INTELLECTUAL PROPERTY BAR EXAM QUESTIONS

2018 IP BAR QUESTIONS

XV

A distinctive-tasting pastillas is well-known throughout the country as having been developed within a close-knit
women's group in Barangay San Ysmael which is located along a very busy national highway. Its popularity has
encouraged the setting up of several shops selling similar delicacies, with the most famous product being the
pastillas of "Barangay San Ysmael." Eventually, the pastillas of Aling Voling under the brand name "Ysmaellas"
began to attract national distinction. Aling Voling therefore registered it as a copyright with the National Library.
Her neighbor, Aling Yasmin, realizing the commercial value of the brand, started using the term "Ysmaellas" for
her pastillas but used different colors. Aling Yasmin registered the brand name "Ysmaellas" with the Intellectual
Property Office (IPO).

a. Can Aling Voling successfully obtain court relief to prohibit Aling Yasmin from using the brand
name "Ysmaellas" in her products on the basis of her (Aling Yoling's) copyright? What is the
difference between registration as a copyright and registration as a trade or brand name? (2.5%)
b. Can Aling Yasmin seek injunctive relief against Aling Voling from using the brand name
"Ysmaellas," the latter relying on the doctrine of "prior use" as evidenced by her prior copyright
registration? (2.5%)
c. Can Aling Voling seek the cancellation of Aling Yasmin's trademark registration of the brand
name "Ysmaellas" on the ground of "Well Known Brand" clearly evidenced by her (Aling Yoling's)
prior copyright registration, actual use of the brand, and several magazine articles? (2.5%)

XVI

Yosha was able to put together a mechanical water pump in his garage consisting of suction systems capable of
drawing water from the earth using less human effort than what was then required by existing models. The water
pump system provides for a new system which has the elements of novelty and inventive steps. Yosha, while
preparing to have his invention registered with the IPO, had several models of his new system fabricated and
sold in his province.

a. Is Yosha's invention no longer patentable by virtue of the fact that he had sold several models to
the public before the formal application for registration of patent was filed with the IPO? (2.5%)
b. If Yosha is able to properly register his patent with the IPO, can he prevent anyone who has
possession of the earlier models from using them? (2.5%)

2017 IP BAR QUESTIONS

VII.

A.

Virtucio was a composer of llocano songs who has been quite popular in the llocos Region. Pascuala is a
professor of music in a local university with special focus on indigenous music. When she heard the musical
works of Virtucio, she purchased a CD of his works. She copied the CD and sent the second copy to her Music
instructions for the class to listen to the CD and analyze the works of Virtucio.

Did Pascuala thereby infringe Virtucio's copyright? Explain your answer. (4%)

B.

Super Biology Corporation (Super Biology) invented and patented a miracle medicine for the cure of AIDS.
Being the sole manufacturer, Super Biology sold the medicine at an exorbitant price. Because of the sudden
prevalence of AIDS cases in Metro Manila and other urban areas, the Department of Health (DOH) asked Super
Biology for a license to produce and sell the AIDS medicine to the public at a substantially lower price. Super
Biology, citing the huge costs and expenses incurred for research and development, refused.

Assuming you are asked your opinion as the legal consultant of the DOH, discuss how you will resolve the
matter. (4%)
2016 IP BAR QUESTIONS

III

ABC Appliances Corporation (ABC) is a domestic corporation engaged in the production and sale of televisions
and other appliances. YYY Engineers, a Taiwanese company, is the manufacturer of televisions and other
appliances from whom ABC actually purchases appliances. From 2000, when ABC started doing business with
YYY, it has been using the mark "TTubes" in the Philippines for the television units that were bought from YYY.
In 2015, YYY filed a trademark application for "TTubes." Later, ABC also filed its application. Both claim the right
over the trademark "TTubes" for television products. YYY relies on the principle of "first to file" while ABC
involves the "doctrine of prior use."

[a] Does the fact that YYY filed its application ahead of ABC mean that YYY has the prior right over the
trademark? Explain briefly. (2.5%)

[b] Does the prior registration also mean a conclusive assumption that YYY Engineers is in fact the owner of the
trademark "TTubes?" Briefly explain your answer. (2.5%)

IV

X's "MINI-ME" burgers are bestsellers in the country. Its "MINI-ME" logo, which bears the color blue, is a
registered mark and has been so since the year 2010. Y, a competitor ofX, has her own burger which she
named "ME-TOO" and her logo thereon is printed in bluish-green. When X sued Y for trademark infringement,
the trial court ruled in favor of the plaintiff by applying the Holistic Test. The court held that Y infringed on X's
mark since the dissimilarities between the two marks are too trifling and frivolous such that Y's "ME-TOO," when
compared to X's "MINI-ME," will likely cause confusion among consumers.

Is the application of the Holistic Test correct? (5%)

MS Brewery Corporation (MS) is a manufacturer and distributor of the popular beer "MS Lite." It faces stiff
competition from BA Brewery Corporation (BA) whose sales of its own beer product, "BA Lighter," has soared to
new heights. Meanwhile, sales of the "MS Lite" decreased considerably. The distribution and marketing
personnel of MS later discovered that BA has stored thousands of empty bottles of "MS Lite" manufactured by
MS in one of its warehouses. MS filed a suit for unfair competition against BA before the Regional Trial Court
(RTC). Finding a connection between the dwindling sales of MS and the increased sales of BA, the RTC ruled
that BA resorted to acts of unfair competition to the detriment of MS. Is the RTC correct? Explain. (5%)

2015 IP BAR QUESTIONS

XIV.

A. Differentiate trademark, copyright and patent from each other. (6%)

B. What is the doctrine of equivalents? (2%)

C. In what ways would a case for infringement of trademark be different from a case for unfair
competition? (3%)

XV.

CHEN, Inc., a Taiwanese company, is a manufacturer of tires with the mark Light Year. From 2009 to 2014,
Clark Enterprises, a Philippine registered corporation, imported tires from CHEN, Inc. under several sales
contracts and sold them here in the Philippines. In 2015, CHEN, Inc. filed a trademark application with the
Intellectual Property Office (IPO) for the mark Light Year to be used for tires. The IPO issued CHEN, Inc. a
certificate of registration (COR) for said mark. Clark Enterprises sought the cancellation of the COR and claimed
it had a better right to register the mark Light Year. CHEN, Inc. asserted that it was the owner of the mark and
Clark Enterprises was a mere distributor. Clark Enterprises argued that there was no evidence on record that the
tires it imported from CHEN, Inc. bore the mark Light Year and Clark Enterprises was able to prove that it was
the first to use the mark here in the Philippines. Decide the case. (4%)

2014 IP BAR QUESTIONS

VII.

Jinggy went to Kluwer University(KU) in Germany for his doctorate degree (Ph.D.). He completed his degree
with the highest honors in the shortest time. When he came back, he decided to set-up his own graduate school
in his hometown in Zamboanga. After seeking free legal advice from his high-flying lawyer-friends, he learned
that the Philippines follows the territoriality principle in trademark law, i.e., trademark rights are acquired through
valid registration in accordance with the law. Forth with, Jinggy named his school the Kluwer Graduate School of
Business of Mindanao and immediately secured registration with the Bureau of Trademarks. KU did not like the
unauthorized use of its name by its top alumnus no less. KU sought your help. What advice can you give KU?
(4%)

XVIII.

Skechers Corporation sued Inter-Pacific for trademark infringement, claiming that Inter-Pacificused Skechers’
registered "S" logo mark on Inter-Pacific’s shoe products without its consent. Skechers has registered the
trademark "SKECHERS" and the trademark "S" (with an oval design) with the Intellectual Property Office (IPO).

In its complaint, Skechers points out the following similarities: the color scheme of the blue, white and gray
utilized by Skechers. Even the design and "wave-like" pattern of the mid-sole and outer sole of Inter Pacific’s
shoes are very similar to Skechers’ shoes, if not exact patterns thereof. On the side of Inter-Pacific’s shoes, near
the upper part, appears the stylized "S" placed in the exact location as that of the stylized "S" the Skechers
shoes. On top of the "tongue" of both shoes, appears the stylized "S" in practically the same location and size.

In its defense, Inter-Pacific claims that under the Holistic Test, the following dissimilarities are present: the mark
"S" found in Strong shoes is not enclosed in an "oval design"; the word "Strong" is conspicuously placed at the
backside and insoles; the hang tags labels attached to the shoes bear the word "Strong" for Inter-Pacific and
"Skechers U.S.A." for Skechers; and, Strong shoes are modestly priced compared to the costs of Skechers
shoes.

Under the foregoing circumstances, which is the proper test to be applied – Holistic or Dominancy Test? Decide.
(4%)

XXIX.

KKis from Bangkok, Thailand. She studies medicine in the Pontifical University of Santo Tomas (UST). She
learned that the same foreign books prescribed in UST are 40-50% cheaper in Bangkok. So she ordered 50
copies of each book for herself and her classmates and sold the books at 20% less than the price in the
Philippines. XX, the exclusive licensed publisher of the books in the Philippines, sued KK for copyright
infringement. Decide. (4%)

Source: The Lawphil Project Bar Examination Archives