IPL FINALS REVIEWER 2019 computer program, a compilation of data and other materials or

Joseph R. Malcontento a musical work in graphic form, irrespective of the ownership of

1st Semester, A.Y. 2019-2020 the original or the copy which is the subject of the rental.
1. PATENTS e. Public display of the original or copy of the work.
f. Public performance of the work.
INVENTION APPLICATION g. Other communication to the public of the work.

Under Sec. 32, an invention application shall be in Filipino or English MORAL RIGHTS OF A COPYRIGHT OWNER
and shall contain the following:
Under Sec. 193, the author of a work shall, independently of the
a. A request for the grant of a patent, which shall contain a petition economic rights in Sec. 177 or the grant of an assignment or license
for the grant of the patent, the name and other data of the with respect to such right, have the right:
applicant, the inventor and the agent (in case the applicant is not
the inventor) and the title of the invention. a. To require that the authorship of the works be attributed to him,
b. A description of the invention, with respect to its nature, in particular, the right that his name, as far as practicable, be
purpose, and use in relation a specific technical field, and indicated in a prominent way on the copies, and in connection
disclosures, which shall disclose the invention in a manner with the public use of his work;
sufficiently clear and complete for it to be carried out by a b. To make any alterations of his work prior to, or to withhold it
person skilled in the art. from publication;
c. Drawings necessary for the understanding of the invention, c. To object to any distortion, mutilation or other modification of,
which may include blueprints, sketches, and other modes of or other derogatory action in relation to, his work which would
rendering the invention. be prejudicial to his honor or reputation; and
d. One or more claims which define the matter for which d. To restrain the use of his name with respect to any work not of
protection is sought. Each claim shall be clear, concise, and his own creation or in a distorted version of his work.
supported by the description.
e. An abstract, which is a concise summary (preferably not more PUBLIC PERFORMANCE OF A COPYRIGHTED WORK
than 150 words) of the disclosure of the invention as contained
in the description, claims and drawings. It must be drafted in a Under Sec. 171.6, a public performance is defined as the recitation,
way which allows the clear understanding of the technical playing, dancing, acting or otherwise performing the work, either
problem, the gist of the solution of that problem through the directly or by means of any device or process; in the case of an
invention, and the principal use/s of the invention. audiovisual work, the showing of its images in sequence and the
making of the sounds accompanying it audible; and, in the case of a
KINDS OF PATENT INFRINGEMENT sound recording, making the recorded sounds audible at a place or at
places where persons outside the normal circle of a family and that
Literal Infringement: Under Sec. 76, the making, using, offering for family's closest social acquaintances are or can be present,
sale, selling, or importing a patented product or a product obtained irrespective of whether they are or can be present at the same place
directly or indirectly from a patented process, or the use of a patented and at the same time, or at different places and/or at different times,
process without the authorization of the patentee constitutes patent and where the performance can be perceived without the need for
infringement. communication.

Doctrine of Equivalents: A patent infringement also takes place when However, under Sec. 184(a), the recitation or performance of a work,
a device appropriates a prior invention by incorporating its innovative once it has been lawfully made accessible to the public, if done
concept and, although with some modification and change, performs privately and free of charge or if made strictly for a charitable or
substantially the same function in substantially the same way to religious institution or society shall not constitute infringement of
achieve substantially the same result. It requires the satisfaction of the copyright. Furthermore, under Sec. 184(i), the public performance or
function-means-and-result test, the patentee having the burden to the communication to the public of a work, in a place where no
show that all three components of such equivalency test are met. admission fee is charged in respect of such public performance or
 Identity of result does not amount to infringement of patent communication, by a club or institution for charitable or educational
unless Albendazole operates in substantially the same way or by purpose only, whose aim is not profit making.
substantially the same means as the patented compound, even
though it performs the same function and achieves the same COLLECTIVE MANAGEMENT ORGANIZATIONS
result. In other words, the principle or mode of operation must
be the same or substantially the same. (Smith Kline Beckman Under Sec. 183, copyright owners or their heirs may designate a
Corp. v. Court of Appeals) society of artists, writers or composers to enforce their economic
rights and moral rights on their behalf. Collective management
2. COPYRIGHTS organizations (CMOs) help monitor the use of their members’
copyrighted works, assist copyright owners in claiming royalties or
ECONOMIC RIGHTS OF A COPYRIGHT OWNER commissions from the use of their works, guide copyright owners in
the licensing of their rights to third parties, and lend its technological
Under Sec. 177, copyright or economic rights shall consist of the know-how and capacity for the protection of their members from
exclusive right to carry out, authorize or prevent the following acts: copyright infringement. A CMO is essentially appointed by copyright
holders to manage and administer the rights in their copyright works.
a. Reproduction of the work or substantial portion of the work.
b. Dramatization, translation, adaptation, abridgment, arrangement Managing copyright and related rights individually may not always
or other transformation of the work. be realistic. An author, performer or producer, for instance, cannot
c. The first public distribution of the original and each copy of the contact every single radio station to negotiate licenses and
work by sale or other forms of transfer of ownership. remuneration for the use of their songs. On the other side, it is not
d. Rental of the original or a copy of an audiovisual or practical for a radio station to seek specific permission from every
cinematographic work, a work embodied in a sound recording, a author, performer and producer for the use of each song. CMOs
facilitate rights clearance in the interest of both parties and economic As a general rule, pursuant to Sec. 178.1, in the case of original
reward for rights holders. literary and artistic works, copyright shall belong to the author of the
work.
Example of CMOs registered with the Intellectual Property Office are However, under Sec. 178.3, in the case of work created by an author
the Filipino Society of Composers, Authors and Publishers, Inc. during and in the course of his employment, the copyright shall
(FILSCAP), the Performers Rights Society of the Philippines, Inc. belong to:
(PRSP), and the Sounds Recording Rights Society, Inc. (SRRS).  The employee, if the creation of the object of copyright is not a
part of his regular duties even if the employee uses the time,
EPHEMERAL RECORDINGS facilities and materials of the employer.
 The employer, if the work is the result of the performance of his
Under Sec. 184(g), the making of ephemeral recordings by a regularly-assigned duties, unless there is an agreement, express
broadcasting organization by means of its own facilities and for use or implied, to the contrary.
in its own broadcast does not constitute copyright infringement.
 Example: During a live sporting event or news cast where it Also, under Sec. 178.4, in the case of a work commissioned by a
would be nearly impossible for that broadcaster to get a person other than an employer of the author and who pays for it and
clearance for the music while that broadcast is happening in real the work is made in pursuance of the commission, the person who so
time. If a song is played over the loud speaker at a stadium commissioned the work shall have ownership of the work, but the
where a live broadcast is occurring, the broadcaster is not legally copyright thereto shall remain with the creator, unless there is a
obligated to obtain a license for that song. written stipulation to the contrary.

BROADCASTING TRANSFER and ASSIGNMENT OF COPYRIGHT

Under Sec. 202.7, broadcasting is the transmission by wireless means Under Sec. 181, the copyright is distinct from the property in the
for the public reception of sounds or of images or of representations material object subject to it. Consequently, the transfer or assignment
thereof; such transmission by satellite is also broadcasting where the of the copyright shall not itself constitute a transfer of the material
means for decrypting are provided to the public by the broadcasting object. Nor shall a transfer or assignment of the sole copy or of one or
organization or with its consent. several copies of the work imply transfer or assignment of the
 ABS-CBN creates and transmits its own signals; PMSI merely copyright. Under Sec. 180.2, the copyright is not deemed assigned
carries such signals which the viewers receive in its unaltered inter vivos in whole or in part unless there is a written indication of
form. PMSI does not produce, select, or determine the programs such intention.
to be shown in Channels 2 and 23. Likewise, it does not pass
itself off as the origin or author of such programs. Insofar as 3. MIDTERMS TOPICS NOT ASKED IN PREVIOUS EXAM
Channels 2 and 23 are concerned, PMSI merely retransmits the
same in accordance with Memorandum Circular 04-08-88. With TRADEMARK, PATENTS, AND COPYRIGHT DISTINGUISHED
regard to its premium channels, it buys the channels from
content providers and transmits on an as-is basis to its viewers. In Kho v. Court of Appeals, trademark, copyright and patents are
Clearly, PMSI does not perform the functions of a broadcasting different intellectual property rights that cannot be interchanged with
organization; thus, it cannot be said that it is engaged in one another.
rebroadcasting Channels 2 and 23.  A mark is any visible sign capable of distinguishing the goods
 While the Rome Convention gives broadcasting organizations (trademark) or services (service mark) of an enterprise and shall
the right to authorize or prohibit the rebroadcasting of its include a stamped or marked container of goods.
broadcast, however, this protection does not extend to cable  The scope of a copyright is confined to literary and artistic
retransmission. The retransmission of ABS-CBN’s signals by works which are original intellectual creations in the literary and
PMSI – which functions essentially as a cable television – does artistic domain protected from the moment of their creation.
not therefore constitute rebroadcasting in violation of the  Patentable inventions refer to any technical solution of a
former’s intellectual property rights. (ABS-CBN v. Philippine problem in any field of human activity which is new, involves
Multimedia Inc.) an inventive step and is industrially applicable.

DOCTRINE OF FAIR USE FUNCTIONS OF A TRADEMARK

Under Sec. 185.1, the fair use of a copyrighted work for criticism a. Economic - ability of a mark to distinguish one’s goods or
(may include satire or parody), comment, news reporting, teaching services from other enterprises.
including multiple copies for classroom use, scholarship, research, b. Source Indicating - ability of a mark to inform the public of the
and similar purposes is not an infringement of copyright. In source or origin of a certain good or service.
determining whether the use made of a work in any particular case is c. Advertising - ability of a mark to be remembered by consumers
fair use, the factors to be considered shall include: or to be associated with a certain brand.
d. Guaranty - assurance to consumers regarding the quality and
a. The purpose and character of the use, including whether such consistency of products or services bearing such mark.
use is of a commercial nature or is for non-profit educational
purposes. KINDS OF TRADEMARKS
b. The nature of the copyrighted work.
c. The amount and substantiality of the portion used in relation to a. Word Mark - consists of numbers, letters, and symbols
the copyrighted work as a whole. (comprised mainly of typographical text)
d. The effect of the use upon the potential market for or value of b. Device Mark - refers to a logo or design
the copyrighted work. c. Composite Mark - a combination of a word and device mark

OWNERSHIP OF COPYRIGHTS DECLARATION OF ACTUAL USE AND RESULT OF NON-USE

Under Sec. 124.2, an applicant/registrant shall file a declaration of
actual use of the mark with evidence to that effect within 3 years Under Sec. 133.4, an abandoned application may be revived as a
from the filing date of the application. Otherwise, the application pending application within 3 months from the date of abandonment,
shall be refused or the mark shall be removed from the Register by upon good cause shown and the payment of the required fee.
the Director of Trademarks.
 The removal of the mark from the Register due to non- TRANSLATION and TRANSLITERATION
compliance will allow another party to register the subject mark.
Translation is the rendering of a word from one language to its
Under Sec. 145, a certificate of registration shall remain in force for meaning in another language. (e.g. the word Huawei means “China
10 years: Provided, that the registrant shall file a declaration of actual has promise” in English).
use and evidence to that effect, or shall show valid reasons based on
the existence of obstacles to such use within 1 year from the fifth Transliteration is the process of transcribing a word written in a
anniversary of the date of the registration of the mark. Otherwise, the foreign writing system into another form of writing based not on the
mark shall be removed from the Register by the IPO. meaning of the word but on how it is pronounced (e.g. the Chinese
 In Berris Agricultural v. Norvy Abyadang, receipts, sales characters of “Huawei” to Huawei).
invoices, testimonies of witnesses as customers, and orders of
buyers, best prove the actual use of a mark in trade and DISCLAIMERS
commerce during a certain period of time. Advertisements,
circulars, or distribution of price lists alone will not inure to the It is a notice to the public that certain elements or features of a
claim of ownership of the mark until the goods bearing the mark composite mark are not being exclusively appropriated by the
are sold to the public in the market. registrant. A disclaimer becomes necessary when parts of an
otherwise registrable mark are non-registrable, such as generic or
RENEWAL OF CERTIFICATE OF REGISTRATION descriptive words, thus required to be disclaimed. As a result, the
entirety of the composite mark is registered and accorded protection
Under Sec. 146, a certificate of registration may be renewed for by law, but the disclaimed may still be used by third parties since
periods of 10 years at its expiration upon payment of the prescribed these parts are not registrable.
fee and upon filing of a request.
 Petition for renewal of certificate of registration. CONCEPT OF CONFUSION and TESTS FOR DETERMINING
 Repeat the requirements of the two declarations of actual use, TRADEMARK INFRIGEMENT
with proof thereof, aforementioned.
In McDonald’s v. L.C. Mak, there are two types of confusion arising
RIGHTS CONFERRED BY REGISTRATION from the use of similar or colorable imitation marks, namely:

Under Sec. 147.1, the owner of a registered mark shall have the 1. In confusion of goods (product confusion), the ordinarily
exclusive right to prevent all third parties not having the owner’s prudent purchaser would be induced to purchase one product in
consent from using in the course of trade identical or similar signs or the belief that he was purchasing the other.
containers for goods or services which are identical or similar to 2. In confusion of business (source or origin confusion), though the
those in respect of which the trademark is registered where such use goods of the parties are different, the defendant’s product might
would result in a likelihood of confusion. In case of the use of an reasonably be assumed to originate with the plaintiff, and the
identical sign for identical goods or services, a likelihood of public would then be deceived into believing that there is some
confusion shall be presumed. connection between the plaintiff and defendant which, in fact,
 Generally, protection extends to goods or services enumerated in does not exist.
your trademark application.
 Rights of an owner of property are vested, which include the In determining likelihood of confusion, jurisprudence has developed
right to sell, assign, license the use thereof, franchise etc. two tests:
 Acquisition of trademark rights can only be done in the concept
1. The dominancy test focuses on the similarity of the prevalent
of an owner. Intent to use the mark is sufficient to secure
features of the competing trademarks that might cause
registration.
confusion. The courts give greater weight to:
 As between two or more registrants, the first to file would have
 The similarity of the appearance of the product arising from
priority in right, provided that the registration was made in the
the adoption of the dominant, main, and essential features
concept of an owner.
of the registered mark which may likely result in confusion
and deception, disregarding minor differences.
As an exception, pursuant to Sec. 147.2. the exclusive right of the
owner of a well-known mark which is registered in the Philippines,  The aural (sound) and visual (sight) impressions created by
shall extend to goods and services which are not similar to those in the marks in the public mind, giving little weight to factors
respect of which the mark is registered: Provided, that use of that like prices, quality, sales outlets and market segments.
mark in relation to those goods or services would indicate a 2. The holistic test considers the entirety of the marks as applied to
connection between those goods or services and the owner of the the products, including the labels and packaging.
registered mark, and that the interests of the owner of the registered  The holistic test is contrary to the elementary postulate of
mark are likely to be damaged by such use. the law on trademarks and unfair competition that
 In 246 Corporation v. Hon. Daway and Montres Rolex S.A, a confusing similarity is to be determined on the basis of
junior user of a well-known mark on goods or services which are visual, aural, connotative comparisons and overall
not similar to the goods or services, and are therefore unrelated, impressions engendered by the marks in controversy as
to those specified in the certificate of registration of the well- they are encountered in the realities of the marketplace.
known mark is precluded from using the same on the entirely
unrelated goods or services

ABANDONMENT AND REVIVAL OF TRADEMARK APPLICATION