A distinctive-tasting pastillas is well-known throughout the country as having been developed

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

(a) Can Aling Voling successfully obtain court relief to prohibit Aling Yasmin from using
the brand name "Ysmaellas" in her products on the basis of her (Aling Yoling's)
copyright? What is the difference between registration as a copyright and registration as
a trade or brand name? (2.5%)

(b) Can Aling Yasmin seek injunctive relief against Aling Voling from using the brand
name "Ysmaellas," the latter relying on the doctrine of "prior use" as evidenced by her
prior copyright registration? (2.5%)

(c) Can Aling Voling seek the cancellation of Aling Yasmin's trademark registration of the
brand name "Ysmaellas" on the ground of "Well Known Brand" clearly evidenced by her
(Aling Yoling's) prior copyright registration, actual use of the brand, and several
magazine articles? (2.5%)

XV. A. Aling Yoling cannot successfully obtain court relief to prohibit Aling Yasmin from using the
brand name “ Ysmaellas “ in her product on the basis of Aling Yoling’s copyright. The brand name “
Ysmaellas “ is proper subject of trademark, not copyright. They cannot be interchanged. The
copyright on a trade name or mark does not guarantee her the right PROPOSED ANSWERS TO THE
2018 BAR EXAMS IN COMMERCIAL LAW Dean Nilo T. Divina 8 to the exclusive use of the same for
the reason that it is not a proper subject of said intellectual right. ( Kho vs. Court of Appeals, GR NO.
115758, March 19, 2002; Juan vs Juan, GR No. 221372, August 23, 2017 ). The registration of a
copyright is only a proof of the recording of the copyright but not a condition precedent for the
copyright to subsist and for copyright infringement suit whereas registration of a trademark is an
indispensable requisite for any trademark infringement suit. B. Aling Yasmien can seek injunctive
relief against Aling Yoling from using the brand name “ Ysmaellas “ because of the doctrine of prior
use. It is ownership of the trademark that confers the right to register. Registration does not confer
ownership. Since Aling Yasmin was the first one to use the brand or trade name in commerce, then
she is considered the owner thereof. EY Industrial Sales vs Shen Dar 634 SCRA 363 C. NO, Aling Yoling
cannot seek the cancellation of Aling Yasmin’s trademark registration of the brand name “ Ysmaellas
on the ground of well-known brand because the wellknown mark rule only applies to a mark which is
well-known internationally and in the Philippines ( Section 123 ( E ) of the Intellectual Property
Code ). Neverthless, she can seek the cancellation of the trademark for being the prior user even
though the mark is not well-known.
Yosha was able to put together a mechanical water pump in his garage consisting of suction
systems capable of drawing water from the earth using less human effort than what was then
required by existing models. The water pump system provides for a new system which has the
elements of novelty and inventive steps. Yosha, while preparing to have his invention registered
with the IPO, had several models of his new system fabricated and sold in his province.

(a) Is Yosha's invention no longer patentable by virtue of the fact that he had sold several
models to the public before the formal application for registration of patent was filed with
the IPO? (2.5%)

(b) If Yosha is able to properly register his patent with the IPO, can he prevent anyone
who has possession of the earlier models from using them? (2.5%)

A. Yosha’s invention is still patentable despite the fact he had sold several models to the public
before the formal application for registration of the patent was filed with the IPO. It is true that an
invention shall not be considered new if it forms part of a prior art and that prior art shall consist of
everything which has been made available to the public anywhere in the world, before the filing date
or the priority date of the application claiming the invention. This, however, presupposes that the
one who has made available the patentable invention to the public is a person other than the
applicant for patent.

B. Yosha can no longer prevent anyone who has possession of the earlier models from using them
even if Yosha is able to properly register the patent with the IPO. One of the limitations of patent
rights is the use of the patented product which has been put on the market in the Philippines by the
owner of the product insofar as such use is performed after the product has been so put on the said
market ( Section 172 of the IP Code )