TRADEMARK  Prior use is no longer a condition precedent for registration

of trademark, service mark or trade name.

Trademark means any visible sign capable of distinguishing the [when the mark is registered, that’s the time you have trademark right
goods (trademark) or services (service mark) of an enterprise and and ownership of that mark]
shall include a stamped or marked container of goods.
ACQUISITION OF OWNERSHIP OF MARK
Requirements for a mark to be registered  The rights in a mark shall be acquired through registration
- A visible sign and capable of distinguishing one's goods but the right to register a trademark should be based on
and services from another. ownership.
Visible sign Not visible  An exclusive distributor does not acquire any proprietary
interest in the principal's trademark and cannot register it in
 Words  Scents his own name unless it is having been validly assigned to
 Letters  Sounds him
 Numerals (Sound/Scent mark is [they should be able to prove that their trademark nga ilang ipa
 Figures/Pictures still not acceptable in register kay ilaha jd]
 Shapes the Philippines)
 Colors REGISTRATION
 Logos  Prior use _is_ not a requirement but there must be actual
 Three dimensional use after application
 Objects
 Declaration of Actual Use - within three (3) years from
 Combinations
filing of the application
[if dili nimo gamiton ang trademark, kuhaon na nimo]
Distinctiveness of a mark
 Fanciful trademarks DURATION OR EFFECTIVITY OF TRADEMARK
- Are made-up words which are invented to be used as a REGISTRATION
trademark name.
 10 years, subject to indefinite renewals of 10 years each
[gawa gawa nga words like Kodak, Polaroid]
 The registrant is required to file a declaration of actual use
 Arbitrary trademarks
and evidence to that effect, or show valid reasons based on
- Are words that have a real, common meaning but they are
the existence of obstacles to such use, within one (1) year
completely unrelated to the product or service.
from the fifth anniversary of the date of the registration of
[Totally unrelated sa actual products like Apple]
the mark. Otherwise, the mark shall be removed from the
 Suggestive trademarks
Register by the IPO. (IPC, Secs. 145 and 146)
- Are named after a characteristic of the product or service
[defines the characteristic of the product or services like
FILING DATE OF FOREIGN APPLICANT
Microsoft: Suggests software for small computers]
 An application for registration of a mark filed in the
 Descriptive trademarks
Philippines by a foreign national of a country with whom
- A description of the product or service
the Philippines extends reciprocity rights, and who
previously duly filed an application for registration of the
 Generic trademarks
same mark in one of those countries, shall be considered as
- Cannot be protected as they are simply a generic
filed as of the day the application was first filed in the
description of the product or service.
foreign country. (IPC Sec. 131.1)
Marks which may be registered  However, the owner of a well-known mark in the
Any word, name, symbol, emblem, device, figure, sign, phrase, Philippines that is identical with, or confusingly similar to,
or any combination thereof except those enumerated under or constitutes a translation of a mark, although not
Section 123, lPC. registered, may oppose the application of a mark of foreign
origin, or petition the cancellation of its registration or sue
Trademark Vs Tradename for unfair competition. (IPC, Sec. 131.3)
Trademark Tradename
Identifies or distinguishes the Identifies or distinguishes the NON-REGISTRABLE MARKS
goods or services business or enterprise  Immoral, deceptive, or scandalous matters
Registration is required Registration is not required  Matter which may disparage or falsely suggest a connection
[Trademark identifies the goods or services; Tradename is the with persons, etc.
business of enterprise]  Contrary to public order or morality
 Flags/coat of arms of nations
Collective mark - Names, portraits or signature of living
- Mark or trade-name used by the members of a cooperative,  Persons
an association or other collective group or organization. - Exception: with consent
 Names, portraits or signature of a deceased President of the
RIGHTS OVER A TRADEMARK CONFERRED Philippines
 The rights in a mark shall be acquired through registration - Exception: with written consent of his/her living widow
with the IPO. (IPC, Sec. 122) The filing date of application
is the operative act to acquire trademark rights.
NON-REGISTRABLE MARKS 2. That the trademark is reproduced, counterfeited, copied, or
 Identical with a registered mark belonging to a different colourably imitated by another
proprietor or a mark with an earlier filing or priority date, 3. No consent by the trademark owner or assignee N
in respect of: 4. Use in connection with the sale, offering for sale, or advertising of
a. The same goods or services, or any such goods, business or services or those related thereto
b. Closely related goods or services, or 5. Likelihood of Confusion
c. If it nearly resembles such a mark as to be likely to lo deceive
cause confusion; COLORABLE IMITATION
such a close or ingenious imitation as to be calculated to deceive
*FIRST-TO-FILE RULE ordinary purchasers, or such resemblance of the infringing mark to
the original as to deceive an ordinary purchaser giving such attention
NON-REGISTRABLE MARKS as a purchaser usually gives, and to cause him to purchase the one
 Misleading marks Sec. 123.1 (g) supposing it to be the other
 Generic terms [signs or of indications that have become
customary or usual to designate the goods or services in Likelihood of confusion
 everyday language or in bona fide and established trade Types of confusion
practice] Sec. 123.1(h) and (i)  Confusion of goods- As to the goods themselves
 Descriptive terms [signs or of indications that may serve in  Confusion of business- As to the source or origin of such
trade to designate the kind, quality, quantity, intended goods
 purpose, value, geographical origin, time or production of - Wherein the goods of the parties are different but the
the goods or rendering of the services, or other defendant's product can reasonably be assumed to originate
characteristics of the goods or services] Sec. 123.1(j) from the plaintiff thereby deceiving the public into
 Color alone; believing that there is some connection between the
 Shapes dictated by technical factors plaintiff and defendant, which in fact, does not exist.

NON-REGISTRABLE MARKS: WELL-KNOWN MARKS Tests of confusion

 Identical with an internationally well-known mark, whether Dominancy test- focuses on the prevalent features of the competing
marks
or not it is registered here, used for identical or similar
goods or services;
Totality test- determined on the basis of visual, aural, connotative
 Identical with an internationally well-known mark which is
comparisons and overall impressions engendered by the marks in
registered in the Philippines with respect to non-similar
controversy as they are encountered in the marketplace
goods or services Provided, that the interests of the owner
of the registered mark are likely to be damaged by such use;
Other factors
Idem Sonans Rule - aural effects of the words and letters contained in
RIGHTS OF A TRADEMARK OWNER
the marks are also considered in determining the issue of confusing
 Right to exclusive use of the mark in connection with one's
similarity
own goods or services resulting in likelihood of confusion
[sounds alike]
 Right to prevent others from use of an identical mark for
the same, similar or related goods or services. (Sec. 147)
Doctrine of secondary meaning
This doctrine is to the effect that a word or phrase originally
TERRITORIALITY PRINCIPLE: Trademark registration abroad
incapable of exclusive appropriation with reference to an article on
shall not be valid and binding here in the Philippines
the market, because geographically or otherwise descriptive, might
Exception: Well-known marks, bad faith
nevertheless have been used so long and so exclusively by one
producer with reference to his article that, in that trade and to that
NON-REGISTRABLE MARKS
branch of the purchasing public, the word or phrase has come to
 Flags/coat of arms of nations mean that the article was his product.
 Names, portraits or signature of living
 Persons Unfair competition
- Exception: with consent It is the passing off (or palming off) or attempting to pass off upon
 Names, portraits or signature of a deceased President of the the public of the goods or business of one person as the goods or
Philippines business of another with the end and probable effect of deceiving the
- Exception: with written consent of his/her living widow public.
Trademark Infringement Unfair Competition
TRADEMARK INFRINGEMENT Unauthorized use of trademark The passing odd of one’s goods
Use without consent of the trademark owner of any reproduction, as those of another.
counterfeit, copy or colorable limitation of any registered mark or Fraudulent intent is Fraudulent intent is essential
trade name. Such use is likely to cause confusion or mistake or to unnecessary
deceive purchasers or others as to the source or origin of such goods GR: Prior registration of the Registration is not necessary
or services, or identity of such business trademark is a prerequisite to
the action.
Elements: XPN: Well-known marks
1. Ownership of a trademark through registration
Remedies and Jurisdiction
Administrative action -- IPO-BLA, concurrent with RTC-SCCs
 Civil Action, RTC-SCC concurrent with IPO-BLA Rights of copyright owners
 Criminal Action, exclusive with RTC-SCC 1. Economic rights - The right to carry out, authorize or prevent the
- 2-5 years imprisonment following acts:
- P50,000-P200,000 in fine a. Reproduction of the work or substantial portion thereof
b. Carry-out derivative work (dramatization, translation, adaptation,
COPYRIGHT abridgement, arrangement or other transformation of the work)
A right over literary and artistic works which are original intellectual c. First distribution of the original and each copy of the work by sale
creations in the literary and artistic domain protected from the or other forms of transfer of ownership
moment of creation d. Rental right
e. Public display
Copyrightable works f. Public performance
I. Literary and Artistic Works g. Other communications to the public.

a. Books, pamphlets, articles and other writings Duration of economic rights

b. Lectures, sermons, addresses, dissertations prepared for Oral
delivery, whether or not reduced in writing or other material form
c. letters or other material form
d. Dramatic, choreographic works
e. Musical compositions
f. Works of Art
g. 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
l. Audiovisual works and cinematographic works
m. Pictorial illustrations and advertisements 2. Moral rights- For reasons of professionalism and propriety, the
n. computer Computer programs; and author has the right:
o. Other literary, scholarly, scientific and artistic a. To require that the authorship of the works be attributed to him
works (IPC, Sec. 172.1). (attribution right/paternity right)
b. To make any alterations of his work prior to, or to withhold it from
II. Derivative Works publication
a. Dramatizations, translations, adaptations, abridgements, c. To preserve integrity of work, object to any distortion, mutilation
arrangements and other alterations of literary or artistic works; or other modification which would be prejudicial to his honor or
b. Collections of literary, scholarly, or artistic works and compilations reputation; and
of data and other materials which are original by reason of the d. To restrain the use of his name with respect to any work not of his
selection or coordination or arrangement of their contents (IPC, Sec. own creation
173).
Duration of moral rights
NON-COPYRIGHTABLE WORKS  "During the lifetime of the author and in perpetuity after his
1. Idea, procedure, system, method or operation, concept, principle, death" Paternity Right/Right of Attribution
discovery or mere data as such  Coterminous with Economic Rights -Alteration and Non-
2. News of the day and other items of press information Publication Right; Right to Preservation of Integrity; and
3. Any official text of a legislative, administrative or legal nature, as Right against False Attribution
well as any official translation thereof
4. Pleadings Expiration Of Copyright
5. Decisions of courts and tribunals - this refers to original decisions Transfers to public domain
and not to annotated decisions such as the SCRA or SCAD as these Examples: Pride and Prejudice, The Lizzie Bennet Diaries
already fall under the classification of derivative works, hence
copyrightable Ownership of Copyright
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 COPYRIGHTABLE?

NO. Directories are not copyrightable and therefore the use of them
does not constitute infringement. The Intellectual Property Code
mandates originality as a prerequisite for copyright protection. This
requirement necessitates independent creation plus a modicum of
creativity.
 Copyright Infringement vs Plagiarism

Remedies in case of Copyright Infringement

1. Injunction
2. Damages, including legal costs and other expenses, as he may have
incurred due to the infringement as well as the profits the infringer
may have made due to such infringement
3. Impounding during the pendency of the action sales invoices and
other documents evidencing sales
4. Destruction without any e compensation all infringing copies
5. Moral and Exemplary damages (IPC, Sec. 216.1); or
6. Seizure and impounding of any article, which may serve as
evidence in the court proceedings. (IPC, Sec. 216.2)

Differences between Copyright, Trademark, and Patent

Copyright infringement
Elements:
 Ownership of a valid copyright
- Proof of Ownership: Sec. 218- Affidavit Evidence
Practical application
 Exercise of any of the exclusive economic rights in Section
177 without the consent of the copyright owner  Copyright?
UNLESS: FAIR USE - Programs; OS and Apps
 Trademark?
Fair use exception - Logos and word marks
- fair use for criticism, comment, news reporting, teaching  Patent?
[C-C-N-T] including limited [multiple] number of copies - Camera, fingerprint recoglstion, facial recognition
for classroom use, scholarship, research and similar
purposes [CSR]. (Sec. 185)

Factors to be considered in determining fair use (Sec.185)

1. Purpose & Character of the use
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 an infringement if the person benefiting has been given
notice of the 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)