LAW ON

INTELLECTUAL
PROPERTY
BAR QUESTIONS
AND
ANSWERS
1975-2019
BAR Q AND A IN INTELLECTUAL PROPERTY LAW

TABLE OF CONTENTS
Topics and Year Page No.

INTELLECTUAL PROPERTY RIGHTS IN GENERAL

Differences Between Copyright, Trademarks, And Patents
2015…………………………………………………………………………………………………….5
2018…………………………………………………………………………………………………….6
TECHNOLOGY TRANSFER ARRANGEMENT
2010…………………………………………………………………………………………………….8

PATENTS
PATENTABLE INVENTION
1989……………………………………………………………………………………………………10
2005……………………………………………………………………………………………………11
2010……………………………………………………………………………………………………13
NON PATENTABLE INVENTION
1989……………………………………………………………………………………………………14
2006……………………………………………………………………………………………………15
2019……………………………………………………………………………………………………16
OWNERSHIP OF A PATENT
Right to a Patent
2012……………………………………………………………………………………………………17
Limitations of Patent Rights
2011……………………………………………………………………………………………………18
2018……………………………………………………………………………………………………19
Patent Infringement
1977……………………………………………………………………………………………………20
1985……………………………………………………………………………………………………21
1993……………………………………………………………………………………………………22
2010……………………………………………………………………………………………………23
Tests in Patent Infringement
2015……………………………………………………………………………………………………24
Defenses in Action for Infringement
1992……………………………………………………………………………………………………25
Licensing
2012……………………………………………………………………………………………………26
2017……………………………………………………………………………………………………27
Assignment and Transmission of Rights
1990……………………………………………………………………………………………………28

TRADEMARKS
1976……………………………………………………………………………………………………29
1990……………………………………………………………………………………………………30

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Prior Use as a Requirement

1982……………………………………………………………………………………………………31
1985……………………………………………………………………………………………………33
2015……………………………………………………………………………………………………34
Tests to Determine Confusing Similarity Between Marks
1978……………………………………………………………………………………………………35
2014……………………………………………………………………………………………………36
2014……………………………………………………………………………………………………37
Dominancy Test
1979……………………………………………………………………………………………………39
1996……………………………………………………………………………………………………40
1996……………………………………………………………………………………………………41
2012……………………………………………………………………………………………………42
Well-known Marks
1981……………………………………………………………………………………………………43
Rights Conferred by Registration
2016……………………………………………………………………………………………………45
Use by Third Parties of Names, Etc. Similar to Registered Mark
1994……………………………………………………………………………………………………47
Infringement and Remedies
1984……………………………………………………………………………………………………48
1991……………………………………………………………………………………………………50
1996……………………………………………………………………………………………………51
2003……………………………………………………………………………………………………52
2003……………………………………………………………………………………………………53
2009……………………………………………………………………………………………………54
2011……………………………………………………………………………………………………56
2014……………………………………………………………………………………………………57
2015……………………………………………………………………………………………………58
2019……………………………………………………………………………………………………59
Unfair Competition
1981……………………………………………………………………………………………………60
1982……………………………………………………………………………………………………61
1983……………………………………………………………………………………………………63
1988……………………………………………………………………………………………………64
2014……………………………………………………………………………………………………65
2016……………………………………………………………………………………………………67

COPYRIGHT
Basic Principles
1975……………………………………………………………………………………………………68
1989……………………………………………………………………………………………………69
2012……………………………………………………………………………………………………70

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Copyrightable Works
2017……………………………………………………………………………………………………71
Who Owns The Copyright
1986……………………………………………………………………………………………………72
2013……………………………………………………………………………………………………74
Original Works
2011……………………………………………………………………………………………………75
Non-Copyrightable Works
2009……………………………………………………………………………………………………76
2011……………………………………………………………………………………………………77
2011……………………………………………………………………………………………………78
Rights of Copyright Owner
1981……………………………………………………………………………………………………79
1995……………………………………………………………………………………………………81
2008……………………………………………………………………………………………………82
2008……………………………………………………………………………………………………84
2011……………………………………………………………………………………………………87
Rules on Ownership of Copyright
1995……………………………………………………………………………………………………88
2004……………………………………………………………………………………………………89
2011……………………………………………………………………………………………………90
Limitations on Copyright
Fair Use
1998……………………………………………………………………………………………………91
2012……………………………………………………………………………………………………92
2017……………………………………………………………………………………………………93
2019……………………………………………………………………………………………………94
Copyright Infringement
1977……………………………………………………………………………………………………96
1988……………………………………………………………………………………………………97
1989……………………………………………………………………………………………………98
1994………………………………………………………………………………………………….100
1998……………………………………………………………………………………………….…102
2006………………………………………………………………………………………………….103
Remedies
1980………………………………………………………………………………………………….104
1983………………………………………………………………………………………………….106
2007………………………………………………………………………………………………….107
2009………………………………………………………………………………………………….108

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A. INTELLECTUAL PROPERTY RIGHTS IN GENERAL

DIFFERENCES BETWEEN COPYRIGHT, TRADEMARKS, AND PATENTS

Topic: Distinctions of trademark, copyright and patent (2015)

Differentiate trademark, copyright and patent from each other.

ANSWER:

As to definition, Trademark is any visible sign capable of distinguishing goods. Copyright is an

incorporeal right granted by statute to the author or creator of original literary and artistic works
whereby he is invested for a limited period of time with the right carry out, authorize and prevent
the reproduction, distribution, transformation, rental, public performance and other forms of
communication of his work to the public. Patent is any technical solution of any problem in any
field of human activity which is new, requires an inventive step and industrially applicable.

As to object, the object of trademark are goods; the object of copyright are original literary and
artistic works; while the object of patent is invention.

As to term, the term of trademark is ten years; the term of copyright is generally 50 years; while
the term of patent is 20 years from application.

As to how acquired, trademark is acquired through registration and use; Copyright is acquired
from the moment of creation; while Patent is acquired through application with the IPO.

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Topic: Registration of Copyright V. Registration of Trademark; Doctrine of Prior Use; Well-

Known Mark (2018)

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?
(b) Can Aling Yasmin seek injunctive relief against Aling Yoling from using the brand name
“Ysmaellas,” the latter relying on the doctrine of “prior use” as evidenced by her prior copyright
registration?
(c) Can Aling Yoling 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 coverages?

ANSWER:

(a) No, Aling Yoling cannot successfully obtain court relief to prohibit Aling Yasmin from using the
brand name “Ysmaellas” in her product on the basis of Aling Yoling’s copyright.

The copyright on a trade name or mark does not guarantee her the right to the exclusive use of
the same for the reason that it is not a proper subject of said intellectual right (Kho v. Court of
Appeals, G.R. No. 115758, March 19, 2002; Juan v. Juan, G.R. No. 221372, August 23, 2017).

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The registration of a copyright is only a proof of the recording of the copyright but not a condition
precedent for the copyright to subsist and for copyright infringement suit to prosper; whereas,
registration of a trademark is an indispensable requisite for any trademark infringement suit.

Thus, the brand name “Ysmaellas” is proper subject of trademark, not copyright. They cannot be
interchanged.

(b) Yes, Aling Yasmien can seek injunctive relief against Aling Yoling from using the brand name
“ Ysmaellas “ because of the doctrine of prior use.

As ruled by the Supreme Court, the first one to use the brand or trade name in commerce, is the
one considered the owner thereof (EY Industrial Sales v. Shen Dar (G.R. No. 184850. October
20, 2010).

It is ownership of the trademark that confers the right to register. Registration does not confer
ownership.

Therefore, Aling Yasmien can seek the injunctive relief.

(c) No, Aling Yoling cannot seek the cancellation of Aling Yasmin’s trademark registration of the
brand name “Ysmaellas” on the ground of well-known brand.

As provided by Section 123 (E) of the Intellectual Property Code, a well-known mark rule only
applies to a mark which is well-known internationally and in the Philippines.

Here, the “Ysmaellas” brand is only known in the Philippines but not internationally.

Therefore, “Ysmaellas” cannot be cancelled being not a well-known brand.

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TECHNOLOGY TRANSFER ARRANGEMENT

Topic: Technology Transfer Agreement (2010)

A. What contractual stipulations are required in all technology transfer agreements?

B. Enumerate three (3) stipulations that are prohibited in technology transfer agreements.
C. Can an article of commerce serve as a trademark and at the same time enjoy patent and
copyright protection? Explain and give an example.

ANSWERS:

A. Under Section 88 of the Intellectual Property Code, the following provisions shall be included
in technology transfer agreements:
1. That the laws of the Philippines shall govern the interpretation of the same and in the
event of litigation, the venue shall be the proper court in the place where the licensee
has its principal office;
2. Continued access to improvements in techniques and processes related to the
technology shall be made available during the period of the technology transfer
arrangement;
3. In the event the technology transfer arrangement shall provide for arbitration, the
Procedure of Arbitration of the Arbitration Law of the Philippines or the Arbitration Rules
of the United Nations Commission on International Trade Law (UNCITRAL) or the Rules
of Conciliation and Arbitration of the International Chamber of Commerce (ICC) shall
apply and the venue of arbitration shall be the Philippines or any neutral country; and
4. The Philippine taxes on all payments relating to the technology transfer agreement shall
be borne by the licensor

B. Under Section 87 of the Intellectual Property Code, some of the prohibited stipulations in
technology transfer agreements are:
1. Where the licensor reserves the right to fix the sale or resale prices of the products
manufactured on the basis of the license;
2. Restrictions regarding volume and structure of production; and
3. Restrictions regarding the volume and structure of production

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C. Yes, an article of commerce can serve as a trademark and at the same time enjoy patent and
copyright protection.

To illustrate, under Subsection 121.1 of the IPC, a stamped or marked container of goods can be
registered as a trademark. Under Subsection 172.1 of the IPC, an original ornamental design or
model for articles of manufacturer can be copyrighted. Under Section 22 of the IPC, an ornamental
design cannot be patented because aesthetic creations cannot be patented. However, under
Subsections 113.1 and 172.1 of IPC, it can be registered as an industrial design.

Thus, a container of goods which has an original ornamental design can be registered as a
trademark, can be copyrighted, and can be registered as an industrial design.

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B. PATENTS
PATENTABLE INVENTION
Topic: Patentable Inventions (1989)

X invented a method of improving the tenderness of meat by injecting an enzyme solution into
the live animal shortly before a slaughter. Is the invention patentable?

ANSWER:

Yes.

Section 21 of R.A. No. 8293 provides that a 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 shall be patentable. It may be, or may relate to a product, process or an improvement
of any of the foregoing.

The law prescribes the following elements of patentability: (1) novelty; (2) inventive step; and (3)
industrial applicability. Pursuant to R.A. No. 8293, an invention is a novelty when it is new and
does not form part of a prior art. It is an inventive step if, having regard to prior art, it is not obvious
to a person skilled in the art at the time of the filing date or priority date of the application claiming
the invention. Lastly, it is industrially applicable if it can be produced and used in any industry.

Applying the foregoing provision in this case, X’s invention complied with all the requisites
provided by law. Hence, his invention is patentable.

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Topic: Patentable Inventions (2005)

Cezar works in a car manufacturing company owned by Joab. Cezar is quite innovative and loves
to tinker with things. With the materials and parts of the car, he was able to invent a gas-saving
device that will enable the cars to consume less gas. Francis, a co-worker, saw how Cezar created
the device and likewise, came up with similar gadget also using scrap materials and spare parts
of the company. Thereafter, Francis filed an application for registration of his device with the
Bureau of Patents. Eighteen months later, Cezar filed his application for the registration of his
device with the Bureau of Patents.

1. Is the gas-saving device patentable?

2. Assuming that it is patentable, who is entitled to the patent? What, if any, is the remedy of the
losing party?
3. Supposing Joab got wind of the inventions of his employees and also laid claims to the patent,
asserting that Francis and Cezar was using his materials and company time in making the
devices, will his claim prevail over those of his employees?

ANSWERS:

1. Yes, the gas-saving device is patentable.

Under Section 21 of the R.A. 8293, a 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
shall be patentable. It may be, or may relate to, a product, or process, or an improvement of any
of the foregoing.”

In the case at bar, the gas-saving device will create an innovation that will lessen the burden of
car owners in spending for large quantity of gas daily.

Hence, the gas-saving device is patentable.

2. Francis has the right to patent although he merely copied Cezar’s invention.

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Under the First to File Rule, if two or more persons have made the invention separately and
independently of each other, the right to patent shall belong to the person who filed an application
for such an 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.

In the case at bar, it was Francis who has the earliest filing date, hence, Francis has the right to
patent. However, ultimately, the right to patent belongs to their employer (car manufacturing
company) because under Section 30.2 (B) of the RA 8293, the patent shall belong to 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. It is present in the case at bar since
both Francis and Cezar works in a car manufacturing company, used the company’s spare parts
and made it during office hours.

Thus, although it was Francis who first filed, the manufacturing company may oppose the said
registration,

3. Yes, there is a chance that Joab’s claim may prevail over his employees.

Under Section 30.2 (B) of the RA 8293, the patent shall belong to 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.

Joab has to prove that the inventing things related to the cars are part of Cezar or Francis’
regularly assigned duties. However, if he is unable to prove this, the right to patent shall belong
to either Cezar or Francis despite the fact that they used company resources in inventing the gas-
saving device.

Thus, Joab’s claim may prevail over his employees.

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Topic: Patentable and Non-Patentable Inventions (2010)

Dr. Nobel discovered a new method of treating Alzheimer’s involving a special method of
diagnosing the disease, treating it with a new medicine that has been discovered after long
experimentation and field testing, and novel mental isometric exercises. He comes to you for
advice on how he can have his discoveries protected. Can he legally protect his new method of
diagnosis, the new medicine, and the new method of treatment? If no, why? If yes, how?

ANSWER:

Dr. Nobel can be protected by a patent for the new medicine but not for the method of diagnosis
and method of treatment.

Under Section 21 of the Intellectual Property Code, any technical solution of a problem in any
field of human activity which is new, involves an inventive step and is industrially applicable
shall be patentable. On the other hand Section 22 of the IPC enumerates non-patentable
inventions, one of which is “methods for treatment of the human or animal body by surgery or
therapy and diagnostic methods practiced on the human or animal body”.

Thus, the new medicine is patentable as it is a technical solution of a problem in medical field.
However, the method of diagnosis and method of treatment cannot be protected by patent as it
falls under the exception in Section 22 of IPC.

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NON-PATENTABLE INVENTION

Topic: Non-Patentable Inventions (1989)

X invented a bogus coin detector which can be used exclusively on self-operation gambling
devices otherwise known as one-armed bandits. Can X apply for a patent? Reasons.

ANSWER:

No, X cannot apply for a patent.

Section 22.6 of R.A. No. 8293 provides that anything which is contrary to public order or morality
shall be excluded from patent protection.

In this case, the gambling device is prohibited and against public order. However, if the machine
is used in legalized gambling such as in cases of exclusive use of casinos established by the
government, such device can be patented.

Therefore, X cannot apply for a patent on the bogus coin detector.

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Topic: Non-Patentable Inventions (2006)

Supposing Albert Einstein were alive today and he filed with the Intellectual Property Office (IPO)
an application for patent for his theory of relativity expressed in the formula E=mc2. The IPO
disapproved Einstein's application on the ground that his theory of relativity is not patentable.

Is the IPO's action correct?

ANSWER:

Yes, IPO’s action is correct.

Section 22.1 of the Intellectual Property Code of the Philippines (IPC) provides that discoveries,
scientific theories and mathematical methods are classified as non-patentable inventions.

In this case, Albert Eintein’s theory of relativity falls within the category of being non-patentable
“scientific theory”.

Hence, IPO’s action is correct because the theory of relativity is not patentable under Section 22.1
of the IPC.

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Topic: Non-Patentable Inventions (2019)

X Pharmaceuticals, Inc. has been manufacturing the antibiotic ointment Marvelopis, which is
covered by a patent expiring in the year 2020. In January 2019, the company filed an application
for a new patent for Disilopis, which, although constituting the same substance as Marvelopis, is
no longer treated as an antibiotic but is targeted and marketed for a new use, i.e., skin whitening.

(a) What are the three (3) requisites of patentability under the Intellectual Property Code?
(b) Should X Pharmaceuticals, Inc.'s patent application for Disilopis be granted? Explain.

ANSWERS:

a. Under Section 21 of the Intellectual Property Code the requisites of patentability are:
(1) it is any technical solution of a problem in any field of human activity;
(2) it is new, involves an inventive step and is industrially applicable; and
(3) it may be, or may relate to, a product, or process, or an improvement of any of the
foregoing.

b. No, the patent application should not be granted.

Under Section 22.1 of the Intellectual Property Code, discoveries, scientific theories, and
mathematical methods, and in 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 least one new reactant is non-patentable.

In this case, they are applying for a patent basically for the same product but only for a different
use.

Therefore, it is non-patentable.

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OWNERSHIP OF A PATENT
a. Right to a patent

Topic: Patent; Rights to a Patent (2012)

X works as a research computer engineer with the Institute of Computer Technology, a

government agency. When not busy with his work, but during office hours, he developed a
software program for law firms that will allow efficient monitoring of the cases, which software
program is not at all related to his work. Assuming the program is patentable, who has the right
over the patent?
a. X;
b. Institute of Computer Technology;
c. Neither X nor the Institute of Computer Technology can claim patent right over the invention;
d. X and the employer of X will jointly have the rights over the patent.

Answer:

A. X

Under Section 30.2 of the Intellectual Property Code, in case the employee made the invention
in the course of his employment contract, the patent shall belong to 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.

Since the work was done by employee X is not part of his regular duties at work, he has the right
over the patent, even if he uses the time, facilities and materials of the employer.

Therefore, A is the correct answer.

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Limitations of patent rights

Topic: Patent; Rights of Patentees; Limitations; Prior User (2011)

X invented a device which, through the use of noise, can recharge a cellphone battery. He applied
for and was granted a patent on his device, effective within the Philippines. As it turns out, a year
before the grant of X's patent, Y, also an inventor, invented a similar device which he used in his
cellphone business in Manila. But X files an injunctive suit against Y to stop him from using the
device on the ground of patent infringement. Will the suit prosper?
A. No, since the correct remedy for X is a civil action for damages.
B. No, since Y is a prior user in good faith.
C. Yes, since X is the first to register his device for patent registration.
D. Yes, since Y unwittingly used X’s patented invention.

ANSWER:
B. No, since Y is a prior user in good faith.
Section 73 of the Intellectual Property Code provides that notwithstanding Section 72 of
the same code, any prior user, who, in good faith was using the invention or has undertaken
serious preparations to use the invention in his enterprise or business, before the filing date or
priority date of the application on which a patent is granted, shall have the right to continue the
use thereof as envisaged in such preparations within the territory where the patent produces its
effects.
In this case, X was granted a patent on his device, however Y invented the same device
and been using such device in the Philippines prior to the grant of patent to X. Clearly, Y is
considered a prior user in good faith as defined in Section 73 of the IPC.
Therefore, the injunction suit will not prosper for Y is a prior user in good faith.

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Topic: Patent Registration; Pre-judicial Disclosure; Limitation of Patent Rights (2018)

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?
(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?

ANSWER:
(a) Yosha’s invention is still patentable despite the fact he had sold several models to the
public before the formal application for registration of the patent was filed with the IPO. As
provided by Section 25.1 of the Intellectual Property Code, any disclosure of the invention
made within 12 months before the filing date does not prejudice the application if the disclosure
is made by the inventor. It is true that an invention shall not be considered new if it forms part of
a prior art and that prior art shall consist of 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. This, however, presupposes that the one who has made available the patentable
invention to the public is a person other than the applicant for patent. Here, it was Yosha who sold
the models in his province.

(b) Yosha can no longer prevent anyone who has possession of the earlier models from
using them even if Yosha is able to properly register the patent with the IPO. As provided by
Section 72.1 of the Intellectual Property Code, one of the limitations of patent rights is the use
of the patented product which has been put on the market in the Philippines by the owner of the
product insofar as such use is performed after the product has been so put on the said market.
Since the patent for the water pump was already registered with the IPO, Yosha can no longer
prevent anyone, even those who were able to get the product before its registration, from using
it.

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Patent infringement
Topic: Patent Infringement (1977)

Basilio invents and secures registration of patent of a mini-threshing machine which he

manufactures. Rudy, his employee, assisted him in the actual making of the machine. Later, after
resigning from his employment with Basilio, Rudy bought tools and equipments to manufacture
similar mini-threshing machine which he sold for his own benefit.

What legal steps will you take if you were hired as counsel of Basilio to protect his rights?

ANSWER:
As counsel for Basilio, I will institute a civil action for infringement with prayer for injunction
to enjoin the infringer from the use of the patented invention.
Pursuant to Section 46 of the Intellectual Property Code, within 4 years from the
commission of acts of infringement, a civil action for infringement of patent before the proper court
to recover from the infringer damages sustained by reason of the infringement may be instituted.
In the same civil action, I will secure an injunction to enjoin the infringer from the use of such
patented invention. If after a final judgment is rendered by the Court against the infringer, he
repeated the infringement, I will again institute a civil action for damages with a prayer for the
issuance of a writ of injunction, as well as criminal action for repetition of infringement.

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Topic: Infringement (1985)

Nestor Dionisio invented a space age revolutionary mini room air-conditioner and was able to
secure the registration patent and issuance of patent certificate for said invention by the
Philippines’ Patent Office. He immediately went into commercial production and sale of his
invention. Later, Carlos Asistio, who used to be Nestor’s plant manager, organized his own
company, and engaged in the manufacture of exactly the same mini-room air-conditioners for his
own outfit and which he sold for his own benefit.

As counsel of Dionisio, what legal steps would you take to protect his rights and interests?
Discuss.

ANSWER:
As counsel of Nestor Dionisio, the registrant of a patent for an air-conditioner, I will file
with the Regional Trial Court the action for infringement of a patent against Carlos Asistio. Such
action is based on the following provisions of law:
• Under Section 71.1 of the Intellectual Property Law, the patentee shall have the exclusive
right to restrain the unauthorized entity from making, using offering for sale, selling or
importing the product and to prevent or prohibit the use of the process or from selling,
offering for sale or importing product obtained from the process.
• Under Sections 76.3 and 76.4, of the Intellectual Property Law, the patentee has the right
to recover damages in a civil action for infringement which can be equivalent to royalty or
an amount that does not exceed 3 times the amount of actual damages.
• Under Section, 76.5 of the Intellectual Property Law, the patentee also has the right to ask
the court to order that the infringing products or goods be destroyed.
In this case, the abovementioned exclusive rights of the patentee Nestor are available
since Carlos is guilty of infringement by making, using, offering for sale Nestor’s patented product
and process without the latter’s authorization. My client, being the patentee, has the exclusive
right to make, use, and sell his invention, and he is entitled to recover damages and even
injunction against the infringer.
Hence, I will file with the RTC the action for infringement of a patent against Carlos Asistio.

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Topic: Infringement; Remedy of the true and actual inventor (1993)

Ferdie is a patent owner of a certain invention. He discovered that his invention is being infringed
by Johann.
1) What are the remedies available to Ferdie against Johann?
2) If you were the lawyer of Johann in the infringement suit, what are the defenses that
your client can assert?

ANSWER:
1) The remedies available to Ferdie are as follows:
(a) to restrain the unauthorized entity from making, using, offering for sale, selling or
importing the product;
(b) to prevent or prohibit the use of the process or from selling, offering for sale or
importing product obtained from the process (Section 71.1, IPL);
(c) to recover damages in a civil action for infringement which can be equivalent to
royalty or an amount that does not exceed three (3) times the amount of actual
damages (Sections 76.3 and 76.4, IPL);
(d) to ask that the court to order that the infringing products or goods be destroyed
(Section 76.5, IPL)

2) As lawyer for Johann in the infringement suit, I would raise the following defenses:
(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 (Section 61, IPL)

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Topic: Patents; Infringement (2010)

For years, Y has been engaged in the parallel importation of famous brands, including shoes
carrying the foreign brand MAGIC. Exclusive distributor X demands that Y cease importation
because of his appointment as exclusive distributor of MAGIC shoes in the Philippines.

Y counters that the trademark MAGIC is not registered with the Intellectual Property Office as a
trademark and therefore no one has the right to prevent its parallel importation.
1. Who is correct? Why?
2. Suppose the shoes are covered by a Philippine patent issued to the brand owner, what
would your answer be? Explain.

ANSWERS:
1. Y is correct.
Although, the right to perform an exclusive distributorship agreement and to reap the
profits resulting from such performance are proprietary rights which a party may protect, as held
in the case of Yu v. Court of Appeals, G.R. No. 86683, January 21, 1993, it is well-settled that
under Section 122 of the IPC, the rights in a trademark are acquired through registration made
validly in accordance with the Intellectual Property Code.
In the present case, although X is the exclusive distributor of MAGIC Shoes, the trademark
MAGIC was not registered with SEC. Hence, X cannot demand Y to cease importation of MAGIC
Shoes.

2. In that case, X will be correct.

Under Subsection 71.1 of the Intellectual Property Code, a patent for a product confers
upon its owner the exclusive right of importing the product. Consequently, under Subsection 76.1
of the IPC, the importation of a patented product without the authorization of the owner of the
patent constitutes infringement of the patent.
Hence, if the shoes are covered by a Philippine patent issued to the brand owner, X can
prevent the parallel importation of such shoes by Y without its authorization.

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Tests in patent infringement

Topic: Doctrine of equivalents (2015)

What is the doctrine of equivalents?

ANSWER:
In Godines v. Court of Appeals, GR No. 97343, September 13, 1993, the Court ruled that
under the doctrine of equivalents, infringement of patent occurs when a device appropriates a
prior invention by incorporating its innovative concept and albeit with some modifications and
changes which performs the same function in substantially the same way to achieve the same
result.

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Defenses in action for infringement

Topic: Infringement of Patent; Defenses (1992)

In an action for infringement of patent, the alleged infringer defended himself by stating (1) that
the patent issued by the Patent Office was not really an invention which was patentable; (2) that
he had no intent to infringe so there was no actionable case for infringement; and (3) that there
was no exact duplication of the patentee’s existing patent but only a minor improvement.

With those defenses, would you exempt the alleged violator from liability? Why?

ANSWER:
No. His defenses are without merit.
On his first defense, he alleged that the invention was not patentable. Section 81 of the
Intellectual Property Code provides that in an action for infringement, the defendant, in addition
to other defenses available to him, may show the invalidity of the patent, or any claim thereof.
Hence in this case, the defendant cannot simply allege that the invention was not patentable but
he must show and provide evidence to support his claim.
On his second defense, it is an established principle in law that violations of special laws
are malum prohibitum as opposed to violations of the Revised Penal Code which are mala in se.
Hence, a violation of R.A. No. 8293 does not require intent unless the law expressly provides. It
is sufficient that there was infringement.
On his third defense, there is no need of exact duplication of the patentee’s existing patent
such as when the improvement made by another is merely minor. In the case of Aguas v. De
Leon, G.R. No. L- 32160, January 30, 1982, the Supreme Court held that to be independently
patentable, an improvement of an existing patented invention must be a major improvement. In
this case, his defense that there was only minor improvement is not sufficient to exempt him from
liability.

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Licensing
Topic: Compulsory Licensing (2012)

Compulsory Licensing of Inventions which are duly patented may be dispensed with or will be
allowed exploitation even without agreement of the patent owner under certain circumstances,
like national emergency, for reason of public interest, like national security, etc. The person who
can grant such authority is -
a. the Director General of the Intellectual Property Office;
b. the Director of Legal Affairs of the Intellectual Property Office;
c. the owner of the Patent right;
d. any agent of the owner of the Patent right.

ANSWER:
a. the Director General of the Intellectual Property Office
Section 93. Grounds for Compulsory Licensing. - The Director General of the Intellectual
Property Office may grant a license to exploit a patented invention, even without the agreement
of the patent owner, in favor of any person who has shown his capability to exploit the invention,
under any of the following circumstances:
93.1. National emergency or other circumstances of extreme urgency;
93.2. Where the public interest, in particular, national security, nutrition, health or
the development of other vital sectors of the national economy as determined by
the appropriate agency of the Government, so requires; or
Hence, A is the proper answer.

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Topic: Compulsory Licensing (2017)

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 DOH, discuss how you will resolve
the matter.

Answer:
I will suggest for the DOH to apply with the Intellectual Property Office for compulsory
license.
Under Sections 93 and 93-A of the Intellectual Property Code, the Intellectual Property
Office may grant a compulsory license to exploit a patented invention under certain
circumstances, including the case where the public interest, in particular, national security,
nutrition, health or the development of other vital sectors of the national economy as determined
by the appropriate agency of the Government, so requires, provided, that adequate remuneration
shall be paid to the patent owner.
Here, the prevalence of AIDS cases in Metro Manila and other urban areas affects the
health of the citizens.
Therefore, such health concerns warrant the exploitation of the patented medicine and the
issuance of a compulsory license in favor of the DOH.

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Assignment and transmission of rights

Topic: Patents; Assignment of Patents (1990)

Che-che invented a device that can convert rainwater to automobile fuel. She asked Macon, a
lawyer, to assist in getting her invention patented. Macon suggested that they form a corporation
with other friends and have the corporation apply for the patent, 80% of the shares of stock thereof
to be subscribed by Che-che and 5% by Macon. The corporation was formed and the patent
application was filed. However, Che-che died three months later of a heart attack.

Franco, the estranged husband of Che-che, contested the application of the corporation and filed
his own patent application as the sole surviving heir of Che-che. Decide the issue with reasons.

ANSWER:
I will dismiss the application of Che-che’s husband, Franco.
Section 28 of the Intellectual Property Code of the Philippines provides that the right to a
patent belongs to the inventor, his heirs, or assigns.
Based on the facts of the case, Che-che already assigned her right over the patent with
the corporation in exchange of shares of stock. Therefore, the corporation as Che-che’s assignee
has the right over the patent application.

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Trademarks

Topic: Trademarks; Test to Determine Confusing Similarity Between Marks (1976)

X applies for registration in his favor the tradename “Loving Care” for a hair dye on the ground
that he has been using said tradename for almost 3 years before filing his application. Y opposes
the application on the ground that he has been using the tradename “Loving Care” with the same
design for hair pomade which is registered in his name since 1963. X replied that although the
said trademark was registered in Y’s name it was however, for a different article. Can X’s
application be sustained? Reasons.

ANSWER:

No, X’s application cannot be sustained.

Under Section 123.1.a of the Intellectual Property Code, a mark cannot be registered if it
is identical with a registered mark belonging to a different proprietor or a mark with an earlier filing
or priority date, in respect of closely related goods or services, among others.
Here, the tradename being applied for by X “Loving Care” is identical to that of Y.
Moreover, the hair dye and hair pomade are closely related goods as they are both used for hair
grooming.
Therefore, X cannot register the tradename “Loving Care” for a hair dye.

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Topic: Trademark; Generic Terms (1990)

In 1998, the Food and Drug Administration approved the labels submitted by Turbo Corporation
for its new drug brand name, “Axilon.” Turbo is now applying with the Bureau of Patents,
Trademarks and Technology Transfer for the registration of said brand name. It was subsequently
confirmed that “Accilonne” is a generic term for a class of anti-fungal drugs and is used as such
by the medical profession and the pharmaceutical industry, and that it is used as a generic
chemical name in various scientific and professional publications. A competing drug manufacturer
asked you to contest the registration of the brand name “Axilon” by Turbo.
What will be your advice?

ANSWER:
I will advise that the application for registration of the brand name “Axilon” should not be
opposed.
Section 121.3 of the Intellectual Property Code of the Philippines defines trade name as
the name or designation identifying or distinguishing an enterprise. As held in the case of Societe
Des Produits Nestlé v. Court of Appeals, (G.R No. 112012, April 4, 2001), generic terms are those
which constitute the common descriptive name of an article or substance," or comprise the "genus
of which the particular product is a species," or are "commonly used as the name or description
of a kind of goods," or "imply reference to every member of a genus and the exclusion of
individuating characters," or "refer to the basic nature of the wares or services provided rather
than to the more idiosyncratic characteristics of a particular product," and are not legally
protectable.
In this case, the brand name “Axilon” cannot be considered as a generic term because it
does not pertain to a genus of which the particular product is a species as it is different from the
word “Accilonne” which pertains to a class of antifungal drugs. Furthermore, the possibility of
confusion among the consumers is slim as medical professionals are likely to be cautious in
buying products they needed in their profession.
Thus, to contest the registration would be futile.

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Prior use of mark as a requirement

Topic: Trademarks; Objective, Territorial Limits, Registration of a Foreign Trademark,

Rights of the Owner of a Trademark (1982)

a. What is the objective of the law in protecting trademarks?

b. What are the territorial limits of a trademark?
c. May a home registration of a foreign trademark entitle it to registration in the Philippines
even without proof of use in the Philippines?
d. Does the owner of a trademark have a right to prevent others from manufacturing,
producing, or selling the same article to which it is attached?

ANSWERS:

a. The Supreme Court ruled in the case of UFC Philippines Inc. v. Barrio Fiesta Manufacturing
Corporation (G.R. No. 198889, January 20, 2016) that the protection of trademarks as
intellectual property is intended not only to preserve the goodwill and reputation of the
business established on the goods bearing the mark through actual use over a period of time,
but also to safeguard the public as consumers against confusion on these goods.
b. Trademarks acknowledge no territorial boundaries as the protection accorded to such
trademarks extends to countries which are signatories to the Paris Convention and Nice
Convention in view of the reciprocity rule embodied in Section 3 of the Intellectual Property
Code of the Philippines.
c. No. Prior use in the Philippines is not required before registration but there must be actual use
after registration as Section 124.2 of the Intellectual Property Code of the Philippines requires
that the applicant or the registrant shall file a declaration of actual use of the mark with
evidence to that effect 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.
d. No, the owner of a trademark has no right of property to prevent others from manufacturing,
producing, or selling the same article to which it is attached.
Pursuant to Section 147 of the Intellectual Property Code of the Philippines, 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

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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.
The exclusive right of the owner of a well-known mark which is registered in the
Philippines, shall extend to goods and services which are not similar to those in respect of
which the mark is registered: Provided, That use of that mark in relation to those goods or
services would indicate a connection between those goods or services and the owner of the
registered mark: Provided further, That the interests of the owner of the registered mark are
likely to be damaged by such use.
In other words, the owner of a trademark has the right to the exclusive use of the mark for
his own goods or service and such trademark confers no exclusive rights in the goods to which
the marks have been applied.

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Topic: Registration; Prior Use (1985)

Rubberworld, Inc. sought registration of the trademark “Juggler” for its casual rubber shoes in
Inter Pater Case No. 602 filed with the Patent Office. The registration was opposed by a Belgian
Corporation which alleges that it owns and has not abandoned the trademark “Juggler” although
it admits that it has no license to do business in the Philippines, it is not presently selling footwear
under the trademark “Juggler” in the Philippines, and it has not been licensed nor does it have
any agreement with any local entity or firm to sell any of its product in the Philippines.

At the trial, it was established that Rubberworld had spent a considerable amount and effort in
popularizing said trademark in the Philippines, had been using the same since 1969 and had built
up enormous goodwill. Acting on the petition, the Patent Office dismissed the opposition and
ordered the registration of the trademark “Juggler” in the name of Rubberworld.

Discuss the validity of the aforesaid decision.

ANSWER:
The decision dismissing the opposition is erroneous.
As held in Ecole De Cuisine Manille v. Renaud Cointreau (G.R. No. 185830, June 5, 2013),
RA 8293 has already dispensed with the requirement of prior actual use at the time of registration.
Further, foreign marks which are not registered in the Philippines are still accorded protection
under the Paris Convention.
Here, it is of no moment that Rubberworld had been using said trademark since 1969
because prior use is not required before registration. The Belgian Corporation must be given
protection in our laws as its country of origin, Belgium, is a signatory to the Paris Convention,
notwithstanding that the Belgian Corporation has not registered the trademark “Juggler” in the
Philippines.
Therefore, the Patent Office erroneously dismissed the opposition.

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Topic: Doctrine of Prior use (2015)

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.

ANSWER:
I will rule in favor of CHEN, Inc.
In E.Y. Industrial Sales v. Shien Dar Electricity and Machinery (GR No. 184850, October
20, 2010), the Court ruled that, while RA No. 8293 removed the previous requirement of proof of
actual use prior to the filing of an application for registration of a mark, proof of prior and
continuous use is necessary to establish ownership of trademark. Such ownership of the
trademark confers the right to register the trademark.
In this case, Chen owns the trademark as evidenced by its actual and continuous use prior
to the Clark Enterprises. The fact that Clark was the first one to use the mark here in the
Philippines, will not matter. Chen’s prior actual use of the trademark even in another country, bars
Clark from applying for the registration of the same trademark. Furthermore, Clark as a mere
distributor does not own the trademark to the goods he distributes, and his right over the
trademark cannot prevail over the owner.
Hence, Chen is the one entitled to the registration of the trademark because of its actual
and continuous use prior to the Clark Enterprises.

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Tests to determine confusing similarity between marks

Topic: Determinative test that will cause confusion (1978)

The trademark LOTUS is already registered in favor of ABC for its product, edible oil. DEF applied
for the registration of the same trademark for its own product, soy sauce, assuming that the
trademark applied for is in smaller type, colored differently of much smaller size, and set on a
background which is dissimilar, as to yield a distinct appearance, may the application be denied
on the ground that its grant would likely to cause confusion or mistake on the part of the buying
public? Decide. Give reasons.

ANSWER:

No, the application should not be denied.

In Acoje Mining Co., Inc. v. Director of Patents (G.R. No. L-28744, April 29, 1971), the
Court provides that the determinative factor in a contest involving registration of trade mark is not
whether the challenging mark would actually cause confusion or deception of the purchasers but
whether the use of such mark would likely cause confusion or mistake on the part of the buying
public. For purposes of the law, the similarity between the two labels is such that there is a
possibility or likelihood of the purchaser of the older brand mistaking the newer brand for it.
In the case at hand, there is quite a difference between soy sauce and edible oil. If one is
in the market for the former, he is not likely to purchase the latter just because of the trademark
LOTUS.
Thus, the application of DEF should be granted as it would not cause confusion.

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Topic: Trademarks; Dominancy vs. Holistic Test (2014)

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 of X, 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?

ANSWER:

The application of the Holistic Test is not correct.

In cases involving burger products, the Supreme Court has consistently applied the
dominancy test. Under the dominancy test, the focus is on the dominant feature of the competing
trademarks. Big Mak has been held to be confusingly similar with Big Mac and so with McDo and
Mcjoy both under the dominancy test (McDonald’s Corporation vs LC Big Mak Burger, Inc, GR
no. 143993, August 18, 2004).

In this case, applying the above-mentioned principle, the holistic test is not correctly
applied. What should be applied is the dominancy test, wherein the focus Is on the dominant
feature of the competing trademarks.

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Topic: Dominancy vs. Holistic Test (2014)

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%)

ANSWER:
Dominancy Test is the proper test to be applied. As such, the use and appropriation of the
letter “S” by Inter-Pacific (IP) on its rubber shoes constitute an infringement of the trademark of
Sketchers.
In Sketchers, USA, Inc. vs. Inter Pacific Industrial Trading Corp. (GR No. 164321, 30
November 2006), a similar case with the problem, used the dominancy test. Such test as opposed
to Holistic Test, is focused on the similarity of the prevalent or dominant features of the competing
trademarks that might cause confusion, mistake and deception in the mind of the purchasing
public. It gives more consideration to aural and visual impressions and giving little weight to factors
such as prices, quality, sales outlets and market segments. As for Holistic Test, it necessitates
the consideration of the entirety of the marks. Thus, Dominancy Test is also used even to
inexpensive and common items.
In this case, while it is undisputed that the “S” mark of Sketchers is within an oval design
while that of IP does not use the oval, there is still infringement because the dominant feature of
the trademark is the “S” as it is that which catches the eye of the purchaser.
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Therefore, Dominancy Test is proper test to be applied.

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Dominancy test

Topic: Dominancy Test (1979)

Company X sold its wine under the brand “Rose” Brandy, and it became very popular. So, X
registered the trademark “Rose” for its brandy. Subsequently, Company Y manufactured bicycles
and sold it under the name of “Rose”. Company X now sues Company Y for violation of the
Trademark Law. Rule on the dispute.

Answer:
No, there is no violation of the Trademark Law because it is not confusingly similar.

As held by the Court in the case of Diaz v. People of the Philippines and Levi Strauss
[Phils.], Inc. (G.R. No. 180677, February 18, 2013), the dominancy test focuses on the similarity
of the main, prevalent or essential features of the competing trademarks that might cause
confusion
Company X’s registered trademark “Rose” is on its brandy (wine), while Company Y’s on
its bicycle. It is highly unlikely that the trademarks will cause confusion in the mind of the public.

Hence, Company X’s suit will not prosper

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Topic: Trademark: Test of Dominancy (1996)

What is the “test of dominancy”?

ANSWER:

The test of dominancy requires that if the competing trademark contains the main or
essential features of another and confusion and deception is likely to result, infringement takes
place. Duplication or imitation is not necessary; nor is it necessary that the infringing label should
suggest an effort to imitate. Similarly in size, form and color, while relevant, is not conclusive.
(Asia Brewery v. CA, G.R. 103543, July 5, 1993)

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Topic: Trademark: Test of Dominancy (1996)

N Corporation manufactures rubber shoes under the trademark “Jordann” which hit the Philippine
market in 1985, and registered its trademark with the Bureau of Patents, Trademarks and
Technology (BPTT) in 1990. PK Company also manufactures rubber shoes with the trademark
“Javorski” which it registered with BPTT in 1978.

In 1992, PK Co adopted and copied the design of N Corporation’s “Jordann” rubber shoes, both
as to shape and color, but retained the trademark “Javorski” on its products.

May PK Company be held liable to N Co? Explain.

ANSWER:

Yes. PK Co may be held liable for unfairly competing against N Co.

In the case of Converse Rubber Co. v. Jacinto Rubber and Plastics Co. (G.R. 27425 and
30505, April 28, 1980), priority in registration is not material in an action for unfair competition as
distinguished from an action for infringement of trademark. The basis of an action for unfair
competition is confusing and misleading similarity in general appearance, not similarity of
trademarks.

By copying the design, shape and color of N Corporation’s “Jordann” rubber shoes and
using the same in its rubber shoes trademarked “Javorski”, PK is obviously trying to pass off its
shoes for those of N.

Thus, it is of no moment that the trademark “Javorski” was registered ahead of the
trademark “Jordann”.

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Topic: Dominancy Test; (2012)

The "test of dominancy" in the Law on Trademarks, is a way to determine whether there exists an
infringement of a trademark by -
a. determining if the use of the mark has been dominant in the market.
b. focusing on the similarity of the prevalent features of the competing marks which might
create confusion.
c. looking at the mark whether they are similar in size, form or color.
d. looking at the mark whether there is one specific feature that is dominant.

Answer:

b. focusing on the similarity of the prevalent features of the competing marks which might
create confusion

The dominancy test focuses on the similarity of the main, prevalent or essential features
of the competing trademarks that might cause confusion (Diaz v. People of the Philippines and
Levi Strauss [Phils.], Inc. G.R. No. 180677, February 18, 2013).

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Well-known marks

Topic: Trademarks; Well Known Marks; Inter Partes Cases (1981)

“G” Corporation, organized under Philippine laws is the owner of the trademark “Jumbo” under
Registry No. 50025 issued on February 15, 1979 by the Philippine Patent Office, for assorted
kitchen ware. On June 10, 1980, the Jumbo Cookware Corporation, organized and existing under
the U.S. laws, filed a petition with the Philippine Patent Office for the cancellation of the trademark
“Jumbo” registered in the name of “G” Corporation alleging ownership and prior use in the
Philippines since 1949 of said trademark on the same kind of goods, which use it had not
abandoned.
“G” Corporation moved to dismiss the petition alleging that the Jumbo Cookware Corporation,
being foreign entity, which is not licensed to do and is not doing business in the Philippines has
no personality under the Philippine laws to maintain such petition.
Is “G’s” contention meritorious?

ANSWER:
No, G’s contention is not meritorious.

Sec. 123.1(e) of R.A. No. 8293 now categorically states that "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," cannot be registered by another in the
Philippines.” Therefore, persons who may question the mark include persons whose
internationally well-known mark, whether or not registered, is identical with or confusingly similar
to or constitutes a translation of a mark that is sought to be registered or is actually registered.

Furthermore, in Ecole de Cuisine Manille versus Renau Contreau & Cie (G.R. No. 185830,
June 5, 2013), the Supreme Court has held that foreign marks that are not registered are still
accorded protection against infringement and/or unfair competition under the Paris Convention
and Nice Convention.

As such, G’s contention that a foreign corporation which is not licensed to do and is not
doing business in the Philippines has no personality to maintain such petition is incorrect because
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such corporation may sue provided it meets the requirements provided in the Intellectual Property
Code or provided under treaties wherein the Philippines is a signatory.

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Rights conferred by registration

Topic: Trademarks; Rights Conferred by Registration (2016)

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.

[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%)

ANSWER:

A. No, YYY does not have prior right over the trademark.

As held in the case of Birkenstock Orthopaedia GMBH vs. Philippine Shoe Expo Marketing
Corporation (GR No. 194307, November 20, 2013), it is not the application or registration of a
trademark that vests ownership thereof, but it is the ownership of a trademark that confers the
right to register the same. A trademark is an industrial property over which its owner is entitled to
property rights which cannot be appropriated by unscrupulous entities that, in one way or another,
happen to register such trademark ahead of its true and lawful owner.

Since YYY is not the owner of the trademark, it has no right to apply for registration.
Registration of trademark, by itself, is not a mode of acquiring ownership. It is the ownership of a
trademark that confers the right to register the same.

B. No, the prior registration does not create such conclusive assumption

As held in the case of Birkenstock Orthopaedia GMBH vs. Philippine Shoe Expo Marketing
Corporation (GR No. 194307, November 20, 2013), a certificate of registration of a mark, once

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issued, constitutes prima facie evidence of the validity of the registration, of 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.

In the case at hand, applying the above-mentioned principle, prior registration does not create
a conclusive assumption that YYY Engineers is in fact the owner of the trademark “”TTubes”. It
merely constitutes a prima facie evidence of the validity of the registration, among others.

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Use by third parties of names, etc. similar to registered mark

Topic: Trademark Name; Usage (1994)

Laberge, Inc., manufactures and markets after-shave lotion, shaving cream, deodorant, talcum
powder and toilet soap, using the trademark “PRUT”, which is registered with the Philippine Patent
Office. Laberge does not manufacture briefs and underwear and these items are not specified in
the certificate of registration.

JG who manufactures briefs and underwear, wants to know whether, under our laws, he can use
and register the trademark “PRUTE” for his merchandise. What is your advice?

ANSWER:

JG, can use and register the trademark “PRUTE” for its merchandise.

In the case of Faberge Inc. vs. IAC (G.R. No. 71189, November 4, 1992), the Supreme
Court held that, the certificate of registration issued confers the exclusive right to use its own
symbol only to those goods specified by the first user in the certificate, subject to any conditions
or limitations stated therein. Moreover, the two products are so dissimilar that a purchaser of one
would not be misled or mistaken into buying the other

In this case, the trademark registered in the name of Laberge Inc. covers only the following
specified products: after-shave lotion, shaving cream, deodorant, talcum powder and toilet soap.
It does not cover clothing such as briefs and underwear. The limitations of the trademark are
stated in the certificate issued to Laberge Inc., and such does not include briefs and underwear
which are different products protected by said trademark. Furthermore, JG’s use of the name
“PRUTE” cannot be expected to cause confusion or mistake, or to deceive purchasers or others
as to the goods or services between the two businesses, or as to the source or origin of such
goods, or identity of the business. Granted that Laberge’s trademark has a close resemblance to
JG’s intended trademark, the goods are different and cannot be reasonably assumed to originate
from the former, therefore, not violative of Intellectual Property laws.

Hence, JG can register the trademark “PRUTE” to cover its briefs and underwear.

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Infringement and remedies

Topic: Remedies, Administrative Cancellation of Trademark (1984)

Prince Manufacturing Co., Inc. filed a complaint for unfair competition under section 21-A of R.A.
166 against Prince Industries, Inc. the complaint substantially alleges that plaintiff is a foreign
corporation organized under the laws of California, USA., with offices in San Francisco; that
defendant Prince Industries, Inc. is a corporation organized under the laws of the Philippines with
principal office at Sucat Road, Paranaque, Metro Manila; that plaintiff, founded in 1920 by Iver
Prince, is the largest manufacturer of ball bearings with the trademark “Prince” and the tradename
“Prince Manufacturing Co., Inc.” had been exported to the Philippines since 1960; that due to the
superior quality and widespread use of its products by the public, the same are well known to
Filipino consumers under the tradename “Prince Manufacturing Industries, Inc.” and trademark
“Prince”; that long after the commencement of the use of plaintiff’s trademark and tradename in
the Philippines, defendant began manufacturing and selling ball bearings under the trademark
“Prince” and tradename “Prince Industries, Co.”; that defendant has registered with the Philippine
Patent Office the trademark “Prince”, which registration is contrary to Sec. 4 of RA 166, as
amended, and violative of plaintiff’s right to the trademark “Prince”; that the defendant not only
uses the trademark “Prince” but likewise has copied the design used by plaintiff in distinguishing
its trademark; and that the use thereof by defendant on its products would cause confusion in the
minds of the consumers and likely deceive them as to the source or origin of the goods, thereby
enabling the defendant to pass off their products as those of plaintiff.

Invoking the provisions of Sec. 21 A of RA 166, as amended, plaintiff prayed for damages. It also
sought the issuance of a writ of injunction to prohibit defendants from using the tradename “Prince
Industries Co.” and the trademark “Prince”.

If you were the counsel for the plaintiff, what administrative remedy would you advise your client
to pursue in the event the court action fails?

ANSWER:

If the court action fails, I will advise my client to avail of the administrative cancellation of
the trademark.

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In Citygroup Inc. v. Citystate Savings Bank Inc. (G.R. No. 205409, June 13, 2018), the
court ruled that modern trade and commerce demands that depredations on legitimate
trademarks of non-nationals including those who have not shown prior registration thereof should
not be countenanced. The law against such depredations is not only for the protection of the
owner of the trademark but also, and more importantly, for the protection of purchasers from
confusion, mistake, or deception as to the goods they are buying.

In the case at hand, the client is a non-national who has not shown prior registration of the
mark, nonetheless the law still protects the rights of such non-nationals despite the lack of prior
registration as the modern trade and commerce demands such protection.

Hence, the foreign corporation may avail of the remedy of administrative cancellation of
the trademark even if its trademark is not registered in the Philippines.

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Topic: Trademark; Infringement (1991)

SONY is a registered trademark for TV, stereo, radio, cameras, betamax and other electronic
products. A local company, Best Manufacturing, Inc. produced electric fans which it sold under
the trademark SONY without the consent of SONY. SONY sued Best Manufacturing for
infringement. Decide the case.

ANSWER:

I will dismiss the case filed by SONY for infringement.

The Court in the case of Taiwan Kolin Co. v. Kolin Electronics (G.R. No. 209843, March
25, 2015), ruled that the emphasis in determining violation of intellectual property right should be
on the similarity of the products involved and not on the arbitrary classification or general
description of their properties or characteristics. The Court held that ordinarily intelligent buyer is
not likely to be confused as the products of the contending parties are relatively luxury items not
easily considered affordable. Accordingly, the casual buyer is predisposed to be more cautious
and discriminating in and would prefer to mull over his purchase.

In this case, SONY’s television sets and DVD players perform distinct function and
purpose from Best Manufacturing’s electric fans. Also, considering the products involved in this
case, the ordinary purchaser is not the “completely unwary consumer” but is the “ordinarily
intelligent buyer” and thus, the possibility of confusion is less likely.

Therefore, the case for infringement will not prosper as the differences from the two marks
in question are sufficient to prevent any confusion on the part of the consumers.

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Topic: Infringement vs. Unfair Competition (1996)

What is the distinction between infringement and unfair competition?

ANSWER:

The distinction between infringement (presumably trademark) and unfair competition, as

illustrated in the case of Del Monte Corp. v. CA (G.R. 78325, January 25, 1990, are as follows:

1. Infringement of trademark is the unauthorized use of a trademark, whereas unfair

competition is the passing off of one’s goods as those of another;
2. Fraudulent intent is unnecessary in infringement of trademark, whereas fraudulent intent
is essential in unfair competition; and
3. The prior registration of the trademark is a prerequisite to an action for infringement of
trademark, whereas registration of the trademark is not necessary in unfair competition.

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Topic: Infringement vs. Unfair Competition (2003)

In what way is an infringement of a trademark similar to that which pertains to unfair competition?

ANSWER:

According to the provisions of IPC on infringement and unfair competition, the similarity
between infringement of a trademark and unfair completion is that they both disrupt fair
competition among business enterprises and other businesses. Moreover, they both create
confusion, mistake, and deception as to the minds of the consumers with regard to the source or
identity of their products or services due to its similarity in appearance or packaging.

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Topic: Infringement; Jurisdiction (2003)

K-9 Corporation, a foreign corporation alleging itself to be the registered owner of trademark” K-
9” and logo” K”, filed an Inter Partes case with the Intellectual Property Office again. Kanin
Corporation for the cancellation of the latter’s mark “K-9” and logo “K.” During the pendency of
the case before the IPO, Kanin Corporation brought suit against K-9 Corporation before the RTC
for infringement and damages. Could the action before the RTC prosper? Why?

ANSWER:

Yes, the action before the RTC can prosper.

According to Sec. 151.2 of the IPC, the filing of a suit to enforce the registered mark with
the proper court or agency shall exclude any other court or agency from assuming jurisdiction
over a subsequently filed petition to cancel the same mark. On the other hand, the earlier filing of
petition to cancel the mark with the Bureau of Legal Affairs shall not constitute a prejudicial
question that must be resolved before an action to enforce the rights to same registered mark
may be decided.

In the case at bar, the earlier institution of an Inter Partes case by the K-9 Corporation for
the cancellation of the "K-9" mark and "K" logo cannot effectively bar the subsequent filing of an
infringement case by registrant Kanin Corporation. Moreover, the issue raised before the IPO is
whether or not the cancellation of the subsequent trademark is proper because of the prior
ownership of the disputed mark by K-9, while the issue raised before the RTC pertains to
infringement. Furthermore, an action for infringement or unfair competition, as well as the remedy
of injunction and relief for damages, is within the competence and jurisdiction of ordinary courts.
Therefore, the action for infringement filed before the RTC will prosper.

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Topic: Trademark Infringement (2009)

After disposing of his last opponent in only two rounds in Las Vegas, the renowned Filipino boxer
Sonny Bachao arrived at the Ninoy Aquino International Airport met by thousands of hero-
worshipping fans and hundreds of media photographers. The following day, a colored photograph
of Sonny wearing a black polo shirt embroidered with the 2-inch Lacoste crocodile logo appeared
on the front page of every Philippine newspaper.

Lacoste International, the French firm that manufactures Lacoste apparel and owns the Lacoste
trademark, decided to cash in on the universal popularity of the boxing icon. It reprinted the
photographs, with the permission of the newspaper publishers, and went on a world-wide blitz of
print commercials in which Sonny is shown wearing a Lacoste shirt alongside the phrase "Sonny
Bachao just loves Lacoste."

When Sonny sees the Lacoste advertisements, he hires you as lawyer and asks you to sue
Lacoste International before a Philippine court for trademark infringement in the Philippines
because Lacoste International used his image without his permission. Will the action prosper?
Explain.

ANSWER:

No, the action for trademark infringement will not prosper.

Sec. 122 of the Intellectual Property Code (IPC) provides that the rights in a mark shall be
acquired through registration made validly in accordance with the provisions of this law.
Furthermore, as held in the case of Pearl & Dean (P & D) v. Shoemart (G.R. No. 148222, August
15, 2003), without the registration of a trademark, one who has adopted and used a trademark
on his goods does not prevent the adoption and use of the same trademark by others for products
which are of a different description. In the Pearl & Dean case, it involved the mark called “Poster
Ads.” The SC ruled that assuming arguendo that "Poster Ads" could validly qualify as a trademark,
the failure of P & D to secure a trademark registration for specific use on the light boxes meant
that there could not have been any trademark infringement since registration was an essential
element thereof.

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In this case, regardless of whether the photograph used constitutes a trademark, Sonny
Bachao cannot sue for infringement of trademark. The photographs showing him wearing a
Lacoste shirt were not registered as a trademark. Thus, it does not constitute trademark
infringement.

Hence, the suit for trademark infringement will not prosper.

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Topic: Trademark; Trade Name; Infringement (2011)

“Eagleson Refillers, Co.,” a firm that sells water to the public, opposes the trade name application
of “Eagleson Laundry, Co.,” on the ground that such trade name tends to deceive trade circles or
confuse the public with respect to the water firm’s registered trade name. Will the opposition
prosper?
A. Yes, since such use is likely to deceive or confuse the public.
B. Yes, since both companies use water in conducting their business.
C. No, since the companies are not engaged in the same line of business.
D. No, since the root word “Eagle” is a generic name not subject to registration.

ANSWER:

C. No, since the companies are not engaged in the same line of business.

In trademark infringement, it is required that the following elements be present: (1) the
mark shall be registered, except in case of trade name for it is not required to be registered for an
infringement to arise; (2) the mark/name is reproduced, copied, counterfeited, colorable imitated;
(3) such is used in commerce or in connection with the sale, advertising or offer of sale; (4) such
creates a likelihood of confusion; and (5) lack of consent from the owner.

While it is true that use of identical marks is prohibited, such is not an absolute rule. The
use of an identical marks or names does not by itself, lead to a legal conclusion that there is
trademark infringement if they are NOT used for identical, similar or related goods.

In this case, it cannot be shown that the identical names of “Eagleson Refillers, Co.,” and
“Eagleson Laundry, Co.,” are used for the same or identical, similar or related goods.

Thus, the opposition shall not prosper.

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Topic: Infringement and Remedies; trademark infringement (2014)

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%)

ANSWER:

I can advise KU to file a petition for cancellation of registration of the name “KLUWER
GRADUATE SCHOOL OF BUSINESS OF MINDANAO” (KGSBM) on the ground of trademark
infringement.

In a similar decided case of Ecole de Cuisine Manille (Cordon Bleu of the Philippines), Inc.
vs. Renaud Cointreau & Cie (GR No. 185830, 5 June 2013), the high court explained that foreign
marks that are not registered are still accorded protection against infringement and/or unfair
competition under the Paris Convention for the Protection of Industrial Property (PCPIP), when
the state are both parties to the convention. Also, another ground for foreign marks to be protected
is to prove that the same is a well-known mark and both entities belong to the same class. Lastly,
it can be on the ground that the trademark owner had use and adopted the mark before the other.

In this case, I will advise KU to file a petition for cancellation of the registration on the
ground that it is either: (1) protected by PCPIP where Germany and the Philippines are party; (2)
we can prove that it is a well-known mark and both KU and KGSBM were engaged in the same
class of business which is education and entertainment (Class 41); or (3) we can prove that KU
has adopted and used the term “Kluwer” prior to the use and registration of Jinggy.

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Topic: Distinctions of infringement of trademark from unfair competition (2015)

In what ways would a case for infringement of trademark be different from a case for unfair
competition?

ANSWER:

In Del Monte Corporation vs. Court of Appeals, (GR No. 78325, January 25, 199), the
Court ruled that the following are the distinctions between infringement and unfair competition:

a. In infringement of trademark, there is unauthorized use of a trademark, while unfair

competition under the IPC involves passing off of one’s goods as those of another and giving
one’s goods the appearance of that of another;
b. It is not necessary to establish fraudulent intent in a case for infringement of trademark
while it is necessary to establish fraudulent intent in an unfair competition case;
c. Registration of the trademark is necessary for the filing of an action for infringement of
trademark while prior registration of trademark is not necessary in unfair competition; and

d. Unfair competition is broader as it includes cases that are covered not only by the IPC but also
by Article 27 of the New Civil Code.

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Topic: Cancellation of Trademarks (2019)

In 2005, W Hotels, Inc., a multinational corporation engaged in the hospitality business, applied
for and was able to register its trademark "W" with the Intellectual Property Office of the
Philippines (IPO) in connection with its hotels found in different parts of the world.

In 2009, a Filipino corporation, RST Corp., filed before the IPO a petition for cancellation of W
Hotels, Inc.'s "W" trademark on the ground of non-use, claiming that W Hotels, Inc. failed to use
its mark in the Philippines because it is not operating any hotel in the country which bears the "W"
trademark.

In its defense, W Hotels, Inc. maintained that it has used its "W" trademark in Philippine
commerce, pointing out that while it did not have any hotel establishment in the Philippines, it
should still be considered as conducting its business herein because its hotel reservation
services, albeit for its hotels abroad, are made accessible to Philippine residents through its
interactive websites prominently displaying the "W" trademark. W Hotels, Inc. also presented
proof of actual booking transactions made by Philippine residents through such websites.

Is W Hotels, Inc.'s defense against the petition for cancellation of trademark tenable? Explain.

ANSWER: Yes, the defense is tenable.

In W Land Holdings vs Starwood Hotels (G.R. No. 222366, December 04, 2017), the
Court held that it is understood that the “use” which the law requires to maintain the registration
of a mark must be genuine, and not merely token. Based on foreign authorities, genuine use may
be characterized as a bona fide use which results or tents to result, in one way or another, into a
commercial interaction or transaction “in the ordinary course of trade.” Based on the amended
Trademark Regulations, it is apparent that the IPO has now given due regard to the advent of
commerce on the internet.

In this case, W Hotels’ use of its “W” mark through its interactive website is intended to
produce a discernable commercial effect or activity within the Philippines, or at the very least,
seeks to establish commercial interaction with local consumers.

Therefore, its use is sufficient to keep its registration in force.

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Unfair competition

Topic: Unfair Competition (1981)

“G” Corporation, organized under Philippine laws is the owner of the trademark “Jumbo” under
Registry No. 50025 issued on February 15, 1979 by the Philippine Patent Office, for assorted
kitchen ware. On June 10, 1980, the Jumbo Cookware Corporation, organized and existing under
the U.S. laws, filed a petition with the Philippine Patent Office for the cancellation of the trademark
“Jumbo” registered in the name of “G” Corporation alleging ownership and prior use in the
Philippines since 1949 of said trademark on the same kind of goods, which use it had not
abandoned.

“G” Corporation moved to dismiss the petition alleging that the Jumbo Cookware Corporation,
being foreign entity, which is not licensed to do and is not doing business in the Philippines has
no personality under the Philippine laws to maintain such petition.

Is “G’s” contention meritorious?

ANSWER:

No. “G’s” contention is not meritorious.

Under the Trademark Law, a foreign corporation may bring an action for unfair competition
in the Philippines, whether or not it has been licensed to do business in the Philippines, provided
that the country of which the said foreign corporation is a citizen or in which it is domiciled, by
treaty or law grants a similar privilege to corporation of the Philippines.

In this case, notwithstanding the fact that Jumbo Cookware Corporation is not doing
business in the Philippines thereby barring it from bringing a suit in the Philippines, under the
Trademark Law, Jumbo Corporation can initiate a suit on the ground that its property right over
its name “Jumbo” was violated by G Corporation resulting to a violation of the Trademark Law.

Thus, Jumbo Cookware Corporation may maintain a suit against G Corporation in the
Philippines.

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Topic: Remedies; Unfair Competition (1982)

In 1979, Smash Manufacturing Company, a foreign corporation registered in New York, but not
doing business in the Philippines, filed a complaint for unfair competition against Nilo Malakas.
The plaintiff alleged that since 1939, it had been exporting tennis rackets under the trademark
“Smash Mfg. Co.”, and that after the trademark and tradename became familiar to Filipino
consumers, defendant Malakas began manufacturing similar products under the same trademark
and tradename which he registered with the Philippine Patent Office. Actually, after 1948, Smash
Tennis rackets produced by the foreign corporation were no longer imported in the Philippines.

The complaint failed to allege that its trademark or tradename has been registered with the
Philippine Patents Office or that the State of New York grants Philippine corporations the privilege
to bring an action for unfair competition in that State. Claiming that these are conditions sine qua
non before a foreign corporation may file suit in the Philippines, defendant Malakas filed a motion
to dismiss the complaint.

a) How would you decide the motion to dismiss? State your reasons.
b) Regardless of how you decide the motion to dismiss, how would you decide the merits of the
case? Does the foreign corporation have other administrative remedies?

ANSWER:

A. The motion to dismiss of the complaint of Smash Manufacturing company must be

sustained.

Under Section 160 of RA No. 8293 “any foreign national or juridical person who meets the
requirements of Section 3 of this Act and does not engage in business in the Philippines may
bring a civil or administrative action hereunder for opposition, cancellation, infringement, unfair
competition, or false designation of origin and false description, whether or not it is licensed to do
business in the Philippines under existing laws.” It means that registration foreign national is not
necessary to bring an administrative action for unfair competition. However, there is no unfair
competition in the said case. Under Section 168 of RA No. 8293, there is unfair competition when
“a person who has identified in the mind of the public the goods he manufactures or deals in, his
business or services from those of others, whether or not a registered mark is employed, has a

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property right in the goodwill of the said goods, business or services so identified, which will be
protected in the same manner as other property rights.”

In the case at bar, the company Smash has not exported tennis rackets since 1948 or for
over 30 years. The inherent element of unfair competition is fraud or deceit which is not clearly
established in the case at bar.

Hence, the motion to dismiss must be sustained.

B. Yes, the case still has other remedies such as filing an administrative action for
cancellation of registration.

As stated under Section 151.1 of the RA 8293, any person who believes that he is or will
be damaged by registration of a mark may file for the cancellation of the registration.

In the case at bar, since the foreign corporation believes that he shall be damaged by
registration of the “Smash Mfg. Co.”, he may file the administrative case for cancellation of
registration.

Thus, the remedy of the said corporation is not limited to the filing of complaint for unfair
competition.

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Topic: Unfair Competition (1983)

For the past 10 years, Rubberworld Co. has been using the trade name FORMIDAS for its rubber
shoes and slippers, but has never registered it in the Patent Office. Its business has flourished
and it is now exporting its products to other countries.

The Philippine Knittiing Mills Co., a new enterprise, is now selling socks manufactured by it with
the label FORMIDAS, without having registered the same either as a trademark or a trade name.

Rubberworld Co. wants to stop Philippine Knitting Mills from using the trade name FORMIDAS,
but it entertains some misgivings about its right to do so because firstly, it has not registered the
trade name, and secondly, its products and those of Philippine Knitting Mills are different and;
therefore, not competing items.

Are the doubts of Rubberworld Co. well-founded? Why?

ANSWER:

No, the doubts of Rubberworld Co. are not well-founded.

According to Section 168.1 of the IPC, a person who has identified in the mind of the public
the goods he manufactures or deals in, his business or services from those of others, whether or
not a registered mark is employed, has a property right in the goodwill of the said goods, business
or services so identified, which will be protected in the same manner as other property rights.

In the case at bar, although Rubberworld Co. has not registered the trade name, it has
already acquired a goodwill and the use by another of such name would likely confuse the
consuming public as to the source of the goods, especially in this case where the trade name is
used on socks which like shoes and slippers are footwear. By using the well-known trade name
of Rubberworld Co., Knitting Mills is taking advantage of the reputation of Rubberworld, and may
even adversely affect such reputation if its goods are of inferior quality. The consumers may likely
identify the shoes, slippers and socks as coming from one and the same source, they are all
footwear.

Therefore, Rubberworld Co may stop Philippine Knitting Mills from using the trade name
FORMIDAS even though it has not registered its trade name.

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Topic: Unfair Competition (1988)

X, a dealer of low grade oil, to save on expenses, uses the containers of different companies.
Before marketing to the public his low-grade oil, X totally obliterates and erases the brands or
marks stenciled on the containers.

Y brings an action against X for unfair competition upon its discovery that its containers have been
used by X for his low-grade oil.

Is there unfair competition? State briefly your reasons.

ANSWER:

No, there is no unfair competition.

Under Section 168.2 of the Intellectual Property Code, there is unfair competition when
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, or who shall commit any acts calculated to
produce said result.

In this case, there is no proof that X had intended to pass off his goods as that of Y. Nor
is there any indication that X acted with fraudulent intent.

Thus, there is no unfair competition in this case.

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Topic: Unfair Competition (2014)

In intellectual property cases, fraudulent intent is not an element of the cause of action except in
cases involving: (1%)
(A) trademark infringement
(B) copyright infringement
(C) patent infringement
(D) unfair competition

ANSWER:

(D) Unfair Competition

In Mcdonald’s Corporation vs. L.C. Big Mak Burger, Inc., (G.R. No. 143993, August 18, 2004)
the essential elements of an action for unfair competition are (1) confusing similarity in the general
appearance of the goods, and (2) intent to deceive the public and defraud a competitor.
Actual fraudulent intent need not be shown.

In this case, among the choices given only unfair competition has the element of intent to
deceive even thoigh actual fraudulent intent is not needed to be shown.

Therefore, answer is (D)

FOR COMPARISON PURPOSES:

The elements of trademark infringement, which is defined under Section 155 of the IP Code,
are as follows:
1. the trademark is registered in the Philippines;
2. the trademark is used by another person in connection with the sale, offering for sale, or
advertising of any goods, business or services, or such trademark is reproduced,
counterfeited, copied or colorably imitated by another person and applied to labels, signs,
prints, packages, wrappers, receptacles or advertisements intended to be used upon or in
connection with such goods, business or services;
3. the trademark is used for similar or closely related goods;
4. such act is done without the consent of the trademark registrant or assignee; and

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5. such use will likely cause confusion, mistake or deception among the
purchasers/consumers.

Infringement of copyright or piracy 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.

Under the Intellectual Property Code, a patent holder has the right to "to restrain, prohibit and
prevent" any unauthorized person or entity from manufacturing, selling, or importing any product
derived from the patent. However, after a patent is granted and published in the Intellectual
Property Office Gazette, any interested third party "may inspect the complete description, claims,
and drawings of the patent." (E.I DUPONT DE NEMOURS AND CO. vs. Dir. Francisco, GR No.
174379, 31 August 2016)

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Topic: Unfair Competition (2016)

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.

ANSWER:

The RTC is not correct.

As held by the Supreme Court in the case of Coca Cola Bottlers Philippines vs GOMEZ
(GR No. 154491, November 14, 2008), hoarding, or the act of accumulating empty bottles to
impede circulation of the bottled product, does not amount to unfair competition.

In the case at hand, BA did not fraudulently “pass off” its product as that of MS Lite. There
was no representation or misrepresentation on the part of BA that would confuse or tend to
confuse its goods with those of MS Lite.

Thus, the RTC is not correct and BA is not guilty of unfair competition

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C. Copyright

Basic principles

Topic: Copyright (1975)

If today a person is granted a copyright for a book, for how long will the copyright be valid? If said
person uses a pseudonym, how would this affect the length of the copyright?

ANSWER:

Under Section 213.1 of the Intellectual Property Code, the copyright of a book shall be
protected during the life of the author and for fifty (50) years after his death.

Meanwhile, Section 213.3 provides that in case of anonymous or pseudonymous works,

the copyright shall be protected for fifty (50) years from the date on which the work was first
lawfully published. However, if before the expiration of the said period, the author's identity is
revealed or is no longer in doubt, the copyright will be protected during the life of the author and
for fifty years after his death. But if such works are not published, it shall be protected for fifty (50)
years counted from the making of the work.

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Topic: Copyright; Extent (1989)

Felix has copyrighted the oil painting showing the oath taking of President C. Aquino and Vice-
President S. Laurel after the EDSA revolution. Val engaged an artist to paint the same scene for
use as picture postcards. Val then started sending the picture postcards to his friends abroad. Is
there a violation of Felix’s copyright? Reasons.

ANSWER:

No. In the case of Pearl & Dean Incorporated vs. Shoemart, Incorporated (G.R. No.
148222, August 15, 2003), the Supreme Court held that the protection of the drawing does not
extend to the unauthorized duplication of the object drawn because copyright extends only to the
description or expression of the object and not to the object itself. It does not prevent one from
using the drawings to construct the object portrayed in the drawing.

In this case, the copyright that Felix has over his painting cannot extend to the event itself
because the latter is not susceptible to exclusive ownership.

Therefore, there is no violation of Felix’s copyright if another artist did a similar work.

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Topic: Copyright; Start of Protection (2012)

X's painting of Madonna and Child was used by her mother to print some personalized gift
wrapper. As part of her mother's efforts to raise funds for Bantay Bata, the mother of X sold the
wrapper to friends. Y, an entrepeneur, liked the painting in the wrapper and made many copies
and sold the same through National Bookstore. Which statement is most accurate?

a. Y can use the painting for his use because this is not a copyrightable material.
b. X can sue Y for infringement because artistic works are protected from moment of
creation.
c. Works of art need to be copyrighted also to get protection under the law.
d. Y can use the drawing even though not copyrighted because it is already a public property
having been published already.

ANSWER:

SECTION 172. Literary and Artistic Works. - 172.1. 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:

(g) Works of drawing, painting, architecture, sculpture, engraving, lithography or other

works of art; models or designs for works of art;

From the moment of X’s creation of his painting, his intellectual property is already
protected by law hence he may enforce his right against Y for any violation thereof.

Therefore, B is the correct answer.

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Copyrightable Works

TOPIC: Copyrightable Works (2017)

True or False: News reports are not copyrightable.

ANSWER:

False. Copyright protection extends to the reports themselves, as distinguished from the
substance of the information contained in the reports (ABS-CBN Corporation vs. Gozon, G.R.
No. 195956, March 11, 2015).

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Who owns the copyright?

Topic: Who owns the copyright? (1986)

The widow of a former President commissioned Matalino to write a biography of her late
husband for a fee. Upon completion of the work, the widow paid Matalino the agreed price. The
biography was copyrighted. The widow, however, changed her mind upon reading the book and
decided not to have it published.

a. Can the President’s widow sell the property without the consent of Matalino? Explain.
b. Can the President’s widow transfer the copyright without the consent of Matalino?

ANSWER:

a. Yes, the President’s widow can sell the property without the consent of Matalino.

Under Sec. 178.4 of the Intellectual Property Code, in the case of a work commissioned
by a person other than an employer of the author and who pays for it and the work is made in
pursuance of the commission, the person who so commissioned the work shall have ownership
of the work, but the copyright thereto shall remain with the creator, unless there is a written
stipulation to the contrary. In relation thereto, Arts. 427 and 428 of the New Civil Code provides
ownership may be exercised over things or rights. The owner has the right to enjoy and dispose
of a thing, without other limitations than those established by law.

In this case, Matalino is commissioned by the widow of the President to write the biography
of her late husband and paid the former the agreed fee. The widow is thus the owner of the
biography. And pursuant to her rights of ownership, she may sell the biography at her discretion
because such right is not otherwise limited by the law.

Thus, the President’s widow can sell the property without the consent of Matalino pursuant
to the former’s ownership rights on the biography of the President made by the latter.

b. Yes, the President’s widow can transfer the copyright without the consent of Matalino.

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Under Sec. 178.4 of the Intellectual Property Code, in the case of a work commissioned
by a person other than an employer of the author and who pays for it and the work is made in
pursuance of the commission, the person who so commissioned the work shall have ownership
of the work, but the copyright thereto shall remain with the creator, unless there is a written
stipulation to the contrary. In relation thereto, Arts. 427 and 428 of the New Civil Code provides
ownership may be exercised over things or rights. The owner has the right to enjoy and dispose
of a thing, without other limitations than those established by law.

In this case, Matalino is commissioned by the widow of the President to write the biography
of her late husband and paid the former the agreed fee. The widow is thus the owner of the
biography. And pursuant to her rights of ownership, she may perform acts of disposition, which
includes transfer, of the biography at her discretion because such right is not otherwise limited by
the law.

Thus, the President’s widow can transfer the copyright without the consent of Matalino
pursuant to the former’s ownership rights on the biography of the President made by the latter.

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Topic: Copyright Registration (2013)

Rudy is a fine arts student in a university. He stays in a boarding house with Bernie as his
roommate. During his free time, Rudy would paint and leave his finished works lying around the
boarding house. One day, Rudy saw one of his works -an abstract painting entitled Manila Traffic
Jam - on display at the university cafeteria. The cafeteria operator said he purchased the painting
from Bernie who represented himself as its painter and owner.

Rudy and the cafeteria operator immediately confronted Bernie. While admitting that he did not
do the painting, Bernie claimed ownership of its copyright since he had already registered it in his
name with the National Library as provided in the Intellectual Property Code.

Who owns the copyright to the painting? Explain.

ANSWER:

Rudy owns the copyright.

Section 178.1 of the Intellectual Property Code, in the case of original literary and artistic
works, copyright shall belong to the author of the work. Further, Section 191 of the Intellectual
Property Code provides that registration is merely for the purpose of completing the records of
the National Library.

In the case at hand, Rudy is the one who painted the work and such his right over the
painting existed from the time of its creation.

Thus, Bernie’s registration of the painting did not confer copyright upon him and Rudy still
owns the copyright over the painting.

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Copyrightable works

Original works

Topic: Copyright; Original Works (2011)

Under the Intellectual Property Code, lectures, sermons, addresses or dissertations prepared for
oral delivery, whether or not reduced in writing or other material forms, are regarded as
A. non-original works.
B. original works.
C. derivative works.
D. not subject to protection.

ANSWER:
B. original works.

Chapter II, Section 172 of the Intellectual Property Code provides for the enumerations of
Literary and Artistic Works. Section 172.1 (c) provides that 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 the lectures, sermons, addresses,
dissertations prepared for oral delivery, whether or not reduced in writing or other material form.

As expressly provided by the ICP, the correct answer is B, Original Works.

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Non-copyrightable works

Topic: Copyright; Denicola Test (2009)

TRUE or FALSE. Answer TRUE if the statement is true, or FALSE if the statement is false.
Explain your answer in not more than two (2) sentences.

The Denicola Test in intellectual property law states that if design elements of an article reflect a
merger of aesthetic and functional considerations, the artistic aspects of the work cannot be
conceptually separable from the utilitarian aspects; thus, the article cannot be copyrighted.

ANSWER:

True.

As held in the US case of Brandir International, Inc. v. Cascade Pacific Lumber Co. (834 F.2d
1142), if design elements reflect a merger of aesthetic and functional considerations, the artistic
aspects of a work cannot be said to be conceptually separable from the utilitarian elements.
Conversely, where design elements can be identified as reflecting the designer's artistic judgment
exercised independently of functional influences, conceptual separability exists.

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Topic: Copyright; Unprotected Subject Matter; System Method (2011)

X came up with a new way of presenting a telephone directory in a mobile phone, which he
dubbed as the “iTel” and which uses lesser time for locating names and telephone numbers. May
X have his “iTel” copyrighted in his name?

A. No, because it is a mere system or method.

B. Yes, because it is an original creation.
C. Yes, because it entailed the application of X's intellect.
D. No, because it did not entail any application of X's intellect.

ANSWER:

A. No, because it is a mere system or method.

In Kho v. CA (G.R. No. 115758, May 19,2002), copyright is defined as a right over literary
and artistic works which are original intellectual creations in the literary and artistic domain
protected from the moment of creation. Section 175 of the Intellectual Property Code of the
Philippines provides that 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.

In this case, the invention of X, which is a new way of presenting a telephone directory in
mobile phone and use uses lesser time for locating names and telephone numbers, is a mere
system or method which is one of the enumeration of the code which cannot be protected by
copyright.

Therefore, X cannot have his “iTel” copyrighted in his name

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Topic: Copyright; Unprotected Subject Matter; Discovery (2011)

X, an amateur astronomer, stumbled upon what appeared to be a massive volcanic eruption in

Jupiter while peering at the planet through his telescope. The following week, X, without notes,
presented a lecture on his findings before the Association of Astronomers of the Philippines. To
his dismay, he later read an article in a science journal written by Y, a professional astronomer,
repeating exactly what X discovered without any attribution to him. Has Y infringed on X's
copyright, if any?

A. No, since X did not reduce his lecture in writing or other material form.
B. Yes, since the lecture is considered X’s original work.
C. No, since no protection extends to any discovery, even if expressed, explained, illustrated,
or embodied in a work.
D. Yes, since Y’s article failed to make any attribution to X.

ANSWER:

C. No, since no protection extends to any discovery, even if expressed, explained,

illustrated, or embodied in a work.

Section 175 of the Intellectual Property Code of the Philippines provides that one of the
unprotected subject matters of copyright, where 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.

In this case, X’s discovery which he presented a lecture on his findings falls exactly to the
list which provides that such subject matter will not be protected by the IPC.

Even X was the first one who lectured, expressed or explained his discovery, it is clear
that no protection extends to any discovery.

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Rights of copyright owner

Topic: Copyright; Right of Authors (1981)

Jose Santos has written many poems, some of which have been published in Panorama
Magazine but never registered with the Copyright Office. Among his published works was the
poem entitled “In a Rose Garden.” About a year from its publication, Jose was surprised to hear
over the radio a song whose lyrics were copied from his poem. It appears that music sheets of
the song have been published and sold under the name of the composer, without any
acknowledgment in favor of Jose. Jose wants to know what his rights are and whether he can
secure an injunction against the composer and/or the publisher, perhaps with damages. How will
you advise him? Explain.

ANSWER:

The poem in this case was used to make a song and is considered as a derivative work.
Section173.2 of the Intellectual Property Code provides that “..That such new work shall not affect
the force of any subsisting copyright upon the original works employed or any part thereof, or be
construed to imply any right to such use of the original works, or to secure or extend copyright in
such original works. (Sec. 8, P.D. 49; Art. 10, TRIPS)”.

In this case, Section 177 and 193 of the Intellectual Property Code, the rights of an author
consisting of both economic and moral rights should be applied. Jose has the right under Section
177, to carry out, authorize the dramatization, translation, adaptation, abridgment, arrangement
or other transformation of the work. As to his moral rights under Section 193, the author can
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. He also has the right 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.

Jose can file for copyright infringement under Section 261 of the Intellectual Property Code
and filed for injunctive relief. The law states that, any person infringing a right protected under this
law shall be liable: (a) To an injunction restraining such infringement. The court may also order
the defendant to desist from an infringement, among others, to prevent the entry into the channels
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of commerce of imported goods that involve an infringement, immediately after customs clearance
of such goods.

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Topic: Copyright; Rights of Authors (1995)

What intellectual property rights are protected by the copyright?

ANSWER:

Section 177 of the Intellectual Property Code provides that 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 an audiovisual or cinematographic work, a work embodied
in a sound recording, a computer program, a compilation of data and other materials or a
musical work in graphic form, 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.

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Topic: Copyright; Right of Authors (2008)

Eloise, an accomplished writer, was hired by Petong to write a bimonthly newspaper column for
Diario de Manila, a newly-established newspaper of which Petong was the editor-in-chief. Eloise
was to be paid P1,000 for each column that was published. In the course of two months, Eloise
submitted three columns which, after some slight editing, were printed in the newspaper.
However, Diario de Manila proved unprofitable and closed only after two months. Due to the
minimal amounts involved, Eloise chose not to pursue any claim for payment from the newspaper,
which was owned by New Media Enterprises.

Three years later, Eloise was planning to publish an anthology of her works, and wanted to include
the three columns that appeared in the Diario de Manila in her anthology. She asks for your legal
advice:

1. Does Eloise have to secure authorization from New Media Enterprises to be able to
publish her Diario de Manila columns in her own anthology? Explain fully.

2. Assume that New Media Enterprises plans to publish Eloise's columns in its own anthology
entitled, "The Best of Diaro de Manila." Eloise wants to prevent the publication of her
columns in that anthology since she was never paid by the newspaper. Name one
irrefutable legal arguments Eloise could cite to enjoin New Media Enterprises from
including her columns in its anthology.

ANSWER:

1. Eloise need not secure authorization from New Media Enterprises.

Under Section 178 (a) of the Intellectual Property Code, in the case of original literary and
artistic works, copyright shall belong to the author of the work. Furthermore, Section 180.3 also
provides that “the submission of a literary, photographic or artistic work to a newspaper, magazine
or periodical for publication shall constitute only a license to make a single publication unless a
greater right is expressly granted.”

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In this case, the submission of the three articles only grants the newspaper the right to
publish it only once.

2. As an irrefutable legal argument, Eloise can invoke her moral rights in her works.

Section 190 of the Intellectual Property Code provides for the moral rights of authors which
include the right to make any alterations of his work prior to, or to withhold it from publication.

In this case, Eloise as the author of the articles can prevent the publication of her columns
in the said anthology.

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Topic: Copyright; Moral Rights (2008)

In 1999, Mocha Warm, an American musician, had a hit rap single called Warm Warm Honey
which he himself composed and performed. The single was produced by a California record
company, Galactic Records. Many noticed that some passages from Warm Warm Honey
sounded eerily similar to parts of Under Hassle, a 1978 hit song by the British rock band Majesty.
A copyright infringement suit was filed in the United States against Mocha Warm by Majesty. It
was later settled out of court, with Majesty receiving attribution as co-author of Warm Warm Honey
as well as a share in the royalties. By 2002, Mocha Warm was nearing bankruptcy and he sold
his economic rights over Warm Warm Honey to Galactic Records for $10,000 In 2008, Planet
Films a Filipino movie producing company, commissioned DJ Chef Jean, a Filipino musician, to
produce an original re-mix of Warm Warm Honey for use in one of its latest films, Astig!. DJ Chef
Jean remixed Warm Warm Honey with salsa beat and interspersed as well a recital of a poetic
stanza by John Blake, a 17th century Scottish poet. DJ Chef Jean died shortly after submitting
the remixed Warm Warm Honey to Planet Films. Prior to the release of Astig!, Mocha Warm learns
of the remixed Warm Warm Honey and demands that he be publicity identified as the author of
the remixed song in all the CD covers and publicity releases of Planet Films.

1. Who are the parties or entities entitled to be credited as author of the remixed Warm Warm
Honey? Reason out your answer.
2. Who are the particular parties or entities who exercise copyright over the remixed Warm
Warm Honey? Explain.

ANSWER:
1. The parties entitled to be credited as authors of the remixed Warm Warm Honey are
Mocha Warm, Majesty, DJ Chef Jean and John Blake, for the segments that was the product of
their respective intellectual efforts.

a. Mocha Warm should be credited. Section 193 and 193 of the Intellectual Property Code
provides that 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 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. In this case, Mocha Warm has the moral right of attribution as author.

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b. Majesty should also be credited for the same legal reasons as Mocha Warm as he is a
co-author.

c. DJ Chef Jean should also be credited. Section 173.2. of the Intellectual Property Code
provides that “the works referred to in paragraphs (a) and (b) of Subsection 173.1 shall be
protected as new works:” As an author commissioned to produce a derivative work, he enjoys all
the rights of a copyright holder as though it were a new work, without prejudice to any subsisting
copyright over the original works. Furthermore, Section 178.4 provides that “In the case of a work
commissioned by a person other than an employer of the author and who pays for it and the work
is made in pursuance of the commission, the person who so commissioned the work shall have
ownership of the work, but the copyright thereto shall remain with the creator, unless there is a
written stipulation to the contrary”. Although he was commissioned by Planet Films for the remix,
the copyright remains with the creator, unless there is a written stipulation to the contrary.

d. John Blake should also be credited but there would be no legal basis for such attribution
because Section 198.1 provides that the moral rights of an author shall last during the lifetime of
the author and for fifty (50) years after his death. In this case, the attribution is but a moral
obligation not founded on a legal right.

2. The parties who exercise copyright or economic rights over the remixed Warm Warm
Honey would be Galactic Records and Planet Films. The parties or entities who exercise copyright
over the remixed Warm Warm Honey are the following:

a. DJ Chef Jean as producer exercises a copyright. Section 173.2. of the Intellectual

Property Code Section 173.2. of the Intellectual Property Code provides that “the works referred
to in paragraphs (a) and (b) of Subsection 173.1 shall be protected as new works.” As author of
the derivate work, DJ Cheff Jean exercises copyright over the work.

b. Planet Films also exercise copyright as it commissioned the remixed work. Section
178.4 of the Intellectual property Code provides that “in the case of a work commissioned by a
person other than an employer of the author and who pays for it and the work is made in
pursuance of the commission, the person who so commissioned the work shall have ownership
of the work, but the copyright thereto shall remain with the creator, unless there is a written
stipulation to the contrary. In this case, it commissioned the work.

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c. Galactic Records, as owner of a subsisting copyright over the original work. Section
180.1 of the Intellectual Property Code provides that the copyright may be assigned in whole or
in part. Within the scope of the assignment, the assignee is entitled to all the rights and remedies
which the assignor had with respect to the copyright. In this case there Galactic Records bought
the economic rights of Mocha Warm therefore it exercises copyright over the original work.

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Topic: Copyright; Rights of Author; Economic and Moral Rights; Term (2011)

Apart from economic rights, the author of a copyright also has moral rights which he may transfer
by way of assignment. The term of these moral rights shall last
A. during the author's lifetime and for 50 years after his death.
B. forever.
C. 50 years from the time the author created his work.
D. during the author's lifetime.

ANSWER:
A. during the author's lifetime and for 50 years after his death.

Section 198 of the Intellectual Property Code provides that the rights of an author to
require that the authorship of the work be attributed to him shall last during the lifetime of the
author and in perpetuity after his death;

On the other hand, the rights to make any alterations of his work prior to, or to withhold it
from the publication, to object to any distortion, mutilation or other modification, or other
derogatory action, and to restrain the use of his name with respect to any work not of his own
creation or in a distorted version of his work shall be coterminous with the economic rights.

Therefore, the correct answer to this question is letter A, as it is provided for under the
law.

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Rules on ownership of copyright

Topic: Copyright; Rules on Ownership of Copyright (1995)

Solid Investment House commissioned Mon Blanco and his son Steve, both noted artists, to paint
a mural for the Main Lobby of the new building of Solid for a contract price of P2M.

a. Who owns the mural? Explain.

b. Who owns the copyright of the mural? Explain.

ANSWER:

a. Solid Investment House owns the mural.

Section 178.4 of the Intellectual Property Code provides that “[i]n the case of a work
commissioned by a person other than an employer of the author and who pays for it and the work
is made in pursuance of the commission, the person who so commissioned the work shall have
ownership of the work, but the copyright thereto shall remain with the creator, unless there is a
written stipulation to the contrary[.]”

Applying the provision in the present case, Solid Investment House was the one who
commissioned the painting of the mural by Mon Blanco and Steve.

Therefore, Solid Investment House owns the mural.

b. The copyright of the mural is jointly owned by Mon Blanco and Steve.

Section 178.4 of the Intellectual Property Code provides that in case of a commissioned
work, the person who commissioned the work shall have ownership of the work, but the copyright
thereto shall remain with the creator, unless there is a written stipulation to the contrary.

Since the facts of the present case are bereft of any showing that there is any stipulation
as to the ownership of the copyright of the mural, the provisions of Section 178.4 of the IPC shall
apply and therefore, eventhough Solid Investment House owns the mural, Mon Blanco and Steve
jointly owns the copyright thereof.

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Topic: Commissioned Work (2004)

BR and CT are noted artist whose painting are highly prized by the collectors. Dr. DL
commissioned them to paint a mural at the main lobby of his new hospital for children. Both agreed
to collaborate on the project for a total fee of two million pesos to be equally divided between
them. It was also agreed that Dr. DL had provide all materials for the painting and pay for the
wages f the technicians and labourers needed for the work on the project.

Assume that the project is completed and both BR and CT are fully paid the amount of 2M as
artist fee by DL. Under the law on intellectual property, who will own the mural? Who will own the
copyright in the mural? Why? Explain.

ANSWER:

BR and CT will own the copyright while Dr. L will own the work.

Under the intellectual Property Code, in the case of work commissioned by a person other
than the employer of the author and who pays for it and the work is made in pursuance of such
commission, the person who commissioned shall have the ownership of the work but the copyright
thereto shall remain with the creator.

In this case, since Dr. L is the one who commissioned the work, he shall have the
ownership over the mural. Moreover, as the creator, BR and Ct shall have the corresponding
rights over the copyrights in the mural.

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Topic: Copyright; Ownership of Copyright (2011)

T, an associate attorney in XYZ Law Office, wrote a newspaper publisher a letter disputing a
columnist’s claim about an incident in the attorney’s family. T used the law firm’s letterhead and
its computer in preparing the letter. T also requested the firm’s messenger to deliver the letter to
the publisher. Who owns the copyright to the letter?
A. T, since he is the original creator of the contents of the letter.
B. Both T and the publisher, one wrote the letter to the other who has possession of it.
C. The law office since T was an employee and he wrote it on the firm’s letterhead.
D. The publisher to whom the letter was sent

ANSWER:
A. T, since he is the original creator of the contents of the letter.

Section 178 of the IPC provides for the rules on Copyright Ownership. It stated that subject
to the provisions of this section, in the case of original literary and artistic work, copyright shall
belong to the author of the work. An author is defined as a natural person who has created the
work.

In this case, T was the one who wrote the letter intended for the newspaper publisher,
hence she is the one who is pertained to be the author. While it is true that she is an associate
lawyer of XYZ Law Office and uses the law firm’s letterhead for her letter, it does not show that
the work is a result of the performance of her regularly-assigned duties.

Therefore, T, being the author of the letter, is the rightful owner of the subject letter.

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Limitations on copyright

Fair use

Topic: Fair Use Policy (1998)

May a person have photocopies of some pages of the book of Professor Rosario made without
violating the copyright law?

ANSWER:

Yes, a person may have photocopies of some pages of the book of Professor Rosario
made without violating the copyright law.

Under Sec. 185.1 of the Intellectual Property Code, the fair use of a copyrighted work for
criticism, comment, news reporting, teaching including multiple copies for classroom use,
scholarship, research, and similar purposes is not an infringement of copyright. In determining
whether the use made of a work in any particular case is fair use, the factors to be considered
shall include: (a) The purpose and character of the use, including whether such use is of a
commercial nature or is for non-profit educational purposes; (b) The nature of the copyrighted
work; (c) The amount and substantiality of the portion used in relation to the copyrighted work as
a whole; and (d) The effect of the use upon the potential market for or value of the copyrighted
work.

In this case, the photocopies of the book of Professor Rosario does not infringe his
copyrighted work provided that the person uses the same for teaching, scholarship, research and
similar purposes after considering the factors provided under Sec. 185.1.

Thus, a person may have photocopies of some pages of the book of Professor Rosario
made without violating the copyright law, provided it complies with the fair use policy.

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Topic: Fair Use Doctrine (2012)

The Fair Use Doctrine allows others to utilize copyrighted works under certain conditions. The
factors to consider whether use is fair or not would be the purpose and character of the use,
nature of the copyrighted work, amount and substantiality of the portions used, and what else?

a. effect of the use upon the creator of the work.

b. effect of the use upon the potential market of the work.
c. effect of the use upon the public in general.
d. effect of the use upon the class in which the creator belongs.

ANSWER:

Determining fair use requires application of the four-factor test. Section 185 of the
Intellectual Property Code lists four (4) factors to determine if there was fair use of a copyrighted
work:

a. The purpose and character of the use, including whether such use is of a commercial
nature or is for non-profit educational purposes;
b. The nature of the copyrighted work;
c. The amount and substantiality of the portion used in relation to the copyrighted work as a
whole; and
d. The effect of the use upon the potential market for or value of the copyrighted work. (ABS-
CBN Corporation v. Gozon, G.R. No. 195956, March 11, 2015,)

Hence, B is the proper answer

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Topic: Copyright; Limitations on Copyright; Fair Use (2017)

Virtucio was a composer of Ilocano songs who has been quite popular in the Ilocos 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 class with 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.

ANSWER:

No, Pascuala did not infringe Virtucio’s copyright.

Section 185 of the Intellectual Property Code provides that the fair use of a copyrighted
work for criticism, comment, news reporting, teaching including multiple copies for classroom use,
scholarship, research, and similar purposes is not an infringement of copyright.

Here, Pascuala only copied the CD and used the same for classroom use, and not to profit
therefrom.

Hence, there is no infringement of Virtucio’s copyright since the copy was used for
classroom purposes.

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Topic: Doctrine of Fair Use (2019)

KLM Printers, Inc. operated a small outlet located at the ground floor of a university building in
Quezon City. It possessed soft copies of certain textbooks on file, and would print "book-alikes"
of these textbooks (or in other words, reproduced the entire textbooks) upon order and for a fee.
It would even display samples of such "book-alikes" in its stall for sale to the public.

Upon learning of KLM Printers, Inc.'s activities, the authors of the textbooks filed a suit against it
for copyright infringement. In its defense, KLM Printers, Inc. invoked the doctrine of fair use,
contending that the "book-alikes" are being used for educational purposes by those who avail of
them.

a) What is the doctrine of fair use?

b) Is KLM Printers, Inc.'s invocation of the doctrine of fair use proper in this case? Explain.

ANSWER:

1) In the case of ABS-CBN vs. Gozon (G.R. No. 195956, March 11, 2015), the court defined
fair use as “a privilege to use the copyrighted material in a reasonable manner without the
consent of the copyright owner or as copying the theme or ideas rather than their
expression.” Fair use is an exception to the copyright owner’s monopoly of the use of the
work to avoid stifling “the very creativity which that law is designed to foster.”

2) No.

In the case of ABS-CBN vs Gozon (G.R. No. 195956, March 11, 2015), the court held that
determining fair use requires the application of the four-factor test:

a. the purpose and character of the use, including whether such use is of a commercial
nature or is for non-profit educational purposes;
b. the nature of the copyrighted work;
c. the amount and substantiality of the portion used in relation to the copyrighted work as a
whole; and
d. the effect of the use upon the potential market for or value of the copyrighted work.

In this case, KLM Printers is selling these “book-alikes” upon order and for a fee. First, the
purpose and character is more of a commercial nature rather than for non-profit educational

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purposes. Second, the “book-alikes” are an exact reproduction of the entire textbooks. Lastly, the
sale of the “book-alikes” will surely affect the market value of the copyrighted textbooks.

Therefore, the doctrine of fair use is not applicable.

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Copyright infringement; how is it committed

Topic: Copyright Infringement (1977)

X wrote and published a story exactly similar to an unpublished copyrighted story of A. A sues X
for infringement of Copyright. It was, however, conclusively proven that X was not aware that the
story of A was protected by copyright. Is X liable? Answer with reasons.

ANSWER:

X is still liable.

As defined under the Intellectual Property Code, infringement of a copyright consists in

the doing by any person, without the consent of owner of the copyright, of anything the sole right
to which is conferred by the statute on the owner of the copyright.

Evidently, the animus furandi, or intention to pirate, is not an essential element of

infringement; and ignorance of the copyright, or honest intention, affords no defense to an action
for infringement. The author’s property is absolute when perfected by copyright, and the intent of
purpose of an invasion is nowhere made an excuse for it.

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Topic: Copyright Infringement (1988)

Miss Solis wrote a script for Regal Films for the movie “One Day—Isang Araw”. Ms. Badiday,
while watching the movie in Ermita Theatre, discovered that the story of the movie is exactly
similar to an unpublished copyrighted autobiography which she wrote. Ms. Badiday sued Miss
Solis for infringement of copyright. It was however, conclusively proven that Miss Solis was not
aware that the autobiography of Ms. Badiday was protected by a copyright.

Is Miss Solis liable? State briefly your reasons.

ANSWER:

Yes, Miss Solis is liable.

Intellectual creation is one of the modes of acquiring ownership under the Civil Code.
Specifically under Article 721, “the author, with regard to his literary, dramatic, historical, legal,
philosophical, scientific or other work” acquires ownership by this mode.

In this case, Miss Solis’ defense that she “was not aware” that the autobiography of Ms.
Badiday was protected by a copyright will not stand. As stated in Sec. 172.1 of the Intellectual
Property Code, rights over literary and artistic works which are original intellectual creations in the
literary and artistic domain are protected from the moment of creation (Kho vs. CA, G.R. No.
115758, March 19, 2002). It is immaterial whether she was unaware that what she had copied
was copyrighted material. Furthermore, animus furandi or intention to pirate is not an element of
infringement, hence, an honest intention is not a defense against an action for infringement.

Therefore, Miss Solis is liable.

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Topic: Copyright infringement (1989)

X copyrighted a scientific research paper consisting of 50 pages dealing with the Tasadays. Y
wrote a 100-page review of X’s paper criticizing X’s findings and dismissing X’s story as a hoax.
Y’s review literally reproduced 90% of X’s paper. Can X sue for infringement of his copyright?

ANSWER:

It depends.

Section 185.1 of the Intellectual Property Code provides that the fair use of a copyrighted
work for criticism x x x is not an infringement of copyrighted work. x x x In determining
whether the use made of a work in any particular case is fair use, the factors to be considered
shall include:

(c) the amount and substantiality of the portion used in relation to the copyrighted work as
a whole

Furthermore, in the case of Habana vs. Robles (G.R. No. 131522. July 19, 1999), the
Supreme Court held that in determining the question of infringement, the amount of matter copied
from the copyrighted work is an important consideration. To constitute infringement, it is not
necessary that the whole or even a large portion of the work shall have been copied. If so much
is taken that the value of the original is sensibly diminished, or the labors of the original author
are substantially and to an injurious extent appropriated by another, that is sufficient in point of
law to constitute piracy.

In relation to this, Section 184 of the Intellectual Property Code also provides that the
making of quotations from a published work if they are compatible with fair use and only to the
extent justified for the purpose x x x shall not constitute infringement provided that the source
and the name of the author, if appearing on the work, are mentioned.

Viewed from the foregoing, it is not necessary that the large portion i.e. 90% of X’s work
has been copied to constitute infringement. In this case, the test is whether or not the value X’s
scientific research paper is sensibly diminished, or his labors are substantially and to an injurious
extent appropriated by Y and whether or not Y indicated in his work that X was the author of the
reproductions.

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If Y complied with the requisites provided under the law, then he may not be sued for
infringement.

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Topic: Copyright Infringement (1994)

The Victoria Hotel chain reproduces videotapes, distributes the copies thereof to its hotels and
makes them available to hotel guests for viewing in the hotel guest rooms. It charges a separate
nominal fee for the use of the videotape player.

1) Can the Victoria Hotel be enjoined for infringing copyrights and held liable for damages?

2) Would it make any difference if Victoria Hotel does not charge any fee for the use of the
videotape?

ANSWER:

1) Yes, Victoria Hotel can be enjoined for infringing copyrights and held liable for damages.

Under the Law on Intellectual Property, audiovisual works and cinematographic works,
and works produced by a process analogous to cinematography or any process for making
audiovisual recordings are copyrightable objects protected by the law. The persons who own the
copyright over them are the following: the producer, for purposes of exhibition; for all other
purposes, the producer, the author of the scenario, the composer, the film director, the
photographic, direction, and the author of the work.

In this case, Victoria Hotel has no right to use, reproduce, and distribute said video tapes
in its hotel business as these acts were done without the consent of the creator or owner of the
copyright.

Therefore, Victoria Hotel can be enjoined and be held liable by the rightful owner/s of the
works.

2) No, it would not make any difference if Victoria Hotel does not charge any fee for its
use.

When there is piracy or substantial reproduction, that is, if so much is taken that the value
of the original work is substantially diminished or the labors of the original author are substantially
and to an injurious extent appropriated by another, there is infringement. (Habana vs. Robles,
G.R. No. 131522, July 19, 1999).

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In this case, the hotel’s reproduction and distribution of the works substantially diminishes
the value and labors of the original author/s. Moreover, the use of the videotapes is for business
and not merely for home consumption. (Filipino Society of Composers, Authors Publishers
vs. Tan, G.R. No. L-36402, March 16, 1987)

Therefore, Victoria Hotel can still be enjoined and be held liable by the rightful owner/s of
the works.

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Topic: Copyright Infringement (1998)

Juan Xavier wrote and published a story similar to an unpublished copyrighted story of Manoling
Santiago. It was, however, conclusively proven that Juan Xavier was not aware that the story of
Manoling Santiago was protected by copyright. Manoling Santiago sued Juan Xavier for
infringement of copyright. Is Juan Xavier liable?

ANSWER:

Yes, Juan Xavier is liable.

Secs. 172.1 and 172.2 of the Intellectual Property Code provides that literary and artistic
works are original intellectual creations in the literary and artistic domain protected from the
moment of their creation and includes, among others, books, pamphlets, articles and other
writings. Works that 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. In relation thereto, Secs. 177
and 177.1 of the same Code provides that, subject to the provisions of Limitations on Copyright,
copyright or economic rights shall consist of the exclusive right to carry out, authorize or prevent
the reproduction of the work or substantial portion of the work. Lastly, under Sec. 216(a), a person
infringes a right protected under this Act when one directly commits an infringement.

In this case, the story of Manoling Santiago is protected from the moment and by the sole
fact of its creation. Consequently, Manoling Santiago has the exclusive right to carry out, authorize
or prevent his story’s reproduction. The writing and publishing of Manoling Santiago’s story by
Juan Xavier is an act in violation of the former’s copyright. Accordingly, the absence of intent to
infringe on the part of Juan Xavier is irrelevant because the very act of infringement already makes
a person liable therefrom.

Thus, Juan Xavier is liable because he directly committed an act of infringement.

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Topic: Infringement of Copyright (2006)

In a written legal opinion for a client on the difference between apprenticeship and
learnership, Liza quoted without permission a labor law expert's comment appearing in his book
entitled "Annotations on the Labor Code."

Can the labor law expert hold Liza liable for infringement of copyright for quoting a portion
of his book without his permission?

ANSWER:

No, the Labor Law expert cannot hold Liza liable for infringement of copyright.

Section 184.1(k) of the Intellectual Property Code provides that any use made of a work
for the purpose of any judicial proceedings or for the giving of professional advice by a legal
practitioner shall not constitute infringement of copyright.

Here, quoting a labor law expert’s comment for the purpose of giving professional advice
to a client does not constitute copyright infringement under the Intellectual Property Code.

Hence, the Labor Law expert cannot hold Liza liable for infringement of copyright.

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Remedies
Topic: Copyright Infringement; Damages (1980)

“Q”, a well-known artist, designs for “P” a personalized Christmas card with an artistic motif
depicting a Philippine rural Christmas scene with a woman and a child, a nipa hut adorned with
star-shaped lanterns and a man astride a carabao beside a tree. Underneath the design appears
the name “Q”. “R” orders from “Q” 500 of such Christmas cards and distributes them to his friends.

A year later, “X” copies and prints the same design for his album of Christmas cards intended for
sale to the general public. Several customers order Christmas cards from “X” with the same
design as that printed for “R”.

“Q” files a suit against “X” claiming damages under the Intellectual Property Code* despite his
failure to copyright the work mentioned above. He further claims that the printing or publication of
the design he prepared for “R” was special and limited.

Decide the case.

(*In the original problem: Copyright Law)

ANSWER:

“Q” may successfully sue for damages under the Intellectual Property Code (IPC).

Sec. 172.1 of the Intellectual Property Code (IPC) provides literary and artistic works are
original intellectual creations in the literary and artistic domain protected from the moment of their
creation. Additionally, payment for damages is one of the remedies provided for in Sec. 216.1(b)
According to the said provision, any person infringing a right protected under this law shall be
liable to pay to the copyright proprietor or his assigns or heirs such actual damages, including
legal costs and other expenses, as he may have incurred due to the infringement as well as the
profits the infringer may have made due to such infringement, and in proving profits the plaintiff
shall be required to prove sales only and the defendant shall be required to prove every element
of cost which he claims, or, in lieu of actual damages and profits, such damages which to the
court shall appear to be just and shall not be regarded as penalty.

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In the present case, upon the creation of the Christmas cards by “Q,” his rights over
copyright of the Christmas card were conferred to him. There is no requirement for copyrights to
be registered in order to be protected. By the unauthorized printing and publication that “X”
committed, he is liable to “Q” for damages.

In view of the foregoing, “Q” may successfully sue “X” under the IPC for the printing or
publication.

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Topic: Copyright Infringement; Damages and Injunction (1983)

Jose Santos has written many poems, some of which have been published in Panorama
Magazine but never registered with the Copyright Office. Among his published works was the
poem entitled “In a Rose Garden.” About a year from its publication, Jose was surprised to hear
over the radio a song whose lyrics were copied from his poem. It appears that music sheets of
the song have been published and sold under the name of the composer, without any
acknowledgment in favor of Jose.

Jose wants to know what his rights are and whether he can secure an injunction against the
composer and/or the publisher, perhaps with damages. How will you advise him? Explain.

ANSWER:

I would advise Mr. Santos that he has a right to file injunction proceedings under Sec 216
(a) of the Intellectual Property Code to restrain the composer and/or his publisher from further
committing any act of infringement of his copyright.

Also under the aforesaid law, works, are protected by the sole fact of their creation,
irrespective of their mode or form expression, as well as of their content, quality and purpose.
Registration and deposit of the work are no longer necessary for its acquisition.

In this case, the moment Santos wrote his poem, he acquired the right to restrain any
infringement on his copyright, as well as the right to have the infringing copies and devices
impounded. As to damages, Santos may be awarded actual damages, including legal costs and
other expenses, as he may have incurred due to the infringement as well as the profits the
infringer may have made due to such infringement, and in proving profits the plaintiff shall be
required to prove sales only and the defendant shall be required to prove every element of cost
which he claims, or, in lieu of actual damages and profits, such damages which to the court shall
appear.

Hence, Santos may avail an injunction, his rights to have the infringing copies impounded
and actual damages against the composer and/or the publisher.

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Topic: Copyright Infringement; Injunction and Damages (2007)

Diana and Piolo are famous personalities in showbusiness who kept their love affair secret. They
use a special instant messaging service which allows them to see one another's typing on their
own screen as each letter key is pressed. When Greg, the controller of the service facility, found
out their identities, he kept a copy of all the messages Diana and Piolo sent each other and
published them. Is Greg liable for copyright infringement? Reason briefly.

ANSWER:

Yes, Greg is liable for copyright infringement.

As enumerated in Sec. 172, IP Code, letters are protected under the copyrights law.
Furthermore, under Sec. 178.6, IP Code in relation to Article 723 of the Civil Code, copyright over
letters shall belong to the writer and may not be published or disseminated without the consent of
the writer or his heirs. Ownership of the letters and other private communications in writing belong
to the person to whom they are addressed and delivered.

In the case at hand, the publication of Greg of the correspondence between Diana and
Paolo without first securing the consent of the latter who are considered as owners of the text
message and thus constitutes copyright infringement of copyright.

Thus, Greg is liable for copyright infringement.

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Topic: Copyright Infringement; Injunction (2009)

After disposing of his last opponent in only two rounds in Las Vegas, the renowned Filipino boxer
Sonny Bachao arrived at the Ninoy Aquino International Airport met by thousands of hero-
worshipping fans and hundreds of media photographers. The following day, a colored photograph
of Sonny wearing a black polo shirt embroidered with the 2-inch Lacoste crocodile logo appeared
on the front page of every Philippine newspaper.

Lacoste International, the French firm that manufactures Lacoste apparel and owns the Lacoste
trademark, decided to cash in on the universal popularity of the boxing icon. It reprinted the
photographs, with the permission of the newspaper publishers, and went on a world-wide blitz of
print commercials in which Sonny is shown wearing a Lacoste shirt alongside the phrase "Sonny
Bachao just loves Lacoste."

When Sonny sees the Lacoste advertisements, he hires you as lawyer and asks you to sue
Lacoste International before a Philippine court:

a. For copyright infringement because of the unauthorized use of the published photographs;
and
b. For injunction in order to stop Lacoste International from featuring him in their
commercials.

Will these actions prosper? Explain.

ANSWER:

a. The action for copyright infringement will not prosper.

According to Sec. 178.3. of the IPC, in the case of work created by an author during and
in the course of his employment, the copyright shall belong to the employer, if the work is the
result of the performance of his regularly-assigned duties, unless there is an agreement, express
or implied, to the contrary.

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In this case, the copyright to the photographs belong to the newspapers which published
them inasmuch as the photographs were the result of the performance of the regular duties of the
photographers.

Moreover, copyright or economic rights enumerated in Sec. 177 of the IPC shall consist
of the exclusive right to carry out, authorize or prevent the reproduction of the work or substantial
portion of the work, among others. In this case, the newspaper publishers authorized the
reproduction of the photographs.

Thus, Sonny Bachao cannot sue for infringement of copyright for the unauthorized use of
the photographs showing him wearing a Lacoste shirt.

b. The action for injunction will prosper.

Sec. 169 (a) states that any person who, on or in connection with any goods or services,
or any container for goods, uses in commerce any word, term, name, symbol, or device, or any
combination thereof, or any false designation of origin, false or misleading description of fact, or
false or misleading representation of fact, which is likely to cause confusion, or to cause mistake,
or to deceive as to the affiliation, connection, or association of such person with another person,
or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities
by another person. In relation to this, Sec. 170 provides that the penalties prescribed therein are
independent of the civil and administrative sanctions imposed by law.

In this case, the featuring done by Lacoste in its advertisement constitutes false or
misleading representation of fact, which is likely to cause confusion, or to cause mistake, or to
deceive as to the affiliation, connection, or association of Sonny Bachao with Lacoste
International. Sonny Bachao may file a civil and administrative sanction to enforce his claim, and
this is independent of the penalties prescribed under Sec. 170.

Hence, the injunction suit that Sonny Bachao filed to stop Lacoste International from
featuring him in its advertisements will prosper. This is a violation of subsection 123, 4(c) of the
IPC and Art.169 in relation to Art.170 of the IPC.

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YEAR ASSIGNMENTS PER STUDENT

1. Almazar, Victor Emmanuel-2019; 1975

2. Angara, Patrick Alexis – 2018; 1976
3. Aquino, Jenica – 2017; 1976
4. Bongabong, Joshua – 2016; 1977
5. Camarao, Aeron -2014; 1977
6. Capuchino, Mafel – 2015; 1978
7. Clemente, Jellyn -2013; 1978
8. Crisostomo, Camille – 2012;1979
9. De Leon, Jea Belinda – 2011;1979
10. Dela Cruz, Alyssa – 2010; 1980
11. Dolor, Xylene – 2009;1980
12. Gamo, Norenz Jacob – 2008; 1981
13. Gomez, Donna Kris – 2007; 1981
14. Guerrero, Anna Charmaine – 2006; 1982
15. Hornilla, Ariadne Kirsten – 2005;1982
16. Icaro, Frederick – 2004;1983
17. Jimenez, Louise Ysabel – 2003; 1983
18. Mallari, Hazel Marie – 2002; 1984
19. Mamaril, Mariela Mae -2001; 1984
20. Mendiola, Glenn Mikko – 2000; 1985
21. Oliva, Pauline Antonette – 1999; 1985
22. Pimentel, Abbeylyn Erica – 1998; 1986
23. Roces, Suzanne – 1997; 1986
24. Salor, Jermile -1996; 1987
25. Senoran, Artlyn Gem – 1995; 1987
26. Tamaray, Paulinet Angela– 1994; 1988
27. Torres, Ronald Derick – 1993; 1988
28. Turrecha, Zennia – 1992: 1989
29. Villanueva, Christine Joy – 1991; 1990
30. Samaniego, Emil- 1991;1975

THE END

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