TRADEMARK INFRINGEMENT Elements: 1, Ownership of a trademark through registration 2eThat the trademark is reproduced, counterfeited, copied, or colourably imitated by another 3. No consent by the trademark owner or assignee 4. Use in connection with the sale, offering for sale, or advertisi any such goods, business or services or those related there 5. Likelihood of ConfusionCOLORABLE IMITATION *such a close or ingenious imitation as to be calculated to deceive ordinary purchasers, or such resemblance of the infringing mark to the original as to deceive an ordinary purchaser giving such attention as a purchaser usually gives, and to cause him to purchase the one supposing it to be the otherLikelihood of confusion Types of confusion * Confusion of goods- As to the goods themselves * Confusion of business- As to the source or origin of such goods -Wherein the goods of the parties are different but the defendant's product can reasonably be assumed to originate from the plaintiff thereby deceiving the public into believing that there is some connection between the plaintiff and defendant, which in fact, does not exist. HommeTests of confusion * Dominancy test- focuses on the prevalent features of the competingTests of confusion + Totality test- determined on the basis of visual, aural, connotative comparisons and overall impressions engendered by the marks in controversy as they are encountered in the marketplace. ¢ Stud EOther factors +a Sonans Rule — aural effects of the words and letters contained in the marks are also considered in determining the issue of confusing similarity « Examples: @ “Pycogenol” vs. “PCO-GENOL” (Prosource vs. Horphag) @ “Dermaline” vs. “Dermalin” (Dermaline Inc. vs. Myra Pharmaceuticals) @ “Nanny” vs. “Nan” (Nestle S.A. vs. Dy Jr.)Doctrine of secondary meaning * This doctrine is to the effect that a word or phrase originally incapable of exclusive appropriation with reference to an article on the market, because geographically or otherwise descriptive, might nevertheless ‘0 long and so exclusively by one producer with reference to his article that, in that trade and to that branch of the purchasing public, the word or phrase has come to mean that the article was his product.Unfair competition * It is the passing off (or palming off) or attempting to pass off upon the public of the goods or business of one person as the goods or business of another with the end and probable effect of deceiving the public. Unauthorized use of a trademark. The passing off of one’s goods as those of another. Fraudulent intent is unnecessary. Fraudulent intent is essential. GR: Prior registration of the trademark is Registration is not necessary. a prerequisite to the action. XPN: Well-known marksRemedies and Jurisdiction Administrative action — IPO-BLA, concurrent with RTC-SCCs Civil Action, RTC-SCC concurrent with IPO-BLA @Criminal-Action,exclusive with RTC-SCC -2-5 years imprisonment -P50,000-P200,000 in fineCOPYRIGHT * Aright over literary and artistic works which are original intellectual creations in the literary and artistic domain protected from the moment of creation 4 ASECopyrightable works Derivative Works a. Dramatizations, translations, adaptations, abridgements, arrangements, and other alterations of literary or artistic works; b. Collections of literary, scholarly, or artistic works and compilations of data and other materials which are original by reason of the selection or coordination or arrangement of their contents (IPC, Sec. 173). CSECopyrightable works 1. Literary and Artistic Works a. Books, pamphlets, articles and other writings b. Lectures, sermons, addresses, dissertations prepared for Oral delivery, whether or not reduced in writing or other material form € Letters (shall belong to the writer) 4. Dramatic, choreographic works ¢, Musical compositions {. Works of Art 6. Periodicals and Newspapers h. Works relative to Geography, topography, architecture or science i. Works of Applied art J. Works of a Scientific or technical character k. Photographic works |. Audiovisual works and cinematographic works 'm. Pictorial illustrations and advertisements. ¥. Computer programs; and 0. Other literary, scholarly, scientific and artistie works (PC, Sec. 172.1) 4 (ties oeCopyrightable works Derivative Works a. Dramatizations, translations, adaptations, abridgements, arrangements, and other alterations of literary or artistic works; b. Collections of literary, scholarly, or artistic works and compilations of data and other materials which are original by reason of the selection or coordination or arrangement of their contents (IPC, Sec. 173).NON-COPYRIGHTABLE WORKS 1. Idea, procedure, system, method or operation, concept, principle, discovery or mere data as such 2. News of the day and other items of press information ' 3. Any official text of a legislative, administrative or legal nature, as well as any official translation thereof 5. Decisions of courts and tribunals ~ this refers to original decisions and not to annotated decisions such as the SCRA or SCAD as these already fall under the classification of derivative works, hence copyrightable 6. Any work of the government of the Philippines 7. TV programs, format of TV programs (Joaquin v. Drilon, G.R. No. 108946, Jan. 28, 1999) 8. Systems of bookkeeping; and 9, Statutes.ARE TELEPHONE DIRECTORIES GHTABLE? jes are not copyrightable and therefore the use of them does not infringement. The Intellectual Property Code mandates originality as a prerequisite for copyright protection. This requirement necessitates independent creation plus a modicum of creativity. Ses + A compilation is not copyrightable per se, but is copyrightable only if its facts have been "selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship.” Thus, the statute envisions th some ways of selecting, coordinating, and arranging data are not sufficiently or to trigger copyright protection. Even a compilation that is copyrightable recei limited protection, for the copyright does not extend to facts con compilationRights of copyright owners ‘Economic rights - The right to carry out, authorize or prevent the following acts: ‘a. Reproduction of the work or substantial portion thereof b. Carry-out derivative work (dramatization, translation, adaptation, abridgement, arrangement or other transformation of the work) «. First distribution of the original and each copy of the work by sale or other forms of transfer of ‘ownership 4, Rental right . Public display f. Public performance {Other communications to the public. 4 esDuration of economic rights Literary and Artistic Works Derivative Works. Joint Authorship ‘Anonymous or Pseudonymous Works Work of Applied Art Photographic works Audiovisual works Performances nat incorporated in recordings Sound recordings and performances Incorporated therein Life ofthe author + 50 years after his death Life ofthe last surviving author + 50, vears after his death 50 years from date itis firs lawfully published If before expiration of period, identity is revealed or no longer in doubt, the rule fn Literary and Joint Authorship applies 25 years from date of making I published ~ 50 years from publication, Unpublished ~ 50 years from making 50 years from end of the year in which performance took place 50 years from end of the year in which recording took placeithorship of the works be attributed to him (attribution right/paternity right) b. To make any alterations of his work prior to, or to withhold it from publication c. To preserve integrity of work, object to any distortion, mutilation or other modification which would be prejudicial to his honor or reputation; and d. To restrain the use of his name with respect to any work not of his own, a distorted version of his work(right against false attribution) (IPC, Se:Duration of moral rights * “During the lifetime of the author and in perpetuity after his death” — Paternity Right/Right of Attribution * Coterminous with Economic Rights -Alteration and Non-Publication Right; Right to Preservation of Integrity; and Right against False Attribution estExpiration Of Copyright - Transfers to public domain - Examples: Pride and Prejudice, The Lizzie Bennet Diaries aSCopyright infringement Element > Ownership of a valid copyright ‘Proof of Ownership: Sec. 218 ~ Affidavit Evidence > Exercise of any of the exclusive economic rights in Section 177 without the consent of the copyright owner MIUNLESS: FAIR USEFair use exception * fair oe for criticism, comment, news reporting, teaching [C- C-N-T] including limited [multiple] number of copies for _.classroom_use, scholarship, research and similar purposes {CSR} . (Sec. 185)Factors to be considered in determining fair use (Sec. 185) L Purpose & character of the use 01 -2.Nature.of the copyrighted Work 3. Amount & substantiality of the portion used in relation to the copyrighted work as a whole; & 4. Effect of the use upon the potential market for or value of the copyrighted work.Who are liable for infringement? a. Directly commits an infringement; b. Benefits from the infringing activity of another person who commits anunidoaement ithe person beneftnghas been given notice ofthe infringing activity and has the right and ability to control the activities of the other person; c. With knowledge of infringing activity, induces, causes or materially contributes to the infringing conduct of another (IPC, Sec. 216, as amended by R.A. No. 10372).¥ yright infringement vs. plagiarism u The _unauthorized......use of The.use of another's information, I in a manner le that violates one of the copyright withou owner's exclusive rights, such as of the original source. the right to reproduce or perform the copyrighted work, or to make derivative works that build upon itRemedies in case of Copyright Infringement 12. Damages, including legal costs and other expenses, as he may have incurred due to the Infringement as well asthe profits the infringer may have made due to such infringement Ss Impounding: during the.pendency of the action sales invoices and other documents evidencing sales, 4. Destruction without any compensation all infinging copies 5. Moral and Exemplary damages (IPC, Se. 216.1); or 6, Seizure and impounding of any article, which may serve as evidence inthe court proceeding (iP¢, Sec. 216.2)Differences between Copyright, Trademark and Patents 1s a Intellectual rights Technical solution of Any visible sign capable _titeraryand artistic problem inany fied of | of distinguishing the works hhuman activity which's goods (tademark or ‘ew (novel invention) Services (service mark) and industily of an enterprise must be spoliabie Term of protection 20 years from ling date {depends onthe type of ‘of application .(generaly 50 yeas) Office where registered Bureau of Patents, Bureau of Not required; Intellectual Trademars, Optional at The Property Office Intellectual "Nationa Library Property Office or PoPractical application > * Copyright? Logos and word marks * Patent? Camere, fingerprint recognition, facial recognitionDoctrine of Exhaustion Also known as the doctrine of first sale, it provides that the patent holder has control of the first sale of his invention. He has the opportunity to receive the full consideration for his invention from his sale. Hence, he exhausts his rights in the future control of his invention. 4 | Bee mclaren cecy ConenecePatent Infringement The MAKING, USING, OFFERING FOR SALE, SELLING, or IMPORTING a patented product or a product obtained directly or indirectly from a patented process, or the USE of a patented process without the authorization of the patentee. (Sec. 76)A patent maybe infringed either: 1.Literally, or 2.By equivalentsLiteral infringement Literal infringement exists if an accused device falls directly within the scope of properly interpreted claims. 4 1 AESDoctrine of equivalents An infringement also occurs when a device appropriates a prior invention by incorporating its innovative concept and, ification and change, performs substantially the same function in substantially the same way to achieve substantially the same result. function-means- and-result testREMEDIES OF THE OWNERS OF THE PATENT AGAINST INFRINGERS * Civil action for infringement * Criminal action for infringement — If the infringement is repeated; The criminal action prescribes'in three (3) years from the commission of the crime * Administrative remedy - Where the amount of damages claimed is not less than P200,000.00 * Destruction of Infringing material-upon court order eoDEFENSES IN ACTION FOR INFRINGEMENT L.nvalidity of the patent (IPC, Sec. 81); 2. Any of the grounds for cancellation of patents: a. That what is claimed as the invention is not new or patentable b. That the patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by any person skilled in the art; or c. That the patent is contrary to public order or morality (IPC, Sec. 61). 3. Prescription BEE eeRequirements for a mark to be registered * Avisible sign and * Capable of distinguishing one’s goods and services from another. SA 1 ASSVisible sign * Words sletters + Nuinerals Fi Pi * Shapes * Colors + Logos * Three dimensional * Objects * CombinationsNot visible * Scents * Sounds 4Marks which may be registered Any word, name, symbol, emblem, device, figure, sign, phrase, or any combination thereof except those enumerated under Section.123, IPC.Trademark vs. Trade nam: TRADEMARK TRADE NAME Identifies or distinguishes the goods Identifies or distinguishes the or services business or enterprise Registration is required Registration is not required.Collective mark * mark or trade-name used by the members of a cooperative, an association or other collective group or organization aRIGHTS OVER A TRADEMARK CONFERRED * The rights in a mark shall be acquired through registration with the IPO. (IPC, Sec. 122) The filing date of application is the operative act to acquire trademark rights. * Prior use is no longer a condition precedent for registration of trademark, service mark or trade name. odCQUISI ERSHIP OF * The rights in a mark shall be acquired through registration but the right to register a trademark should be based on * An exclusive distributor does not acquire any prop! interest in the principal's trademark and cannot register it i his own name unless it is has been validly assigned to hiiREGISTRATION *- Prior use is not a requirement but there must be actual use after application *-Declaration of Actual Use — within three (3) years from filing of the applicationDURATION OR EFFECTIVITY OF TRADEMARK REGISTRATION +10 years, subject to indefinite renewals of 10 years each. required to file a declaration of actual use and evidence to that effect, or show valid reasons based on the existence of obstacles to such use, within one (1) year from the fifth anniversary of the date of the registration of the mark. Otherwise, the mark shall be removed from the Register by the IPO. (IPC, Secs. and 146)NON-REGISTRABLE MARKS * Immoral, deceptive, or scandalous matters * Matter which may disparage or falsely suggest a connection with persons, etc. * Contrary to public order or morality 7 AesNON-REGISTRABLE MARKS * Flags/coat of arms of nations *- Names, portraits or signature of living * persons - Exception: with consent *- Names, portraits or signature of a deceased President of the Philippines - Exception: with written consent of his/her living widow 4 | AeNON-REGISTRABLE MARKS . cle nee mere tat pl jetor ora r priority date, in rO| an of: a. The same 2 The same goods or services, ow vv b. Closely related goods or services, or c. If it nearly resembles such a mark as to be likely to deceive or cause confusion: ' *FIRST-TO-FILE RULE‘NON-REGISTRABLE MARKS: WELL- KNOWN MARKS * Identical with an internationally well-known mark, whether or not it is registered here, used for identical or similar goods or services; ‘dential with an internationally well-known mark which is registered the Philippines with respect to non-similar goods or services. Provided, that the interests of the owner of the registered mark are likely to be damaged by such use;RIGHTS OF A TRADEMARK OWNER + Right to exclusive use of the mark in connection with one’s own goods or services resulting in likelihood of confusion +" Right to prevent others from use of an identical mark for the same, similar or related goods or services. (Sec.147) TERRITORIALITY PRINCIPLE: Trademark registration abroad shall not be valid and binding here in the Philippines Exception: Well-known marks, bad faithTRADEMARK INFRINGEMENT Cane ee *Use without consent of the trademark owner of any reproduction, counterfeit, copy or colorable limitation of any or trade name. Such use is likely to cause confusion or mistake or to deceive purchasers or others as to the source or origin of such goods or services, or Identity of such business.TRADEMARK INFRINGEMENT *Use without consent of the trademark owner of any reproduction, counterfeit, copy or colorable limitation of any or trade name. Such use is likely to cause confusion or mistake or to deceive purchasers or others as to the source or origin of such goods or services, or Identity of such business.Rule: When a work has already been made available to the public, it shall be non-patentable for absence of novelty. Exception: Doctrine of Non-Prejudicial Disclosure the disclosure of information contained in the application during the 12-month period before the filing date or the priority date of the application if such disclosure was made by: 1. The inventor; 2. Apatent office and the information was contained: a. In another application filed by the inventor and should have not have been disclosed by the office, o b. In an application filed without the knowledge or consent of the inventor by a third party which obtained the information directly or indirectly from the inventor; 3. A third party who obtained the information directly or indirectly from the invento!Test of Non-Obviousness * If any person possessing ordinary skill in the art was able to draw the inferences and he constructs that the supposed inventor drew from prior art, then the latter did not really invent it * Person skilled in the art-Ordinary practitioner (fictional person) a. Has access and understanding of all the prior art b. Aware of common general knowledge in the specific art c. Observes developments in the related technical field -could be a team; need not have inventive abiliNon-patentable inventions _}. Fant varieties or animal breeds or essentially biological process for the production of plants 4r animals. This provision shall not apply to micro-organisms and non-biological and microbiological processes; @sthetic creations; fh Le 3, Discoveries, scientific theories and mathematical methods; i GS 4. Schemes, rules and methods of performing mental acts, playing games or doing business, and programs for computers; 5. Anything which is contrary to public order or morality (IPC as amended by R.A. 9502, Sec. 2: 6. Methods for treatment of the human or animal body; and 7. In the case of drugs and medicines, mere discovery of a new form or new proper known substance which does not result in the enhancement of the efficacy of thaOWNERSHIP OF PATENTS SECTION 28. Right to a Patent. - The right to a patent belongs to the inventor, his heirs, or assigns. When two (2) or more persons have jointly made an invention, the right to a patent shall belong to them jointly. m7 (AESMay patent rights be assigned or transferred? YES. For a valid assignment of patent rights, the assignment must be in writing and must be duly notarized. (IPC, Sec. 105)FIRST-TO-FILE RULE * If two (2) or more persons have made the invention separately and independently of each other, the right to the patent shall belong to the person who filed an application for such invention, or * Where two or more applications are filed for the same invention, to the applicant which has the earliest filing date (/PC, Sec. 29).INVENTIONS CREATED PURSUANT TO A COMMISSION Pursuant to a commission: The person who commissions the work shall own the patent, unless otherwise provided in the contract. Pursuant to employment: In case the employee made the invention in the course of his employment contract, the patent shall belong to: a. The employee, if the inventive activity is not a part of his regular duties even if th employee uses the time, facilities and materials of the employer; b. The employer, if the inventive activity is the result of the performance o regularly-assigned duties, unless there is an agreement, express or in contrary (IPC, Sec. 30).Patent registration The procedure for the grant of patent may be summarized as follows: 1. Filing of the application 2. Accordance of the filing date 3. Formality examination 4. Classification and Search 5. Publication of application 6. Substantive examination 7. Grant of Patent 8. Publication upon grant 9. Issuance of certificate Sf (aPatent application SECTION 32. The Application. - 32.1. The patent application shall be in Filipino or English and shall contain the following: (a) A request for the grant of a patent; (b) A description of the invention; (c) Drawings necessary for the understanding of the invention; (d) One or more claims; and (e) An abstract. Homme enoGrounds for cancellation of patent may petition to cancel any patent or any claim or parts of a claim any of the following grounds: 1. The invention is not new or patentable; 2. The patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by any person skilled in the art; or 3. Contrary to public order or morality (IPC, Sec. 61.1); 4. Patent is found invalid in an action for infringement (IPC, Sec. 82); and 5. The patent includes matters outside the scope of the disclosure contained in'the application. (IPC, Sec 21, Regulations on Inter Partes Proceeding, Sec.1)Patent Application by Persons Not Having the Right to a Patent Remedies of persons with a right to a patent Ifa person other than the applicant is declared by final court order or decision as having the right to a patent, he may within 3 months after such decision has become final: 1. Prosecute the application as his own 2. File a new patent application 3, Request the application to be refused; or 4, Seek cancellation of the patent (IPC, Sec. 67.1). Time to file action:within one (1) year from the date of publication 7 heeRemedies of the True and Actual Inventor If a person, who was deprived of the patent without his consent or through fraud is declared by final court order or decision to be the true and actual inventor, the court shall order for his substitutior-espatentee, or at the option of the true inventor, cancel the patent, and award actual and other damages in his favor if warranted by the circumstances. Time to file action: within one (1) year from the da publicationRights conferred by patent 1. In case of Product — Right to restrain, prohibit and prevent any unauthorized person or entity from making, using, offering for sale, selling or importing(MUOSI) the product. 2. In case of Process — Right to restrain prohibit and prevent any unauthorized person or entity from manufacturing, dealing in, using, offering for sale, selling or importing any product obtained directly or indirectly from such process. (IPC, Sec. 71) ' 3. Right to assign the patent, to transfer by succession, and to conclude licensing contracts. (IPC, Sec. 71.2) The rights conferred by a patent application take effect after publication Official Gazette. (IPC, Sec 46)LIMITATIONS OF PATENT RIGHTS ‘The owner of a patent has no right to prevent third parties from making, using, offering for sale, selling or importing a patented product in the following circumstances: 2. Using a patented product after it has been put on the market in the Philippines by the owner of the product, or with his express consent. * In case of drugs or medicines, the said limitation applies after a drug or medicine has been introduced in the Philippines or anywhere else in the world by the patent owner, or by any party authorized to Use the invention. This allows parallel importation for drugs and medicines. + The right to import the drugs and medicines shall be available to any government agency 0 private third party (IPC, Sec. 72.1, as amended by RA No. 9502)LIMITATIONS OF PATENT RIGHTS b. Where the act is done privately and on a non-commercial scale or for a non- commercial purpose (IPC, Sec. 72.2). c. Exclusively for experimental use of the invention for scientific purposes or educational purposes. (IPC, Sec. 72.3). d. In the case of drugs and medicines, where the act includes testing, using, making or selling the invention including any data related thereto, solely for purposes reasonably related to the development and submission of information and issuance of approvals by government regulatory agencies required under any law of the Philippines or of another country that regulates the manufacture, constructio or sale of any product.OTHER LIMITATIONS... ‘Prioruser — ' Person other than the applicant, who in good faith, started using the invention in the Philippines, or undertaken serious preparations to use the same, before the filing date or priority date of the application shall have the right to continue the use thereof, but this right shall only be transferred or assigne further with his enterprise or business (IPC, Sec. 73).Other limitations: Use by government 74.1. A Government agency or third person authorized by the Government may exploit the invention, even without agreement of the patent owner where: (a) The public interest, in particular, national security, nutrition, health or the development of other, sectors, as determined by the appropriate agency of the government, so requires; or (b) A judicial or administrative body has determined that the manner of exploitation, by the owner of the patent or his licensee is anti-competitive; or (c)In the case of drugs and medicines, there is a national emergency or other circumstance of extreme urgency requiring the use of the invention; or (4) In the case of drugs and medicines, there Is public non-commercial use of the patent by the patentee, without satisfactory reason; or () In the case of drugs and medicines, the demand for the patented article in the Phi being met to an adequate extent and on reasonable terms, as determined by the Department of Health.