2011 Ip Code Outline - Als Commercial Law Review

7/27/2019 2011 Ip Code Outline - Als Commercial Law Review

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f. Sec. 22.6: Anything which is contrary to public order or morality.

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B. CONDITIONSOF PROTECTION

1. Substantive Requirements

a. Sec. 23: Novelty An invention shall not be considered new if it formspart of a prior art.

i. Sec. 24: Prior Art Prior art shall consist of:

(a) Sec. 24.1: Everything made available to public anywhere in theworld, before filing date or priority date of application claiminginvention; and

(b) Sec. 24.2: Whole contents of application for patent, utilitymodel, or industrial design registration, published in accordancewith IP Code, filed or effective in Philippines, with filing orpriority date earlier than filing or priority date of application:Provided, That application which has validly claimed filing dateof earlier application under Sec. 31, shall be prior art with effectas of filing date of such earlier application: Provided further,That applicant or inventor identified in both applications are notone and same.

ii. Sec. 25.1:Non-Prejudicial Disclosure Disclosure of informationcontained in application during the 12 months preceding filing dateor priority date of application shall not prejudice applicant on groundof lack of novelty if such disclosure was made by:

(a) Inventor;2

(b) Patent office and information was contained (a) in another

application filed by inventor and should not have beendisclosed by the office, or (b) in application filed withoutknowledge or consent of inventor by third party whichobtained information directly or indirectly from inventor; or

(c) Third party which obtained information directly or indirectlyfrom inventor.

b. Sec. 26: Inventive Step Invention involves inventive step if, havingregard to prior art, it is not obvious to person skilled in art at time offiling date or priority date of application claiming invention.

c. Sec. 27: Industrial Applicability Invention that can be produced

and used in any industry shall be industrially applicable.

2. Formal Requirements/Procedure for Application and Grant of Patent

a. Patent Application Secs. 32 to 39

2 Sec. 25.2 provides that, For the purposes of Subsection 25.1, "inventor" also means anyperson who, at the filing date of application, had the right to the patent.

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b. Procedure After Application:

i. Sec. 40: Filing Date Requirements

ii. Sec. 41: According a Filing Date

iii. Sec. 42: Formality Examination

iv. Sec. 43: Classification and Search

c. Publication and Procedure After Application:

i. Sec. 44: Publication of Patent Application

ii. Sec. 45: Confidentiality Before Publication

iii. Sec. 46: Rights Conferred by a Patent Application After Publication

iv. Sec. 47: Observation by Third Parties

v. Sec. 48: Request for Substantive Examination

vi. Sec. 49: Amendment of Application

d. Grant of Patent

i. Sec. 50: Grant of Patent

ii. Sec. 51: Refusal of the Application

iii. Sec. 52: Publication Upon Grant of Patent

iv. Sec. 53: Contents of Patent

e. Requirements/Actions After Grant

i. Sec. 55: Annual Fees

ii. Sec. 56: Surrender of Patentiii. Sec. 57: Correction of Mistakes of the Office

iv. Sec. 58: Correction of Mistake in the Application

v. Sec. 59: Changes in Patents

vi. Sec. 60: Form and Publication of Amendment

C. OWNERSHIP

1. The Inventor Sec. 28. Right to patent belongs to inventor, his heirs, or

assigns.2. Joint Invention Sec. 28: For inventions jointly made by 2 or more

persons right to patent shall belong to them jointly

3. Inventions Made for Hire

a. Sec. 30.1: Person who commissions work shall own patent, unlesscontrary agreement.

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earlier priority, compulsory license may be granted to owner of secondpatent to extent necessary for working of his invention, subject tofollowing:

i. Sec. 97.1: Invention claimed in second patent involves importanttechnical advance of considerable economic significance in relation

to first patent;

ii. Sec. 97.2: Owner of first patent entitled to a cross-license onreasonable terms to use invention claimed in second patent;

iii. Sec. 97.3: Use authorized in respect of first patent shall be non-assignable except with assignment of second patent; and

iv. Sec. 97.4: Terms and conditions of Secs. 95, 96 and 98 to 100.

f. Sec. 98: Form and Contents of Petition

g. Sec. 99: Notice of Hearing

h. Sec. 100: Terms and Conditions of Compulsory License i. Sec. 100.1: Scope and duration of such license limited to purpose

for which it was authorized;

ii. Sec. 100.2: License shall be non-exclusive;

iii. Sec. 100.3: License shall be non-assignable, except with part ofenterprise or business with which invention is being exploited;

iv. Sec. 100.4: Use of subject matter of license devoted predominantlyfor supply of Philippine market: Provided, That limitation shall notapply where grant of license is based on ground that patenteesmanner of exploiting patent is determined by judicial or

administrative process to be anti-competitive.

v. Sec. 100.5: License may be terminated upon proper showing thatcircumstances which led to its grant have ceased to exist and areunlikely to recur: Provided, That adequate protection shall beafforded to legitimate interest of licensee; and

vi. Sec. 100.6: Patentee shall be paid adequate remuneration takinginto account the economic value of grant or authorization, exceptthat in cases where license was granted to remedy practice whichwas determined after judicial or administrative process, to be anti-competitive, need to correct the anti-competitive practice may be

taken into account in fixing the amount of remuneration.

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i. Reliefs Granted

i. Damages

(a) Sec. 76.3: If damages are inadequate or cannot be readilyascertained with reasonable certainty, court may award by way

of damages sum equivalent to reasonable royalty.(b) Sec. 76.4: Court may, according to circumstances of case,

award damages in sum above amount found as actual damagessustained: Provided, That award does not exceed 3 timesamount of such actual damages.

(c) Sec. 80:Damages cannot be recovered for acts of infringementcommitted before infringer had known; or had reasonablegrounds to know of patent. It is presumed that infringer hadknown of patent if on patented product, or on container orpackage in which article is supplied to public, or on advertisingmaterial relating to patented product or process, are placedwords "Philippine Patent"with number of patent.

ii. Injunction Sec. 76.2

iii. Destruction of Infringing Materials Sec. 76.5: Court may, in itsdiscretion, order that infringing goods, materials and implementspredominantly used in infringement be disposed of outsidechannels of commerce or destroyed, without compensation.

iv. Patent Found Invalid May be Cancelled Sec. 82: In action forinfringement, if court shall find patent or any claim to be invalid, itshall cancel the same, and Director of Legal Affairs upon receipt of

final judgment of cancellation by court, shall record that fact inregister of IPO and publish notice to that effect in IPO Gazette.

j. Prescription Sec. 79: No damages can be recovered for acts ofinfringement committed more than 4 years before institution of actionfor infringement.

2. Sec. 84 Criminal Action for Repetition of Infringement: Ifinfringement is repeated by infringer or by anyone in connivance with himafter finality of judgment of court against infringer, offenders shall, withoutprejudice to institution of civil action for damages, be criminally liabletherefor and, upon conviction, shall suffer imprisonment for period of notless than 6 months but not more than 3 years and/or fine of not less thanP100,000 but not more than P300,000, at discretion of court. Criminalaction herein provided shall prescribe in 3 years from date of commissionof crime.

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3. Sec. 61 Cancellation of Patents

a. Grounds Sec. 61.1:6 Any interested person may, upon payment ofrequired fee, petition to cancel patent or any claim thereof, or parts ofthe claim, on any of following grounds:

i. What is claimed as invention is not new or patentable;ii. Patent does not disclose invention in manner sufficiently clear and

complete for it to be carried out by any person skilled in the art; or

iii. Patent is contrary to public order or morality.

b. Procedure:

i. Sec. 62. Requirement of the Petition.

ii. Sec. 63. Notice of Hearing.

iii. Sec. 64. Committee of Three.

iv. Sec. 65. Cancellation of the Patent.

v. Sec. 66. Effect of Cancellation of Patent or Claim.

4. Remedies of Person with Right to Patent

a. Sec. 67.1:7 If a person referred to in Sec. 29 other than applicant, isdeclared by final court order or decision as having right to patent, suchperson may, within 3 months after decision has become final:

i. Prosecute application as his own application in place of applicant;

ii. File new patent application in respect of same invention;

iii. Request that application be refused; or

iv. Seek cancellation of patent, if one has already been issued.

b. Sec. 68: If person, who was deprived of patent without his consent orthrough fraud is declared by final court order or decision to be true andactual inventor, court shall order for his substitution as patentee, or atoption of true inventor, cancel patent, and award actual and otherdamages in his favor if warranted by circumstances.

c. Sec. 70: Actions indicated in Secs. 67 and 68 shall be filed within 1year from date of publication made in accordance with Secs. 44 and51, respectively.

d. Sec. 69: Court shall furnish IPO a copy of order or decision referred toin Secs. 67 and 68, which shall be published in IPO Gazette within 3months from date such order or decision became final and executory,and shall be recorded in register of IPO.

6 Sec. 61.2 provides that, Where the grounds for cancellation relate to some of the claims orparts of the claim, cancellation may be effected to such extent only.

7 Sec. 67.2 provides that, The provisions of Sec. 38.2 shall apply mutatis mutandis to a newapplication filed under Sec. 67.1(b).

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II. UTILITY MODELS

A. APPLICABILITYOF PROVISIONS RELATINGTO PATENTS

1. Sec 108.1: Subject to Sec. 109, provisions governing patents shall apply,mutatis mutandis, to registration of utility models.

2. Sec. 108.2: Where right to patent conflicts with right to utility modelregistration in case referred to in Sec. 29, said provision shall apply as ifword patent were replaced by words "patent or utility model registration."

B. SUBJECT MATTEROF PROTECTION

1. Sec. 109.1(a): An invention qualifies for registration as a utility model if it

is: (a) new; and (b) industrially applicable.

C. CONDITIONSOF PROTECTION

1. Substantive Requirements Sec. 109.1(b): Sec. 21, "PatentableInventions", shall apply except reference to inventive step as condition ofprotection.

2. Formal Requirements Sec. 109.2: Secs. 43 to 49 shall not apply incase of applications for registration of utility model.

D. DURATIONOF PROTECTION

1. Sec. 109.3: Utility model registration shall expire, without any possibility ofrenewal, at end of 7th year after date of filing of application.

E. CANCELLATIONOF REGISTRATION

1. Sec. 109.4: In proceedings under Secs. 61 to 64, utility model registrationshall be canceled on following grounds:

a. Claimed invention does not qualify for registration as utility model anddoes not meet requirements of registrability, in particular having regard

to Secs. 109.1 and Ses. 22, 23, 24 and 27;b. Description and claims do not comply with prescribed requirements;

c. Any drawing which is necessary for understanding of invention has notbeen furnished;

d. Owner of utility model registration is not inventor or his successor intitle.

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2. Sec. 119.3: Following provisions relating to patents shall apply mutatismutandis to layout-design of integrated circuits registration:

a. Sec. 28 Right to a Patent;

b. Sec. 29 First to File Rule;

c. Sec. 30 Inventions Created Pursuant to a Commission;

d. Sec. 33 Appointment of Agent or Representative;

e. Secs. 56 to 60 Surrender, Correction of and Changes in Patent;

f. Chapter VII Remedies of a Person with a Right to Patent;

g. Chapter VIII Rights of Patentees and Infringement of Patents;Provided, That layout-design rights and limitation of layout-designrights provided hereunder shall govern:

h. Chapter X - Compulsory Licensing; and

i. Chapter XI Assignment and Transmission of Rights

B. SUBJECT MATTEROF PROTECTION

1. Sec. 112(1): Industrial Design is any composition of lines or colors orany three-dimensional form, whether or not associated with lines or colors:Provided, That such composition or form gives a special appearance toand can serve as pattern for an industrial product or handicraft;

2. Sec. 112(2): Integrated Circuitmeans a product, in its final form, or anintermediate form, in which the elements, at least one of which is an activeelement and some or all of the interconnections are integrally formed in

and/or on a piece of material, and which is intended to perform anelectronic function; and

3. Sec. 112(3): Layout-Designis synonymous with 'Topography'and meansthe three-dimensional disposition, however expressed, of the elements, atleast one of which is an active element, and of some or all of theinterconnections of an integrated circuit, or such a three-dimensionaldisposition prepared for an integrated circuit intended for manufacture.

4. What is Not Protected Sec. 113.2: Industrial designs dictatedessentially by technical or functional considerations to obtain technicalresult or those contrary to public order, health or morals shall not be

protected.

C. CONDITIONSOF PROTECTION

1. Substantive Requirements Sec. 113.1: Only industrial designs thatare: (a) new; or (b) ornamental shall be protected under IP Code.

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c. Act is performed in respect of registered lay-out-design, or in respect ofintegrated circuit in which such layout-design is incorporated, that hasbeen put on market by or with consent of right holder;

d. In respect of integrated circuit where person performing or orderingsuch an act did not know and had no reasonable ground to know when

acquiring integrated circuit or the article incorporating such integratedcircuit, that it incorporated an unlawfully reproduced layout-design:Provided, however, That after time that such person has receivedsufficient notice that layout-design was unlawfully reproduced, thatperson may perform any of said acts only with respect to stock onhand or ordered before such time and shall be liable to pay to rightholder a sum equivalent to at least 5% of net sales or such otherreasonable royalty as would be payable under freely negotiated licensein respect of such layout-design; or

e. Act is performed in respect of identical layout-design which is originaland has been created independently by third party.

3. Sec. 119.2: If essential elements of industrial design which is subject ofapplication have been obtained from creation of another person withouthis consent, protection under this Chapter cannot be invoked againstinjured party.

D. DURATIONOF PROTECTION

1. Sec. 118.1: Registration of industrial design shall be for period of 5 yearsfrom filing date of application, subject to renewal for not more than 2consecutive periods of 5 years each.

2. Sec. 118.5: Registration of layout-design shall be valid for period of 10years, without renewal, and such validity to be counted from tdate ofcommencement of protection accorded to layout-design.

E. CANCELLATIONOF REGISTRATION

1. Sec. 120.1: Cancellation of Design Registration8 At any time duringterm of industrial design registration, any person upon payment ofrequired fee, may petition Director of Legal Affairs to cancel industrialdesign on any of following grounds:

a. If subject matter of industrial design is not registerable within terms ofSecs. 112 and 113;

b. If subject matter is not new; or

8 Sec. 120.2 provides that, Where the grounds for cancellation relate to a part of theindustrial design, cancellation may be effected to such extent only. The restriction may beeffected in the form of an alteration of the effected features of the design.

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c. If subject matter of industrial design extends beyond content ofapplication as originally filed.

3. Sec. 120.3: Cancellation of Layout-Design of Integrated Circuits9Any interested person may petition that registration of layout-design becanceled on ground that:

a. Layout-design is not protectable under IP Code;

b. Right holder is not entitled to protection under IP Code; or

c. Application for registration of layout-design, was not filed within 2 yearsfrom its first commercial exploitation anywhere in the world.

IV. TRADEMARKS

A. SUBJECT MATTEROF PROTECTION

1. Registrable Mark Sec. 121.1: Any visible sign capable of distinguishingthe goods (trademark) or services (service mark) of an enterprise andshall include a stamped or marked container of goods.

2. Non-Registrable Marks Sec. 123.1:10A mark cannot be registered if it:

a. Consists of immoral, deceptive or scandalous matter, or matter whichmay disparage or falsely suggest connection with persons, living ordead, institutions, beliefs, or national symbols, or bring them intocontempt or disrepute;

b. Consists of flag or coat of arms or other insignia of the Philippines or

any of its political subdivisions, or of any foreign nation, or anysimulation thereof;

c. Consists of name, portrait or signature identifying a particular livingindividual except by his written consent, or name, signature, or portraitof deceased President of Philippines, during life of his widow, if any,except by written consent of widow;

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

i. Same goods or services, or

ii. Closely related goods or services, or9 Sec. 120.3 further provides that, Where the grounds for cancellation are established with

respect only to a part of the layout-design, only the corresponding part of the registration shall becanceled. Any canceled layout-design registration or part thereof, shall be regarded as null andvoid from the beginning and may be expunged from the records of the Intellectual Property Office.Reference to all canceled layout-design registration shall be published in the IPO Gazette.10 Sec. 123.3. of the IP Code provides that:

123.3. The nature of the goods to which the mark is applied will not constitute an obstacleto registration.

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made of it in commerce in Philippines. IPO may accept as prima facieevidence that mark has become distinctive, as used in connection withapplicants goods or services in commerce, proof of substantially exclusiveand continuous use thereof by applicant in commerce in Philippines for 5years before date on which claim of distinctiveness is made.


1. Substantive Requirements: Registration Sec. 122: Rights in markacquired through registration made validly in accordance with IP Code.

Note: Actual prior use not condition for registration of trademark.

2. Formal Requirements/Procedure for Application

a. Trademark Application Secs. 124 to 130

b. Procedure Upon Application:

i. Sec. 132: Application Number and Filing Date

ii. Sec. 133: Examination and Publication

iii. Sec. 134: Opposition

iv. Sec. 135: Notice and Hearing

c. Registration of Trademark:

i. Sec. 136: Issuance and Publication of Certificate

ii. Sec. 137: Registration of Mark and Issuance of a Certificate to theOwner or his Assignee

iii. Sec. 138: Certificates of Registrationd. Actions After Registration:

i. Sec. 139: Publication of Registered Marks; Inspection of Register

ii. Sec. 140: Cancellation upon Application by Registrant; Amendmentor Disclaimer of Registration

iii. Sec. 141: Sealed and Certified Copies as Evidence

iv. Sec. 142: Correction of Mistakes Made by the Office

v. Sec. 143: Correction of Mistakes Made by Applicant

vi. Sec. 144: Classification of Goods and Services

C. OWNERSHIP

1. Registrant Sec. 122: Rights in a mark acquired through registrationmade validly in accordance with IP Code.

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2. Priority Right Sec. 131:

a. Sec. 131.1: Application for registration of mark filed in Philippines byperson referred to in Section 3, and who previously duly filedapplication for registration of same mark in one of those countries,shall be considered as filed as of day application was first filed in

foreign country.

b. Sec. 131.2: No registration of a mark in Philippines by persondescribed in this section shall be granted until such mark has beenregistered in country of origin of applicant.

c. Sec. 131.3: Nothing in this section shall entitle owner of registrationgranted under this section to sue for acts committed prior to date onwhich his mark was registered in this country: Provided, That,notwithstanding foregoing, owner of well-known mark as defined inSec. 123.1(e) of IP Code, that is not registered in Philippines, may,against identical or confusingly similar mark, oppose its registration, or

petition cancellation of its registration or sue for unfair competition,without prejudice to availing himself of other remedies provided forunder the law.

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

D. TRANSFEROF OWNERSHIP

1. Assignment and Transfer of Application and Registration Sec. 149

a. Sec. 149.1: Application for registration of mark, or its registration, maybe assigned or transferred with or without transfer of business usingthe mark.

b. Sec. 149.2: Such assignment or transfer shall, however, be null andvoid if it is liable to mislead public, particularly as regards nature,source, manufacturing process, characteristics, or suitability for their

purpose, of goods or services to which mark is applied.

c. Sec. 149.3: Assignment of application for registration of mark, or of itsregistration, shall be in writing and require signatures of contractingparties. Transfers by mergers or other forms of succession may bemade by any document supporting such transfer.

d. Sec. 149.4: Assignments and transfers of registration of marks shall berecorded at IPO on payment of prescribed fee; assignment and

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transfers of applications for registration shall, on payment of same fee,be provisionally recorded, and mark, when registered, shall be in nameof assignee or transferee.

e. Sec. 149.5: Assignments and transfers shall have no effect againstthird parties until they are recorded at IPO.

2. License Contracts Sec. 150

a. Sec. 150.1: Any license contract concerning the registration of mark, orapplication therefor, shall provide for effective control by licensor ofquality of goods or services of licensee in connection with which markis used. If license contract does not provide for such quality control, orif such quality control is not effectively carried out, license contractshall not be valid.

b. Sec. 150.2: License contract shall be submitted to IPO which shallkeep its contents confidential but shall record it and publish referencethereto. License contract shall have no effect against third parties untilsuch recording is effected. The Regulations shall fix procedure forrecording of license contract.

E. SCOPEOF EXCLUSIVE RIGHTS

1. Sec. 147.1: Owner of registered mark shall have exclusive right to preventall third parties not having owners consent from using in course of tradeidentical or similar signs or containers for goods or services which areidentical or similar to those in respect of which trademark is registeredwhere such use would result in likelihood of confusion. In case of use ofidentical sign for identical goods or services, likelihood of confusion shallbe presumed.

2. Sec. 147.2: Exclusive right of owner of well-known mark defined in Sec.123.1(e) which is registered in Philippines, shall extend to goods andservices which are not similar to those in respect of which mark isregistered: Provided, That use of that mark in relation to those goods orservices would indicate connection between those goods or services andowner of registered mark: Provided, further, That interests of owner ofregistered mark are likely to be damaged by such use.

F. LIMITATIONON SCOPEOF TRADEMARK PROTECTION

1. Sec. 148: Use of Indications by Third Parties for Purposes Other thanthose for which the Mark is Used Registration of mark shall not conferon registered owner right to preclude third parties from using bona fidetheir names, addresses, pseudonyms, geographical name, or exactindications concerning kind, quality, quantity, destination, value, place oforigin, or time of production or of supply, of their goods or services:

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Provided, That such use is confined to purposes of mere identification orinformation and cannot mislead public as to source of goods or services.

G. DURATIONOF PROTECTION

1. Sec. 145: Duration Certificate of registration shall remain in force for 10years; Sec. 146: Renewal for periods of 10 years at its expiration.

2. Note: Sec. 145: Registrant shall file declaration of actual use andevidence to that effect, or shall show valid reasons based on existence ofobstacles to such use, as prescribed by the Regulations, within 1 yearfrom 5th anniversary of date of registration of mark. Otherwise, mark shallbe removed from the Register by IPO.

H. INFRINGEMENTAND REMEDIES

1. Sec. 156 Civil Action for Infringement.

a. Definition: Sec. 155:Any person who shall, without consent of ownerof registered mark:

i. Sec. 155.1: Use in commerce any reproduction, counterfeit, copy,or colorable imitation of registered mark or same container ordominant feature thereof in connection sale, offering for sale,distribution, advertising of any goods or services including otherpreparatory steps necessary to carry out sale of any goods orservices on or in connection with which such use is likely to causeconfusion, or to cause mistake, or to deceive; or

ii. Sec. 155.2: Reproduce, counterfeit, copy or colorably imitateregistered mark or dominant feature thereof and apply suchreproduction, counterfeit, copy or colorable imitation to labels,signs, prints, packages, wrappers, receptacles or advertisementsintended to be used in commerce upon or in connection with sale,offering for sale, distribution, or advertising of goods or services onor in connection with which such use is likely to cause confusion, orto cause mistake, or to deceive, shall be liable in civil action forinfringement by the registrant for the remedies hereinafter set forth:Provided, That infringement takes place at moment any of actsstated in Sec. 155.1 or this section are committed regardless of

whether there is actual sale of goods or services using infringingmaterial.

b. Tests to Determine Infringement:

i. Dominancy Test Focuses on similarity of prevalent features ofcompeting trademarks. If competing trademark contains main oressential or dominant features of another trademark by reason ofwhich confusion and deception are likely to result, infringementtakes place.

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ii. Holistic Test Does not focus only on predominant words butconsiders also other features appearing in labels. Trademarks intheir entirety as they appear in their respective labels areconsidered in relation to goods to which they are attached..

c. Jurisdiction with Regular Courts Sec. 163: All actions under Secs.

150, 155, 164, and 166 to 169 shall be brought before proper courtswith appropriate jurisdiction under existing laws.12

d. Who May Bring Suit

i. Sec. 156.1: Owner of registered mark may recover damages fromany person who infringes his rights, and measure of damagessuffered shall be either reasonable profit which complaining partywould have made, had defendant not infringed his rights, or profitwhich defendant actually made out of infringement, or in event suchmeasure of damages cannot be readily ascertained withreasonable certainty, then court may award as damages

reasonable percentage based upon amount of gross sales ofdefendant or value of services in connection with which mark ortrade name was used in infringement of rights of complaining party.

ii. Sec. 160: Any foreign national or juridical person who meetsrequirements of Sec. 3 of IP Code and does not engage inbusiness in Philippines may bring civil or administrative actionhereunder for opposition, cancellation, infringement, unfaircompetition, or false designation of origin and false description,whether or not it is licensed to do business in Philippines underexisting laws.

e. Defensesi. Non-Registrability of Trademark Sec. 138: Certificate of

registration of mark shall be merelyprima facie evidence of validityof registration, registrants ownership of mark, and of registrantsexclusive right to use same in connection with goods or servicesand those that are related thereto specified in certificate.

ii. Equitable Principles Sec. 230: Equitable principles of laches,estoppel, and acquiescence may be applied in action forinfringement of trademark.

f. Limitations on Actions for Infringement:

12 Sec. 164 provides that, It shall be the duty of the clerks of such courts within one (1) monthafter the filing of any action, suit, or proceeding involving a mark registered under the provisionsof this Act, to notify the Director in writing setting forth: the names and addresses of the litigantsand designating the number of the registration or registrations and within one (1) month after the

judgment is entered or an appeal is taken, the clerk of court shall give notice thereof to the Office,and the latter shall endorse the same upon the filewrapper of the said registration or registrationsand incorporate the same as a part of the contents of said filewrapper.

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i. Prior User Sec. 159.1: Notwithstanding the provisions of Sec.155 hereof, registered mark shall have no effect against any personwho, before filing date or priority date, was using mark for purposesof his business or enterprise; Provided, That his right may only betransferred or assigned together with his enterprise or business or

with part of his enterprise or business in which mark is used.ii. Innocent Infringer Sec. 159.2: Where infringer who is engaged

solely in business of printing mark or other infringing materials forothers is innocent infringer, owner of right infringed shall be entitledagainst such infringer only to injunction against future printing.

iii. Publisher Sec. 159.3: Where infringement complained of iscontained in or is part of paid advertisement in newspaper,magazine, or other similar periodical or in electroniccommunication, remedies of owner of right infringed as againstpublisher or distributor of such newspaper, magazine, or othersimilar periodical or electronic communication shall be limited toinjunction against presentation of such advertising matter in futureissues of such newspapers, magazines, or other similar periodicalsor in future transmissions of such electronic communications.Limitations of this subparagraph shall apply only to innocentinfringers: Provided, That such injunctive relief shall not beavailable to owner of right infringed with respect to an issue ofnewspaper, magazine, or other similar periodical or electroniccommunication containing infringing matter where restrainingdissemination of such infringing matter in any particular issue ofsuch periodical or in an electronic communication would delaydelivery of such issue or transmission of such electroniccommunication is customarily conducted in accordance with soundbusiness practice, and not due to any method or device adopted toevade this section or to prevent or delay issuance of injunction orrestraining order with respect to such infringing matter.

g. Reliefs Granted

i. Damages

(a) Sec. 156.3. In cases where actual intent to mislead the public orto defraud complainant is shown, in discretion of court,damages may be doubled.

(b) Sec. 158: - In any suit for infringement, owner of registeredmark shall not be entitled to recover profits or damages unlessthe acts have been committed with knowledge that suchimitation is likely to cause confusion, or to cause mistake, or todeceive. Such knowledge is presumed if registrant gives noticethat his mark is registered by displaying with mark words"Registered Mark" or letter R within circle or if defendant hadotherwise actual notice of registration.

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ii. Injunction Sec. 156.4: Complainant, upon proper showing, mayalso be granted injunction.

iii. Impounding Evidence Sec. 156.2: On application ofcomplainant, court may impound during pendency of action, salesinvoices and other documents evidencing sales.

iv. Destruction of Infringing Materials Sec. 157:

(a) Sec. 157.1: In any action arising under IP Code, in whichviolation of any right of owner of registered mark is established,court may order that goods found to be infringing be, withoutcompensation of any sort, disposed of outside channels ofcommerce in such manner as to avoid any harm caused to rightholder, or destroyed; and all labels, signs, prints, packages,wrappers, receptacles and advertisements in possession ofdefendant, bearing registered mark or trade name or anyreproduction, counterfeit, copy or colorable imitation thereof, all

plates, molds, matrices and other means of making the same,shall be delivered up and destroyed.

(b) Sec. 157.2: In regard to counterfeit goods, simple removal oftrademark affixed shall not be sufficient other than inexceptional cases which shall be determined by Regulations, topermit release of goods into channels of commerce.

v. Mark Found Invalid May be Cancelled Sec. 161: In any actioninvolving registered mark, court may determine right to registration,order cancellation of registration, in whole or in part, and otherwiserectify register with respect to registration of any party to action in

exercise of this. Judgment and orders shall be certified by court tothe Director, who shall make appropriate entry upon the records ofthe Bureau, and shall be controlled thereby.

h. Prescription Sec. 226: No damages may be recovered forinfringement of trademark after 4 years from time cause of actionarose.

2. Sec. 168 Civil Action for Unfair Competition.

a. Concepts:

i. Protection of Goodwill Sec. 168.1: A person who has identifiedin mind of public goods he manufactures or deals in, his businessor services from those of others, whether or not registered mark isemployed, has property right in goodwill of said goods, business orservices so identified, which will be protected in same manner asother property rights.

ii. Definition of Unfair Competition Sec. 168.2: Any person whoshall employ deception or any other means contrary to good faithby which he shall pass off the goods manufactured by him or in

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which he deals, or his business, or services for those of one havingestablished such goodwill, or who shall commit any acts calculatedto produce said result, shall be guilty of unfair competition, andshall be subject to an action therefor.

iii. Acts of Unfair Competition Sec. 168.3: In particular, and

without in any way limiting scope of protection against unfaircompetition, following shall be deemed guilty of unfair competition:

(a) Any person who is selling his goods and gives them generalappearance of goods of another manufacturer or dealer, eitheras to goods themselves or in wrapping of packages in whichthey are contained, or the devices or words thereon, or in anyother feature of their appearance, which would be likely toinfluence purchasers to believe that goods offered are those ofa manufacturer or dealer, other than actual manufacturer ordealer, or who otherwise clothes goods with such appearanceas shall deceive public and defraud another of his legitimatetrade, or any subsequent vendor of such goods or any agent ofany vendor engaged in selling such goods with like purpose;

(b) Any person who by any artifice, or device, or who employs anyother means calculated to induce the false belief that suchperson is offering the services of another who has identifiedsuch services in mind of public; or

(c) Any person who shall make any false statement in course oftrade or who shall commit any other act contrary to good faith ofnature calculated to discredit goods, business or services ofanother.

b. Remedies Sec. 168.4: Remedies provided by Secs. 156, 157 and161 shall apply mutatis mutandis.

c. Distinctions Between Infringement and Unfair Competition:

i. In infringement, prior registration of trademark necessary; in unfaircompetition, registration of trademark not necessary.

ii. In infringement, fraudulent intent not necessary; in unfaircompetition, fraudulent intent is essential.

iii. Infringement of trademark is unauthorized use of trademark; Unfaircompetition is passing off ones goods as goods of another.

3. Sec. 162 Action for False or Fraudulent Declaration: Any person whoshall procure registration in IPO of mark by false or fraudulent declarationor representation, whether oral or in writing, or by any false means, shallbe liable in a civil action by any person injured thereby for any damagessustained in consequence thereof.

4. Sec. 169 Action for False Designations of Origin; False Descriptionor Representation.

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a. Sec. 169.1: Any person who, on or in connection with any goods orservices, or any container for goods, uses in commerce any word,term, name, symbol, or device, or any combination thereof, or anyfalse designation of origin, false or misleading description of fact, orfalse or misleading representation of fact, which:

i. is likely to cause confusion, or to cause mistake, or to deceive as toaffiliation, connection, or association of such person with anotherperson, or as to origin, sponsorship, or approval of his or hergoods, services, or commercial activities by another person; or

ii. in commercial advertising or promotion, misrepresents nature,characteristics, qualities, or geographic origin of his or her oranother persons goods, services, or commercial activities, shall beliable to a civil action for damages and injunction provided in Secs.156 and 157 of IP Code by any person who believes that he or sheis or likely to be damaged by such act.

b. Sec. 169.2: Any goods marked or labeled in contravention ofprovisions of this Section shall not be imported into Philippines oradmitted entry at any customhouse of Philippines. Owner, importer, orconsignee of goods refused entry at any customhouse under thissection may have any recourse under customs revenue laws or mayhave remedy given by IP Code in cases involving goods refused entryor seized.

5. Sec. 170 Criminal Prosecution: Independent of civil and administrativesanctions imposed by law, criminal penalty of imprisonment from 2 yearsto 5 years and a fine ranging from P50,000 to P200,000, shall be imposedon any person who is found guilty of committing any of acts mentioned in

Secs 155, 168 and 169.1.

6. Sec. 151 Cancellation of Trademarks

a. Grounds Sec. 151.1: Petition to cancel registration of mark under IPCode may be filed with Bureau of Legal Affairs by any person whobelieves that he is or will be damaged by registration of mark under IPCode as follows:

i. Within 5 years from date of registration of mark under IP Code.

ii. At any time, if registered mark becomes generic name for goods orservices, or a portion thereof, for which it is registered, or has been

abandoned, or its registration was obtained fraudulently or contraryto provisions of IP Code, or if registered mark is being used by, orwith permission of, registrant so as to misrepresent source of goodsor services on or in connection with which mark is used. Ifregistered mark becomes generic name for less than all of goods orservices for which it is registered, petition to cancel registration foronly those goods or services may be filed. Registered mark shallnot be deemed to be generic name of goods or services solely

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because such mark is also used as name of or to identify uniqueproduct or service. Primary significance of registered mark torelevant public rather than purchaser motivation shall be test fordetermining whether registered mark has become generic name ofgoods or services on or in connection with which it has been used.

iii. At any time, if registered owner of mark without legitimate reasonfails to use mark within Philippines, or to cause it to be used inPhilippines by virtue of license during an uninterrupted period of 3years or longer.

b. Concurrent Jurisdiction Sec. 151.2: Notwithstanding foregoingprovisions, court or administrative agency vested with jurisdiction tohear and adjudicate any action to enforce the rights to registered markshall likewise exercise jurisdiction to determine whether registration ofsaid mark may be cancelled in accordance with IP Code. Filing of suitto enforce registered mark with proper court or agency shall excludeany other court or agency from assuming jurisdiction oversubsequently filed petition to cancel same mark. On other hand, earlierfiling of petition to cancel mark with Bureau of Legal Affairs shall notconstitute prejudicial question that must be resolved before action toenforce rights to same registered mark may be decided.

c. Other Provisions:

i. Sec. 152: Non-use of a Mark When Excused.

ii. Sec. 153: Requirements of Petition; Notice and Hearing.

iii. Sec. 154: Cancellation of Registration.

V. TRADE NAMES


1. Registrable Trade Name Sec. 121.3: Name or designation identifyingor distinguishing an enterprise.

2. Non-Registrable Marks Sec. 165.1: Name or designation may not beused as trade name if by its nature or use to which such name ordesignation may be put, it is contrary to public order or morals and if, in

particular, it is liable to deceive trade circles or public as to nature ofenterprise identified by that name. Examples:

a. Consists of generic words

b. Consists of geographical name;

c. Legal Prohibitions: words that may not be used as trade name

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i. United Nations;13

ii. Bonded if not licensed under General Bonded Warehouse Act orestablished under Tariff and Customs Code;14

iii. Bank, Banking, Banker, Quasi-Bank, Quasi-Banking,

Quasi-Banker, Savings and Loan Association, TrustCorporation, Trust Corporation, Trust Company unlessauthorized to as such by Monetary Board (MB);15

iv. Development Bank unless authorized to operate as such by MB;16

v. Financing Company, Leasing Company, Financing and LeasingCompany, or Finance and Investment Company unlessauthorized as such by Securities and Exchange Commission;17

vi. Cooperative unless registered as cooperative;18

vii. Rural Bank unless authorized to operate as such by MB;19 and

viii.National not used by any bank except Philippine National Bank.

20

d. Confusing Similarity Sec. 165.2(b): Any subsequent use of tradename by third party, whether as trade name or mark or collective mark,or any such use of similar trade name or mark, likely to mislead public,shall be deemed unlawful.


1. Substantive Requirements Sec. 165.2(a): Notwithstanding any laws orregulations providing for any obligation to register trade names, suchnames shall be protected, even prior to or without registration, against any

unlawful act committed by third parties.

C. TRANSFEROF OWNERSHIP

1. Sec. 165.4: Rules on assignment of trademarks are also applicable toassignment of trade names.

D. INFRINGEMENTAND REMEDIES

1. Sec. 165.3: Remedies for infringement of trademarks are also applicableto infringement of trade names.

13 R.A. No. 226, Sec. 1.14 R.A. No. 247, Sec. 3.15 R.A. No. 8791, Sec. 64.16 R.A. No. 4093, Sec. 16.17 R.A. No. 5980, Sec. 14(c), as amended by R.A. No. 8556.18 R.A. No. 6938, Sec. 124(1); R.A. No. 6939, Sec. 14.19 R.A. No. 7353, Sec. 28.20 Revised Charter of Philippine National Bank, Sec. 35.

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VI. COPYRIGHT


1. Original Works Sec. 172.1: Literary and Artistic Works. Originalintellectual creations in literary and artistic domain protected from momentof their creation.21

2. Derivative Works Sec. 173.1:Following derivative works shall also beprotected by copyright:22

a. Sec. 173.1(a): Dramatizations, translations, adaptations, abridgments,arrangements, and other alterations of literary or artistic works; and

b. Sec. 173.1(b): Collections of literary, scholarly or artistic works, andcompilations of data and other materials which are original by reason

of the selection or coordination or arrangement of their contents.

c. Sec. 174: Published Edition of Work In addition to right to publishgranted by author, his heirs or assigns, publisher shall have a copyright consisting merely of right of reproduction of typographicalarrangement of published edition of work.

21 Under Sec. 172.1 of the IP Code, Literary and Artistic Works shall include in particular:(a) Books, pamphlets, articles and other writings;(b) Periodicals and newspapers;(c) Lectures, sermons, addresses, dissertations prepared for oral delivery, whether

or not reduced in writing or other material form;(d) Letters;

(e) Dramatic or dramatico-musical compositions; choreographic works orentertainment in dumb shows;

(f) Musical compositions, with or without words;(g) Works of drawing, painting, architecture, sculpture, engraving, lithography or

other works of art; models or designs for works of art;(h) Original ornamental designs or models for articles of manufacture, whether or not

registrable as an industrial design, and other works of applied art;(i) Illustrations, maps, plans, sketches, charts and three-dimensional works relative

to geography, topography, architecture or science;(j) Drawings or plastic works of a scientific or technical character;(k) Photographic works including works produced by a process analogous to

photography; lantern slides;(l) Audiovisual works and cinematographic works and works produced by a process

analogous to cinematography or any process for making audio-visual recordings;(m) Pictorial illustrations and advertisements;(n) Computer programs; and(o) Other literary, scholarly, scientific and artistic works.22 Sec. 173.2 of the IP Code provides that:The works referred to in paragraphs (a) and (b) of Subsection 173.1 shall be

protected as a new works: Provided however, That such new work shall not affect theforce of any subsisting copyright upon the original works employed or any part thereof, orbe construed to imply any right to such use of the original works, or to secure or extendcopyright in such original works.

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3. Works Not Protected

a. Sec. 175: Unprotected Subject Matter Any idea, procedure, systemmethod or operation, concept, principle, discovery or mere data assuch, even if they are expressed, explained, illustrated or embodied ina work; news of the day and other miscellaneous facts having

character of mere items of press information; or any official text oflegislative, administrative or legal nature, as well as any officialtranslation thereof.

b. Sec. 176.1: Works of the Government of the Philippines. Nocopyright shall subsist in any work of Government of Philippines.23


1. Substantive Requirements Sec. 172.2: Works are protected by solefact of their creation, irrespective of their mode or form of expression, as

well as of their content, quality and purpose.2. Formal Requirements Sec. 191 (Registration and Deposit with National

Library and the Supreme Court Library); Sec. 192 (Notice of Copyright).

C. OWNERSHIP

1. The Author Sec. 178. Copyright ownership shall be governed byfollowing rules:

a. Sec. 178.1: For original literary and artistic works author;

b. Sec. 178.5: For audiovisual work producer, author of scenario,

composer music, film director, and author of work so adapted;24

23 Sec. 176 of the IP Code further provides that:176.1. x x x. However, prior approval of the government agency or office wherein the

work is created shall be necessary for exploitation of such work for profit. Such agency oroffice may, among other things, impose as a condition the payment of royalties. No priorapproval or conditions shall be required for the use of any purpose of statutes, rules andregulations, and speeches, lectures, sermons, addresses, and dissertations, pronounced,read or rendered in courts of justice, before administrative agencies, in deliberativeassemblies and in meetings of public character.

176.2. The Author of speeches, lectures, sermons, addresses, and dissertationsmentioned in the preceding paragraphs shall have the exclusive right of making acollection of his works.

176.3. Notwithstanding the foregoing provisions, the Government is not precludedfrom receiving and holding copyrights transferred to it by assignment, bequest orotherwise; nor shall publication or republication by the government in a public documentof any work in which copy right is subsisting be taken to cause any abridgment orannulment of the copyright or to authorize any use or appropriation of such work withoutthe consent of the copyright owners.

24 Section 178.5 further provides:

However, subject to contrary or other stipulations among the creators, the producers shallexercise the copyright to an extent required for the exhibition of the work in any manner, exceptfor the right to collect performing license fees for the performance of musical compositions, with

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c. Sec. 178.6: For letters writer, subject to the provisions of Art. 723,Civil Code; and

d. Sec. 179: For anonymous and pseudonymous works publishersdeemed to represent authors, unless contrary appears, or pseudonymsor adopted name leaves no doubts as to authors identity, or if author

discloses his identity.

2. Joint Works/Works Created by Several Persons Sec. 178.2:

a. General Rule: For works of joint authorship co-authors (in absence ofagreement, their rights governed by rules on co-ownership).

b. Exception: If parts can be used separately and author of each part canbe identified author of each part for part that he created;

3. Works Made for Hire

a. Sec. 178.3: For work created by author during and in the course of hisemployment:

i. Employee, if creation of work is not part of his regular duties even ifemployee uses time, facilities and materials of employer; or

ii. Employer, if work is result of performance of his regularly-assignedduties, unless contrary agreement, express or implied.

b. Sec. 178.4: For work commissioned by person other than employer ofauthor and who pays for it and work is made in pursuance ofcommission, person who commissioned work shall have ownership ofwork, but creator retains copyright, unless contrary written stipulation.

D. TRANSFER1. Assignment of Copyright

a. Sec. 180: Rights of Assignee.

i. Sec. 180.1. Copyright may be assigned in whole or in part. Withinscope of assignment, assignee is entitled to all rights and remedieswhich assignor had with respect to copyright.

ii,. Sec. 180.2. Copyright is not deemed assigned inter vivos in wholeor in part unless there is written indication of such intention.

b. Sec. 181: Copyright and Material Object Copyright is distinct from

property in material object subject to it. Consequently, transfer orassignment of copyright shall not itself constitute transfer of materialobject. Nor shall transfer or assignment of sole copy or of one orseveral copies of work imply transfer or assignment of copyright.

2. License Sec. 180.3: Submission of literary, photographic or artistic workto newspaper, magazine or periodical for publication shall constitute only

or without words, which are incorporated into the work; and

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license to make single publication unless greater right is expresslygranted. If 2 or more persons jointly own a copyright or any part thereof,neither of owners shall be entitled to grant licenses without prior writtenconsent of other owner or owners.

3. Other Provisions

a. Sec. 182: Filing of Assignment of License.

b. Sec. 183: Designation of Society Copyright owners or their heirs maydesignate society of artists, writers or composers to enforce theireconomic rights and moral rights on their behalf.

E. SCOPEOF EXCLUSIVE RIGHTS

1. Moral Rights:

a. Scope Sec. 193: Author of work shall, independently of economicrights in Sec. 177 or grant of an assignment or license with respect tosuch right, have right:

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

ii. Sec. 193.2: To make any alterations of his work prior to, or towithhold it from publication;

iii. Sec. 193.3: To object to any distortion, mutilation or othermodification of, or other derogatory action in relation to, his work

which would be prejudicial to his honor or reputation; andiv. Sec. 193.4: To restrain use of his name with respect to any work

not of his own creation or in distorted version of his work.

b. Sec. 194: Breach of Contract Author cannot be compelled to performhis contract to create work or for publication of his work already inexistence. However, he may be held liable for damages for breach ofsuch contract.

c. Sec. 195: Waiver of Moral Rights Author may waive his rightsmentioned in Sec. 193 by written instrument, but no such waiver shallbe valid where its effects is to permit another:

i. Sec. 195.1: To use name of author, or title of his work, or otherwiseto make use of his reputation with respect to any version oradaptation of his work which, because of alterations therein, wouldsubstantially tend to injure literary or artistic reputation of anotherauthor; or

ii. Sec. 195.2: To use name of author with respect to a work he didnot create.

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d. Sec. 196: Contribution to Collective Work When author contributes tocollective work, his right to have his contribution attributed to him isdeemed waived unless he expressly reserves it.

e. Sec. 197: Editing, Arranging and Adaptation of Work In absence ofcontrary stipulation at time author licenses or permits another to use

his work, necessary editing, arranging or adaptation of such work, forpublication, broadcast, use in motion picture, dramatization, ormechanical or electrical reproduction in accordance with reasonableand customary standards or requirements of medium in which work isto be used, shall not be deemed to contravene author's rights securedby this Chapter. Nor shall complete destruction of work unconditionallytransferred by author be deemed to violate such rights.

2. Exploitation Rights

a. Economic Rights Sec. 177: Copyright or economic rights shallconsist of exclusive right to carry out, authorize or prevent following

acts:i. Sec. 177.1: Reproduction of work or substantial portion of work;

ii. Sec. 177.2: Dramatization, translation, adaptation, abridgment,arrangement or other transformation of work;

iii. Sec. 177.3: First public distribution of original and each copy ofwork by sale or other forms of transfer of ownership;

iv. Sec. 177.4: Rental of original or a copy of audiovisual orcinematographic work, work embodied in sound recording,computer program, compilation of data and other materials or

musical work in graphic form, irrespective of ownership of originalor copy which is subject of rental;

v. Sec. 177.5: Public display of original or copy of work;

vi. Sec. 177.6: Public performance of work; and

vii.Sec. 177.7: Other communication to public of work.

b. Other Rights

i. Droit de Suite Sec. 200:25 Subsequent Sale or Lease of Work. In every sale or lease of original work of painting or sculpture or oforiginal manuscript of writer or composer, subsequent to first

disposition thereof by author, author or his heirs shall haveinalienable right to participate in gross proceeds of ale or lease toextent of 5%. This right shall exist during lifetime of author and for50 years after his death.

25 Sec. 201 of the IP Code provides that:Sec. 201. Works Not Covered. - The provisions of this Chapter shall not apply to

prints, etchings, engravings, works of applied art, or works of similar kind wherein theauthor primarily derives gain from the proceeds of reproductions.

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ii. Work of Architecture Sec. 186: Copyright in work of architectureshall include right to control erection of any building whichreproduces whole or substantial part of work either in its originalform or in any form recognizably derived from original; Provided,That copyright in any such work shall not include right to control

reconstruction or rehabilitation in same style as original of buildingto which copyright relates.

F. LIMITATIONOR EXEMPTIONSTO SCOPEOF COPYRIGHT PROTECTION

1. Limitation of Copyright Sec. 184.1: Following acts shall not constituteinfringement of copyright:26

a. Recitation or performance of work, once it has been lawfully madeaccessible to public, if done privately and free of charge or if madestrictly for charitable or religious institution or society;

b. Making of quotations from published work if they are compatible withfair use and only to extent justified for the purpose, includingquotations from newspaper articles and periodicals in form of presssummaries: Provided, That source and name of author, if appearing onwork, are mentioned;

c. Reproduction or communication to public by mass media of articles oncurrent political, social, economic, scientific or religious topic, lectures,addresses and other works of same nature, which are delivered inpublic if such use is for information purposes and has not beenexpressly reserved: Provided, That source is clearly indicated;

d. Reproduction and communication to public of literary, scientific orartistic works as part of reports of current events by means ofphotography, cinematography or broadcasting to extent necessary forthe purpose;

e. Inclusion of work in publication, broadcast, or other communication topublic, sound recording or film, if such inclusion is made by way ofillustration for teaching purposes and is compatible with fair use:Provided, That source and name of author, if appearing in work, arementioned;

f. Recording made in schools, universities, or educational institutions ofwork included in broadcast for use of such schools, universities or

educational institutions: Provided, That such recording must be deletedwithin reasonable period after they were first broadcast: Provided,further, That such recording may not be made from audiovisual works

26 Sec. 184.2 of the IP Code provides that:The provisions of this section shall be interpreted in such a way as to allow the work

to be used in a manner which does not conflict with the normal exploitation of the workand does not unreasonably prejudice the right holder's legitimate interest.

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which are part of general cinema repertoire of feature films except forbrief excerpts of work;

g. Making of ephemeral recordings by broadcasting organization bymeans of its own facilities and for use in its own broadcast;

h. Use made of work by or under direction or control of Government, byNational Library or by educational, scientific or professional institutionswhere such use is in public interest and is compatible with fair use;

i. Public performance or communication to public of work, in place whereno admission fee is charged in respect of such public performance orcommunication, by club or institution for charitable or educationalpurpose only, whose aim is not profit making, subject to such otherlimitations as may be provided in Regulations;

j. Public display of original or copy of work not made by means of film,slide, television image or otherwise on screen or by means of anyother device or process: Provided, That either work has beenpublished, or, that original or copy displayed has been sold, givenaway or otherwise transferred to another person by author or hissuccessor in title; and

k. Any use made of a work for purpose of any judicial proceedings or forgiving of professional advice by legal practitioner.

2. Fair Use Sec. 185.1: Fair use of copyrighted work for criticism,comment, news reporting, teaching including multiple copies for classroomuse, scholarship, research, and similar purposes is not infringement ofcopyright.27 In determining whether use made of work in any particularcase is fair use, factors to be considered shall include:

a. Purpose and character of use, including whether such use is ofcommercial nature or is for non-profit education purposes;

b. Nature of copyrighted work;

c. Amount and substantiality of portion used in relation to copyrightedwork as a whole; and

d. Effect of use upon potential market for or value of copyrighted work. 28

27 Sec. 185.1 further provides that:

Decompilation, which is understood here to be the reproduction of the code and translation of theforms of the computer program to achieve the inter-operability of an independently createdcomputer program with other programs may also constitute fair use.

28 Sec. 185.2 of the IP Code provides that:185.2 The fact that a work is unpublished shall not by itself bar a finding of fair use if

such finding is made upon consideration of all the above factors.

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3. Reproduction of Published Works Sec. 187.1:29 Private reproductionof published work in single copy, where reproduction is made by naturalperson exclusively for research and private study, shall be permitted,without authorization of owner of copyright in work.

4. Repographic Reproduction by Libraries Sec. 188.1:30 Any library or

archive whose activities are not for profit may, without authorization ofauthor of copyright owner, make single copy of work by reprographicreproduction:

a. Where work by reason of its fragile character or rarity cannot be lent touser in its original form;

b. Where works are isolated articles contained in composite works orbrief portions of other published works and reproduction is necessaryto supply them; when this is considered expedient, to personrequesting their loan for purposes of research or study instead oflending volumes or booklets which contain them; and

c. Where making of such copy is in order to preserve and, if necessary inevent that it is lost, destroyed or rendered unusable, replace a copy, orto replace, in permanent collection of another similar library or archive,copy which has been lost, destroyed or rendered unusable and copiesare not available with publisher.

5. Reproduction of Computer Programmes Sec. 189.1:31 Reproductionin 1 back-up copy or adaptation of computer program shall be permitted,without authorization of author of, or other owner of copyright in, a

29 Sec. 187.2 of the IP Code provides that:187.2. The permission granted under Subsection 187.1 shall not extend to the

reproduction of:(a) A work of architecture in form of building or other construction;(b) An entire book, or a substantial past thereof, or of a musical work in which

graphics form by reprographic means;(c) A compilation of data and other materials;(d) A computer program except as provided in Section 189; and(e) Any work in cases where reproduction would unreasonably conflict with a normal

exploitation of the work or would otherwise unreasonably prejudice the legitimateinterests of the author.30 Section 188.2 of the IP Code provides that:

188.2. Notwithstanding the above provisions, it shall not be permissible to produce avolume of a work published in several volumes or to produce missing tomes or pages ofmagazines or similar works, unless the volume, tome or part is out of stock; Provided,

That every library which, by law, is entitled to receive copies of a printed work, shall beentitled, when special reasons so require, to reproduce a copy of a published work whichis considered necessary for the collection of the library but which is out of stock.

31 Sec. 189.2 and 189.3 of the IP Code provides that:189.2. No copy or adaptation mentioned in this Section shall be used for any purpose

other than the ones determined in this Section, and any such copy or adaptation shall bedestroyed in the event that continued possession of the copy of the computer programceases to be lawful.

189.3. This provision shall be without prejudice to the application of Section 185whenever appropriate.

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computer program, by lawful owner of that computer program: Provided,That copy or adaptation is necessary for:

a. Use of computer program in conjunction with computer for thepurpose, and to extent, for which computer program has beenobtained; and

b. Archival purposes, and, for replacement of lawfully owned copy ofcomputer program in event that lawfully obtained copy of computerprogram is lost, destroyed or rendered unusable.

6. Importation for Personal Purposes Sec. 190.1:32 Importation of copyof work by individual for his personal purposes shall be permitted withoutauthorization of author of, or other owner of copyright in, work underfollowing circumstances:

a. When copies of work are not available in Philippines and:

i. Not more than 1 copy at one time is imported for strictly individual

use only; orii. Importation is by authority of and for the use of Philippine

Government; or

iii. Importation, consisting of not more than 3 such copies orlikenesses in any one invoice, is not for sale but for use only of anyreligious, charitable, or educational society or institution dulyincorporated or registered, or is for encouragement of fine arts, orfor any state school, college, university, or free public library inPhilippines.

b. When such copies form parts of libraries and personal baggage

belonging to persons or families arriving from foreign countries and arenot intended for sale: Provided, That such copies do not exceed 3.

32 Sec. 190.2 and 190.3 of the IP Code provides that:

190.2. Copies imported as allowed by this Section may not lawfully be used in anyway to violate the rights of owner the copyright or annul or limit the protection secured bythis Act, and such unlawful use shall be deemed an infringement and shall be punishableas such without prejudice to the proprietors right of action.

190.3. Subject to the approval of the Secretary of Finance, the Commissioner ofCustoms is hereby empowered to make rules and regulations for preventing theimportation of articles the importation of which is prohibited under this Section and undertreaties and conventions to which the Philippines may be a party and for seizing andcondemning and disposing of the same in case they are discovered after they have beenimported.

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G. DURATIONOF PROTECTION

1. Moral Rights Sec. 198.1: Rights of an author under this chapter shalllast during lifetime of author and for 50 years after his death and shall notbe assignable or subject to license. Person or persons to be charged with

posthumous enforcement of these rights shall be named in writing to befiled with National Library. In default of such person or persons, suchenforcement shall devolve upon either author's heirs, and in default ofheirs, Director of National Library.

2. Economic Rights Sec. 213.1: Subject to provisions of Secs. 213.2 to213.6, copyright in works under Secs. 172 and 173 shall be protectedduring life of author and for 50 years after his death. This rule also appliesto posthumous works.

a. Sec. 213.2: If works of joint authorship, economic rights protectedduring life of last surviving author and for 50 years after his death

b. Sec. 213.3: If anonymous or pseudonymous works, copyrightprotected for 50 years from date on which work was first lawfullypublished; Provided, That where, before expiration of said period,authors identity is revelaed or is no longer in doubt, provisions ofSecs. 213.1 and 213.2 shall apply; Provided, further, That such worksif not published before shall be protected for 50 years counted frommaking of work.

c. Sec. 213.4: If works of applied art, protection shall be for period of 25years from date of making.

d. Sec. 213.5: If photographic works, protection shall be for 50 years frompublication of work and, if unpublished, for 50 years from making.

e. Sec. 213.6: If audio-visual works, including those produced by processanalogous to photography or any process for making audio-visualrecordings, protection shall be for 50 years from date of publicationand, if unpublished, from date of making.

H. INFRINGEMENTAND REMEDIES

1. Sec. 216 Civil Action for Infringement

a. Definition: Doing by any person, without consent of owner ofcopyright, of anything sole right to do which is conferred by state onowner of copyright.

b. Tests to Determine Infringement: Copying When ordinaryobserver comparing works can readily see that one was copied fromother.

c. Jurisdiction with Regular Courts Sec. 225

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d. Defenses

i. Ignorance and lack of intention NOT defense

ii. Loss of rights (sale, waiver, making work public)

iii. Prescription

e. Presumptions

i. Sec. 218: Affidavit Evidence

ii. Sec. 219: Presumption of Authorship

iii. Sec. 220: International Registration of Work

f. Reliefs Granted Sec. 216.1: Any person infringing right protectedunder IP Code shall be liable:

i. Damages

(a) Sec. 216.1(b): Pay to copyright proprietor or his assigns or heirs

such actual damages, including legal costs and other expenses,as he may have incurred due to infringement as well as profitsinfringer may have made due to such infringement, and inproving profits plaintiff shall be required to prove sales only anddefendant shall be required to prove every element of costwhich he claims, or, in lieu of actual damages and profits, suchdamages which to court shall appear to be just and shall not beregarded as penalty.

(b) Sec. 216.1(e): Such other terms and conditions, includingpayment of moral and exemplary damages, which court maydeem proper, wise and equitable x x x even in event of acquittal

in criminal case.

ii. Injunction

(a) Sec. 216.1(a): To injunction restraining such infringement. Courtmay also order defendant to desist from infringement, amongothers, to prevent entry into channels of commerce of importedgoods that involve infringement, immediately after customsclearance of such goods.

iii. Impounding/Seizure of Infringing Materials

(a) Sec. 216.1(c): Deliver under oath, for impounding during the

pendency of the action, upon such terms and conditions as thecourt may prescribe, sales invoices and other documentsevidencing sales, all articles and their packaging alleged toinfringe a copyright and implements for making them.

(b) Sec. 216.2: In infringement action, court shall also have powerto order seizure and impounding of any article which may serveas evidence in court proceedings.

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iv. Destruction of Infringing Materials

(a) Sec. 216.1(e): Such other terms and conditions which court maydeem proper, wise and equitable, and destruction of infringingcopies of work even in event of acquittal in criminal case.

(b) Sec. 21.6.1(d): Deliver under oath for destruction without anycompensation all infringing copies or devices, as well as allplates, molds, or other means for making such infringing copiesas the court may order.

g. Prescription Sec. 226: No damages may be recovered under IPCode after 4 years from time cause of action arose.

2. Sec. 217 Criminal Action for Infringement

a. Sec. 217.1: Any person infringing any right secured by provisions ofPart IV of IP Code or aiding or abetting such infringement shall beguilty of crime punishable by:

i. For First Offense: Imprisonment of 1 year to 3 years plus a fineranging from P50,000 to P150,000;

ii. For Second Offense: Imprisonment of 3 years and 1 day to 6 yearsplus a fine ranging from P150,000 to P500,000;

iii. For Third and Subsequent Offense: Imprisonment of 6 years and 1day to 9 years plus a fine ranging from P500,000 to P1,500,000;and

iv. In all cases, subsidiary imprisonment in cases of insolvency.

b. Sec. 217.3: Any person who at time when copyright subsists in work

has in his possession an article which he knows, or ought to know, tobe an infringing copy of the work for purpose of: (a) Selling, letting forhire, or by way of trade offering or exposing for sale, or hire, the article;(b) Distributing the article for purpose of trade, or for any other purposeto extent that will prejudice rights of copyright owner in work; or (c)Trade exhibit of article in public, shall be guilty of an offense and shallbe liable on conviction to imprisonment and fine as above mentioned.

I. POINTSOF ATTACHMENT

1. Sec. 221.1: Protection afforded by IP Code to copyrightable works under

Secs. 172 and 173 shall apply to:

a. Works of authors who are nationals of, or have their habitual residencein Philippines;

b. Audio-visual works producer of which has his headquarters or habitualresidence in Philippines;

c. Works of architecture erected in Philippines or other artistic worksincorporated in building or other structure located in Philippines;

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d. Works first published in Philippines; and

e. Works first published in another country but also published inPhilippines within thirty days, irrespective of nationality or residence ofauthors.

2. Sec. 221.2: Provisions of IP Code shall also apply to works that are to beprotected by virtue of and in accordance with any international conventionor other international agreement to which Philippines is a party.

VII. NEIGHBORING RIGHTS

A. RIGHTSOF PERFORMERS

1. Scope of Rights

a. Moral Rights Sec. 204.1: Independently of performer's economic

rights, performer, shall, as regards his live aural performances orperformances fixed in sound recordings, have right to claim to beidentified as performer of his performances, except where omission isdictated by manner of use of performance, and to object to anydistortion, mutilation or other modification of his performances thatwould be prejudicial to his reputation.

b. Exclusive Rights Sec. 203: Subject to provisions of Sec. 212,performers shall enjoy following exclusive rights:

i. Sec. 203.1: As regards their performances, right of authorizing:

(a) Broadcasting and other communication to public of theirperformance; and

(b) Fixation of their unfixed performance.

ii. Sec. 203.2: Right of authorizing direct or indirect reproduction oftheir performances fixed in sound recordings, in any manner orform;

iii. Sec. 203.3: Subject to provisions of Sec. 206, right of authorizingfirst public distribution of original and copies of their performancefixed in sound recording through sale or rental or other forms oftransfer of ownership;

iv. Sec. 203.4: Right of authorizing commercial rental to public oforiginal and copies of their performances fixed in sound recordings,even after distribution of them by, or pursuant to authorization byperformer; and

v. Sec. 203.5: Right of authorizing making available to public of theirperformances fixed in sound recordings, by wire or wireless means,

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in such way that members of public may access them from placeand time individually chosen by them.

c. Droit de Suite Sec. 206: Unless otherwise provided in contract, inevery communication to public or broadcast of performancesubsequent to first communication or broadcast thereof by

broadcasting organization, performer shall be entitled to additionalremuneration equivalent to at least 5% of original compensation he orshe received for first communication or broadcast.

d. Contract Terms Sec. 207: Nothing in this Chapter shall beconstrued to deprive performers of right to agree by contracts on termsand conditions more favorable for them in respect of any use of theirperformance.

2. Limitations on Rights

a. Sec. 212: Secs. 203, 208 and 209 shall not apply where acts referredto in those Secs. Relate to:

i. Sec. 212.1: Use by natural person exclusively for his own personalpurposes;

ii. Sec. 212.2: Using short excerpts for reporting current events;

iii. Sec. 212.3: Use solely for purpose of teaching or for scientificresearch; and

iv. Sec. 212.4: Fair use of broadcast subject to conditions under Sec.185.

b. Sec. 205.1: Subject to provisions of Sec. 206, once performer hasauthorized broadcasting or fixation of his performance, provisions ofSec. 203 shall have no further application.

c. Sec. 205.2: Provisions of Sec. 184 (Limitations on Copyright) and Sec.185 (Fair Use of Copyrighted Work) shall apply mutatis mutandis toperformers.

3. Duration of Protection

a. Moral Rights Sec. 204.2: Rights granted to performer in accordancewith Sec. 204.1 shall be maintained and exercised 50 years after hisdeath, by his heirs, and in default of heirs, government, whereprotection is claimed.

b. Exclusive Rights Sec. 215.1: Rights granted to performers andproducers of sound recordings under IP Code shall expire:

i. For performances not incorporated in recordings, 50 years fromend of year in which performance took place; and

ii. For sound and image and sound recordings and performancesincorporated therein, 50 years from end of year in which recordingtook place.

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4. Infringement and Remedies Secs. 216 to 220: Same as Copyright

5. Points of Attachment

a. Sec. 222: Provisions of IP Code on protection of performers shallapply to:

i. Sec. 222.1: Performers who are nationals of Philippines;

ii. Sec. 222.2: Performers who are not nationals of Philippines, butwhose performances:

(a) Take place in Philippines; or

(b) Are incorporated in sound recordings protected under IP Code;or

(c) Which has not been fixed in sound recording but are carried bybroadcast qualifying for protection under IP Code.

b. Sec. 224.2: Provisions of IP Code shall also apply to performers who,

and to producers of sound recordings and broadcasting organizationswhich, are to be protected by virtue of and in accordance with anyinternational convention or other international agreement to whichPhilippines is a party.

B. RIGHTSOF PRODUCERSOF SOUND RECORDINGS

1. Scope of Rights

a. Exclusive Rights Sec. 208: Subject to provisions of Sec. 212,producers of sound recordings shall enjoy following exclusive rights:

i. Sec. 208.1: Right to authorize direct or indirect reproduction of theirsound recordings, in any manner or form; the placing of thesereproductions in market and right of rental or lending;

ii. Sec. 208.2: Right to authorize first public distribution of original andcopies of their sound recordings through sale or rental or otherforms of transfer of ownership; and

iii. Sec. 208.3: Right to authorize commercial rental to public oforiginal and copies of their sound recordings, even after distributionof them by, or pursuant to authorization by producer.

b. Communication to Public Sec. 209: If sound recording published

for commercial purposes, or reproduction of such sound recording, isused directly for broadcasting or for other communication to public, oris publicly performed with intention of making and enhancing profit, asingle equitable remuneration for performer or performers, andproducer of sound recording shall be paid by user to both performersand producer, who, in absence of any agreement shall share equally.

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2. Limitations on Rights

a. Sec. 212: Secs. 203, 208 and 209 shall not apply where acts referredto in those Secs. Relate to:

i. Sec. 212.1: Use by natural person exclusively for his own personal

purposes;ii. Sec. 212.2: Using short excerpts for reporting current events;

iii. Sec. 212.3: Use solely for purpose of teaching or for scientificresearch; and

iv. Sec. 212.4: Fair use of broadcast subject to conditions under Sec.185.

b. Sec. 210: Sec. 184 (Limitations on Copyright) and Sec. 185 (Fair Useof Copyrighted Work) shall apply mutatis mutandis to producer ofsound recordings.

3. Duration of Protectiona. Exclusive Rights Sec. 215.1: Rights granted to performers and

producers of sound recordings under IP Code shall expire:

i. For performances not incorporated in recordings, 50 years fromend of year in which performance took place; and

ii. For sound and image and sound recordings and performancesincorporated therein, 50 years from end of year in which recordingtook place.


5. Points of Attachmenta. Sec. 223: Provisions of IP Code on protection of sound recordings

shall apply to

i. Sec. 223.1: Sound recordings producers of which are nationals ofPhilippines;

ii. Sec. 223.2: Sound recordings first published in Philippines.

b. Sec. 224.2: Provisions of IP Code shall also apply to performers who,and to producers of sound recordings and broadcasting organizationswhich, are to be protected by virtue of and in accordance with anyinternational convention or other international agreement to whichPhilippines is a party.

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C. RIGHTSOF BROADCASTING ORGANIZATIONS

1. Scope of Rights

a. Exclusive Rights Sec. 211: Subject to provisions of Sec. 212,broadcasting organizations shall enjoy exclusive right to carry out,

authorize or prevent any of following acts:

i. Sec. 211.1: Rebroadcasting of their broadcasts;

ii. Sec. 211.2: Recording in any manner, including making of films oruse of video tape, of their broadcasts for purpose of communicationto public of television broadcasts of the same; and

iii. Sec. 211.3: Use of such records for fresh transmissions or for freshrecording.

2. Duration of Protection

a. Exclusive Rights Sec. 215.2: In case of broadcasts, term shall be20 years from date broadcast took place. Extended term shall beapplied only to old works with subsisting protection under prior law.


4. Points of Attachment

a. Sec. 224.1: Provisions of IP Code on protection of sound recordingsshall apply to:

i. Sec. 224.1(a): Broadcasts of broadcasting organizations theheadquarters of which are situated in Philippines; and

ii. Sec. 224.1(b): Broadcasts transmitted from transmitters situated inPhilippines.

b. Sec. 224.2: Provisions of IP Code shall also apply to performers who,and to producers of sound recordings and broadcasting organizationswhich, are to be protected by virtue of and in accordance with anyinternational convention or other international agreement to whichPhilippines is a p

Documents

2011 Ip Code Outline - Als Commercial Law Review