A.

In General
Definition

INTELLECTUAL PROPERTY (IP) refers to creations of the mind, such as

inventions; literary and artistic works; designs; and symbols, names
and images used in commerce.
Intangible property rights granted by law to owners of intellectual creations
such as inventions, designs, signs, and names used in commerce, and
literary and artistic works.

Intellectual Property Rights under the Intellectual Property Code

(RA 8293) an act prescribing the intellectual property code and
establishing the Intellectual Property Office, providing for its powers
and functions, and for other purposes.
It shall protect and secure the exclusive rights of scientists, inventors,
artists and other gifted citizens to their intellectual property and creations,
particularly when beneficial to the people, for such periods as provided in
this Act.
 Copyright and Related Rights;
 Trademarks and Service Marks;
 Geographic Indications;
 Industrial Designs; Patents;
 Utility Models; [Chapter XII]
 Layout-Designs (Topographies) of Integrated Circuits;
 Protection of Undisclosed Information [Sec. 4.1, RA 829].

Intellectual Property Office of the Philippines

The Intellectual Property Office of the Philippines or the IPOPHL was created
by virtue of Republic Act (R.A.) No. 8293.
The law, otherwise known as the IP Code of the Philippines, was signed by
President Fidel V. Ramos on June 6, 1997 and took effect on January
1, 1998.
The IPOPHL, one of offices under the Office of the Secretary (OSEC) of the
DTI, leads the implementation of state policies (i.e. registration and conflict
resolution) on IP.

Differences between copyrights, trademarks and patents

Copyrights Trademarks Patents

AS TO THE SCOPE OF PROTECTION
Literary and artistic Any visible sign capable Any technical solution of
works which are original of distinguishing the a problem in any field of
intellectual creations in goods (trademark) or human activity which is
the literary and artistic services (service mark) new, involves an
domain protected from of an enterprise from inventive step and is
the moment of their that of another and shall industrially applicable.

1
creation [Sec. 172.1, RA include a stamped or [Sec. 21, RA 8293; Kho
8293]. marked container of v. Court of Appeals, 379
goods [Sec. 121.1, RA SCRA 410 (2002)].
8293].

Copyrights Trademarks Patents

WHERE REGISTERED
The National Library Intellectual Property Intellectual Property
[Sec. 191,RA 8293] Office (IPO) Office (IPO)

Copyrights Trademarks Patents

WHEN PROTECTION STARTS
Upon creation Upon issuance of the Upon issuance of the
trademark certificate letters of patent by the
IPO

Copyrights Trademarks Patents

TERMS OF PROTECTION
Generally, up to 50 10 years 20 years
years AFTER the death
of the author

Copyrights Trademarks Patents

MODE OF ACQUISITION
[Sec. 172.1, RA 8293] [Sec. 122, RA 8293] [Sec. 28, RA 8293]
Literary and artistic Rights in a mark The right to a patent
works are protected as require registration. belongs to the inventor,
original creations from their heirs, or assigns.
Well-known marks are
the moment of their
protected even without If an invention is made
creation.
registration. jointly, the patent rights
Protection applies are shared.
Unregistered well-
regardless of the mode,
form, content, quality, known marks only For separate,
prevent registration of independent inventions,
or purpose of the work.
confusingly similar the patent goes to the
marks for identical or person who first files or
similar goods or has the earliest priority
services date.

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Intellectual Property Office
Jurisdictional Threshold
The threshold in administrative complaints for violations of laws involving
intellectual property rights is two hundred thousand pesos (P200,000) or
more in total damages claimed.
B. PATENT is an exclusive right granted for an invention, which is a product
or a process that provides, in general, a new way of doing something, or
offers a new technical solution to a problem.
To get a patent, technical information about the invention must be disclosed
to the public in a patent application. [World Intellectual Property
Organization].

PATENTABLE INVENTION
is any technical solution of a problem in any field of human activity which is
new, involves an inventive step and is industrially applicable. It may be, or
may relate to, a product, or process, or an improvement of any of the
foregoing [Sec. 21, RA 8293].
Standards or requirements for registrability
1. It must be novel;
2. It must be inventive; and
3. Industrially applicable.

NOVELTY an invention shall not be considered new if it forms part of a prior

art [Sec. 23, RA 8293].
PRIOR ART - this shall consist of:
1. Everything which has been made available to the public anywhere in the
world, before the filing date or the priority date of the application claiming
the invention [Sec. 24.1, RA 8293];
2. The whole contents of an application for a patent, utility model, or
industrial design registration, published in accordance with this Act, filed or
effective in the Philippines, with a filing or priority date that is earlier than
the filing or priority date of the application.
NON-PATENTABLE INVENTION
The following shall be excluded from patent protection:
1. Discoveries, scientific theories, and mathematical methods, and in the
case of drugs and medicines, the mere discovery of a new form or new
property of a known substance which does not result in the enhancement of
the known efficacy of that substance, or the mere discovery of any new
property or new use for a known substance, or the mere use of a known
process unless such known process results in a new product that employs at

3
least one new reactant. Salts, esters, ethers, polymorphs, metabolites, pure
form, particle size, isomers, mixtures of isomers, complexes, combinations,
and other derivatives of a known substance shall be considered to be the
same substance, unless they differ significantly in properties with regard to
efficacy [Sec. 22.1, RA 8293 as amended by RA 9502];
2. Schemes, rules and methods of performing mental acts, playing games or
doing business, and programs for computers. [Sec. 22.2, RA 8293];
3. Methods for treatment of the human or animal body by surgery or therapy
and diagnostic methods practiced on the human or animal body. This
provision shall not apply to products and composition for use in any of these
methods [Sec. 22.3, RA 8293];
4. Plant varieties or animal breeds or essentially biological process for the
production of plants or animals. This provision shall not apply to
microorganisms and non-biological and microbiological processes [Sec. 22.4,
RA 8293];
5. Aesthetic creations [Sec. 22.5, RA 8293];
6. Anything which is contrary to public order or morality [Sec. 22.6, RA 8293].
In addition to discoveries, scientific theories and mathematical methods, the
IP Code now includes (as non-patentable for having no inventive step), in
case of drugs and medicines:
1. The mere discovery of a new form or new property of a known substance
which does not result in the enhancement of the known efficacy of that
substance.
2. The mere discovery of any new property or new use of a known substance.
3. The mere use of a known process unless such known process results in a
new product that employs at least one reactant [Sec. 26.2, RA 8293 as
amended by RA 9502].

OWNERSHIP OF A PATENT
A. Right to a Patent
General Rule: The right to a patent belongs to the inventor, his heirs, or
assigns. When two or more persons have jointly made an invention, the right
to a patent shall belong to them jointly [Sec. 28, RA 8293].
The employee has the right to the patent if the inventive activity is not a part
of his regular duties even if the employee uses the time, facilities, and
materials of the employer [Sec. 30.2(a), RA 8293].
Exceptions: Inventions created pursuant to employment or a commissioned
work;
The person who commissions the work shall own the patent .
2. The employer has the right to the patent if the invention is the result of
the performance of the employee’s regularly assigned duties.
a. Exception:
There is an agreement, express or implied, to the contrary

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B. First-to-File Rule
RA 8293 changed the basis of ownership of a patent from First-to-Invent
under RA 165 to First-to-File.
If two or more persons have made the invention separately and
independently of each other, the right to the patent shall belong to the
person who filed an application for such invention, or where two or more
applications are filed for the same invention, to the applicant who has the
earliest filing date or, the earliest priority date [Sec. 29, RA 8293].

FILING DATE
The filing date of a patent application shall be the date of receipt by the
Office of at least the
following elements:
1. An express or implicit indication that a Philippine patent is sought;
2. Information identifying the applicant;
3. Description of the invention and one (1) or more claims in Filipino or
English [Sec. 40.1, RA 8293].

C. Invention created pursuant to a commission/in the course of

employment
The person who commissions the work shall own the patent, unless
otherwise provided in the contract [Sec. 30.1, RA 8293].
In case the employee made the invention in the course of his employment
contract, the patent shall belong to:
1. The employee, if the inventive activity is not a part of his regular duties
even if the employee uses the time, facilities, and materials of the employer.
2. The employer, if the invention is the result of the performance of his
regularly- assigned duties, unless there is an agreement, express or implied,
to the contrary [Sec. 30.2, RA 8293].

D. Right of Priority
An application for patent filed by any person who has previously applied for
the same invention in another country which by treaty, convention, or law
affords similar privileges to Filipino citizens, shall be considered filed as of
the date of filing the foreign application: Provided, That:
The local application expressly claims priority;
1. It is filed within 12 months from the date the earliest foreign application
was filed; and
2. A certified copy of the foreign application together with an English
translation is filed within 6 months from the date of filing in the Philippines
[Sec. 31, RA 8293].

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GROUNDS FOR CANCELLATION OF A PATENT
Any interested person may petition to cancel the patent or any claim thereof,
or parts of the claim, on any of the following grounds:
a. That what is claimed as the invention is not new or patentable;
b. That the patent does not disclose the invention in a manner sufficiently
clear and complete for it to be carried out by any person skilled in the
art; or
c. That the patent is contrary to public order or morality [Sec. 61.1, RA
8293]. Where the grounds for cancellation relate to some of the claims or
parts of the claim, cancellation may be effected to such extent only [Sec.
61.2, RA 8293].

A. EFFECT OF CANCELLATION OF PATENT OR CLAIM

The rights conferred by the patent or any specified claim or claims canceled
shall terminate. Notice of the cancellation shall be published in the IPO
Gazette. Unless restrained by the Director General, the decision or order to
cancel by Director of Legal Affairs shall be immediately executory even
pending appeal [Sec. 66, RA 8293].
B. REMEDIES OF A PERSON WITH A RIGHT TO A PATENT PATENT
Application by Persons Not Having the Right to a Patent.
If a person referred to in Section 29 (First-toFile) other than the applicant, is
declared by final court order or decision as having the right to the patent,
such person may, within three (3) months after the decision has become
final:
1. Prosecute the application as his own application in place of the
applicant;
2. File a new patent application in respect of the same invention;
3. Request that the application be refused; or
4. Seek cancellation of the patent, if one has already been issued [Sec.
67, RA 8293].

Patent infringement
It is the making, using, offering for sale, selling, or importing a patented
product or a product obtained directly or indirectly from a patented
process, or the use of a patented process without the authorization of the
patentee.
Provided, That, this shall not apply to instances covered by Sections 72.1
and 72.4 (Limitations of Patent Rights); Section 74 (Use of Invention by
Government); Section 93.6 (Compulsory Licensing); and Section 93-A
(Procedures on Issuance of a Special Compulsory License under the TRIPS
Agreement) of this Code [Sec. 76.1, RA 8293 as amended by RA 9502].
Anyone who actively induces the infringement of a patent or provides the
infringer with a component of a patented product or of a product
produced because of a patented process knowing it to be especially
adopted for infringing the patented invention and not suitable for
substantial non-infringing use shall be liable as a contributory infringer

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 and shall be jointly and severally liable with the infringer [Sec. 76.6, RA
8293].

C. Trademarks

Marks vs. collective Marks vs. Trade names

A. . Trademark/Service Mark vs. Trade Name (Under the IP Code)
“Marks” means any visible sign capable of distinguishing the goods
(trademarks) or service (service mark) of an enterprise and shall include a
stamped or marked container of goods.
“Trademark” - Any visible sign which is adopted and used to identify
the source or origin of goods; and capable of distinguishing them from
goods emanating from a competitor.
The following are the functions of a trademark:
1. To point out distinctly the origin or ownership of the goods and to which it
is affixed;
2. To secure him, who has been instrumental in bringing into the market a
superior article of merchandise, the fruit of his industry and skill;
3. To assure the public that they are producing the genuine article;
4. To prevent fraud and imposition; and
5. To protect the manufacturer against substitution and sale of an inferior
and different article as its product [Mirpuri v. CA, G.R. No. 114508 (1999)].
“Service Mark” Any visible sign capable of distinguishing the
services of an enterprise from the service of other enterprises.
“Collective Mark” means any visible sign designated as such in the
application for registration and capable of distinguishing the origin
or any other common characteristics including the quality of goods or
services of different enterprises which use the sign under the control of the
registered owner of the collective mark.

“Trade name” means the name or designation identifying or

distinguishing an enterprise
Any individual name or surname, firm name, device or word used by
manufacturers, industrialists, merchants, and others to identify their
businesses, vocations or occupations [Converse Rubber Corp. v. Universal
Rubber Products, Inc., G.R. No. L-27906 (1987)].

B. Spectrum of Distinctiveness
1. Generic Marks - Generic Marks are those which constitute the name of
an article or substance; or comprise the genus of which the particular
product is a species of [Societe Des Produits Nestle v. CA, G.R. No. 112012,
2001]. These must remain in the public domain and can never be registered

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as a trademark. Examples: “SUGAR” for refined sugar, “KAPE” for instant
coffee, “WATER” for bottled water
2. Descriptive Marks 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
[Sec. 123(j), RA 8293]. These are words that merely describe the product or
service or refer to their quality or characteristic.
General Rule: Descriptive marks are not entitled to protection and are too
weak to function as a trademark.
Exception: Doctrine of Secondary meaning.
● A word or phrase originally incapable of exclusive appropriation with
reference to an article on the market, because geographically or otherwise
descriptive, might nevertheless have been used so long and so exclusively
by one producer with reference to his article that , in that trade and to that
branch of the purchasing public, the word or phrase has come to mean that
the article was his product [Arce Sons v. Selecta Biscuits, G.R. No. L14761
(1961)].
Example: “YELLOW PAGES” for telephone directory having yellow pages.
3. Suggestive Marks - Marks that hint or suggest the nature or quality of
the good or service without directly describing it. They are “subtly
descriptive” and are entitled to protection despite lack of distinctiveness.
Example: “JAGUAR” for automobile.
4. Arbitrary Marks - Common words used as marks but are unrelated to
the good or service they represent. They neither describe nor suggest the
characteristic of the goods or service, though they are considered highly
distinctive for purposes of registration.
Example: “APPLE” for electronic products.
5. Fanciful or “Coined” Marks - These are invented or “coined” words
that do not have any meaning and are made solely for the purpose of the
mark. They are considered “strong” marks for purposes of registration and
protection for being inherently distinctive.
Example: “KODAK” for camera.

C. What Mark May Not Be Registered

A mark cannot be registered if it:
a. Marks that are immoral, deceptive, scandalous, or disparaging.
b. Flags, coats of arms, or insignia of the Philippines or any foreign
nation.
c. Names, portraits, or signatures of living individuals (without
consent).Names/signatures/portraits of deceased Philippine presidents
(without widow’s consent).
d. Identical to a registered mark (same or related goods/services) likely to
cause confusion.
e. Identical/similar to internationally well-known marks, even if not
registered locally.
f. Well-known mark on unrelated goods, if it implies a false connection
and harms the owner.

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 g. Marks that mislead about the nature, quality, or origin of
goods/services.
h. Signs that are generic for the goods/services they represent.
i. Terms used commonly in trade or everyday language.
j. Signs that describe the kind, quality, or characteristics of
goods/services.
k. Shapes necessary due to technical factors or the product’s nature.
l. Colors without a specific shape or design.
m. Marks that violate public order or moral standards.
Acquisition of Ownership
A. Concept of actual use
Actual use pertains to the actual use of the mark in local (Philippine)
commerce and trade [Philip Morris v. Fortune Tobacco, G.R. No. 158589
(2006)].
1. Prior Use of a Mark as a Requirement
While RA 8293 no longer requires prior use before filing the application, it still
requires use of the mark after filing, registration and renewal.
a. Before the IP Code Under the old trademark law or R.A. 166, actual
commercial use of a trademark in the Philippines was required prior to its
registration [Sec. 2-A, RA 166].
b. Under the IP Code RA 8293 no longer requires prior use before filing the
application (i.e., it shifted to an intent to use system). However, the law still
requires use of the mark after filing. Declaration of Actual Use: The
applicant or the registrant is required to file a Declaration of Actual Use of
the mark after filing and registration.
Note: Failure to file declaration of actual use automatically results in the
denial of the registration or the cancellation of the registration by operation
of law [Secs. 124.2 & 145, RA 8293]
When to File Declaration of Actual Use:
The following are the periods when to file a declaration of Actual Use
[Link] 3 years from the filing date of the application (3rd Year DAU);
[Link] 1 year from the 5th anniversary of the registration of the mark (5th
Year DAU);
3. Within 1 year from the date of renewal; and
4. Within 1 year from the 5th anniversary of each renewal [Rule 204,
Trademark Regulations of 2017].
2. Non-Use of Mark; When Excused
Non-use caused by circumstances arising independently of the will of the
trademark owner shall be excused. However, non-use due to lack of funds
shall not excuse non-use of a mark [Sec. 152.1, RA 8293].

The following shall not be grounds for cancellation or removal of a mark:

1. Use which does not alter its distinctive character though the use is
different from the form in which it is registered [Sec. 152.2, RA 8293].
2. Use of a mark in connection with one or more of the goods/services
belonging to the class in which the mark is registered [Sec. 152.3, RA 8293].
3. Use of the mark by a company related to the applicant or registrant [Sec.
152.4, RA 8293].

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4. Use of the mark by a person controlled by the registrant [Sec. 152.4, RA
8293].

Note: The use of a mark by a company related with or controlled by the

registrant or applicant shall inure to the latter's benefit: Provided, that such
mark is not used in such manner as to deceive the public [Sec.152.4, RA
8293].

B. Effect of registration
General Rule: The owner of a registered mark shall have the exclusive
right to prevent all third parties not having the owner’s consent from using in
the course of trade identical or similar signs or containers for goods or
services which are identical or similar to those in respect of which the
trademark is registered where such use would result in a likelihood of
confusion. In case of the use of an identical sign for identical goods or
services, a likelihood of confusion shall be presumed [Sec. 147.1, RA 8293].
Exception: In cases of importation of drugs and medicines allowed under
Section 72.1 of this Act and of off-patent drugs and medicines, third parties
can import the same even without the owner’s consent, provided that:
1. Said drugs and medicines bear the registered marks
2. The registered marks have not been tampered, unlawfully modified, or
infringed upon [Sec. 147.1, RA 8293 as amended by RA 9502].
Registration is a prerequisite before one can file an action for trademark
infringement [Sec. 147.1, RA 8293].

C. Acquisition of Ownership of Mark

General Rule: To acquire rights in a mark, registration is required [Sec. 122,
RA 8293]. Exception: Well-known marks are protected even without
registration.
Note: However, when the well-known mark is not registered, its protection is
limited, as it only prevents the registration of confusingly similar marks that
are used for identical or similar goods or services [Sec. 123.1(e), RA 8293].
SECTION 122. How Marks are Acquired. — The rights in a mark shall be
acquired through registration made validly in accordance with the provisions
of this law [Zuneca Pharmaceutical v. Natrapharm, G.R. No. 211850 (2020)].
Registration is not a mode of acquiring ownership, rather, it merely gives rise
to a prima facie presumption of ownership of the registrant over the mark
[Sec. 138, RA 8293].
Said presumption of ownership may be rebutted by the true owner of the
mark in an opposition or cancellation proceeding.
Zuneca Ruling
Ownership of a trademark is acquired through registration, not prior use.

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  Importance of Actual Use:
 While actual use is required to maintain ownership, it does not
establish ownership.
 Actual use ensures continued validity and protection of the registered
mark.
 Certificate of Registration:
 Provides prima facie evidence of ownership.
 Does not imply that prior use is necessary for acquiring ownership.
Under the current IP Code, registration is the basis for trademark
ownership, while continued actual use is necessary to keep that ownership
valid. Prior use alone is no longer a recognized way to acquire ownership.
Rather, it is meant to recognize the instances when the certificate of
registration is not reflective of ownership of the holder thereof, such as
when:
1. The first registrant has acquired ownership of the mark through
registration but subsequently lost the same due to non-use or abandonment
(e.g., failure to file the Declaration of Actual Use);
2. The registration was done in bad faith;
3. The mark itself becomes generic;
4. The mark was registered contrary to the IP Code (e.g., when a generic
mark was successfully registered for some reason); or
5. The registered mark is being used by, or with the permission of, the
registrant so as to misrepresent the source of the goods or services on or in
connection with which the mark is used.

On Good Faith

Under the IP Code, the first-to-file registrant in good faith acquires all
rights to a mark, as long as the registration is valid and not subject to
cancellation (Sections 122 and 155.1). However, prior users in good faith
are protected from trademark infringement liability even if someone else
later registers the mark (Section 159.1).

Filing Date
The filing date of an application shall be the date on which the Office
received the following indications and elements in English or Filipino:
1. An express or implicit indication that the registration of a mark is sought;
2. The identity of the applicant;
3. Indications sufficient to contact the applicant or his representative, if any;
4. A reproduction of the mark whose registration is sought; and
5. The list of the goods or services for which the registration is sought [Sec.
127.1, RA 8293].

Priority Right

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  If an applicant files a trademark application in the Philippines within 6
months of their original foreign application, the Philippine filing date
is considered the same as the foreign filing date (Section 131.1).
 A mark will not be registered in the Philippines unless it has already
been registered in the applicant’s country of origin (Section
131.2).

Significance of Priority Right

A Philippine application filed by another applicant after the priority date but
earlier than the foreign applicant’s actual filing may be refused registration if
it is identical to the mark with a priority date [Agpalo, The Law on Trademark,
Infringement and Unfair Competition (2000)].
c. Acquisition of Ownership of Trade Name
Trade name ownership is acquired through adoption and use, not
registration. Trade names are protected against unlawful acts, even prior to
or without registration (Sec. 165.2a).Any subsequent use of the trade
name or similar names/marks by others, likely to mislead the public, is
considered unlawful (Sec. 165.2b).
A name or designation may not be used as a trade name:
1. If by its nature or the use to which such name or designation may be put,
it is contrary to public order or morals; and
2. If, in particular, it is liable to deceive trade circles or the public as to the
nature of the enterprise identified by that name [Sec. 165.1, RA 8293]. Any
change in the ownership of a trade name shall be made with the transfer of
the enterprise or part thereof identified by that name [Sec. 165.4, RA 8293].

Well-known marks
A well-known mark is a mark which a competent authority of the
Philippines has designated to be well-known internationally and in
the Philippines, [Sec. 123.1(e), RA 8293].
"Competent authority" for purposes of determining whether a mark is well-
known, means:
a. The Court;
b. The Director General;
c. The Director of the Bureau of Legal Affairs [Rule 101 (d), Trademark
Regulations of 2017];
d. Any administrative agency or office vested with quasi-judicial or
judicial jurisdiction to hear and adjudicate any action to enforce the rights to
a mark [Dy v. Koninklijke Philips Electronics, N.V. G.R. No. 186088 (2017)].
In determining whether a mark is well-known, account shall be taken of the
knowledge of the relevant sector of the public, rather than the public at
large, including knowledge in the Philippines which has been obtained as a
result of the promotion of the mark [Sec. 123.1(e), RA 8293].
a. Determinants Factors to determine whether a mark is wellknown
1. The duration, extent and geographical area of any use of the mark;

12
2. The market share in the Philippines and other countries of the
goods/services to which the mark applies; 3. The degree of the inherent or
acquired distinction of the mark;
4. The quality-image or reputation acquired by the mark;
5. The extent to which the mark has been registered in the world;
6. The exclusivity of the registration attained by the mark in the world;
7. The extent of use of the mark in the world;
8. The exclusivity of use in the world;
9. The commercial value attributed to the mark in the world;
10. The record of successful protection of the rights in the mark;
11. The outcome of litigations dealing with the issue of whether the mar is
wellknown; and
12. The presence or absence of identical or similar test marks validly
registered or used on other similar goods or services and owned by others
[See Rule 103, Trademark Regulations of 2017].
Note: The determinants need not concur.

b. Protection Extended to Well-Known Marks

The owner of a well-known mark has the right to be protected, whether or
not the mark is registered in the Philippines [Sec. 123.1(e), RA 8293].
c. Sec. 123.1 (e) vs. Sec. 123.1 (f) If the well-known mark is registered or
not registered in the Philippines, a mark cannot be registered if it is identical
with, or confusingly similar to, or constitutes a translation of an
internationally well-known mark if used for identical or similar goods or
services [Sec. 123.1(e)m RA 8293].
Other persons or entities cannot use the registered well-known mark even
for unrelated goods, provided that:
1. The 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; and
2. That the interests of the owner of the registered mark are likely to be
damaged by such use [Sec. 123.1(f), RA 8293].

Rights conferred by registration

The owner of a registered mark shall have the exclusive right to prevent all
third parties not having the owner's consent from using in the course of
trade:
a. Identical or similar signs or containers,
b. For goods or services which are identical or similar to those in respect of
which the trademark is registered,
c. Where such use would result in a likelihood of confusion.

13
Note: In case of the use of an identical sign for identical goods or services, a
likelihood of confusion shall be presumed [Sec. 147.1, RA 8293 as amended
by RA 9502].
Exception: In cases of importation of drugs and medicines allowed under
Section 72.1 of this Act and of off-patent drugs and medicines, third parties
can import the same even without the owner’s consent, provided that:
a. Said drugs and medicines bear the registered marks
b. The registered marks have not been tampered, unlawfully modified, or
infringed upon [Sec. 147.1, RA 8293 as amended by RA 9502].

a. When Such Rights are Conferred

The rights of the owner are conferred upon registration of the mark, and a
mark is deemed registered on the 31st day from the publication for purposes
of opposition, provided no opposition is filed.
1. On the 31st day from the publication for purposes of opposition (if
no opposition is filed)
2. On the date the decision or final order giving due course to the
application becomes final and executory (if opposition is filed) [See Rule 703,
Trademarks Regulations of 2017].

Certificate of Registration
A certificate of registration of a mark shall be prima facie evidence of:
1. The validity of the registration,
2. The registrant's ownership of the mark, and
3. 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 [Sec. 138, RA 8293].

Duration
A certificate of registration shall remain in force for 10 years from
registration and may be renewed for periods of 10 years at its expiration
upon payment of the prescribed fee and upon filing of a request [Sec. 145-
146, RA 8293].
b. Limitations on Such Right
Duration
Except that, inasmuch as the registration of a trademark could be renewed
every 10 years, provided a Declaration of Actual Use is timely submitted, a
trademark could conceivably remain registered forever.
Territorial
A mark must be used in commerce in the Philippines to receive
protection.
Exception: Internationally well-known marks are protected even without
local use (Fredco v. Harvard, 2011).

14
Trademark registration does not prevent third parties from using:

 Names, addresses, pseudonyms

 Geographical names
 Accurate descriptions of goods/services (e.g., kind,
quality, origin).

Provided That:
1. Such use is confined to the purposes of mere identification or information;
and
2. Such use cannot mislead the public as to the source of the goods or
services [Sec. 148, RA 8293].
Prior User
A registered mark shall have no effect against any person who, in good faith,
before the filing date or the priority date, was using the mark for the
purposes of his business or enterprise [Sec. 159.1, RA 8293].

Non-Use
Failure to file declaration of actual use automatically results in the denial of
the registration or the cancellation of the registration by operation of law
[Sec. 124.2, RA 8293].
c. Assignment and Transfer of Application and Registration
1. An application for registration of a mark, or its registration, may be
assigned or transferred with or without the transfer of the business using the
mark [Sec. 149.1, RA 8293].
2. Such assignment or transfer shall, however, be null and void if it is liable
to mislead the public, particularly as regards the nature, source,
manufacturing process, characteristics, or suitability for their purpose, of the
goods or services to which the mark is applied [Sec. 149.2, RA 8293].
3. The assignment of the application for registration of a mark, or its
registration, shall be in writing and require the signatures of the contracting
parties. Transfers by mergers or other forms of succession may be made by
any document supporting such transfer [Sec. 149.3, RA 8293].
4. Assignments and transfers shall have no effect against third parties until
they are recorded at the Office [Sec. 149.5, RA 8293].

CANCELLATION OF REGISTRATION
A petition to cancel a registration of a mark may be filed with the Bureau of
Legal Affairs by any person who believes that he is or will be damaged by the
registration of a mark [Sec. 151.1, RA 8293]:

15
a. Within five (5) years from the date of the registration of the mark [Sec.
151.1 (a), RA 8293].
b. At any time, if the registered mark:
1. becomes the generic name for the goods or services, or
2. has been abandoned, or
3. has its registration obtained fraudulently or contrary to the provisions of
RA 8293, or
4. is being used by, or with the permission of, the registrant so as to
misrepresent the source of the goods or services on or in connection with
which the mark is used [Sec. 151.1 (b), RA 8293].
c. At any time, by virtue of non-use without legitimate reason for an
uninterrupted period of three (3) years or longer [Sec. 151.1 (c), RA 8293].
The following shall be liable in a civil action for infringement:
a. Any person who shall, without the consent of the owner of the registered
mark, use in commerce any reproduction, counterfeit, copy, or colorable
imitation of a registered mark or the same container or a dominant feature
thereof:
1. In connection with the sale, offering for sale, distribution, advertising of
any goods or services, including other preparatory steps necessary to carry
out the sale of any goods or services on; or
2. In connection with which such use is likely to cause confusion, or to cause
mistake, or to deceive [Sec. 155.1, RA 8293].
b. Any person who shall, without the consent of the owner of the registered
mark:
1. Reproduce, counterfeit, copy or colorably imitate a registered mark or a
dominant feature thereof; and
2. Apply such reproduction, counterfeit, copy or colorable imitation to labels,
signs, prints, packages, wrappers, receptacles, or advertisements, intended
to be used in commerce:
a. In connection with the sale, offering for sale, distribution, or advertising of
goods or services on; or
b. In connection with which such use is likely to cause confusion, or to cause
mistake, or to
deceive [Sec. 155.2, RA 8293].
Note: The infringement takes place at the moment any of the acts stated in
Subsections155.1 or 155.2 are committed, regardless of whether there is
actual sale of goods or services using the infringing material.A mere
distributor, and not the owner, cannot assert any protection from trademark
infringement as it had no right in the first place to the registration of the
disputed trademarks.

A. ELEMENTS OF TRADEMARK INFRINGEMENT

The trademark being infringed is registered in the Intellectual Property
Office; however in infringement of trade name, the same need not be
registered;

16
The trademark or trade name is reproduced, counterfeited, copied, or
colorably imitated by the infringer;
The infringing mark or trade name is used in selling, offering, or advertising
goods or services, or applied to materials linked to such goods or services.
This usage is likely to cause confusion or deceive about the goods, services,
or their source.
It is done without the consent of the trademark or trade name owner or their
assignee
Tthe element of likelihood of confusion that is the gravamen of trademark
infringement
[McDonald’s Corporation v. L.C. Big Mak Burger, Inc., et al., G.R. No. 143993
(2004)].
Whether a trademark causes confusion and is
likely to deceive the public hinges on “colorable imitation” which has been
defined as "such similarity in form, content, words, sound, meaning, special
arrangement or general appearance of the trademark or trade name in their
overall presentation or in their essential and substantive and distinctive parts
as would likely mislead or confuse persons in the ordinary course of
purchasing the genuine article" [Mighty Corporation v. E. & J. Gallo Winery,
G.R. No. 154342 (2004)].
Two types of confusion arise from the use of similar or colorable
imitation marks, namely –
1. Confusion of goods (product confusion) and
2. Confusion of business (source or origin confusion).

B. REQUIREMENTS OF NOTICE
The owner of the registered mark shall not be entitled to recover profits or
damages unless the acts have been committed with knowledge that such
imitation is likely to cause confusion, or to cause mistake, or to deceive.
Such knowledge is presumed if:
1. The registrant gives notice that his mark is registered by displaying with
the mark the words “Registered Mark” or the letter R within a circle; or
2. The defendant had otherwise actual notice of the registration.

Unfair competition
The following shall be guilty of unfair competition, and shall be subject to an
action therefor:
Any person who shall employ deception or any other means contrary to
good faith, by which he shall pass off the goods manufactured by him or in
which he deals, or his business, or services for those of the one having
established such goodwill
Any person who shall commit any acts calculated to produce said result.
a. Particular Acts of Unfair Competition

17
1. Selling one’s goods and giving them the general appearance of goods of
another manufacturer or dealer, either:
a. As to the goods themselves or in the wrapping of the packages in which
they are contained, or the devices or words thereon; or
b. In any other feature of their appearance, which would be likely to influence
purchasers to believe that the goods offered are those of a manufacturer or
dealer, other than the actual manufacturer or dealer [Sec. 168.3(a), RA
8293].
2. Clothing one’s goods with such appearance as shall deceive the public and
defraud another of his legitimate trade, or any subsequent vendor of such
goods or any agent of any vendor engaged in selling such goods with a like
purpose.
3. Using any artifice, or device, or employing any other means calculated to
induce the false belief that such person is offering the services of another
who has identified such services in the mind of the public.
4. Making any false statement in the course of trade or committing any other
act contrary to good faith of a nature calculated to discredit the goods,
business or services of another

B. Elements of an Action for Unfair Competition

1. Confusing similarity in the general appearance of the goods, and
2. Intent to deceive the public and defraud a competitor.
The confusing similarity may or may not result from similarity in the marks,
but may result from other external factors in the packaging or presentation
of the goods. The intent to deceive and defraud may be inferred from the
similarity in appearance of the goods as offered for sale to the public.
Actual fraudulent intent need not be shown.

C. Trademark Infringement vs. Unfair Competition

The “true test”, therefore, of unfair competition has thus been “whether the
acts of the defendant have the intent of deceiving or are calculated to
deceive the ordinary buyer making his purchases under the ordinary
conditions of the particular trade to which the controversy relates”
[San Miguel Pure FoodsCompany, Inc., v. Foodsphere, G.R. No. 217781
(2018)].
Infringement of Trademark or Trade N Unfair Competition
ame
Unauthorized use of a trademark or trade n Passing off of one’s goods as t
ame hose of another
Fraudulent intent is unnecessary Fraudulent intent is essential

Prior registration of the trademark is a prere Registration is not necessary

quisite to the action

18
The law on unfair competition is broader and more inclusive than the law on
trademark infringement.
● The latter is more limited but it recognizes a more exclusive right derived
from the trademark adoption and registration by the person whose goods or
business is first associated with it.
● Hence, even if one fails to establish his exclusive property right to a
trademark, he may still obtain relief on the ground of his competitor’s
unfairness or fraud [Mighty Corporation v. E. & J. Gallo Winery, G.R. No.
154342 (2004)].

D. COPYRIGHT is the legal protection extended to the owner of the rights in

an “original work”, which refers to every literary, scientific and artistic
production [IPOPHL].
COPYRIGHT refers to the right granted by a statute to the proprietor of an
intellectual production to its exclusive use and enjoyment to the extent
specified in the statute [Olaño v. Lim Eng Co, G.R. 195835 (2016)].

Basic Principles
a. Works are protected by the sole fact of their creation
Principle of Automatic Protection
Copyright is vested from the very moment of creation irrespective of their
mode or form of expression, as well as of their content, quality, and purpose
[Sec. 171.1-172.2, RA 8293].
The enjoyment and exercise of copyright, including moral rights, shall not be
the subject of any formality; such enjoyment and such exercise shall be
independent of the existence of protection in the country of origin of the
work.
b. Protection extends only to the expression of an idea, not the idea
itself.
No protection shall extend, under this law, to any idea, procedure, system
method or operation, concept, principle, discovery, or mere data as such,
even if they are expressed, explained, illustrated or embodied in a work [Sec.
175, RA 8293].
c. The copyright is distinct from the property in the material object
subject to it.
Consequently:
1. The transfer or assignment of the copyright shall NOT itself constitute a
transfer of the material object.

19
2. The transfer or assignment of the sole copy or of one or several copies of
the work shall NOT imply transfer or assignment of the copyright [Sec. 181,
RA 8293].
d. Copyright, like other intellectual property rights, is a statutory
right.
Copyright, in the strict sense of the term is purely a statutory right.
1. The rights are limited to what the statute confers.
2. It may be obtained and enjoyed only with respect to the subjects and by
the persons, and on terms and conditions specified in the statute.
3. It can cover only the works falling within the statutory enumeration or
description [Pearl and Dean v. Shoemart, G.R. No. 148222 (2003)].

Copyrightable works
a. Original Works
Literary and artistic works, hereinafter referred to as "works", are original
intellectual creations in the literary and artistic domain protected from the
moment of their creation and shall include in particular:
1. Books, pamphlets, articles and other writings;
2. Lectures, sermons, addresses, dissertations prepared for oral delivery,
whether or not reduced in writing or other material form;
3. Periodicals and newspapers;
4. Letters; Dramatic or dramatico-musical compositions; choreographic
works or entertainment in dumb shows;
5. Musical compositions, with or without words;
6. Original ornamental designs or models for articles of manufacture,
whether or not registrable as an industrial design, and other works of
applied art;
7. Works of drawing, painting, architecture, sculpture, engraving,
lithography or other works of art; models or designs for works of art;
8. Illustrations, maps, plans, sketches, charts and three-dimensional
works relative to geography, topography, architecture or science;
9. Drawings or plastic works of a scientific or technical character;
10. Photographic works including works produced by a process
analogous to photography; lantern slides;
11. Audiovisual, cinematographic works and works produced by a
process analogous to cinematography or any process for making audio-
visual recordings;
12. Pictorial illustrations and advertisements;
13. Computer programs; and other literary, scholarly, scientific and
artistic works
WHEN A WORK IS CONSIDERED ORIGINAL
The work is original when:
1. It is an independent creation of the author; and
2. It must not be copied from the work of another.
A person must be the original creator of the work to be entitled to a
copyright. He must have created it by his own skill, labor, and judgment
without directly copying or evasively imitating the work of another [Ching
Kian Chuan v. CA, G.R. No. 130360 (2001)].

20
Originality is not determined by novelty, aesthetic merit, or ingenuity but
that it is an independent creation [IPOPHL].
Works are protected irrespective of their mode or form of expres sion [Sec.
172.2, RA 8293].
Derivative Works
The following derivative works shall also be protected by copyright:
1. Dramatizations, translations, adaptations, abridgments, arrangements,
and other alterations of literary or artistic works; and
2. Collections of literary, scholarly, or artistic works, and compilations of data
and other materials which are original by reason of the selection or
coordination or arrangement of their contents [Sec. 173.1, RA 8293].

Derivative works are protected as new works, provided they shall not:
1. Affect the force of any subsisting copyright upon the original works
employed or any part thereof; or
2. Be construed to imply any right to such use of the original works, or to
secure or extend copyright in such original works [Sec. 173.2, RA 8293].
Derivative works are protected as new works, provided they shall not:
1. Affect the force of any subsisting copyright upon the original works
employed or any part thereof; or
2. Be construed to imply any right to such use of the original works, or to
secure or extend copyright in such original works [Sec. 173.2, RA 8293].

Non-copyrightable works
a. Unprotected Subject Matter
1. Any idea, procedure, system method or operation, concept, principle,
discovery or mere data as such, even if they are expressed, explained,
illustrated or embodied in a work;
2. News of the day and other miscellaneous facts having the character of
mere items of press information;
3. Any official text of a legislative, administrative or legal nature, as well as
any official translation thereof;
4. Pleadings;
5. Original decisions of courts and tribunals (Note: This pertains to the
“original decisions” not the SCRA published volumes since these are
protected under derivative works under Sec. 173.1) [Sec. 175, RA 8293].

News footages are subject to copyright. Although news or the events

themselves are not copyrightable, expression of the news particularly when

21
it underwent a creative process is entitled to copyright protection [ABS-CBN
Corp. v. Gozon, G.R. No. 195956 (2015)].
The format or mechanics of a TV show is not copyrightable as
copyright does not extend to ideas, procedures, processes, systems,
methods of operation, concepts, principles or discoveries regardless of the
form in which they are described, explained, illustrated or embodied [Joaquin
Jr. et al v. Drilon, et al, G.R. No. 108946 (1999)].
No one may claim originality as to facts as these do not owe their origin
to an act of authorship. The first person to find and report a particular fact
has not created the same; he has merely discovered its existence [Feist
Publication v. Rural Telephone Services, 499 U.S. 340 (1991)].
A compilation is not copyrightable per se,but it is copyrightable only if
its facts have been selected, coordinated, or arranged in such a way that the
resulting work as a whole constitutes an original work of authorship.
Otherwise known as the Sweat of the Brow or Industrious Collection Test
[Feist Publication v. Rural Telephone Services, 499 U.S. 340 (1991)].

b. Works of the Government of the Philippines

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
[Sec. 171.11, RA 8293].
General Rule: No copyright shall subsist in any work of the
Government.
Exceptions:
1. When copyright is transferred by assignment or bequest in favor of
the government [Sec. 176.3];
2. Author of speeches, lectures, sermons, addresses and dissertations shall
have exclusive right of making a collection of his work. However, prior
approval of the government agency or the office wherein the work is
created shall be necessary for the exploitation of such work for profit
[Sec.176.1].
Publication or republication by the Government in a public document of any
work in which copyright is subsisting shall not be taken:
1. To cause any abridgment or annulment of the copyright; or
2. To authorize any use or appropriation of such work without the
consent of the copyright owner [Sec. 176.3, RA 8293].
Works made by an officer or employee of the Government as part of
his regularly prescribed duty do NOT enjoy copyright.
Works made by an employee of the government which is not as a part of his
regularly prescribed official duties (i.e. not considered a “Work of the
Government”) may enjoy copyright.

[Link] of the Public Domain

Works of the public domain are noncopyrightable. To this class of works
belong:

22
1. Works, whose term of copyright has expired;
2. Works wherein the copyright over them are waived by the owner in favor
of the public; and
3. Works which did not enjoy copyright protection in the first place, as in the
case of unregistered works made under previous laws that required the
registration of copyright [See: Santos v. McCullough Printing Company, G.R.
No. L-19439 (1964)].

d. Useful Articles
A “useful article” is defined as an article “having intrinsic utilitarian function
that is not merely to portray the appearance of the article or to convey
information” is excluded from copyright eligibility.
The only instance when a useful article may be the subject of copyright
protection is when it incorporates a design element that is physically or
conceptually separable from the underlying product [Olaño v. Lim Eng Co,
G.R. No. 195835 (2016)].
Useful Article Doctrine
Works whose sole purpose is utilitarian, and have no separate artistic value
are noncopyrightable works. In contrast, a work of applied art, which has
utilitarian functions, but has an identifiable artistic work or creation
incorporated thereto, can be the subject of a copyright to the extent that the
design features:
1. Can be identified separately from, and
2. Are capable of existing independently of the utilitarian aspects of the
article [Brandir Int’l v. Cascade Pacific, 834 F. 2nd 1142 (2nd Cir.) (1987)].

Denicola Test: Conceptual Separability (Aesthetics vs. Functionality)

The work cannot be copyrighted if its design elements reflect a merger of
aesthetic and functional considerations, and the artistic aspects of the work
cannot be conceptually separable from the utilitarian aspects.
1. Conceptual separability exists where design elements can be identified as
reflecting the designer's artistic judgment, exercised independently of
functional influences
2. The relevant question should be whether the design of a useful article,
however intertwined with the article’s utilitarian aspects, causes an ordinary
reasonable observer to perceive an aesthetic concept not related to the
article’s use.

Rights conferred by copyright

Works are protected by the sole fact of their creation, irrespective of
their mode or form of expression, as well as of their content, quality
and purpose [Sec. 172.2, RA 8293].
The issuance of the certificates of registration and deposit as provided by
Sec. 2, Rule 7 of the Copyright Safeguards and Regulations, are purely for
recording the date of registration and deposit of the work, and are not

23
conclusive as to copyright ownership (nor does it determine the time when
copyright vests)

a. Economic Rights
Copyright or economic rights shall consist of the exclusive right to carry
out, authorize or prevent the following acts:
1. Reproduction of the work or substantial portion of the work;
2. Dramatization, translation, adaptation, abridgment, arrangement or other
transformation of the work;
3. The first public distribution of the original and each copy of the work by
sale or other forms of transfer of ownership;
4. Rental of the original or a copy of:
a. An audiovisual or cinematographic work,
b. A work embodied in a sound recording,
c. A computer program,
d. A compilation of data and other materials or a musical work in graphic
form
e. Irrespective of the ownership of the original or the copy which is the
subject of the rental;
5. Public display of the original or a copy of the work;
6. Public performance of the work; and
7. Other communication to the public of the work [Sec. 177, RA 8293].

b. 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
suchright, have the right:
1. To require that the authorship of the works be attributed to him, in
particular, the right that his name, as far as practicable, be indicated in a
prominent way on the copies, and in connection with the public use of his
work [Sec. 193.1, RA 8293];
2. To make any alterations of his work prior to, or to withhold it from
publication [Sec. 193.2, RA 8293];
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 [Sec. 193.3, RA 8293];
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. 193.4, RA 8293]

Assignment or License of Moral Rights

Moral rights cannot be assigned or licensed [Sec. 198, RA 8293].

24
Waiver of Moral Rights
While Moral Rights cannot be assigned or licensed, it can be waived [Sec.
198, RA 8293].
General Rule: Moral rights can be waived in writing, expressly stating such
waiver [Sec. 195, RA 8293].
Exceptions: Even if made in writing, waiver is still not valid if:
1. Use of the name of the author, title of his work, or his reputation with
respect to any version or adaptation of his work, which because of
alterations substantially tends to injure the literary or artistic reputation of
another author [Sec. 195.1, RA 8293];
2. It uses the name of the author in a work that he did not create .
The right of attribution is waived by contribution to a collective work
unless such is expressly reserved [Sec. 196, RA 8293].

c. Right to Transfer, Assign or License

The author has the right to assign or license the copyright and/or the
material object in whole or in part, and they allow the owner to derive
financial reward from the use of his works by others [Sec. 180.1, RA 8293 as
amended by RA 10372].

Rights of Assignee or Licensee

The assignee or licensee is entitled to all therights and remedies which
the assignor or
licensor had with respect to the copyright, within the scope of the
assignment or license
[Sec. 180.1, RA 8293]
Filing of Assignment or License
An assignment or exclusive license may be filed in duplicate with the
National Library upon payment of the prescribed fee for registration
in books and records kept for the purpose [Sec. 182, RA 8293]

d. Rights to Proceed on Subsequent Transfers

(Droit de Suite or Follow Up Rights)
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%) .

Duration of Right
This right shall exist during the lifetime of the author and for 50 years
after his death [Sec. 200, RA 8293].

25
Works not covered
Prints, etchings, engravings, works of applied art, or works of similar kind
wherein the author primarily derives gain from the proceeds of reproductions
[Sec. 201, RA 8293]

e. Related Rights (Neighboring Rights)

Rights of Performers
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
c. Such right shall be maintained and exercised 50 years after his death, by
his heirs, and in default of heirs, the government, where protection is
claimed
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 .
3. The right of authorizing the first public distribution of the original
and copies oftheir performance fixed in the sound recording or
audiovisual works or fixations through sale or rental or other forms of
transfer of ownership.
a. Subject to the provisions of Section 206
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.
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, insuch a way that members of the public
may access them from a place and time individually chosen by them.
6. The right to claim to be identified as the performer of his
performances, and to object to any distortion, mutilation or other
modification of his performances that would be prejudicial to his
reputation, as regards his live aural performances or performances fixed in
sound recordings or audiovisual works or fixations;
a. Exception: Where the omission is dictated by the manner of the use of
the performance.
7. The right 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, in every communication to the public or
broadcast of a performance subsequent to the first communication or
broadcast thereof by the broadcasting organization.
a. Unless otherwise provided in the contract

26
Rights of Producers of Sound Recordings
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 [Sec. 208.1, RA 8293];
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 [Sec. 208.2, RA 8293]; 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. 208.3, RA 8293].

What is Copyright Ownership?

WORK OWNERSHIP
Single Creator of an Original Work Belongs to the author of the work
[Sec. 178.1, RA 8293].

Works of Joint Authorship Belongs of the coauthors; in the

absence of agreement, their
rightsshall be governed by the rules
on co-ownership. However, if the
work consists of parts that can be
used separately and identified, the
author of each part owns the
copyright of the part he has created
[Sec. 178.2,RA 8293].
Work created during the course of Belongs to the employee if the
employment creation is not a part of his regular
duties, even if he used the time,
facilities and materials of the
employer. However, copyright
belongs to the employer if the work is
in the performance of the employee’s
regular duties unless there is an
agreement to the contrary [Sec.
178.3, RA 8293].
Work commissioned by a person The person who commissioned the
other than the employer work and pays for it holds ownership
of the work per se, but copyright
remains with the creator unless
there was a stipulation to the
contrary .
Work commissioned by a person The person who commissioned the
other than the employer work and pays for it holds ownership
of the work per se, but copyright

27
 remains with the creator unless
there was a stipulation to the
contrary .
Audio visual works Belongs to the producer, author of
the scenario, composer of the
music, film director, and author
of the adapted work.
However, subject to stipulations, the
producers shall exercise the
copyright as may be required for the
exhibition of the work, except for the
right to collect license fees for the
performance of musical compositions
in the work.
Letters Belongs to the writer, but the court
may authorize their publication or
dissemination of the public good or
interest of justice requires, pursuant
to Art. 723, New Civil Code.

Anonymous and pseudonymous Publishers are deemed to

works represent the authors, unless the
contrary appears, the pseudonyms or
adopted names leave no doubt as to
the author’s identity or if the author
discloses his identity [Sec. 179, RA
8293].
Collective works A contributor is deemed to have
waived his right unless he
expressly reserves it [Sec. 196,
RA 8293]

A person to be entitled to copyright must be the original creator of

the work.
He must have created it by his own skill, labor and judgment without directly
copying or evasively imitating the work of another
Ownership of copyrighted material is shown by proof of originality
and copyrightability.
a. Presumption of Ownership
General Rule: The natural person whose name is indicated on a work in the
usual manner as the author shall, in the absence of proof to the contrary, be
presumed to be the author of the work.
The person or body corporate, whose name appears on an audio-visual work
in the usual manner, shall, in the absence of proof to the contrary, be
presumed to be the maker of said work [Sec. 219, RA 8293].
Use of Pseudonym

28
This provision shall be applicable even if the name is a pseudonym, where
the pseudonym leaves no doubt as to the identity of the author.

Limitations on copyright
Doctrine of Fair Use
The fair use of copyrighted work for criticism, news reporting, teaching
(including multiple copies for classroom use), research and similar purposes
is not an infringement of copyright.
A privilege, in persons other than the owner of the copyright, to use the
copyrighted material in a reasonable manner without his consent,
notwithstanding the monopoly granted to the owner by the copyright. It is
meant to balance the monopolies enjoyed by the copyright owner with the
interests of the public and of society
Decompilation - refers to the reproduction of the code and
translation of the forms of the computer program to achieve the inter-
operability of an independently created computer program with other
programs. This may also constitute fair use [Sec. 185.1, RA 8293].
b. Limitations on Protection of Neighboring Rights
Sections 203, 208 and 209 shall not apply where the acts referred to in those
Sections are
related to:
1. The use by a natural person exclusively for his own personal
purposes;
2. Using short excerpts for reporting current events;
3. Use solely for the purpose of teaching or for scientific research; and
4. Fair use of the broadcast subject to certain conditions [Sec. 212, RA 8293].

[Link] of Protection
Duration of Copyright
WORKS TERM
Original Literary and Artistic Works Lifetime of author and for 50 years
including Posthumous Works after his death [Sec. 213.1, RA 8293]
Derivative Works including Lifetime of author and for 50 years
Posthumous Works after his death [Sec. 213.1, RA 8293]
Joint Authorship Lifetime of the last surviving
author and for 50 years after his
death [Sec. 213.2, RA 8293]

Anonymous or Pseudonymous Works 50 years from date of first lawful

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 publication [Sec. 213.3, RA 8293]

Applied Art 25 years from date of making [Sec.

213.4, RA 8293]

Published Photographic Works 50 years from publication [Sec.

213.5, RA 8293]

Unpublished Photographic Works 50 years from the making [Sec.

213.5,
RA 8293]
Published Audiovisual Works 50 years from publication [Sec.
213.6, RA 8293]]

Unpublished Audiovisual Works 50 years from the making [Sec.

213.5, RA 8293]

Right of Attribution or Right Lifetime of author and in perpetuity

ofPaternity (Sec. 193.1) after his death.

Other Moral Rights [Sec. 193.2- Coterminous with the economic

193.4] rights

For performances not incorporated in 50 years from the end of the year in
recordings
which the performance took place
[Sec. 215.1(a), RA 8293].
For sound or image and sound 50 years from the end of the year in
recordings and for performances which the recording took place [Sec.
incorporated therein 215.1(b), RA 8293].
Broadcasts 20 years from the date the broadcast
took place [Sec. 215.2, RA 8293]

What is Copyright Infringement?

a. What Constitutes Infringement
Infringement consists in the doing by any person, without the consent of the
owner of the copyright, of anything the sole right to do which is conferred by
statute on the owner of the copyright.
It can cover a whole range of acts from copying, assembling, packaging to
marketing,
including the mere offering for sale of counterfeit goods.

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Copyright infringement is thus committed by any person who shall use
original literary or
artistic works, or derivative works, without the copyright owner’s consent in
such a manner as to violate the foregoing copy and economic rights.
For a claim of copyright to prevail, the evidence on record must
demonstrate:
a. ownership of a validly copyrighted material by the complainant;
b. infringement of the copyright by the respondent.
[W]hat was copyrighted were their sketches/drawings only, and not the
actual hatch doors themselves.
To constitute infringement, the usurper must have copied or appropriated the
original work of an author or copyright proprietor, absent copying, there
can be no infringement of copyright.
Absent originality and copyrightability as elements of a valid copyright
ownership, no infringement can subsist [Olaño v. Lim Eng Co, G.R. 195835
(2016)].

b. Substantial Reproduction
It is not necessarily required that the entire copyrighted work, or
even a large portion of it, be copied. If so much is taken that the value
of the original work is substantially diminished, there is an infringement of
copyright and to an injurious extent, the work is appropriated.
In cases of infringement, copying alone is not what is prohibited. The
copying mustproduce an “injurious effect” [Habana et al v. Robles et al., G.R.
No. 131522 (1999)].

c. Knowledge not an Element of Infringement

Knowledge of infringement is material only when a person is charged of
aiding and abetting a copyright infringement.
The liability for copyright infringement is in the nature of strict liability. It
does not require mens rea or culpa [ABS–CBN Corp v. Gozon, G.R. No.
195956 (2015)].

What is not considered Copyright Infringement?

d. What Does NOT Constitute Infringement
The following shall NOT constitute infringement of copyright:
1. Recitation or performance of a work once it has been made accessible to
the public if;
a. privately done and free of charge
b. strictly for a charitable or religious institution [Sec. 184.1(a), RA 8293];
2. Making of quotations from a published work:
a. compatible with fair use,

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b. extent is justified by the purpose,
c. source and name of the author, appearing on work, must be mentioned
[Sec. 184.1(b), RA 8293];
3. Reproduction or communication to the public by mass media of articles on
current political, social, economic, scientific, or religious topic, lectures,
addresses and other works, delivered in public:
a. for information purposes,
b. not expressly reserved, and
c. source is already indicated [Sec. 184.1(c), RA 8293];
4. Reproduction and communication to the public of literary, scientific or
artistic works as part of reports of current events by means of photography,
cinematography or broadcasting to the extent necessary for the purpose
[Sec. 184.1(d), RA 8293];
5. Inclusion of a work in a publication, broadcast or other communication to
the public, sound recording or film if made by way of illustration for teaching
purposes compatible with fair use and the source and the name of the author
appearing on work, must be mentioned [Sec. 184.1(e), RA 8293];
6. Recording made in schools, universities, or educational institutions of a
work included in a broadcast for the use of schools, universities or
educational institutions. Such recording must be deleted within a reasonable
period; such recording may not be made from audio-visual works which are
part of the general cinema, repertoire of feature films except of brief
excerpts of the work [Sec. 184.1(f), RA 8293];
7. Making of ephemeral recordings;
a. by a broadcasting organization,
b. by means of its work or facilities,
c. for use in its own broadcast
8. Use made of a work by or under the direction or control of the government
for public interest compatible with fair use [Sec. 184.1(h), RA 8293];
9. Public performance or the communication to the public of a work in a
place where no admission fee is charged by a club on institution for
charitable or educational purpose only and the aim is not profitmaking [Sec.
184.1(i), RA 8293];
10. Public display of the original or a copy of the work not made by means of
a film, slide, television, image or otherwise on screen or by means of any
other device or process either the work has been published, sold, given
away, or transferred to another person by the author or his successor in title
[Sec. 184.1(j), RA 8293];
11. Use made of a work for the purpose of any judicial proceedings or for the
giving of professional advice by a legal practitioner [Sec. 184.1(k), RA 8293].
12. The reproduction or distribution of published articles or materials in a
specialized format exclusively for the use of the blind, visually- and
reading_x0002_impaired persons:

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 Provided, That such copies and distribution shall be made on a nonprofit
basis and shall indicate the copyright owner and the date of the original
publication [Sec. 184.1(l), RA 8293 as amended by RA 10372].

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