2 – The objects of a trademark are to point out distinctly the origin or ownership of the articles to which it is affixed, to secure to him who has been instrumental in bringing into market a superior article or merchandise the fruit of his industry and skill, and to prevent fraud and imposition. The over-all task is to ascertain whether or not one merchandise so resembles another as to be likely, when applied to or used in connection with the goods of the applicant, to cause confusion or mistake or to deceive purchasers. We are to be guided by the rule that the validity of a cause for infringement is predicated upon colorable imitation. The phrase “colorable imitation” denotes such a close or ingenious imitation as to be calculated to deceive ordinary persons, or such a resemblance to the original as to deceive an ordinary purchaser, giving such attention as a purchaser usually gives, and to cause him to purchase the one supposing it to be the other.

Page | 61


A practical approach to the problem of similarity or dissimilarity is to go into the whole of the two trademarks pictured in their manner of display. Inspection should be undertaken from the viewpoint of a prospective buyer. The trademark complained of should be compared and contrasted with the purchaser's memory (not in juxtaposition) of the trademark said to be infringed.

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. One look is enough to denude the mind of that illuminating similarity so essential for a trademark infringement case to prosper.

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. Medicines such as those whose trademarks are in question are unlike articles of everyday use which may be freely obtained by anyone, anytime, anywhere. These products are to be dispensed upon medical prescription. The buyer must first go to a licensed doctor to receive 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.

Mirpuri v. CA (1999)Puno, J. (First Division)

DOCTRINE: The function of a trademark is to point out distinctly the origin or ownership of the goods to which it is affixed; to secure to him, who has been instrumental in bringing into the market a superior article of merchandise, the fruit of his industry and skill; to assure the public that they are procuring the genuine article; to prevent fraud and imposition; and to protect the manufacturer against substitution and sale of an inferior and different article as his product.

DOCTRINE: Modern authorities on trademark law view trademarks as performing three distinct functions: (1) they indicate origin or ownership of the articles to which they are attached; (2) they guarantee that those articles come up to a certain standard of quality; and (3) they advertise the articles they symbolize”

DOCTRINE: Opposition

FACTS: On June 15, 1970, Lolita Escobari filed an application with the Bureau of Patents for the registration of the trademark "Barbizon" for use in brassieres and ladies undergarments. She alleged that she had been manufacturing and selling these products under the firm name "L & BM Commercial" since March 3, 1970.

Private respondent Barbizon Corporation, a corporation from New York, U.S.A., opposed the application, claiming that Mirpuri’s “Barbizon” trademark is confusingly similar to its own “Barbizon” trademark; and that it will be damaged by the registration of the mark and its business reputation and goodwill will suffer great and irreparable injury.

The Director of Patents dismissed the opposition and gave due course to Escobar’s registration.

Later, Escobar assigned all her rights and interest over the trademark to petitioner Pribhdas J. Mirpuri who, under his firm name then, the “Bonito Enterprises,” becamse the sole and exclusive distributor of Escobar's “Barbizon” products.

ISSUE:

HELD:

D. How are Marks Acquired?Section 122, IPC

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

Contrast with Sec. 2-A of R.A. No. 166 and cases under R.A. 166:

Sec. 2 and 2-A, R.A. No. 166Sec. 2. What are registrable. – Trademarks, trade names and service marks owned by persons, corporations, partnerships or associations domiciled in the Philippines and by persons, corporations, partnerships or associations domiciled in any foreign country may be registered in accordance with the provisions of this Act: Provided, That said trademarks, trade names, or service marks are actually in use in commerce and services not less than two months in the Philippines before the time the applications for registration are filed; And provided, further, That the country of which the applicant for registration is a citizen grants by law substantially similar privileges to citizens of the Philippines, and such fact is officially certified, with a certified true copy of the foreign law translated into the English language, by the government of the foreign country to the Government of the Republic of the Philippines.

Page | 62


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

Unno Commercial Enterprises v. Gen. Milling Corp. (1983)Teehankee (1st Division)

This is a case decided under R.A. 166. (Prior Use Requirement)

FAST FACTS: Unno Commercial was previously the broker of Centennial Mills (USA) for “All Montana” flour in the Philippines. Unno then registered the trademark in the PPO. Eventually, Centennial Mills (USA) stopped shipping “All Montana” flour in the Philippines and sold the trademark to General Milling, a local Corp. When General Milling tried to register the trademark, the prior registration by Unno triggered a case before the Director of Patents. The SC sided with the General Milling and affirmed the Director of Patents when it ruled that a broker cannot register a trademark of its principal unless it was assigned to it.

FACTS: This concerns the trademark “All Montana” used in the sale of wheat flour. The history of the trademark is summarized as follows:

March 1955 – Centennial Mills, Inc. (under the tradename Wenatchee Milling Co.) of the State of Oregon, U.S.A., as owner and registrant of the trademark (in the U.S.), and owner and prior user in the Philippines of the trademark, exported flour to the Philippines, through its then local distributor, Unno Commercial Enterprises, Inc.;

31 August 1955 – General Milling Corporation started using the trademark;

30 June 1956 – Unno Commercial started using the trademark as broker for S.H. Huang Bros. & Co.;

8 March 1962 – Unno Commercial registered the trademark in the Philippines;

(Sometime between March 1955 and 20 September 1962, increased taxes and subsidies caused Centennial Mills to discontinue exporting flour to the Philippines.)

20 September 1962 – General Milling acquired the trademark, along with half a dozen other trademarks, from Centennial Mills by virtue of a deed of assignment in exchange for 1,000 shares of stock, par value Php100.00;

11 December 1962 – General Milling filed an application for the registration of the trademark. However, prior registration of the same trademark in favour of Unno Commercial caused an interference proceeding before the Director of the Philippine Patents Office.

The Director of Patents ruled that General Milling is the prior user of the trademark on wheat flour in the Philippines and ordered the cancellation of the certificate of registration for the same trademark previously issued in favor of petitioner Unno Commercial, it appearing that Unno Commercial merely acted as exclusive distributor of “All Montana” wheat flour in the Philippines. (However, because “All Montana” is primarily geographically descriptive, the application was remanded to the Chief Trademark Examiner to determine if the applicant should claim and is qualified to claim distinctiveness before issuance of the certificate of registration.

MR of Unno was denied. Hence this Petition.

ISSUE: W/N the broker (Unno Commercial) for the local importer of a product (wheat flour) under a trademark (All Montana) owned by a prior user (Centennial Mills), which has since assigned it to another (General Milling), is entitled to register the trademark

Simply – W/N the broker for the local importer of a product under a trademark owned by a prior user, which has since assigned it to another, is entitled to register the trademark.

RATIO: Only the owner of a trademark, trade name or service mark may apply for its registration and an importer, broker, indentor or distributor acquires no rights to the trademark of the goods he is dealing with in the absence of a valid transfer or assignment of the trade mark.

The right to register trademark is based on ownership. When the applicant is not the owner of the trademark being applied for, he has no right to apply for the registration of the same. Under the Trademark Law only the owner of the trademark, trade name or service mark used to distinguish his goods, business or service from the goods, business or service of others is entitled to register the same.

The term owner does not include the importer of the goods bearing the trademark, trade name, service mark, or other mark of ownership, unless such importer is actually the owner thereof in the country from which the goods are imported. A local importer, however, may make application for the registration of a foreign trademark, trade name or service mark if he is duly authorized by the actual owner of the name or other mark of ownership.

Page | 63


Ownership of a trademark is not acquired by the mere fact of registration alone. Registration merely creates a prima facie presumption of the validity of the registration, of the registrant's ownership of the trademark and of the exclusive right to the use thereof. Registration does not perfect a trademark right.

The appealed decision of the Director of Patents was affirmed.

NOTE: This is a case decided under R.A. 166. (Prior Use Requirement)

Kabushi Kaisha Isetan v. IACPhilip Morris v. CAPhilip Morris v. Fortune TobaccoShangrila v. DCCIBerries Agricultural Co., Inc., v. Norvy Abyadang (2010)E.Y. Industrial Sales, Inc. and Engracio Yap v. Shen Dar Electricity and Machinery Co., Ltd. (2010)Ecole De Cuisine Manjile (Cordon Bleu of the Philippines), Inc. b. Renaud Cointreau & Cie and LE Cordon Bleu Int’l, B.V., (2013)

E. Standard of Registrability

F. What Marks May Be Registered?Sec. 123 (and its sub-paragraphs), IPCIPC, Section 123. Registrability. - 123.1. A mark cannot be registered if it:

(a) Consists of immoral, deceptive or scandalous matter, or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute;

(b) Consists of the flag or coat of arms or other insignia of the Philippines or any of its political subdivisions, or of any foreign nation, or any simulation thereof;

(c) Consists of a name, portrait or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the Philippines, during the life of his widow, if any, except by written consent of the widow;

(d) Is identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or priority date, in respect of:

(i) The same goods or services, or

(ii) Closely related goods or services, or

(iii) If it nearly resembles such a mark as to be likely to deceive or cause confusion;

(e) Is identical with, or confusingly similar to, or constitutes a translation of a mark which is considered by the competent authority of the Philippines to be well-known internationally and in the Philippines, whether or not it is registered here, as being already the mark of a person other than the applicant for registration, and used for identical or similar goods or services: Provided, That in determining whether a mark is well-known, account shall be taken of the knowledge of the relevant sector of the public, rather than of the public at large, including knowledge in the Philippines which has been obtained as a result of the promotion of the mark;

(f) Is identical with, or confusingly similar to, or constitutes a translation of a mark considered well-known in accordance with the preceding paragraph, which is registered in the Philippines with respect to goods or services which are not similar to those with respect to which registration is applied for: Provided, That use of the mark in relation to those goods or services would indicate a connection between those goods or services, and the owner of the registered mark: Provided further, That the interests of the owner of the registered mark are likely to be damaged by such use;

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

(h) Consists exclusively of signs that are generic for the goods or services that they seek to identify;

(i) Consists exclusively of signs or of indications that have become customary or usual to designate the goods or services in everyday language or in bona fide and established trade practice;

(j) Consists exclusively of signs or of indications that may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin, time or production of the goods or rendering of the services, or other characteristics of the goods or services;

(k) Consists of shapes that may be necessitated by technical factors or by the nature of the goods themselves or factors that affect their intrinsic value;

(l) Consists of color alone, unless defined by a given form; or

(m) Is contrary to public order or morality.

Etepha v. Director of Patents (1966)Sanchez, J.

Page | 64


DOCTRINE: The objects of a trademark are to point out distinctly the origin or ownership of the articles to which it is affixed, to secure to him who has been instrumental in bringing into market a superior article or merchandise the fruit of his industry and skill, and to prevent fraud and imposition. The over-all task is to ascertain whether or not one merchandise so resembles another as to be likely, when applied to or used in connection with the goods of the applicant, to cause confusion or mistake or to deceive purchasers.

DOCTRINE: We are to be guided by the rule that the validity of a cause for infringement is predicated upon colorable imitation. The phrase “colorable imitation” denotes such a close or ingenious imitation as to be calculated to deceive ordinary persons, or such a resemblance to the original as to deceive an ordinary purchaser, giving such attention as a purchaser usually gives, and to cause him to purchase the one supposing it to be the other.

DOCTRINE: A practical approach to the problem of similarity or dissimilarity is to go into the whole of the two trademarks pictured in their manner of display. Inspection should be undertaken from the viewpoint of a prospective buyer. The trademark complained of should be compared and contrasted with the purchaser's memory (not in juxtaposition) of the trademark said to be infringed.

FACTS: Westmont Pharmaceuticals, Inc., a New York corporation, sought registration of trademark “Atussin"” placed on its “medicinal preparation of expectorant antihistaminic, bronchodilator sedative, ascorbic acid (Vitamin C) used in the treatment of cough.” The trademark has been used exclusively in the Philippines since January 21, 1959.

Etepha, A. G., a Liechtenstin corporation, objected and claimed that it will be damaged because Atussin is so confusedly similar to its Pertussin (Registration No. 6089, issued on September 25, 1957) used on a preparation for the treatment of coughs, that the buying public will be misled into believing that Westmont's product is that of petitioner's which allegedly enjoys goodwill.

ISSUE: ISSUE 1 – Are “Atussin” or “”Pertussin” non-descriptive words and registrable in the first place? – YES

ISSUE 2 – W/N the trademark “Atussin” should be denied registration for being confusingly similar to “Pertussin”, which has a prior registration. – NO

HELD: ISSUE 1 – That the word "tussin" figures as a component of both trademarks is nothing to wonder at. It is the common practice in the drug and pharmaceutical industries to fabricate marks by using syllables or words suggestive of the ailments for which they are intended and adding thereto distinctive prefixes or suffixes. Concededly, the "tussin" (in Pertussin and Atussin) was derived from the Latin root-word "tussis" meaning cough. "Tussin" is merely descriptive; it is generic; it furnishes to the buyer no indication of the origin of the goods; it is open for appropriation by anyone. It is accordingly barred from registration as trademark.

With jurisprudence holding the line, we feel safe in making the statement that any other conclusion would result in "appellant having practically a monopoly" of the word "tussin" in a trademark. While "tussin" by itself cannot thus be used exclusively to identify one's goods, it may properly become the subject of a trademark "by combination with another word or phrase". And this union of words is reflected in petitioner's Pertussin and respondent's Atussin, the first with prefix "Per" and the second with Prefix "A".

ISSUE 2 – The objects of a trademark are to point out distinctly the origin or ownership of the articles to which it is affixed, to secure to him who has been instrumental in bringing into market a superior article or merchandise the fruit of his industry and skill, and to prevent fraud and imposition. The over-all task is to ascertain whether or not one merchandise so resembles another as to be likely, when applied to or used in connection with the goods of the applicant, to cause confusion or mistake or to deceive purchasers. We are to be guided by the rule that the validity of a cause for infringement is predicated upon colorable imitation. The phrase “colorable imitation” denotes such a close or ingenious imitation as to be calculated to deceive ordinary persons, or such a resemblance to the original as to deceive an ordinary purchaser, giving such attention as a purchaser usually gives, and to cause him to purchase the one supposing it to be the other.

A practical approach to the problem of similarity or dissimilarity is to go into the whole of the two trademarks pictured in their manner of display. Inspection should be undertaken from the viewpoint of a prospective buyer. The trademark complained of should be compared and contrasted with the purchaser's memory (not in juxtaposition) of the trademark said to be infringed.

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. One look is enough to denude the mind of that illuminating similarity so essential for a trademark infringement case to prosper.

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. Medicines such as those whose trademarks are in question are unlike articles of everyday use which may be freely obtained by anyone, anytime, anywhere. These products are to be dispensed upon medical prescription. The buyer must first go to a licensed doctor to receive 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.

Page | 65


Ang v. Teodoro (1942)Ozaeta, J. (En Banc)

DOCTRINE: The function of a trade-mark is to point distinctively, either by its own meaning or by association, to the origin or ownership of the wares to which it is applied.

FACTS: Toribio Teodoro, at first in partnership with Juan Katindig and later as sole proprietor, has continuously used "Ang Tibay," both as a trade-mark and as a trade-name, in the manufacture and sale of slippers, shoes, and indoor baseballs since 1910. He formally registered it as trade-mark on September 29, 1915, and as trade-name on January 3, 1933. His expenses for advertisement from 1919 to 1938 aggregated P210,641.56.

Ana L. Ang registered the same trade-mark "Ang Tibay" for pants and shirts on April 11, 1932, and established a factory for the manufacture of said articles in the year 1937. The records failed to show how much she has spent on advertisement.

Hence, Teodoro filed a complaint against Ang in the CFI of Manila.

CFI absolved the Ang based on the ground that the two trademarks are dissimilar and are used on different and non-competing goods and that there had been no exclusive use of the trade-mark by the Teodoro.

The CA reversed the CFI’s judgment, holding that by uninterrupted an exclusive use since 191 in the manufacture of slippers and shoes, respondent's trade-mark has acquired a secondary meaning; that the goods or articles on which the two trade-marks are used are similar or belong to the same class.

ISSUE: ISSUE 1 – Is “Ang Tibay” is descriptive term, which cannot be registered? – NO

ISSUE 2 – Had the words “Ang Tibay” acquired secondary meaning? – YES

ISSUE 3 – Is there infringement even if the goods are non-competing? Or, Are, in the one hand, slippers, shoes, and indoor baseballs, and on the other hand, pants and shirts, similar or belonging to the same class? – YES

HELD: ISSUE 1 – A descriptive term is one that relate to the quality or description of the merchandise to which a trade-mark has been applied. The phrase “Ang Tibay” is an exclamation denoting administration of strength or durability. The phrase “ang tibay” is never used adjectively to define or describe an object. One does not say, “ang tibay sapatos” or “sapatos ang tibay” is never used adjectively to define or describe an object. One does not say, "ang tibay sapatos" or “sapatos ang tibay” to mean “durable shoes,” but “matibay na sapatos” or “sapatos na matibay.” From all of this we deduce that “Ang Tibay” is not a descriptive term within the meaning of the Trade-Mark Law but rather a fanciful or

coined phrase which may properly and legally be appropriated as a trade-mark or trade-name. Counsel for the petitioner says that the function of a trade-mark is to point distinctively, either by its own meaning or by association, to the origin or ownership of the wares to which it is applied. That is correct, and we find that “Ang Tibay,” as used by the respondent to designate his wares, had exactly performed that function for twenty-two years before the petitioner adopted it as a trade-mark in her own business. Ang Tibay shoes and slippers are, by association, known throughout the Philippines as products of the Ang Tibay factory owned and operated by the respondent Toribio Teodoro.

ISSUE 2 – In view of the SC’s finding that “Ang Tibay” is not a descriptive term, it is unnecessary to apply the doctrine of “secondary meaning,” which states that a word or phrase originally incapable of exclusive appropriation with reference to an article of the market, because geographically or otherwise descriptive, might nevertheless have been used so long and so exclusively by one producer with reference to his article that, in that trade and to that branch of the purchasing public, the word or phrase has come to mean that the article was his product. The phrase “Ang Tibay,” being neither geographic nor descriptive, was originally capable of exclusive appropriation as a trade-mark. But were it not so, the application of the doctrine of secondary meaning made by the Court of Appeals could nevertheless be fully sustained because, in any event, by respondent's long and exclusive use of said phrase with reference to his products and his business, it has acquired a proprietary connotation.

ISSUE 3 – In the present state of development of the law on Trade-Marks, Unfair Competition, and Unfair Trading, the test employed by the courts to determine whether noncompeting goods are or are not of the same class is confusion as to the origin of the goods of the second user. Although two noncompeting articles may be classified under two different classes by the Patent Office because they are deemed not to possess the same descriptive properties, they would, nevertheless, be held by the courts to belong to the same class if the simultaneous use on them of identical or closely similar trade-marks would be likely to cause confusion as to the origin, or personal source, of the second user's goods. They would be considered as not falling under the same class only if they are so dissimilar or so foreign to each other as to make it unlikely that the purchaser would think the first user made the second user's goods.

Such construction of the law is induced by cogent reasons of equity and fair dealing. The courts have come to realize that there can be unfair competition or unfair trading even if the goods are non-competing, and that such unfair trading can cause injury or damage to the first user of a given trade-mark, first, by prevention of the natural expansion of his business and, second, by having his business reputation confused with and put at the mercy of the second user. Then noncompetitive products are sold under the same mark, the gradual whittling away or dispersion of the identity and hold upon the public mind of the mark created by its first user, inevitably results. The original owner is entitled to the preservation of the valuable link between him and the public that has been created by his ingenuity and the merit of his wares or services. Experience has demonstrated that when a

Page | 66


well-known trade-mark is adopted by another even for a totally different class of goods, it is done to get the benefit of the reputation and advertisements of the originator of said mark, to convey to the public a false impression of some supposed connection between the manufacturer of the article sold under the original mark and the new articles being tendered to the public under the same or similar mark. As trade has developed and commercial changes have come about, the law of unfair competition has expanded to keep pace with the times and the element of strict competition in itself has ceased to be the determining factor. The owner of a trade-mark or trade-name has a property right in which he is entitled to protection, since there is damage to him from confusion of reputation or goodwill in the mind of the public as well as from confusion of goods. The modern trend is to give emphasis to the unfairness of the acts and to classify and treat the issue as a fraud.

We think reasonable men may not disagree that shoes and shirts are not as unrelated as fountain pens and razor blades, for instance. The mere relation or association of the articles is not controlling. As may readily be noted from what we have heretofore said, the proprietary connotation that a trade-mark or trade-name has acquired is of more paramount consideration. The Court of Appeals found in this case that by uninterrupted and exclusive use since 1910 of respondent's registered trade-mark on slippers and shoes manufactured by him, it has come to indicate the origin and ownership of said goods. It is certainly not farfetched to surmise that the selection by petitioner of the same trade-mark for pants and shirts was motivated by a desire to get a free ride on the reputation and selling power it has acquired at the hands of the respondent. As observed in another case, the field from which a person may select a trade-mark is practically unlimited, and hence there is no excuse for impinging upon or even closely approaching the mark of a business rival. In the unlimited field of choice, what could have been petitioner's purpose in selecting "Ang Tibay" if not for its fame?

Arce Sons v. Selecta Biscuits

Asia Brewery v. CA (1993)

Emerald Garment Manufacturing v. CA

Fredco Manufacturing Corporation v. President and Fellows of Harvard College (Harvard University) (2011)

G. Application for Registration1. ApplicationSec. 3, IPCSections 124 (and its sub-paragraphs), 125, 126, 128, 130 (and its sub-paragraphs), IPCSec. 124.2, IPCSec. 131 (and its sub-paragraphs, IPC(Claim of Priority Date)

Sec. 239.2, IPC

IPC, Section 3. International Conventions and Reciprocity. - Any person who is a national or who is domiciled or has a real and effective industrial establishment in a country which is a party to any convention, treaty or agreement relating to intellectual property rights or the repression of unfair competition, to which the Philippines is also a party, or extends reciprocal rights to nationals of the Philippines by law, shall be entitled to benefits to the extent necessary to give effect to any provision of such convention, treaty or reciprocal law, in addition to the rights to which any owner of an intellectual property right is otherwise entitled by this Act.

IPC, Section 124. Requirements of Application. - 124.1. The application for the registration of the mark shall be in Filipino or in English and shall contain the following:

(a) A request for registration;

(b) The name and address of the applicant;

(c) The name of a State of which the applicant is a national or where he has domicile; and the name of a State in which the applicant has a real and effective industrial or commercial establishment, if any;

(d) Where the applicant is a juridical entity, the law under which it is organized and existing;

(e) The appointment of an agent or representative, if the applicant is not domiciled in the Philippines;

(f) Where the applicant claims the priority of an earlier application, an indication of:

i) The name of the State with whose national office the earlier application was filed or if filed with an office other than a national office, the name of that office,

ii) The date on which the earlier application was filed, and

iii) Where available, the application number of the earlier application;

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

(h) Where the mark is a three-dimensional mark, a statement to that effect;

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

Page | 67


(j) A transliteration or translation of the mark or of some parts of the mark, as prescribed in the Regulations;

(k) The names of the goods or services for which the registration is sought, grouped according to the classes of the Nice Classification, together with the number of the class of the said Classification to which each group of goods or services belongs; and

(l) A signature by, or other self-identification of, the applicant or his representative.

124.2. The applicant or the registrant shall file a declaration of actual use of the mark with evidence to that effect, as prescribed by the Regulations within three (3) years from the filing date of the application. Otherwise, the application shall be refused or the mark shall be removed from the Register by the Director.

124.3. One (1) application may relate to several goods and/or services, whether they belong to one (1) class or to several classes of the Nice Classification.

124.4. If during the examination of the application, the Office finds factual basis to reasonably doubt the veracity of any indication or element in the application, it may require the applicant to submit sufficient evidence to remove the doubt.

Section 125. Representation; Address for Service. - If the applicant is not domiciled or has no real and effective commercial establishment in the Philippines, he shall designate by a written document filed in the Office, the name and address of a Philippine resident who may be served notices or process in proceedings affecting the mark. Such notices or services may be served upon the person so designated by leaving a copy thereof at the address specified in the last designation filed. If the person so designated cannot be found at the address given in the last designation, such notice or process may be served upon the Director.

Section 126. Disclaimers. - The Office may allow or require the applicant to disclaim an unregistrable component of an otherwise registrable mark but such disclaimer shall not prejudice or affect the applicant's or owner's rights then existing or thereafter arising in the disclaimed matter, nor such shall disclaimer prejudice or affect the applicant's or owner's right on another application of later date if the disclaimed matter became distinctive of the applicant's or owner's goods, business or services.

xxx

Section 128. Single Registration for Goods and/or Services. - Where goods and/or services belonging to several classes of the Nice Classification have been included in one (1) application, such an application shall result in one registration.

xxx

Section 130. Signature and Other Means of Self-Identification. - 130.1. Where a signature is required, the Office shall accept:

(a) A hand-written signature; or

(b) The use of other forms of signature, such as a printed or stamped signature, or the use of a seal instead of a hand-written signature: Provided, That where a seal is used, it should be accompanied by an indication in letters of the name of the signatory.

130.2. The Office shall accept communications to it by telecopier, or by electronic means subject to the conditions or requirements that will be prescribed by the Regulations. When communications are made by telefacsimile, the reproduction of the signature, or the reproduction of the seal together with, where required, the indication in letters of the name of the natural person whose seal is used, appears. The original communications must be received by the Office within thirty (30) days from date of receipt of the telefacsimile.

130.3. No attestation, notarization, authentication, legalization or other certification of any signature or other means of self-identification referred to in the preceding paragraphs, will be required, except, where the signature concerns the surrender of a registration.

IPC, Section 124.2. The applicant or the registrant shall file a declaration of actual use of the mark with evidence to that effect, as prescribed by the Regulations within three (3) years from the filing date of the application. Otherwise, the application shall be refused or the mark shall be removed from the Register by the Director.

IPC, Section 131. Priority Right. - 131.1. An application for registration of a mark filed in the Philippines by a person referred to in Section 3, and who previously duly filed an application for registration of the same mark in one of those countries, shall be considered as filed as of the day the application was first filed in the foreign country.

131.2. No registration of a mark in the Philippines by a person described in this section shall be granted until such mark has been registered in the country of origin of the applicant.

131.3. Nothing in this section shall entitle the owner of a registration granted under this section to sue for acts committed prior to the date on which his mark was registered in this country: Provided, That, notwithstanding the foregoing, the owner of a well-known mark as defined in Section 123.1(e) of this Act, that is not registered in the Philippines, may, against an identical or confusingly similar mark, oppose its registration, or petition the cancellation of its registration or sue for unfair competition, without prejudice to availing himself of other remedies provided for under the law.

Page | 68


131.4. In like manner and subject to the same conditions and requirements, the right provided in this section may be based upon a subsequent regularly filed application in the same foreign country: Provided, That any foreign application filed prior to such subsequent application has been withdrawn, abandoned, or otherwise disposed of, without having been laid open to public inspection and without leaving any rights outstanding, and has not served, nor thereafter shall serve, as a basis for claiming a right of priority.

IPC, Section 239. Repeals.

xxx


2. Assignment of Application Number and Filing DateSec. 127, IPCSec. 132 (and its sub-paragraphs), IPC

IPC, Section 127. Filing Date. - 127.1. Requirements. - The filing date of an application shall be the date on which the Office received the following indications and elements in English or Filipino:

(a) An express or implicit indication that the registration of a mark is sought;

(b) The identity of the applicant;

(c) Indications sufficient to contact the applicant or his representative, if any;

(d) A reproduction of the mark whose registration is sought; and

(e) The list of the goods or services for which the registration is sought.

127.2. No filing date shall be accorded until the required fee is paid.

IPC, Section 132. Application Number and Filing Date. - 132.1. The Office shall examine whether the application satisfies the requirements for the grant of a filing date as provided in Section 127 and Regulations relating thereto. If the application does not satisfy the filing requirements, the Office shall notify the applicant who shall within a period fixed by the Regulations complete or correct the application as required, otherwise, the application shall be considered withdrawn.

132.2 Once an application meets the filing requirements of Section 127, it shall be numbered in the sequential order, and the applicant shall be informed of the application number and the filing date of the application will be deemed to have been abandoned.

3. ExaminationSec. 133 (and its sub-paragraphs), IPCSec. 126, IPCSec. 129, IPC

IPC, Section 133. Examination and Publication. - 133.1. Once the application meets the filing requirements of Section 127, the Office shall examine whether the application meets the requirements of Section 124 and the mark as defined in Section 121 is registrable under Section 123.

133.2. Where the Office finds that the conditions referred to in Subsection 133.1 are fulfilled, it shall upon payment of the prescribed fee, forthwith cause the application, as filed, to be published in the prescribed manner.

133.3. If after the examination, the applicant is not entitled to registration for any reason, the Office shall advise the applicant thereof and the reasons therefor. The applicant shall have a period of four (4) months in which to reply or amend his application, which shall then be re-examined. The Regulations shall determine the procedure for the re-examination or revival of an application as well as the appeal to the Director of Trademarks from any final action by the Examiner.

133.4. An abandoned application may be revived as a pending application within three (3) months from the date of abandonment, upon good cause shown and the payment of the required fee.

133.5. The final decision of refusal of the Director of Trademarks shall be appealable to the Director General in accordance with the procedure fixed by the Regulations.

IPC, Section 126. Disclaimers. - The Office may allow or require the applicant to disclaim an unregistrable component of an otherwise registrable mark but such disclaimer shall not prejudice or affect the applicant's or owner's rights then existing or thereafter arising in the disclaimed matter, nor such shall disclaimer prejudice or affect the applicant's or owner's right on another application of later date if the disclaimed matter became distinctive of the applicant's or owner's goods, business or services.

IPC, Section 129. Division of Application. - Any application referring to several goods or services, hereafter referred to as the "initial application," may be divided by the applicant into two (2) or more applications, hereafter referred to as the "divisional applications," by distributing among the latter the goods or services

Page | 69


referred to in the initial application. The divisional applications shall preserve the filing date of the initial application or the benefit of the right of priority.

4. PublicationSec. 133.2, IPC

IPC, Section 133. Examination and Publication.

xxx

133.2. Where the Office finds that the conditions referred to in Subsection 133.1 are fulfilled, it shall upon payment of the prescribed fee, forthwith cause the application, as filed, to be published in the prescribed manner.

5. OppositionSections 134 and 135, IPCBata Industries v. CAMirpuri v. CA (1999)

IPC, Section 134. Opposition. - Any person who believes that he would be damaged by the registration of a mark may, upon payment of the required fee and within thirty (30) days after the publication referred to in Subsection 133.2, file with the Office an opposition to the application. Such opposition shall be in writing and verified by the oppositor or by any person on his behalf who knows the facts, and shall specify the grounds on which it is based and include a statement of the facts relied upon. Copies of certificates of registration of marks registered in other countries or other supporting documents mentioned in the opposition shall be filed therewith, together with the translation in English, if not in the English language. For good cause shown and upon payment of the required surcharge, the time for filing an opposition may be extended by the Director of Legal Affairs, who shall notify the applicant of such extension. The Regulations shall fix the maximum period of time within which to file the opposition. Section 135. Notice and Hearing. - Upon the filing of an opposition, the Office shall serve notice of the filing on the applicant, and of the date of the hearing thereof upon the applicant and the oppositor and all other persons having any right, title or interest in the mark covered by the application, as appear of record in the Office.

Bata Industries v. CAMirpuri v. CA (1999)

6. Issuance and Publication of CertificateSections 136 and 137, IPCSec. 138, IPCSec. 139, IPC

Sec. 144 (and its subp-paragraphs), IPCSec. 4.2, IPC

IPC, Section 136. Issuance and Publication of Certificate. - When the period for filing the opposition has expired, or when the Director of Legal Affairs shall have denied the opposition, the Office upon payment of the required fee, shall issue the certificate of registration. Upon issuance of a certificate of registration, notice thereof making reference to the publication of the application shall be published in the IPO Gazette. (Sec. 10, R.A. No. 165)

Section 137. Registration of Mark and Issuance of a Certificate to the Owner or his Assignee. - 137.1. The Office shall maintain a Register in which shall be registered marks, numbered in the order of their registration, and all transactions in respect of each mark, required to be recorded by virtue of this law.

137.2. The registration of a mark shall include a reproduction of the mark and shall mention: its number; the name and address of the registered owner and, if the registered owner's address is outside the country, his address for service within the country; the dates of application and registration; if priority is claimed, an indication of this fact, and the number, date and country of the application, basis of the priority claims; the list of goods or services in respect of which registration has been granted, with the indication of the corresponding class or classes; and such other data as the Regulations may prescribe from time to time.

137.3. A certificate of registration of a mark may be issued to the assignee of the applicant: Provided, That the assignment is recorded in the Office. In case of a change of ownership, the Office shall at the written request signed by the owner, or his representative, or by the new owner, or his representative and upon a proper showing and the payment of the prescribed fee, issue to such assignee a new certificate of registration of the said mark in the name of such assignee, and for the unexpired part of the original period.

137.4. The Office shall record any change of address, or address for service, which shall be notified to it by the registered owner.

137.5. In the absence of any provision to the contrary in this Act, communications to be made to the registered owner by virtue of this Act shall be sent to him at his last recorded address and, at the same, at his last recorded address for service.

IPC, Section 138. Certificates of Registration. - A certificate of registration of a mark shall be prima facie evidence of the validity of the registration, the registrant's ownership of the mark, and of the registrant's exclusive right to use the same in connection with the goods or services and those that are related thereto specified in the certificate.

IPC, Section 139. Publication of Registered Marks; Inspection of Register. - 139.1. The Office shall publish, in the form and within the period fixed by the

Page | 70


Regulations, the marks registered, in the order of their registration, reproducing all the particulars referred to in Subsection 137.2.

139.2. Marks registered at the Office may be inspected free of charge and any person may obtain copies thereof at his own expense. This provision shall also be applicable to transactions recorded in respect of any registered mark.

IPC, Section 144. Classification of Goods and Services. - 144.1. Each registration, and any publication of the Office which concerns an application or registration effected by the Office shall indicate the goods or services by their names, grouped according to the classes of the Nice Classification, and each group shall be preceded by the number of the class of that Classification to which that group of goods or services belongs, presented in the order of the classes of the said Classification.

144.2. Goods or services may not be considered as being similar or dissimilar to each other on the ground that, in any registration or publication by the Office, they appear in different classes of the Nice Classification.

IPC, Section 4. Definitions. xxx

4.2. The term "technology transfer arrangements" refers to contracts or agreements involving the transfer of systematic knowledge for the manufacture of a product, the application of a process, or rendering of a service including management contracts; and the transfer, assignment or licensing of all forms of intellectual property rights, including licensing of computer software except computer software developed for mass market.

7. Duration of CertificateSec. 145, IPC

IPC, Section 145. Duration. - A certificate of registration shall remain in force for ten (10) years: Provided, That the registrant shall file a declaration of actual use and evidence to that effect, or shall show valid reasons based on the existence of obstacles to such use, as prescribed by the Regulations, within one (1) year from the fifth anniversary of the date of the registration of the mark. Otherwise, the mark shall be removed from the Register by the Office.

8. Voluntary Cancellation of CertificateSec. 140, IPC

IPC, Section 140. Cancellation upon Application by Registrant; Amendment or Disclaimer of Registration. - Upon application of the registrant, the Office may permit any registration to be surrendered for cancellation, and upon cancellation the appropriate entry shall be made in the records of the Office. Upon application of the registrant and payment of the prescribed fee, the Office for good cause may

permit any registration to be amended or to be disclaimed in part: Provided, That the amendment or disclaimer does not alter materially the character of the mark. Appropriate entry shall be made in the records of the Office upon the certificate of registration or, if said certificate is lost or destroyed, upon a certified copy thereof

9. Correction of MistakesSections 142 and 143, IPC

IPC, Section 142. Correction of Mistakes Made by the Office. - Whenever a material mistake in a registration incurred through the fault of the Office is clearly disclosed by the records of the Office, a certificate stating the fact and nature of such mistake shall be issued without charge, recorded and a printed copy thereof shall be attached to each printed copy of the registration. Such corrected registration shall thereafter have the same effect as the original certificate; or in the discretion of the Director of the Administrative, Financial and Human Resource Development Service Bureau a new certificate of registration may be issued without charge. All certificates of correction heretofore issued in accordance with the Regulations and the registration to which they are attached shall have the same force and effect as if such certificates and their issuance had been authorized by this Act. (n)

Section 143. Correction of Mistakes Made by Applicant. - Whenever a mistake is made in a registration and such mistake occurred in good faith through the fault of the applicant, the Office may issue a certificate upon the payment of the prescribed fee: Provided, That the correction does not involve any change in the registration that requires republication of the mark.

10. RenewalSec. 146 (and its sub-paragraphs), IPC

IPC, Section 146. Renewal. - 146.1. A certificate of registration may be renewed for periods of ten (10) years at its expiration upon payment of the prescribed fee and upon filing of a request. The request shall contain the following indications:

(a) An indication that renewal is sought;

(b) The name and address of the registrant or his successor-in-interest, hereafter referred to as the "right holder";

(c) The registration number of the registration concerned;

(d) The filing date of the application which resulted in the registration concerned to be renewed;

(e) Where the right holder has a representative, the name and address of that representative;

Page | 71


(f) The names of the recorded goods or services for which the renewal is requested or the names of the recorded goods or services for which the renewal is not requested, grouped according to the classes of the Nice Classification to which that group of goods or services belongs and presented in the order of the classes of the said Classification; and

(g) A signature by the right holder or his representative.

146.2. Such request shall be in Filipino or English and may be made at any time within six (6) months before the expiration of the period for which the registration was issued or renewed, or it may be made within six (6) months after such expiration on payment of the additional fee herein prescribed.

146.3. If the Office refuses to renew the registration, it shall notify the registrant of his refusal and the reasons therefor.

146.4. An applicant for renewal not domiciled in the Philippines shall be subject to and comply with the requirements of this Act.

H. Madrid Protocol

END MARKEREND MARKEREND MARKER

IMPORTANT NOTE:

Chua Che and Sta Ana cases which are en banc rulings. Faberge, a decision of a division, cannot overturn them?

Faberge not only deviates from Chua Che and Sta Ana but even from Esso, Phil Refining and Hickok. It severely restricted the scope of protection accorded to trademark owners to only those enumerated in the certificate of registration.

The IP Code did not just relax the Faberge ruling. It did away with it.

Page | 72

intellectual property law.docx

Documents