Intellectual Property Law

INTELLECTUAL PROPERTY LAW

INTELLECTUAL PROPERTY LAW REVIEWERRA 8293, as amended by RA 9150

INTELLECTUAL PROPERTY RIGHTS IN GENERAL

IState Policies

Sec. 2. Declaration of State Policy. - The State recognizes that an effective intellectual and industrial property system is vital to the development of domestic and creative activity, facilitates transfer of technology, attracts foreign investments, and ensures market access for our products. It shall protect and secure the exclusive rights of scientists, inventors, artists and other gifted citizens to their intellectual property and creations, particularly when beneficial to the people, for such periods as provided in this Act. The use of intellectual property bears a social function. To this end, the State shall promote the diffusion of knowledge and information for the promotion of national development and progress and the common good. It is also the policy of the State to streamline administrative procedures of registering patents, trademarks and copyright, to liberalize the registration on the transfer of technology, and to enhance the enforcement of intellectual property rights in the Philippines.

IIIntellectual Property Rights

Sec. 4.1 The term "intellectual property rights" consists of:

1. Copyright and Related Rights; 2. Trademarks and Service Marks; 3. Geographic Indications; 4. Industrial Designs; 5. Patents; 6. Layout-Designs (Topographies) of

Integrated Circuits; and7. Protection of Undisclosed Information

[TRIPS].Kho v. CA, et al., 379 SCRA 410 [2002]Trademark, copyright and patents are different intellectual property rights that cannot be

interchanged with one another. A trademark is any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise and shall include a stamped or marked container of goods.

In relation thereto, a trade name means the name or designation identifying or distinguishing an enterprise. Meanwhile, the scope of a copyright is confined to literary and artistic works which are original intellectual creations in the literary and artistic domain protected from the moment of their creation. Patentable inventions, on the other hand, refer to any technical solution of a problem in any field of human activity which is new, involves an inventive step and is industrially applicable.

IIIReverse Reciprocity

Sec. 231. Reverse Reciprocity of Foreign Laws. - Any condition, restriction, limitation, diminution, requirement, penalty or any similar burden imposed by the law of a foreign country on a Philippine national seeking protection of intellectual property rights in that country, shall reciprocally be enforceable upon nationals of said country, within Philippine jurisdiction.

PATENTS

IWhat are Patentable

1. Inventions

Sec. 21. Patentable Inventions. - Any technical solution of a problem in any field of human activity which is new, involves an inventive step and is industrially applicable shall be patentable. It may be, or may relate to, a product, or process, or an improvement of any of the foregoing. (Sec. 7, RA 165a)

Sec. 23. Novelty. - An invention shall not be considered new if it forms part of a prior art. (Sec. 9, RA 165a)

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

JUNE S RADI COPYRIGHT 2010


24.1. 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; and

24.2. The whole contents of an application for a patent, utility model, or industrial design registration, published in accordance with this Act, filed or effective in the Philippines, with a filing or priority date that is earlier than the filing or priority date of the application: Provided, That the application which has validly claimed the filing date of an earlier application under Section 31 of this Act, shall be prior art with effect as of the filing date of such earlier application: Provided further, That the applicant or the inventor identified in both applications are not one and the same. (Sec. 9, RA 165a)

Sec. 26. Inventive Step. - An invention involves an inventive step if, having regard to prior art, it is not obvious to a person skilled in the art at the time of the filing date or priority date of the application claiming the invention.

Sec. 27. Industrial Applicability. - An invention that can be produced and used in any industry shall be industrially applicable.

2. Utility Model

Sec. 109.1 (a) An invention qualifies for registration as a utility model if it is new and industrially applicable.(b) Section 21, "Patentable Inventions", shall apply except the reference to inventive step as a condition of protection.

3. Industrial Designs

Sec. 112.1 An Industrial Design is any composition of lines or colors or any three-dimensional form, whether or not associated with lines or colors: Provided, That such composition or form gives a

special appearance to and can serve as pattern for an industrial product or handicraft;

4. Lay-out Designs (Topographies) of Integrated Circuits

Sec. 112.2 Integrated Circuit means a product, in its final form, or an intermediate form, in which the elements, at least one of which is an active element and some or all of the interconnections are integrally formed in and/or on a piece of material, and which is intended to perform an electronic function; and

Sec. 112.3 Layout-Design is synonymous with 'Topography' and means the three-dimensional disposition, however expressed, of the elements, at least one of which is an active element, and of some or all of the interconnections of an integrated circuit, or such a three-dimensional disposition prepared for an integrated circuit intended for manufacture.

Exclusions from Patent Protection

Sec. 22. Non-Patentable Inventions. - The following shall be excluded from patent protection:

22.1. Discoveries, scientific theories and mathematical methods;22.2. Schemes, rules and methods of performing mental acts, playing games or doing business, and programs for computers;

22.3 Methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practiced on the human or animal body. This provision shall not apply to products and composition for use in any of these methods;

22.4. Plant varieties or animal breeds or essentially biological process for the production of plants or animals. This provision shall not apply to micro-



organisms and non-biological and microbiological processes.

Provisions under this subsection shall not preclude Congress to consider the enactment of a law providing sui generis protection of plant varieties and animal breeds and a system of community intellectual rights protection:

22.5. Aesthetic creations; and

22.6. Anything which is contrary to public order or morality. (Sec. 8, RA 165a)

First-To-File Rule

Sec. 29. 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 who has the earliest filing date or, the earliest priority date. (3rd Sentence, Sec. 10, RA 165a.)

IIRight of Priority

Sec. 31. Right of Priority. - An application for patent filed by any person who has previously applied for the same invention in another country which by treaty, convention, or law affords similar privileges to Filipino citizens, shall be considered as filed as of the date of filing the foreign application: Provided, That: (a) the local application expressly claims priority; (b) it is filed within twelve (12) months from the date the earliest foreign application was filed; and (c) a certified copy of the foreign application together with an English translation is filed within six (6) months from the date of filing in the Philippines. (Sec. 15, RA 165a)

IIIContents of the Applicationfor Patent

Sec. 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.

32.2. No patent may be granted unless the application identifies the inventor. If the applicant is not the inventor, the Office may require him to submit said authority. (Sec. 13, RA 165a)

Sec. 34. The Request. - The request shall contain a petition for the grant of the patent, the name and other data of the applicant, the inventor and the agent and the title of the invention.Sec. 35. Disclosure and Description of the Invention. -

35.1. Disclosure. - The application shall disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. Where the application concerns a microbiological process or the product thereof and involves the use of a micro-organism which cannot be sufficiently disclosed in the application in such a way as to enable the invention to be carried out by a person skilled in the art, and such material is not available to the public, the application shall be supplemented by a deposit of such material with an international depository institution.

35.2. Description. - The Regulations shall prescribe the contents of the description and the order of presentation. (Sec. 14, RA 165a)

Sec. 36. The Claims. -



36.1. The application shall contain one (1) or more claims which shall define the matter for which protection is sought. Each claim shall be clear and concise, and shall be supported by the description.

36.2. The Regulations shall prescribe the manner of the presentation of claims.

Sec. 37. The Abstract. - The abstract shall consist of a concise summary of the disclosure of the invention as contained in the description, claims and drawings in preferably not more than one hundred fifty (150) words. It must be drafted in a way which allows the clear understanding of the technical problem, the gist of the solution of that problem through the invention, and the principal use or uses of the invention. The abstract shall merely serve for technical information.

IVProcedure for Grant of Patent

1. Filing Date

Sec. 40. Filing Date Requirements. -

40.1. The filing date of a patent application shall be the date of receipt by the Office of at least the following elements:

(a) An express or implicit indication that a Philippine patent is sought;

(b) Information identifying the applicant; and

(c) Description of the invention and one (1) or more claims in Filipino or English.

40.2. If any of these elements is not submitted within the period set by the Regulations, the application shall be considered withdrawn.

Sec. 41. According a Filing Date. - The Office shall examine whether the patent application satisfies the requirements for the grant of date of filing as provided in

Section 40 hereof. If the date of filing cannot be accorded, the applicant shall be given an opportunity to correct the deficiencies in accordance with the implementing Regulations. If the application does not contain all the elements indicated in Section 40, the filing date should be that date when all the elements are received. If the deficiencies are not remedied within the prescribed time limit, the application shall be considered withdrawn.

2. Formality Examination

Sec. 42. Formality Examination. -

42.1. After the patent application has been accorded a filing date and the required fees have been paid on time in accordance with the Regulations, the applicant shall comply with the formal requirements specified by Section 32 and the Regulations within the prescribed period, otherwise the application shall be considered withdrawn.

42.2. The Regulations shall determine the procedure for the re-examination and revival of an application as well as the appeal to the Director of Patents from any final action by the examiner. (Sec. 16, RA 165a)

3. Classification and Search

Sec. 43. Classification and Search. - An application that has complied with the formal requirement shall be classified and a search conducted to determine the prior art.

4. Publication

Sec. 44. Publication of Patent Application. - 44.1. The patent application shall be published in the IPO Gazette together with a search document established by or on behalf of the Office citing any documents that reflect prior art, after the expiration of eighteen (18) months from the filing date or priority date.



44.3. The Director General, subject to the approval of the Secretary of Trade and Industry, may prohibit or restrict the publication of an application, if in his opinion, to do so would be prejudicial to the national security and interests of the Republic of the Philippines.

5. Inspection

Sec. 45. Confidentiality Before Publication. - A patent application, which has not yet been published, and all related documents, shall not be made available for inspection without the consent of the applicant.

Sec. 44.2. After publication of a patent application, any interested party may inspect the application documents filed with the Office.

Sec. 47. Observation by Third Parties. - Following the publication of the patent application, any person may present observations in writing concerning the patentability of the invention. Such observations shall be communicated to the applicant who may comment on them. The Office shall acknowledge and put such observations and comment in the file of the application to which it relates.

6. Request for Substantive Examination

Sec. 48. Request for Substantive Examination. -

48.1. The application shall be deemed withdrawn unless within six (6) months from the date of publication under Section 41, a written request to determine whether a patent application meets the requirements of Sections 21 to 27 and Sections 32 to 39 and the fees have been paid on time.

48.2. Withdrawal of the request for examination shall be irrevocable and shall not authorize the refund of any fee.

SEC. 49. Amendment of Application. - An applicant may amend the patent application during examination: Provided, That such amendment shall not include new matter outside the scope of the disclosure contained in the application as filed.

7. Grant or Refusal of Application

Sec. 50. Grant of Patent. - 50.1. If the application meets the requirements of this Act, the Office shall grant the patent: Provided, That all the fees are paid on time.50.2. If the required fees for grant and printing are not paid in due time, the application shall be deemed to be withdrawn.50.3. A patent shall take effect on the date of the publication of the grant of the patent in the IPO Gazette. (Sec. 18, RA 165a)

Sec. 51. Refusal of the Application. -

51.1. The final order of refusal of the examiner to grant the patent shall be appealable to the Director in accordance with this Act.

51.2. The Regulations shall provide for the procedure by which an appeal from the order of refusal from the Director shall be undertaken.

8. Publication of the Grant of Patent

Sec. 52. Publication Upon Grant of Patent. - 52.1. The grant of the patent together with other related information shall be published in the IPO Gazette within the time prescribed by the Regulations.

52.2. Any interested party may inspect the complete description, claims, and



drawings of the patent on file with the Office. (Sec. 18, RA 165a)

VRights Conferred by Patent

Sec. 71. Rights Conferred by Patent. -

71.1. A patent shall confer on its owner the following exclusive rights:

(a) Where the subject matter of a patent is a product, to restrain, prohibit and prevent any unauthorized person or entity from making, using, offering for sale, selling or importing that product;

(b) Where the subject matter of a patent is a process, to restrain, prevent or prohibit any unauthorized person or entity from using the process, and from manufacturing, dealing in, using, selling or offering for sale, or importing any product obtained directly or indirectly from such process.

71.2. Patent owners shall also have the right to assign, or transfer by succession the patent, and to conclude licensing contracts for the same. (Sec. 37, RA 165a)

VITerm

Sec. 54. Term of Patent. - The term of a patent shall be twenty (20) years from the filing date of the application. (Sec. 21, RA 165a)

Sec. 109.3. A utility model registration shall expire, without any possibility of renewal, at the end of the seventh year after the date of the filing of the application.

Sec. 118. The Term of Industrial Design or Layout-Design Registration. - 118.1. The registration of an industrial design shall be for a

period of five (5) years from the filing date of the application.

118.2. The registration of an industrial design may be renewed for not more than two (2) consecutive periods of five (5) years each, by paying the renewal fee. xxx xxx xxx

118.5. Registration of a layout-design shall be valid for a period often (10) years, without renewal, and such validity to be counted from the date of commencement of the protection accorded to the layout-design. The protection of a layout-design under this Act shall commence:

a) on the date of the first commercial exploitation, anywhere in the world, of the layout-design by or with the consent of the right holder: Provided, That an application for registration is filed with the Intellectual Property Office within two (2) years from such date of first commercial exploitation; or

b) on the filing date accorded to the application for the registration of the layout-design if the layout-design has not been previously exploited commercially anywhere in the world.

VIILimitations on Rights of Patentees

Sec. 72. Limitations of Patent Rights. - The owner of a patent has no right to prevent third parties from performing, without his authorization, the acts referred to in Section 71 hereof in the following circumstances:

72.1. Using a patented product which has been put on the market in the Philippines by the owner of the product, or with his express consent, insofar as such use is performed after that product has been so put on the said market;

72.2. Where the act is done privately and on a non-commercial scale or for a non-



commercial purpose: Provided, That it does not significantly prejudice the economic interests of the owner of the patent;

72.3. Where the act consists of making or using exclusively for the purpose of experiments that relate to the subject matter of the patented invention;

72.4. Where the act consists of the preparation for individual cases, in a pharmacy or by a medical professional, of a medicine in accordance with a medical prescription or acts concerning the medicine so prepared;

72.5. Where the invention is used in any ship, vessel, aircraft, or land vehicle of any other country entering the territory of the Philippines temporarily or accidentally: Provided, That such invention is used exclusively for the needs of the ship, vessel, aircraft, or land vehicle and not used for the manufacturing of anything to be sold within the Philippines. (Secs. 38 and 39, RA 165a)

Sec. 73. Prior User. -

73.1. Notwithstanding Section 72 hereof, any prior user, who, in good faith was using the invention or has undertaken serious preparations to use the invention in his enterprise or business, before the filing date or priority date of the application on which a patent is granted, shall have the right to continue the use thereof as envisaged in such preparations within the territory where the patent produces its effect.

73.2. The right of the prior user may only be transferred or assigned together with his enterprise or business, or with that part of his enterprise or business in which the use or preparations for use have been made. (Sec. 40, RA 165a)

Sec. 74. Use of Invention 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.

74.2. The use by the Government, or third person authorized by the Government shall be subject, mutatis mutandis, to the conditions set forth in Sections 95 to 97 and 100 to 102. (Sec. 41, RA 165a)

VIIINotice Requirement

Sec. 80. Damages; Requirement of Notice. - Damages cannot be recovered for acts of infringement committed before the infringer had known; or had reasonable grounds to know of the patent. It is presumed that the infringer had known of the patent if on the patented product, or on the container or package in which the article is supplied to the public, or on the advertising material relating to the patented product or process, are placed the words "Philippine Patent" with the number of the patent. (Sec. 44, RA 165a) IXPatent Infringement

1. Civil Action

Sec. 76. Civil Action for Infringement. -

76.1. 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 constitutes patent infringement.



76.2. Any patentee, or anyone possessing any right, title or interest in and to the patented invention, whose rights have been infringed, may bring a civil action before a court of competent jurisdiction, to recover from the infringer such damages sustained thereby, plus attorney’s fees and other expenses of litigation, and to secure an injunction for the protection of his rights.

76.3. If the damages are inadequate or cannot be readily ascertained with reasonable certainty, the court may award by way of damages a sum equivalent to reasonable royalty.

76.4. The court may, according to the circumstances of the case, award damages in a sum above the amount found as actual damages sustained: Provided, That the award does not exceed three (3) times the amount of such actual damages.

76.5. The court may, in its discretion, order that the infringing goods, materials and implements predominantly used in the infringement be disposed of outside the channels of commerce or destroyed, without compensation.

76.6. Anyone who actively induces the infringement of a patent or provides the infringer with a component of a patented product or of a product produced because of a patented process knowing it to be especially adopted for infringing the patented invention and not suitable for substantial non-infringing use shall be liable as a contributory infringer and shall be jointly and severally liable with the infringer. (Sec. 42, RA 165a)

2. Criminal Action

Sec. 84. Criminal Action for Repetition of Infringement. - If infringement is repeated by the infringer or by anyone in connivance with him after finality of the judgment of the court against the infringer, the offenders shall, without prejudice to the institution of a civil action for damages, be criminally liable therefor and, upon conviction, shall suffer imprisonment for the period of not less than six (6) months but not more than three (3) years and/or a fine of not less than One hundred thousand pesos (P100,000) but not more than Three hundred thousand pesos (P300,000), at the discretion of the court. The criminal action herein provided shall prescribe in three (3) years from date of the commission of the crime. (Sec. 48, RA 165a)

XTests of infringement

Godines v. CA, 226 SCRA 576 [1993]Tests have been established to determine infringement. These are [a] literal infringement; and [b] the doctrine of equivalents. In using literal infringement as a test, resort must be had in the first instance to the words of the claim. To determine whether the particular item falls within the literal meaning of the patent claims, the court must juxtapose the claims of the patent and the accused product within the overall context of the claims and specifications, to determine whether there is exact identity of all material elements. On the other hand, under the doctrine of equivalents, an infringement also occurs when a device appropriates a prior invention by incorporating its innovative concept and, albeit with some modification and change, performs substantially the same function in substantially the same way to achieve substantially the same result.

XIPatent infringement

Creser Precision Systems, Inc. v. CA, et al., 286 SCRA 13 [1998]Only the patentee or his successor-in-interest may file an action for infringement. Moreover, there can be no infringement of a patent until a patent has been issued, since whatever right one has to the



invention covered by the patent arises alone from the grant of patent. In short, a person or entity who has not been granted letter of patent over an invention and has not acquired any rights or title thereto either as an assignee or a licensee, has no cause of action for infringement because the right to maintain an infringement suit depends upon the existence of a patent.

XIIVoluntary Licensing

Sec. 85. Voluntary License Contract. - To encourage the transfer and dissemination of technology, prevent or control practices and conditions that may in particular cases constitute an abuse of intellectual property rights having an adverse effect on competition and trade, all technology transfer arrangements shall comply with the provisions of this Chapter.

Sec. 88. Mandatory Provisions. - The following provisions shall be included in voluntary license contracts:

88.1. That the laws of the Philippines shall govern the interpretation of the same and in the event of litigation, the venue shall be the proper court in the place where the licensee has its principal office;

88.2. Continued access to improvements in techniques and processes related to the technology shall be made available during the period of the technology transfer arrangement;

88.3. In the event the technology transfer arrangement shall provide for arbitration, the Procedure of Arbitration of the Arbitration Law of the Philippines or the Arbitration Rules of the United Nations Commission on International Trade Law (UNCITRAL) or the Rules of Conciliation and Arbitration of the International Chamber of Commerce (ICC) shall apply and the venue of arbitration shall be the Philippines or any neutral country; and

88.4. The Philippine taxes on all payments relating to the technology transfer arrangement shall be borne by the licensor.

Sec. 87. Prohibited Clauses. - Except in cases under Section 91, the following provisions shall be deemed prima facie to have an adverse on competition and trade:

87.1. Those which impose upon the licensee the obligation to acquire from a specific source capital goods, intermediate products, raw materials, and other technologies, or of permanently employing personnel indicated by the licensor;

87.2. Those pursuant to which the licensor reserves the right to fix the sale or resale prices of the products manufactured on the basis of the license;

87.3. Those that contain restrictions regarding the volume and structure of production;

87.4. Those that prohibit the use of competitive technologies in a non-exclusive technology transfer agreement;

87.5. Those that establish a full or partial purchase option in favor of the licensor;

87.6. Those that obligate the licensee to transfer for free to the licensor the inventions or improvements that may be obtained through the use of the licensed technology;

87.7. Those that require payment of royalties to the owners of patents for patents which are not used;

87.8. Those that prohibit the licensee to export the licensed product unless justified for the protection of the legitimate interest of the licensor such as exports to countries where exclusive licenses to manufacture and/or distribute the licensed product(s) have already been granted;

87.9. Those which restrict the use of the technology supplied after the expiration of the technology transfer arrangement, except in



cases of early termination of the technology transfer arrangement due to reason(s) attributable to the licensee;

87.10. Those which require payments for patents and other industrial property rights after their expiration, termination arrangement;

87.11. Those which require that the technology recipient shall not contest the validity of any of the patents of the technology supplier;

87.12. Those which restrict the research and development activities of the licensee designed to absorb and adapt the transferred technology to local conditions or to initiate research and development programs in connection with new products, processes or equipment;

87.13. Those which prevent the licensee from adapting the imported technology to local conditions, or introducing innovation to it, as long as it does not impair the quality standards prescribed by the licensor;

87.14. Those which exempt the licensor for liability for non-fulfillment of his responsibilities under the technology transfer arrangement and/or liability arising from third party suits brought about by the use of the licensed product or the licensed technology; and

87.15. Other clauses with equivalent effects. (Sec. 33-C[2], RA 165a)

XIIICompulsory Licensing

Sec. 93. Grounds for Compulsory Licensing. - The Director of Legal Affairs may grant a license to exploit a patented invention, even without the agreement of the patent owner, in favor of any person who has shown his capability to exploit the invention, under any of the following circumstances:

93.1. National emergency or other circumstances of extreme urgency;

93.2. Where the public interest, in particular, national security, nutrition, health or the development of other vital sectors of the national economy as determined by the appropriate agency of the Government, so requires; or

93.3. Where 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

93.4. In case of public non-commercial use of the patent by the patentee, without satisfactory reason;

93.5. If the patented invention is not being worked in the Philippines on a commercial scale, although capable of being worked, without satisfactory reason: Provided, That the importation of the patented article shall constitute working or using the patent. (Secs. 34, 34-A, and 34-B, RA 165a)

Sec. 97. Compulsory License Based on Interdependence of Patents. - If the invention protected by a patent, hereafter referred to as the "second patent," within the country cannot be worked without infringing another patent, hereafter referred to as the "first patent," granted on a prior application or benefiting from an earlier priority, a compulsory license may be granted to the owner of the second patent to the extent necessary for the working of his invention, subject to the following conditions:

97.1. The invention claimed in the second patent involves an important technical advance of considerable economic significance in relation to the first patent;

97.2. The owner of the first patent shall be entitled to a cross-license on reasonable terms to use the invention claimed in the second patent;



97.3. The use authorized in respect of the first patent shall be non-assignable except with the assignment of the second patent; and

97.4. The terms and conditions of Sections 95, 96 and 98 to 100 of this Act. (Sec. 34-C, RA 165a)

Assignment and Transfer of Patent

Sec. 104. Assignment of Inventions. - An assignment may be of the entire right, title or interest in and to the patent and the invention covered thereby, or of an undivided share of the entire patent and invention, in which event the parties become joint owners thereof. An assignment may be limited to a specified territory. (Sec. 51, RA 165)

Sec. 105. Form of Assignment. - The assignment must be in writing, acknowledged before a notary public or other officer authorized to administer oath or perform notarial acts, and certified under the hand and official seal of the notary or such other officer. (Sec. 52, RA 165)

Sec. 106. Recording. -

106.1. The Office shall record assignments, licenses and other instruments relating to the transmission of any right, title or interest in and to inventions, and patents or application for patents or inventions to which they relate, which are presented in due form to the Office for registration, in books and records kept for the purpose. The original documents together with a signed duplicate thereof shall be filed, and the contents thereof should be kept confidential. If the original is not available, an authenticated copy thereof in duplicate may be filed. Upon recording, the Office shall retain the duplicate, return the original or the authenticated copy to the party who filed the same and notice of the recording shall be published in the IPO Gazette.

106.2. Such instruments shall be void as against any subsequent purchaser or mortgagee for valuable consideration and without notice, unless, it is so recorded in the Office, within three (3) months from the date of said instrument, or prior to the subsequent purchase or mortgage. (Sec. 53, RA 165a)

Cancellation of Patent

Sec. 61. Cancellation of Patents. -

61.1. Any interested person may, upon payment of the required fee, petition to cancel the patent or any claim thereof, or parts of the claim, on any of the following grounds:

(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.

61.2. Where the grounds for cancellation relate to some of the claims or parts of the claim, cancellation may be effected to such extent only. (Secs. 28 and 29, RA 165a)

Sec. 62. Requirement of the Petition. - The petition for cancellation shall be in writing, verified by the petitioner or by any person in his behalf who knows the facts, specify the grounds upon which it is based, include a statement of the facts to be relied upon, and filed with the Office. Copies of printed publications or of patents of other countries, and other supporting documents mentioned in the petition shall be attached thereto, together with the translation thereof in English, if not in English language. (Sec. 30, RA 165)

Sec. 63. Notice of Hearing. - Upon filing of a petition for cancellation, the Director of Legal Affairs shall forthwith serve notice of the filing thereof upon the patentee and all persons having grants or licenses, or any other right, title or



interest in and to the patent and the invention covered thereby, as appears of record in the Office, and of notice of the date of hearing thereon on such persons and the petitioner. Notice of the filing of the petition shall be published in the IPO Gazette. (Sec. 31, RA 165a)

Sec. 66. Effect of Cancellation of Patent or Claim. - The rights conferred by the patent or any specified claim or claims cancelled shall terminate. Notice of the cancellation shall be published in the IPO Gazette. Unless restrained by the Director General, the decision or order to cancel by Director of Legal Affairs shall be immediately executory even pending appeal. (Sec. 32, RA 165a)

INDUSTRIAL DESIGNSAND LAY-OUT DESIGNS (TOPOGRAPHIES) OF INTEGRATED CIRCUITS

ISubstantive Conditions for Protection

Sec. 113. Substantive Conditions for Protection. - 113.1. Only industrial designs that are new or ornamental shall benefit from protection under this Act.

113.2. Industrial designs dictated essentially by technical or functional considerations to obtain a technical result or those that are contrary to public order, health or morals shall not be protected.

113.3. Only layout -designs of integrated circuits that are original shall benefit from protection under this Act. A layout-design shall be considered original if it is the result of its creator's own intellectual effort and is not commonplace among creators of layout-designs and manufacturers of integrated circuits at the time of its creation.

113.4. A layout-design consisting of a combination of elements and interconnections that are commonplace shall be protected only if the combination, taken as a whole, is original.

Rights Conferred on Registered Owner of Lay-out Design

Sec. 119.4. Rights Conferred to the Owner of a Layout-Design Registration. - The owner of a layout-design registration shall enjoy the following rights:

(1) to reproduce, whether by incorporation in an integrated circuit or otherwise, the registered layout-design in its entirety or any part thereof, except the act of reproducing any part that does not comply with the requirement of originality; and

(2) to sell or otherwise distribute for commercial purposes the registered layout design, an article or an integrated circuit in which the registered layout-design is incorporated.

Sec. 119.5. Limitations of Layout Rights. - The owner of a layout design has no right to prevent third parties from reproducing, selling or otherwise distributing for commercial purposes the registered layout-design in the following circumstances:

(1) Reproduction of the registered layout-design for private purposes or for the sole purpose of evaluation, analysis, research or teaching;

(3) Where the act is performed in respect of a layout-design created on the basis of such analysis or evaluation and which is itself original in the meaning as provided herein;

(4) Where the act is performed in respect of a registered lay-out-design, or in respect of an integrated circuit in which such a layout-design is incorporated, that has been put on the market by or with the consent of the right holder;

(5) In respect of an integrated circuit where the person performing or ordering such an act did not know and had no reasonable ground to know when acquiring the integrated circuit or the



article incorporating such an integrated circuit, that it incorporated an unlawfully reproduced layout-design: Provided, however, That after the time that such person has received sufficient notice that the layout-design was unlawfully reproduced, that person may perform any of the said acts only with respect to the stock on hand or ordered before such time and shall be liable to pay to the right holder a sum equivalent to at least 5% of net sales or such other reasonable royalty as would be payable under a freely negotiated license in respect of such layout-design; or

(6) Where the act is performed in respect of an identical layout-design which is original and has been created independently by a third party.

Grounds for Cancellation of Registration

Sec. 120. Cancellation of Design Registration. –

120.1. At any time during the term of the industrial design registration, any person upon payment of the required fee, may petition the Director of Legal Affairs to cancel the industrial design on any of the following grounds:

(a) If the subject matter of the industrial design is not registerable within the terms of Sections 112 and 113;

(b) If the subject matter is not new; or (c) If the subject matter of the

industrial design extends beyond the content of the application as originally filed.

120.2. Where the grounds for cancellation relate to a part of the industrial design, cancellation may be effected to such extent only. The restriction may be effected in the form of an alteration of the effected features of the design.

120.3. Grounds for Cancellation of Layout-Design of Integrated Circuits.- Any interested person may petition that the registration of a layout-design be canceled on the ground that:

(a) the layout-design is not protectable under this Act;

(b) the right holder is not entitled to protection under this Act; or

(c) where the application for registration of the layout-design, was not filed within two (2) years from its first commercial exploitation anywhere in the world.

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 be canceled. Any canceled layout-design registration or part thereof, shall be regarded as null and void 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.

TRADEMARKS

Marks and Names

Sec. 121. Definitions. - As used in Part III, the following terms have the following meanings:

121.1. "Mark" means any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise and shall include a stamped or marked container of goods; (Sec. 38, RA 166a)

121.2. "Collective mark" means any visible sign designated as such in the application for registration and capable of distinguishing the origin or any other common characteristic, including the quality of goods or services of different enterprises which use the sign under the control of the registered owner of the collective mark; (Sec. 40, RA 166a)



121.3. "Trade name" means the name or designation identifying or distinguishing an enterprise; (Sec. 38, RA 166a)

Product name and container not proper subjects of copyright and patent registration

Kho v. CA, et al., 379 SCRA 410 [2002]The name and container of a beauty cream product are proper subjects of a trademark inasmuch as the same falls squarely within its definition. In order to be entitled to exclusively use the same in the sale of the beauty cream product, the user must sufficiently prove that she registered or used it before anybody else did. The petitioner’s copyright and patent registration of the name and container would not guarantee her right to the exclusive use of the same for the reason that they are not appropriate subjects of the said intellectual rights. Consequently, a preliminary injunction order cannot be issued for the reason that the petitioner has not proven that she has a clear right over the said name and container to the exclusion of others, not having proven that she has registered a trademark thereto or used the same before anyone did.

Acquisition of OwnershipSec. 122. How Marks are Acquired. - The rights in a mark shall be acquired through registration made validly in accordance with the provisions of this law. (Sec. 2-A, RA 166a)

Sec. 165. Trade Names or Business Names. -

165.1. A name or designation may not be used as a trade name if by its nature or the use to which such name or designation may be put, it is contrary to public order or morals and if, in particular, it is liable to deceive trade circles or the public as to the nature of the enterprise identified by that name.

165.2. (a) Notwithstanding any laws or regulations providing for any obligation to register trade names, such names shall be protected, even prior to or without

registration, against any unlawful act committed by third parties.(b) In particular, any subsequent use of the trade name by a third party, whether as a trade name or a mark or collective mark, or any such use of a similar trade name or mark, likely to mislead the public, shall be deemed unlawful.

Use of Mark as a Requirement

Sec. 124.2. The applicant or the registrant shall file a declaration of actual use of the mark with evidence to that effect, as prescribed by the Regulations within three (3) years from the filing date of the application. Otherwise, the application shall be refused or the mark shall be removed from the Register by the Director.

Non-Registrable Marks

Sec. 123.1. A mark cannot be registered if it:

(a) Consists of immoral, deceptive or scandalous matter, or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute;

(b) Consists of the flag or coat of arms or other insignia of the Philippines or any of its political subdivisions, or of any foreign nation, or any simulation thereof;

(c) Consists of a name, portrait or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the Philippines, during the life of his widow, if any, except by written consent of the widow;

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

1) The same goods or services, or2) Closely related goods or

services, or



3) If it nearly resembles such a mark as to be likely to deceive or cause confusion;

(e) Is identical with, or confusingly similar to, or constitutes a translation of a mark which is considered by the competent authority of the Philippines to be well-known internationally and in the Philippines, whether or not it is registered here, as being already the mark of a person other than the applicant for registration, and used for identical or similar goods or services: Provided, That in determining whether a mark is well-known, account shall be taken of the knowledge of the relevant sector of the public, rather than of the public at large, including knowledge in the Philippines which has been obtained as a result of the promotion of the mark;

(f) Is identical with, or confusingly similar to, or constitutes a translation of a mark considered well-known in accordance with the preceding paragraph, which is registered in the Philippines with respect to goods or services which are not similar to those with respect to which registration is applied for: Provided, That use of the mark in relation to those goods or services would indicate a connection between those goods or services, and the owner of the registered mark: Provided further, That the interests of the owner of the registered mark are likely to be damaged by such use;

(g) Is likely to mislead the public, particularly as to the nature, quality, characteristics or geographical origin of the goods or services;

(h) Consists exclusively of signs that are generic for the goods or services that they seek to identify;

(i) Consists exclusively of signs or of indications that have become customary or usual to designate the goods or services in everyday language or in bona fide and established trade practice;

(j) Consists exclusively of signs or of indications that may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin, time or production of the goods or rendering of the services, or other characteristics of the goods or services;

(k) Consists of shapes that may be necessitated by technical factors or by the nature of the goods themselves or factors that affect their intrinsic value;

(l) Consists of color alone, unless defined by a given form; or

(m) Is contrary to public order or morality.

Tests to Determine Confusing Similarity Between Marks

Colorable imitation

Societe des Produits Nestlé, S.A. v. CA, 356 SCRA 207 [2001]Colorable imitation denotes such a close or ingenious imitation as to be calculated to deceive ordinary persons, or such a resemblance to the original as to deceive an ordinary purchaser giving such attention as a purchaser usually gives, as to cause him to purchase the one supposing it to be the other. In ascertaining whether one mark is confusingly similar to or is a colorable imitation of another, no set rules can be deduced. Each case must be decided on its own merits. The complexities attendant to an accurate assessment of likelihood of confusion require that the entire panoply of elements constituting the relevant factual landscape be comprehensively examined.

Holistic test

Del Monte Corporation, et al. v. CA, 181 SCRA 410 [1990]To determine whether a trademark has been infringed, we must consider the mark as a whole and not as dissected. If the buyer is deceived, it is attributable to the marks as a totality, not usually to any part of it. The court therefore should be guided by its first impression, for the buyer acts quickly and is governed by a casual glance, the value of which may be dissipated as soon as the



court assumed to analyze carefully the respective features of the mark.

Test of dominancy

Asia Brewery v. CA and San Miguel, 224 SCRA 437 [1993]Infringement is determined by the test of “dominancy” rather than by differences or variations in the details of one trademark and of another. Similarity in size, form and color, while relevant, is not conclusive. If the competing trademark contains the main or essential or dominant features of another, and confusion is likely to result, infringement takes place.

Well-known Marks

Sec. 123.1. (e) Is identical with, or confusingly similar to, or constitutes a translation of a mark which is considered by the competent authority of the Philippines to be well-known internationally and in the Philippines, whether or not it is registered here, as being already the mark of a person other than the applicant for registration, and used for identical or similar goods or services: Provided, That in determining whether a mark is well-known, account shall be taken of the knowledge of the relevant sector of the public, rather than of the public at large, including knowledge in the Philippines which has been obtained as a result of the promotion of the mark;(f) Is identical with, or confusingly similar to, or constitutes a translation of a mark considered well-known in accordance with the preceding paragraph, which is registered in the Philippines with respect to goods or services which are not similar to those with respect to which registration is applied for: Provided, That use of the mark in relation to those goods or services would indicate a connection between those goods or services, and the owner of the registered mark: Provided further, That the interests of the owner of the registered mark are likely to be damaged by such use;

Sec. 147.2. The exclusive right of the owner of a well-known mark defined in Subsection 123.1(e) which is registered in the Philippines, shall

extend to goods and services which are not similar to those in respect of which the mark is registered: Provided, That use of that mark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered mark: Provided, further, That the interests of the owner of the registered mark are likely to be damaged by such use.

Formal Application Requirements

Sec. 124. Requirements of Application. -

124.1. The application for the registration of the mark shall be in Filipino or in English and shall contain the following:

(a) A request for registration;(b) The name and address of the

applicant;(c) The name of a State of which the

applicant is a national or where he has domicile; and the name of a State in which the applicant has a real and effective industrial or commercial establishment, if any;

(d) Where the applicant is a juridical entity, the law under which it is organized and existing;

(e) The appointment of an agent or representative, if the applicant is not domiciled in the Philippines;

(f) Where the applicant claims the priority of an earlier application, an indication of:1) The name of the State with

whose national office the earlier application was filed or it filed with an office other than a national office, the name of that office,

2) The date on which the earlier application was filed, and

3) Where available, the application number of the earlier application;



(g) Where the applicant claims color as a distinctive feature of the mark, a statement to that effect as well as the name or names of the color or colors claimed and an indication, in respect of each color, of the principal parts of the mark which are in that color;

(h) Where the mark is a three-dimensional mark, a statement to that effect;

(i) One or more reproductions of the mark, as prescribed in the Regulations;

(j) A transliteration or translation of the mark or of some parts of the mark, as prescribed in the Regulations;

(k) The names of the goods or services for which the registration is sought, grouped according to the classes of the Nice Classification, together with the number of the class of the said Classification to which each group of goods or services belongs; and

(l) A signature by, or other self-identification of, the applicant or his representative.

124.2. The applicant or the registrant shall file a declaration of actual use of the mark with evidence to that effect, as prescribed by the Regulations within three (3) years from the filing date of the application. Otherwise, the application shall be refused or the mark shall be removed from the Register by the Director.

124.3. One (1) application may relate to several goods and/or services, whether they belong to one (1) class or to several classes of the Nice Classification.

124.4. If during the examination of the application, the Office finds factual

basis to reasonably doubt the veracity of any indication or element in the application, it may require the applicant to submit sufficient evidence to remove the doubt. (Sec. 5, RA 166a)

Priority Right

Sec. 131. Priority Right. -

131.1. An application for registration of a mark filed in the Philippines by a person referred to in Section 3, and who previously duly filed an application for registration of the same mark in one of those countries, shall be considered as filed as of the day the application was first filed in the foreign country.

131.2. No registration of a mark in the Philippines by a person described in this section shall be granted until such mark has been registered in the country of origin of the applicant.

131.3. Nothing in this section shall entitle the owner of a registration granted under this section to sue for acts committed prior to the date on which his mark was registered in this country: Provided, That, notwithstanding the foregoing, the owner of a well-known mark as defined in Section 123.1(e) of this Act, that is not registered in the Philippines, may, against an identical or confusingly similar mark, oppose its registration, or petition the cancellation of its registration or sue for unfair competition, without prejudice to availing himself of other remedies provided for under the law.

131.4. In like manner and subject to the same conditions and requirements, the right provided in this section may be based upon a subsequent regularly filed application in the same foreign country: Provided, That any foreign application filed prior to such subsequent application has been withdrawn, abandoned, or otherwise disposed of, without having been laid open to public inspection and without leaving any rights outstanding,



and has not served, nor thereafter shall serve, as a basis for claiming a right of priority. (Sec. 37, RA 166a)

Classification of Goods and Services

Sec. 144. Classification of Goods and Services. -

144.1. Each registration, and any publication of the Office which concerns an application or registration effected by the Office shall indicate the goods or services by their names, grouped according to the classes of the Nice Classification, and each group shall be preceded by the number of the class of that Classification to which that group of goods or services belongs, presented in the order of the classes of the said Classification.

144.2. Goods or services may not be considered as being similar or dissimilar to each other on the ground that, in any registration or publication by the Office, they appear in different classes of the Nice Classification. (Sec. 6, RA 166a)

Registration Procedure

Sec. 132. Application Number and Filing Date. - 132.1. The Office shall examine whether the application satisfies the requirements for the grant of a filing date as provided in Section 127 and Regulations relating thereto. If the application does not satisfy the filing requirements, the Office shall notify the applicant who shall within a period fixed by the Regulations complete or correct the application as required, otherwise, the application shall be considered withdrawn.

132.2. Once an application meets the filing requirements of Section 127, it shall be numbered in the sequential order, and the applicant shall be informed of the application number and the filing date of the application will be deemed to have been abandoned.

Sec. 133. Examination and Publication. -

133.1. Once the application meets the filing requirements of Section 127, the Office shall examine whether the application meets the requirements of Section 124 and the mark as defined in Section 121 is registrable under Section 123.

133.2. Where the Office finds that the conditions referred to in Subsection 133.1 are fulfilled, it shall, upon payment of the prescribed fee. Forthwith cause the application, as filed, to be published in the prescribed manner.

133.3. If after the examination, the applicant is not entitled to registration for any reason, the Office shall advise the applicant thereof and the reasons therefor. The applicant shall have a period of four (4) months in which to reply or amend his application, which shall then be re-examined. The Regulations shall determine the procedure for the re-examination or revival of an application as well as the appeal to the Director of Trademarks from any final action by the Examiner.

133.4. An abandoned application may be revived as a pending application within three (3) months from the date of abandonment, upon good cause shown and the payment of the required fee.

133.5. The final decision of refusal of the Director of Trademarks shall be appealable to the Director General in accordance with the procedure fixed by the Regulations. (Sec. 7, RA 166a)

Sec. 134. Opposition. - Any person who believes that he would be damaged by the registration of a mark may, upon payment of the required fee and within thirty (30) days after the publication referred to in Subsection 133.2, file with the Office an opposition to the application. Such opposition shall be in writing and verified by the oppositor or by any person on his behalf who knows the facts, and shall specify the grounds on which it is based



and include a statement of the facts relied upon. Copies of certificates of registration of marks registered in other countries or other supporting documents mentioned in the opposition shall be filed therewith, together with the translation in English, if not in the English language. For good cause shown and upon payment of the required surcharge, the time for filing an opposition may be extended by the Director of Legal Affairs, who shall notify the applicant of such extension. The Regulations shall fix the maximum period of time within which to file the opposition. (Sec. 8, RA 165a)

Sec. 135. Notice and Hearing. - Upon the filing of an opposition, the Office shall serve notice of the filing on the applicant, and of the date of the hearing thereof upon the applicant and the oppositor and all other persons having any right, title or interest in the mark covered by the application, as appear of record in the Office. (Sec. 9 RA 165)

Sec. 136. Issuance and Publication of Certificate. - When the period for filing the opposition has expired, or when the Director of Legal Affairs shall have denied the opposition, the Office upon payment of the required fee, shall issue the certificate of registration. Upon issuance of a certificate of registration, notice thereof making reference to the publication of the application shall be published in the IPO Gazette. (Sec. 10, RA 165)

Sec. 138. Certificates of Registration. - A certificate of registration of a mark shall be prima facie evidence of the validity of the registration, the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the same in connection with the goods or services and those that are related thereto specified in the certificate. (Sec. 20, RA 165)

Duration of Registration

Sec. 145. Duration.- A certificate of registration shall remain in force for ten (10) years: Provided, That the registrant shall file a declaration of actual use and evidence to that effect, or shall show valid reasons based on the

existence of obstacles to such use, as prescribed by the Regulations, 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 Office. (Sec. 12, RA 166a)

Sec. 146. Renewal. -

146.1. A certificate of registration may be renewed for periods of ten (10) years at its expiration upon payment of the prescribed fee and upon filing of a request. The request shall contain the following indications:

(a) An indication that renewal is sought;

(b) The name and address of the registrant or his successor-in-interest, hereafter referred to as the "right holder";

(c) The registration number of the registration concerned;

(d) The filing date of the application which resulted in the registration concerned to be renewed;

(e) Where the right holder has a representative, the name and address of that representative;

(f) The names of the recorded goods or services for which the renewal is requested or the names of the recorded goods or services for which the renewal is not requested, grouped according to the classes of the Nice Classification to which that group of goods or services belongs and presented in the order of the classes of the said Classification; and

(g) A signature by the right holder or his representative.

146.2. Such request shall be in Filipino or English and may be made at any time within six (6) months before the expiration of the period for which the registration was issued or renewed, or it may be made within six (6) months after such



expiration on payment of the additional fee herein prescribed.

146.3. If the Office refuses to renew the registration, it shall notify the registrant of his refusal and the reasons therefor.

146.4. An applicant for renewal not domiciled in the Philippines shall be subject to and comply with the requirements of this Act. (Sec. 15, RA 166a)

Rights Conferred by Registration

Sec. 147. Rights Conferred. -

147.1. The owner of a registered mark shall have the exclusive right to prevent all third parties not having the owner’s consent from using in the course of trade identical or similar signs or containers for goods or services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion. In case of the use, of an identical sign for identical goods or services, a likelihood of confusion shall be presumed.

147.2. The exclusive right of the owner of a well-known mark defined in Subsection 123.1(e) which is registered in the Philippines, shall extend to goods and services which are not similar to those in respect of which the mark is registered: Provided, That use of that mark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered mark: Provided, further, That the interests of the owner of the registered mark are likely to be damaged by such use.

Protection limited to goods specified in registration certificate

Faberge, Inc. v. IAC and Co Beng Kay, 215 SCRA 316 [1992]The certificate of registration can confer upon the petitioner the exclusive right to use its own

symbol only to those goods specified in the certificate, subject to any conditions a limitations stated therein. One who has adopted and used a trademark on his goods does not prevent the adoption and use of the same trademark by others for products which are of a different description.

Infringement and Remedies

Sec. 155. Remedies; Infringement. - Any person who shall, without the consent of the owner of the registered mark:

155.1. Use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark or the same container or a dominant feature thereof in connection with the sale, offering for sale, distribution, advertising of any goods or services including other preparatory steps necessary to carry out the sale of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or

155.2. Reproduce, counterfeit, copy or colorably imitate a registered mark or a dominant feature thereof and apply such reproduction, counterfeit, copy or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive, shall be liable in a civil action for infringement by the registrant for the remedies hereinafter set forth: Provided, That the infringement takes place at the moment any of the acts stated in Subsection

155.1. or this subsection are committed regardless of whether there is actual sale of goods or services using the infringing material. (Sec. 22, RA No 166a)

Sec. 156. Actions, and Damages and Injunction for Infringement. -



156.1. The owner of a registered mark may recover damages from any person who infringes his rights, and the measure of the damages suffered shall be either the reasonable profit which the complaining party would have made, had the defendant not infringed his rights, or the profit which the defendant actually made out of the infringement, or in the event such measure of damages cannot be readily ascertained with reasonable certainty, then the court may award as damages a reasonable percentage based upon the amount of gross sales of the defendant or the value of the services in connection with which the mark or trade name was used in the infringement of the rights of the complaining party. (Sec. 23, First Par., RA 166a)

156.2. On application of the complainant, the court may impound during the pendency of the action, sales invoices and other documents evidencing sales.156.3. In cases where actual intent to mislead the public or to defraud the complainant is shown, in the discretion of the court, the damages may be doubled. (Sec. 23, First Par., RA 166)

156.4. The complainant, upon proper showing, may also be granted injunction. (Sec. 23, Second Par., RA 166a)

Sec. 157. Power of Court to Order Infringing Material Destroyed. -

157.1. In any action arising under this Act, in which a violation of any right of the owner of the registered mark is established, the court may order that goods found to be infringing be, without compensation of any sort, disposed of outside the channels of commerce in such a manner as to avoid any harm caused to the right holder, or destroyed; and all labels, signs, prints, packages, wrappers, receptacles and advertisements in the possession of the defendant, bearing the registered mark or trade name or any reproduction, counterfeit, copy or colorable imitation thereof, all

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

157.2. In regard to counterfeit goods, the simple removal of the trademark affixed shall not be sufficient other than in exceptional cases which shall be determined by the Regulations, to permit the release of the goods into the channels of commerce. (Sec. 24, RA 166a).

Sec. 170. Penalties. - Independent of the civil and administrative sanctions imposed by law, a criminal penalty of imprisonment from two (2) years to five (5) years and a fine ranging from Fifty thousand pesos (P50,000) to Two hundred thousand pesos (P200,000), shall be imposed on any person who is found guilty of committing any of the acts mentioned in Section 155, Section 168 and Subsection 169.1. (Arts. 188 and 189, Revised Penal Code)

Sec. 159. Limitations to Actions for Infringement. - Notwithstanding any other provision of this Act, the remedies given to the owner of a right infringed under this Act shall be limited as follows:

159.1. Notwithstanding the provisions of Section 155 hereof, a registered mark shall have no effect against any person who, in good faith, before the filing date or the priority date, was using the mark for the purposes of his business or enterprise: Provided, That his right may only be transferred or assigned together with his enterprise or business or with that part of his enterprise or business in which the mark is used.

159.2. Where an infringer who is engaged solely in the business of printing the mark or other infringing materials for others is an innocent infringer, the owner of the right infringed shall be entitled as against such infringer only to an injunction against future printing.

159.3. Where the infringement complained of is contained in or is part of paid advertisement in a newspaper, magazine, or



other similar periodical or in an electronic communication, the remedies of the owner of the right infringed as against the publisher or distributor of such newspaper, magazine, or other similar periodical or electronic communication shall be limited to an injunction against the presentation of such advertising matter in future issues of such newspapers, magazines, or other similar periodicals or in future transmissions of such electronic communications. The limitations of this subparagraph shall apply only to innocent infringers: Provided, That such injunctive relief shall not be available to the owner of the right infringed with respect to an issue of a newspaper, magazine, or other similar periodical or an electronic communication containing infringing matter where restraining the dissemination of such infringing matter in any particular issue of such periodical or in an electronic communication would delay the delivery of such issue or transmission of such electronic communication is customarily conducted in accordance with the sound business practice, and not due to any method or device adopted to evade this section or to prevent or delay the issuance of an injunction or restraining order with respect to such infringing matter.

Mighty Corporation v. E. & J. Gallo Winery, 434 SCRA 473 [2004]A crucial issue in any trademark infringement case is the likelihood of confusion, mistake or deceit as to the identity, source or origin of the goods or identity of the business as a consequence of using a certain mark. Likelihood of confusion is admittedly a relative term, to be determined rigidly according to the particular (and sometimes peculiar) circumstances of each case. In determining likelihood of confusion, the court must consider: [a] the resemblance between the trademarks; [b] the similarity of the goods to which the trademarks are attached; [c] the likely effect on the purchaser; and [d] the registrant’s express or implied consent and other fair and equitable considerations.

McDonald’s Corporation v. L.C. Big Mak Burger, Inc., et al., 437 SCRA 10 [2004]To establish trademark infringement, the following elements must be shown: [1] the validity of the mark; [2] the plaintiff’s ownership of the mark; and [3] the use of the mark or its colorable imitation by the alleged infringer results in “likelihood of confusion.” Of these, it is the element of likelihood of confusion that is the gravamen of trademark infringement. Two types of confusion arise from the use of similar or colorable imitation marks, namely, confusion of goods (product confusion) and confusion of business (“source or origin confusion). While there is confusion of goods when the products are competing, confusion of business exists when the products are non-competing but related enough to produce confusion of affiliation. Canon Kabushiki Kaisha v. CA, et al., 336 SCRA 266 [2000]The likelihood of confusion of goods or business is a relative concept, to be determined according to the particular, and sometimes peculiar, circumstances of each case. In cases of confusion of business or origin, the question that usually arises is whether the respective goods or services of the senior user and the junior user are so related as to likely cause confusion of business or origin, and thereby render the trademark or tradenames confusingly similar. Goods are related when they belong to the same class or have the same descriptive properties; when they possess the same physical attributes or essential characteristics with reference to their form, composition, texture or quality. They may also be related because they serve the same purpose or are sold through the same channels of distribution.

Samson v. Daway, 434 SCRA 612 [2004]R.A. No. 8293 and R.A. No. 166 are special laws conferring jurisdiction over violations of intellectual property rights to the Regional Trial Court. They should therefore prevail over R.A. No. 7691, which is a general law. Hence, jurisdiction is properly lodged with the Regional Trial Court even if the penalty therefore is imprisonment of less than six years, or from 2 to 5 years and a fine ranging from P50,000 to P200,000.



Notice Requirement

Sec. 158. Damages; Requirement of Notice. - In any suit for infringement, the owner of the registered mark shall not be entitled to recover profits or damages unless the acts have been committed with knowledge that such imitation is likely to cause confusion, or to cause mistake, or to deceive. Such knowledge is presumed if the registrant gives notice that his mark is registered by displaying with the mark the words "Registered Mark" or the letter R within a circle or if the defendant had otherwise actual notice of the registration. (Sec. 21, RA 166a)

Unfair Competition

Sec. 168. Unfair Competition, Rights, Regulation and Remedies. -

168.1. A person who has identified in the mind of the public the goods he manufactures or deals in, his business or services from those of others, whether or not a registered mark is employed, has a property right in the goodwill of the said goods, business or services so identified, which will be protected in the same manner as other property rights.

168.2. Any person who shall employ deception or any other means contrary to good faith by which he shall pass off the goods manufactured by him or in which he deals, or his business, or services for those of the one having established such goodwill, or who shall commit any acts calculated to produce said result, shall be guilty of unfair competition, and shall be subject to an action therefor.

168.3. In particular, and without in any way limiting the scope of protection against unfair competition, the following shall be deemed guilty of unfair competition:

(a) Any person, who is selling his goods and gives them the general appearance of goods of

another manufacturer or dealer, either as to the goods themselves or in the wrapping of the packages in which they are contained, or the devices or words thereon, or in any other feature of their appearance, which would be likely to influence purchasers to believe that the goods offered are those of a manufacturer or dealer, other than the actual manufacturer or dealer, or who otherwise clothes the goods with such appearance as shall deceive the public and defraud another of his legitimate trade, or any subsequent vendor of such goods or any agent of any vendor engaged in selling such goods with a like purpose;

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

(c) Any person who shall make any false statement in the course of trade or who shall commit any other act contrary to good faith of a nature calculated to discredit the goods, business or services of another.

168.4. The remedies provided by Sections 156, 157 and 161 shall apply mutatis mutandis. (Sec. 29, RA 166a)

Del Monte Corporation, et al. v. CA, 181 SCRA 410 [1990]The following are the distinctions between infringement of trademark and unfair competition:

1. Infringement of trademark is the unauthorized use of a trademark, whereas unfair competition is the passing off of one’s goods as those of another.

2. In infringement of trademark, fraudulent intent is unnecessary, whereas in unfair competition fraudulent intent is essential.

3. In infringement of trademark the prior registration of the trademark is a



prerequisite to the action, whereas in unfair competition registration is not necessary.

Mighty Corporation v. E. & J. Gallo Winery, 434 SCRA 473 [2004]The law on unfair competition is broader and more inclusive than the law on trademark infringement. The latter is more limited but it recognizes a more exclusive right derived from the trademark adoption and registration by the person whose goods or business is first associated with it. Hence, even if one fails to establish his exclusive property right to a trademark, he may still obtain relief on the ground of his competitor’s unfairness or fraud. Conduct constitutes unfair competition if the effect is to pass off on the public the goods of one man as the goods of another.

McDonald’s Corporation v. L.C. Big Mak Burger, Inc., et al., 437 SCRA 10 [2004]The elements of an action for unfair competition are: [1] confusing similarity in the general appearance of the goods, and [2] intent to deceive the public and defraud a competitor. The confusing similarity may or may not result from similarity in the marks, but may result from other external factors in the packaging or presentation of the goods. The intent to deceive and defraud may be inferred from the similarity in appearance of the goods as offered for sale to the public. Actual fraudulent intent need not be shown.

COPYRIGHTS

Basic Principles

1. Works are protected by the sole fact of their creation.Sec. 172.2. Works are protected by the sole fact of their creation, irrespective of their mode or form of expression, as well as of their content, quality and purpose. (Sec. 2, PD No. 49a)

2. Protection extends only to the expression of an idea, not the idea itself.

Sec. 175. Unprotected Subject Matter. - Notwithstanding the provisions of Sections 172 and 173, no protection shall extend, under this law, to any idea, procedure, system method or operation, concept, principle, discovery or mere data as such, even if they are expressed, explained, illustrated or embodied in a work; xxx xxx xxx

Definition

Sec. 177. Copy or Economic Rights. - Subject to the provisions of Chapter VIII, copyright or economic rights shall consist of the exclusive right to carry out, authorize or prevent the following acts:

177.1. Reproduction of the work or substantial portion of the work;

177.2. Dramatization, translation, adaptation, abridgment, arrangement or other transformation of the work;

177.3. The first public distribution of the original and each copy of the work by sale or other forms of transfer of ownership;

177.4. Rental of the original or a copy of an audiovisual or cinematographic work, a work embodied in a sound recording, a computer program, a compilation of data and other materials or a musical work in graphic form, irrespective of the ownership of the original or the copy which is the subject of the rental;

177.5. Public display of the original or a copy of the work;

177.6. Public performance of the work; and

177.7. Other communication to the public of the work (Sec. 5, PD No. 49a)

Copyrightable Works

Sec. 172. Literary and Artistic Works. -

172.1. Literary and artistic works, hereinafter referred to as "works", are original intellectual



creations in the literary and artistic domain protected from the moment of their creation and 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 or entertainment 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.

Sec. 173. Derivative Works. -

173.1. The following derivative works shall also be protected by copyright:

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

(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. (Sec. 2, [P] and [Q], PD No. 49)

173.2. 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 the force of any subsisting copyright upon the original works employed or any part thereof, or be construed to imply any right to such use of the original works, or to secure or extend copyright in such original works. (Sec. 8, PD 49; Art. 10, TRIPS)

Sec. 174. Published Edition of Work. - In addition to the right to publish granted by the author, his heirs or assigns, the publisher shall have a copy right consisting merely of the right of reproduction of the typographical arrangement of the published edition of the work.

Format of a show not copyrightable

Joaquin, Jr., et al. v. Drilon, et al., 302 SCRA 225 [1999]The format of a show is not copyrightable. Section 2 of PD No. 49, otherwise known as the Decree on Intellectual Property, enumerates the classes of work entitled to copyright protection. This provision is substantially the same as Section 172 of the Intellectual Property Code (R.A. No. 8293). The format or mechanics of a television show is



not included in the list of protected works. For this reason, the protection afforded by the law cannot be extended to cover them. Copyright, in the strict sense of the term, is purely a statutory right. Being a statutory grant, the rights are only such as the statute confers, and may be obtained and enjoyed only with respect to the subjects and by the persons, and on terms and conditions specified in the statute.

Non-copyrightable Works (175, 176)

Sec. 175. Unprotected Subject Matter. - Notwithstanding the provisions of Sections 172 and 173, no protection shall extend, under this law, to any idea, procedure, system method or operation, concept, principle, discovery or mere data as such, even if they are expressed, explained, illustrated or embodied in a work; news of the day and other miscellaneous facts having the character of mere items of press information; or any official text of a legislative, administrative or legal nature, as well as any official translation thereof.

Sec. 176. Works of the Government. -

176.1. No copyright shall subsist in any work of the Government of the Philippines. 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 or office may, among other things, impose as a condition the payment of royalties. No prior approval or conditions shall be required for the use of any purpose of statutes, rules and regulations, and speeches, lectures, sermons, addresses, and dissertations, pronounced, read or rendered in courts of justice, before administrative agencies, in deliberative assemblies and in meetings of public character. (Sec. 9, First Par., PD No. 49)

176.2. The Author of speeches, lectures, sermons, addresses, and dissertations mentioned in the preceding paragraphs shall have the exclusive right of making a collection of his works.

176.3. Notwithstanding the foregoing provisions, the Government is not precluded from receiving and holding copyrights transferred to it by assignment, bequest or otherwise; nor shall publication or republication by the government in a public document of any work in which copy right is subsisting be taken to cause any abridgment or annulment of the copyright or to authorize any use or appropriation of such work without the consent of the copyright owners. (Sec. 9, Third Par., PD No. 49)

Standard for Copyright Protection

Ching Kian Chuan v. Court of Appeals, 363 SCRA 142 [2001]A person to be entitled to a copyright must be the original creator of the work. He must have created it by his own skill, labor, and judgment without directly copying or evasively imitating the work of another.

Economic Rights

Sec. 177. Copy or Economic Rights. - Subject to the provisions of Chapter VIII, copyright or economic rights shall consist of the exclusive right to carry out, authorize or prevent the following acts:

177.1. Reproduction of the work or substantial portion of the work;

177.2. Dramatization, translation, adaptation, abridgment, arrangement or other transformation of the work;

177.3. The first public distribution of the original and each copy of the work by sale or other forms of transfer of ownership;

177.4. Rental of the original or a copy of an audiovisual or cinematographic work, a work embodied in a sound recording, a computer program, a compilation of data and other materials or a musical work in graphic form, irrespective of the ownership of the original or the copy which is the subject of the rental;



177.5. Public display of the original or a copy of the work;

177.6. Public performance of the work; and

177.7. Other communication to the public of the work (Sec. 5, PD No. 49a)

Droit de Suite

Sec. 200. Sale or Lease of Work. - In every sale or lease of an original work of painting or sculpture or of the original manuscript of a writer or composer, subsequent to the first disposition thereof by the author, the author or his heirs shall have an inalienable right to participate in the gross proceeds of the sale or lease to the extent of five percent (5%). This right shall exist during the lifetime of the author and for fifty (50) years after his death. (Sec. 31, PD No. 49)

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 the author primarily derives gain from the proceeds of reproductions. (Sec. 33, PD No. 49)

Moral Rights

Sec. 193. Scope of Moral Rights. - The author of a work shall, independently of the economic rights in Section 177 or the grant of an assignment or license with respect to such right, have the right:

193.1. To require that the authorship of the works be attributed to him, in particular, the right that his name, as far as practicable, be indicated in a prominent way on the copies, and in connection with the public use of his work;193.2. To make any alterations of his work prior to, or to withhold it from publication;193.3. To object to any distortion, mutilation or other modification of, or other derogatory action in relation to, his work which would be prejudicial to his honor or reputation; and193.4. To restrain the use of his name with respect to any work not of his own creation

or in a distorted version of his work. (Sec. 34, PD No. 49)

Ownership of Copyright

Sec. 178. Rules on Copyright Ownership. - Copyright ownership shall be governed by the following rules:

178.1. Subject to the provisions of this section, in the case of original literary and artistic works, copyright shall belong to the author of the work;

178.2. In the case of works of joint authorship, the co-authors shall be the original owners of the copyright and in the absence of agreement, their rights shall be governed by the rules on co-ownership. If, however, a work of joint authorship consists of parts that can be used separately and the author of each part can be identified, the author of each part shall be the original owner of the copyright in the part that he has created;

178.3. In the case of work created by an author during and in the course of his employment, the copyright shall belong to:

(a) 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, facilities and materials of the employer.

(b) The employer, if the work is the result of the performance of his regularly-assigned duties, unless there is an agreement, express or implied, to the contrary.

178.4. In the case of a work-commissioned by a person other than an employer of the author and who pays for it and the work is made in pursuance of the commission, the person who so commissioned the work shall have ownership of work, but the copyright thereto shall remain with the creator, unless there is a written stipulation to the contrary;



178.5. In the case of audiovisual work, the copyright shall belong to the producer, the author of the scenario, the composer of the music, the film director, and the author of the work so adapted. However, subject to contrary or other stipulations among the creators, the producers shall exercise the copyright to an extent required for the exhibition of the work in any manner, except for the right to collect performing license fees for the performance of musical compositions, with or without words, which are incorporated into the work; and

178.6. In respect of letters, the copyright shall belong to the writer subject to the provisions of Article 723 of the Civil Code. (Sec. 6, PD No. 49a)

Sec. 179. Anonymous and Pseudonymous Works. - For purposes of this Act, the publishers shall be deemed to represent the authors of articles and other writings published without the names of the authors or under pseudonyms, unless the contrary appears, or the pseudonyms or adopted name leaves no doubts as to the author’s identity, or if the author of the anonymous works discloses his identity. (Sec. 7, PD 49)

Limitations on Copyright

Sec. 184. Limitations on Copyright. -

184.1. Notwithstanding the provisions of Chapter V, the following acts shall not constitute infringement of copyright:

(a) the recitation or performance of a work, once it has been lawfully made accessible to the public, if done privately and free of charge or if made strictly for a charitable or religious institution or society; (Sec. 10(1), PD No. 49)

(b) The making of quotations from a published work if they are compatible with fair use and only to the extent justified for

the purpose, including quotations from newspaper articles and periodicals in the form of press summaries: Provided, That the source and the name of the author, if appearing on the work, are mentioned; (Sec. 11, Third Par., PD No. 49)

(c) The reproduction or communication to the public by mass media of articles on current political, social, economic, scientific or religious topic, lectures, addresses and other works of the same nature, which are delivered in public if such use is for information purposes and has not been expressly reserved: Provided, That the source is clearly indicated; (Sec. 11, PD No. 49)

(d) The reproduction and communication to the public of literary, scientific or artistic works as part of reports of current events by means of photography, cinematography or broadcasting to the extent necessary for the purpose; (Sec. 12, PD No. 49)

(e) The inclusion of a work in a publication, broadcast, or other communication to the public, sound recording or film, if such inclusion is made by way of illustration for teaching purposes and is compatible with fair use: Provided, That the source and of the name of the author, if appearing in the work, are mentioned;

(f) The recording made in schools, universities, or educational institutions of a work included in a broadcast for the use of such schools, universities or educational institutions: Provided, That such recording must be deleted within a reasonable period after they were first broadcast: Provided, further, That



such recording may not be made from audiovisual works which are part of the general cinema repertoire of feature films except for brief excerpts of the work;

(g) The making of ephemeral recordings by a broadcasting organization by means of its own facilities and for use in its own broadcast;

(h) The use made of a work by or under the direction or control of the Government, by the National Library or by educational, scientific or professional institutions where such use is in the public interest and is compatible with fair use;

(i) The public performance or the communication to the public of a work, in a place where no admission fee is charged in respect of such public performance or communication, by a club or institution for charitable or educational purpose only, whose aim is not profit making, subject to such other limitations as may be provided in the Regulations;

(j) Public display of the original or a copy of the work not made by means of a film, slide, television image or otherwise on screen or by means of any other device or process: Provided, That either the work has been published, or, that original or the copy displayed has been sold, given away or otherwise transferred to another person by the author or his successor in title; and

(k) Any use made of a work for the purpose of any judicial proceedings or for the giving of professional advice by a legal practitioner.

184.2. 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 work and does not unreasonably prejudice the right holder's legitimate interest.

Sec. 187. Reproduction of Published Work. -

187.1. Notwithstanding the provision of Section 177, and subject to the provisions of Subsection 187.2, the private reproduction of a published work in a single copy, where the reproduction is made by a natural person exclusively for research and private study, shall be permitted, without the authorization of the owner of copyright in the work.

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 legitimate interests of the author.

Sec. 188. Reprographic Reproduction by Libraries. -

188.1. Notwithstanding the provisions of Subsection 177.6, any library or archive whose activities are not for profit may, without the authorization of the author of copyright owner, make a single copy of the work by reprographic reproduction:



(a) Where the work by reason of its fragile character or rarity cannot be lent to user in its original form;

(b) Where the works are isolated articles contained in composite works or brief portions of other published works and the reproduction is necessary to supply them; when this is considered expedient, to person requesting their loan for purposes of research or study instead of lending the volumes or booklets which contain them; and

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

188.2. Notwithstanding the above provisions, it shall not be permissible to produce a volume of a work published in several volumes or to produce missing tomes or pages of magazines 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 be entitled, when special reasons so require, to reproduce a copy of a published work which is considered necessary for the collection of the library but which is out of stock. (Sec. 13, PD 49a)

Sec. 189. Reproduction of Computer Program. –

189.1. Notwithstanding the provisions of Section 177, the reproduction in one (1) back-up copy or adaptation of a computer program shall be permitted, without the authorization of the author of, or other owner of copyright in, a computer program,

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

(a) The use of the computer program in conjunction with a computer for the purpose, and to the extent, for which the computer program has been obtained; and

(b) Archival purposes, and, for the replacement of the lawfully owned copy of the computer program in the event that the lawfully obtained copy of the computer program is lost, destroyed or rendered unusable.

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 be destroyed in the event that continued possession of the copy of the computer program ceases to be lawful.

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

Sec. 190. Importation for Personal Purposes. -

190.1. Notwithstanding the provision of Subsection 177.6, but subject to the limitation under the Subsection 185.2, the importation of a copy of a work by an individual for his personal purposes shall be permitted without the authorization of the author of, or other owner of copyright in, the work under the following circumstances:

(a) When copies of the work are not available in the Philippines and:

1) Not more than one (1) copy at one time is imported for strictly individual use only; or

2) The importation is by authority of and for the use of the Philippine Government; or

3) The importation, consisting of not more than three (3) such



copies or likenesses in any one invoice, is not for sale but for the use only of any religious, charitable, or educational society or institution duly incorporated or registered, or is for the encouragement of the fine arts, or for any state school, college, university, or free public library in the Philippines.

(b) When such copies form parts of libraries and personal baggage belonging to persons or families arriving from foreign countries and are not intended for sale: Provided, That such copies do not exceed three (3).

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

190.3. Subject to the approval of the Secretary of Finance, the Commissioner of Customs is hereby empowered to make rules and regulations for preventing the importation of articles the importation of which is prohibited under this Section and under treaties and conventions to which the Philippines may be a party and for seizing and condemning and disposing of the same in case they are discovered after they have been imported. (Sec. 30, PD No. 49)

Doctrine of Fair Use

Sec. 185. Fair Use of a Copyrighted Work. -

185.1. The fair use of a copyrighted work for criticism, comment, news reporting, teaching including multiple copies for classroom use, scholarship, research, and similar purposes is not an infringement of

copyright. Decompilation, which is understood here to be the reproduction of the code and translation of the forms of the computer program to achieve the inter-operability of an independently created computer program with other programs may also constitute fair use. In determining whether the use made of a work in any particular case is fair use, the factors to be considered shall include:

(a) The purpose and character of the use, including whether such use is of a commercial nature or is for non-profit education purposes;

(b) The nature of the copyrighted work;

(c) The amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(d) The effect of the use upon the potential market for or value of the copyrighted work.

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.

Notice of Copyright

Sec. 192. Notice of Copyright. - Each copy of a work published or offered for sale may contain a notice bearing the name of the copyright owner, and the year of its first publication, and, in copies produced after the creator’s death, the year of such death. (Sec. 27, PD No. 49a)

Duration of Copyright

Sec. 213. Term of Protection. - 213.1. Subject to the provisions of Subsections 213.2 to 213.5, the copyright in works under Sections 172 and 173 shall be protected during the life of the author and for fifty (50 years after his death. This rule also applies to posthumous works. (Sec. 21, First Sentence, PD No. 49a)

213.2. In case of works of joint authorship, the economic rights shall be protected during the life of the last surviving author and for fifty



(50) years after his death. (Sec. 21, Second Sentence, PD No. 49)

213.3. In case of anonymous or pseudonymous works, the copyright shall be protected for fifty (50) years from the date on which the work was first lawfully published: Provided, That where, before the expiration of the said period, the author's identity is revealed or is no longer in doubt, the provisions of Subsections 213.1 and 213.2 shall apply, as the case may be: Provided, further, That such works if not published before shall be protected for fifty (50) years counted from the making of the work. (Sec. 23, PD No. 49)

213.4. In case of works of applied art the protection shall be for a period of twenty-five (25) years from the date of making. (Sec. 24(B), PD No. 49a)

213.5. In case of photographic works, the protection shall be for fifty (50) years from publication of the work and, if unpublished, fifty (50) years from the making. (Sec. 24(C), PD 49a)

213.6. In case of audio-visual works including those produced by process analogous to photography or any process for making audio-visual recordings, the term shall be fifty (50) years from date of publication and, if unpublished, from the date of making. (Sec. 24(C), PD No. 49a)

Sec. 214. Calculation of Term. - The term of protection subsequent to the death of the author provided in the preceding Section shall run from the date of his death or of publication, but such terms shall always be deemed to begin on the first day of January of the year following the event which gave rise to them. (Sec. 25, PD No. 49)

Transfer and Assignment of Copyright

Sec. 180. Rights of Assignee. -

180.1. The copyright may be assigned in whole or in part. Within the scope of the assignment, the assignee is entitled to all the rights and remedies which the assignor had with respect to the copyright.

180.2. The copyright is not deemed assigned inter vivos in whole or in part unless there is a written indication of such intention.

180.3. The submission of a literary, photographic or artistic work to a newspaper, magazine or periodical for publication shall constitute only a license to make a single publication unless a greater right is expressly granted. If two (2) or more persons jointly own a copyright or any part thereof, neither of the owners shall be entitled to grant licenses without the prior written consent of the other owner or owners. (Sec. 15, PD No. 49a)

Sec. 181. Copyright and Material Object. - The copyright is distinct from the property in the material object subject to it. Consequently, the transfer or assignment of the copyright shall not itself constitute a transfer of the material object. Nor shall a transfer or assignment of the sole copy or of one or several copies of the work imply transfer or assignment of the copyright. (Sec. 16, PD No. 49)

Sec. 182. Filing of Assignment of License. - An assignment or exclusive license may be filed in duplicate with the National Library upon payment of the prescribed fee for registration in books and records kept for the purpose. Upon recording, a copy of the instrument shall be, returned to the sender with a notation of the fact of record. Notice of the record shall be published in the IPO Gazette. (Sec. 19, PD No. 49a)

Sec. 183. Designation of Society. - The copyright owners or their heirs may designate a society of artists, writers or composers to enforce their economic rights and moral rights on their behalf. (Sec. 32, PD No. 49a)

Neighboring Rights



Sec. 203. Scope of Performers' Rights. - Subject to the provisions of Section 212, performers shall enjoy the following exclusive rights:

203.1. As regards their performances, the right of authorizing:

(a) The broadcasting and other communication to the public of their performance; and

(b) The fixation of their unfixed performance.

203.2. The right of authorizing the direct or indirect reproduction of their performances fixed in sound recordings, in any manner or form;

203.3. Subject to the provisions of Section 206, the right of authorizing the first public distribution of the original and copies of their performance fixed in the sound recording through sale or rental or other forms of transfer of ownership;

203.4. The right of authorizing the commercial rental to the public of the original and copies of their performances fixed in sound recordings, even after distribution of them by, or pursuant to the authorization by the performer; and

203.5. The right of authorizing the making available to the public of their performances fixed in sound recordings, by wire or wireless means, in such a way that members of the public may access them from a place and time individually chosen by them. (Sec. 42, PD No. 49a)

Sec. 208. Scope of Right. - Subject to the provisions of Section 212, producers of sound recordings shall enjoy the following exclusive rights:

208.1. The right to authorize the direct or indirect reproduction of their sound recordings, in any manner or form; the placing of these reproductions in the market and the right of rental or lending;

208.2. The right to authorize the first public distribution of the original and copies of their sound recordings through sale or rental or other forms of transferring ownership; and

208.3. The right to authorize the commercial rental to the public of the original and copies of their sound recordings, even after distribution by them by or pursuant to authorization by the producer. (Sec. 46, PD No. 49a)

Sec. 211. Scope of Right. - Subject to the provisions of Section 212, broadcasting organizations shall enjoy the exclusive right to carry out, authorize or prevent any of the following acts:

211.1. The rebroadcasting of their broadcasts;

211.2. The recording in any manner, including the making of films or the use of video tape, of their broadcasts for the purpose of communication to the public of television broadcasts of the same; and

211.3. The use of such records for fresh transmissions or for fresh recording. (Sec. 52, PD No. 49)

Sec. 215. Term of Protection for Performers, Producers and Broadcasting Organizations.-

215.1. The rights granted to performers and producers of sound recordings under this law shall expire:

(a) For performances not incorporated in recordings, fifty (50) years from the end of the year in which the performance took place; and

(b) For sound or image and sound recordings and for performances incorporated therein, fifty (50) years from the end of the year in which the recording took place.



215.2. In case of broadcasts, the term shall be twenty (20) years from the date the broadcast took place. The extended term shall be applied only to old works with subsisting protection under the prior law. (Sec. 55, PD 49a)

Infringement

Habana, et al., v. Robles, et al., 310 SCRA 511 [1999]Infringement consists in the doing by any person, without the consent of the owner of the copyright, of anything the sole right to do which is conferred by statute on the owner of the copyright. The act of lifting from another’s book substantial portions of discussions and examples and the failure to acknowledge the same is an infringement of copyright. For there to be substantial reproduction of a book it does not necessarily require that the entire copyrighted work, or even a large portion of it, be copied. If so much is taken that the value of the original work is substantially diminished, there is an infringement of copyright and to an injurious extent, the work is appropriated. It is no defense that the pirate did not know whether or not he was infringing any copyright; he at least knew that what he was copying was not his, and he copied at his peril. In cases of infringement, copying alone is not what is prohibited. The copying must produce an “injurious effect”.

Remedies for Infringement

1. Civil Action

Sec. 216. Remedies for Infringement. -

216.1. Any person infringing a right protected under this law shall be liable:

(a) To an injunction restraining such infringement. The court may also order the defendant to desist from an infringement, among others, to prevent the entry into the channels of commerce of imported goods that involve an

infringement, immediately after customs clearance of such goods.

(b) Pay to the copyright proprietor or his assigns or heirs such actual 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, and in proving profits the plaintiff shall be required to prove sales only and the defendant shall be required to prove every element of cost which he claims, or, in lieu of actual damages and profits, such damages which to the court shall appear to be just and shall not be regarded as penalty.

(c) Deliver under oath, for impounding during the pendency of the action, upon such terms and conditions as the court may prescribe, sales invoices and other documents evidencing sales, all articles and their packaging alleged to infringe a copyright and implements for making them.

(d) Deliver under oath for destruction without any compensation all infringing copies or devices, as well as all plates, molds, or other means for making such infringing copies as the court may order.

(e) Such other terms and conditions, including the payment of moral and exemplary damages, which the court may deem proper, wise and equitable and the destruction of infringing



copies of the work even in the event of acquittal in a criminal case.

216. 2. In an infringement action, the court shall also have the power to order the seizure and impounding of any article which may serve as evidence in the court proceedings. (Sec. 28, PD 49a)

2. Criminal Action

Sec. 217. Criminal Penalties. -

217. 1. Any person infringing any right secured by provisions of Part IV of this Act or aiding or abetting such infringement shall be guilty of a crime punishable by:

(a) Imprisonment of one (1) year to three (3) years plus a fine ranging from Fifty thousand pesos (P50,000) to One hundred fifty thousand pesos (P150,000) for the first offense.

(b) Imprisonment of three (3) years and one (1) day to six (6) years plus a fine ranging from One hundred fifty thousand pesos (P150,000) to Five hundred thousand pesos (P500,000) for the second offense.

(c) Imprisonment of six (6) years and one (1) day to nine (9) years plus a fine ranging from Five hundred thousand pesos (P500,000) to One million five hundred thousand pesos (P1,500,000) for the third and subsequent offenses.

(d) In all cases, subsidiary imprisonment in cases of insolvency.

217. 2. In determining the number of years of imprisonment and the amount

of fine, the court shall consider the value of the infringing materials that the defendant has produced or manufactured and the damage that the copyright owner has suffered by reason of the infringement.

217. 3. Any person who at the time when copyright subsists in a work has in his possession an article which he knows, or ought to know, to be an infringing copy of the work for the purpose of:

(a) Selling, letting for hire, 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 purpose to an extent that will prejudice the rights of the copyright owner in the work; or

(c) Trade exhibit of the article in public, shall be guilty of an offense and shall be liable on conviction to imprisonment and fine as above mentioned. (Sec. 29, PD No. 49a)

Affidavit Evidence

Sec. 218. Affidavit Evidence. -

218.1. In an action under this Chapter, an affidavit made before a notary public by or on behalf of the owner of the copyright in any work or other subject matter and stating that:

(a) At the time specified therein, copyright subsisted in the work or other subject matter;

(b) He or the person named therein is the owner of the copyright; and

(c) The copy of the work or other subject matter annexed thereto is a true copy thereof, shall be admitted in evidence in any proceedings for an offense under this Chapter and shall be prima facie proof of the matters therein stated until the



contrary is proved, and the court before which such affidavit is produced shall assume that the affidavit was made by or on behalf of the owner of the copyright.

218.2. In an action under this Chapter.

(a) Copyright shall be presumed to subsist in the work or other subject matter to which the action relates if the defendant does not put in issue the question whether copyright subsists in the work or other subject matter; and

(b) Where the subsistence of the copyright is established, the plaintiff shall be presumed to be the owner of the copyright if he claims to be the owner of the copyright and the defendant does not put in issue the question of his ownership.

(d) Where the defendant, without good faith, puts in issue the questions of whether copyright subsists in a work or other subject matter to which the action relates, or the ownership of copyright in such work or subject matter, thereby occasioning unnecessary costs or delay in the proceedings, the court may direct that any costs to the defendant in respect of the action shall not be allowed by him and that any costs occasioned by the defendant to other parties shall be paid by him to such other parties.

Presumption of Ownership

Sec. 219. Presumption of Authorship. -

219.1. The natural person whose name is indicated on a work in the usual manner as the author shall, in the absence of proof to the contrary, be presumed to be the author of the work. This provision shall be

applicable even if the name is a pseudonym, where the pseudonym leaves no doubt as to the identity of the author.

219.2. The person or body, corporate whose name appears on an audio-visual work in the usual manner shall, in the absence of proof to the contrary, be presumed to be the maker of said work.

RULES AND REGULATIONSON

TRADEMARKS, SERVICE MARKS, TRADE NAMES AND

MARKED OR STAMPED CONTAINERS Whereas, the State recognizes that an effective industrial property system is vital to the develop-ment of domestic creativity, facilitates transfer of technology, attracts foreign investments and en-sures market access for our products;

Whereas, it is the policy of the State to streamline administrative procedures in registering trade-marks and enhance the enforcement of intellec-tual property rights in the Philippines;

Now, therefore, pursuant to the provisions of Re-public Act No. 8293, otherwise known as the Intel-lectual Property Code of the Philippines, the fol-lowing rules and regulations on trademarks, ser-vice marks, trade names, and marked or stamped containers are hereby promulgated: PART 1 REGISTRATION OF TRADEMARKS AND SER-VICE MARKS

Rule 100. Definitions. Unless otherwise speci-fied, the following terms shall have the meaning provided in this Rule:

(a) “Bureau” means the Bureau of Trademarks of the Intellectual Property Office;

(b) “Collective mark” means any visible sign des-ignated as such in the application for registration and capable of distinguishing the origin or any other common characteristics, including the qual-



ity of goods or services of different enterprises which use the sign under the control of the reg-istered owner of the collective mark;

(c) “Competent authority” for purposes of deter-mining whether a mark is well-known, means the Court, the Director General, the Director of the Bureau of Legal Affairs, or any administra-tive agency or office vested with quasi-judicial or judicial jurisdiction to hear and adjudicate any action to enforce the rights to a mark;

(d) “Director” means the Director of the Bureau of Trademarks;

(e) “Director General” means the head of the In-tellectual Property Office;

(f) “Examiner” means the trademark examiner or any official or employee of the Bureau of Trade-marks authorized to examine applications for registration or renewals thereof;

(g) “IP Code” means Republic Act No. 8293 oth-erwise known as the Intellectual Property Code of the Philippines;

(h) “IPO Gazette” means the Intellectual Prop-erty Office’s own publication where all matters required to be published under the IP Code shall be published;

(i) “Mark” means any visible sign capable of dis-tinguishing the goods (trademark) or services (service mark) of an enterprise and shall include a stamped or marked container of goods;

(j) “Office” means the Intellectual Property Of-fice;

(k) “Regulations” means these set of rules and regulations and such Rules of Practice in Trade-marks and Service Marks as may be formulated by the Director of Trademarks and approved by the Director General; and

(l) “Trade name” means the name or designation identifying or distinguishing an enterprise, also known or referred to as business identifier.

Rule 101. Registrability. A mark cannot be regis-tered if it:

(a) Consists of immoral, deceptive or scandalous matter, or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute;

(b) Consists of the flag or coat of arms or other insignia of the Philippines or any of its political subdivisions, or of any foreign nation, or any simu-lation thereof;

(c) Consists of a name, portrait or signature identi-fying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the Philippines, during the life of his widow, if any, except by written con-sent of the widow;

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

(i) The same goods or services, or

(ii) Closely related goods or services, or

(iii) If it nearly resembles such a mark as to be likely to deceive or cause confu-sion;

(e) Is identical with, or confusingly similar to, or constitutes a translation of a mark which is consid-ered by the competent authority of the Philippines to be well-known internationally and in the Philip-pines, whether or not it is registered here, as be-ing already the mark of a person other than the applicant for registration, and used for identical or similar goods or services; Provided, That in deter-mining whether a mark is well-known, account shall be taken of the knowledge of the relevant sector of the public, rather than of the public at



large, including knowledge in the Philippines which has been obtained as a result of the pro-motion of the mark;

(f) Is identical with, or confusingly similar to, or constitutes a translation of a mark considered well-known in accordance with the preceding paragraph, which is registered in the Philippines with respect to goods or services which are not similar to those with respect to which registration is applied for: Provided, That use of the mark in relation to those goods or services would indi-cate a connection between those goods or ser-vices, and the owner of the registered mark: Provided, further, That the interests of the owner of the registered mark are likely to be damaged by such use; (g) Is likely to mislead the public, particularly as to the nature, quality, characteristics or geo-graphical origin of the goods or services. Geo-graphical indications are indications which iden-tify a good as originating in the territory of a country which is a member of, or a region or lo-cality in that territory, where a given quality, rep-utation or other characteristic of the good is es-sentially attributable to its geographical origin.

(h) Consists exclusively of signs that are generic for the goods or services that they seek to iden-tify; (i) Consists exclusively of signs or of indications that have become customary or usual to desig-nate the goods or services in everyday language or in bona-fide and established trade practice; (j) Consists exclusively of signs or of indications that may serve in trade to designate the kind, quality, quantity, intended purpose, value, geo-graphical origin, time or production of the goods or rendering of the services, or other character-istics of the goods or services;

(k) Consists of shapes that may be necessitated by technical factors or by the nature of the goods themselves or factors that affect their in-trinsic value;

(l) Consists of color alone, unless defined by a given form; or

(m) Is contrary to public order or morality.

As regards signs or devices mentioned in para-graphs (j), (k), and (l), nothing shall prevent the registration of any such sign or device which has become distinctive in relation to the goods or ser-vices for which registration is requested as a re-sult of the use that has been made of it in com-merce in the Philippines. The Office may accept as prima facie evidence that the mark has become distinctive, as used in connection with the appli-cant’s goods or services in commerce, proof of substantially exclusive and continuous use thereof by the applicant in commerce in the Philippines for five (5) years before the date on which the claim of distinctiveness is made.

The nature of the goods or services to which the mark is applied will not constitute an obstacle to registration. Rule 102. Criteria for determining whether a mark is well-known. In determining whether a mark is well-known, the following criteria or any combina-tion thereof may be taken into account:

(a) the duration, extent and geographical area of any use of the mark, in particular, the duration, ex-tent and geographical area of any promotion of the mark, including advertising or publicity and the presentation, at fairs or exhibitions, of the goods and/or services to which the mark applies;

(b) the market share, in the Philippines and in other countries, of the goods and/or services to which the mark applies;

(c) the degree of the inherent or acquired distinc-tion of the mark;

(d) the quality-image or reputation acquired by the mark;

(e) the extent to which the mark has been regis-tered in the world;



(f) the exclusivity of registration attained by the mark in the world;

(g) the extent to which the mark has been used in the world;

(h) the exclusivity of use attained by the mark in the world;

(i) the commercial value attributed to the mark in the world;

(j) the record of successful protection of the rights in the mark;

(k) the outcome of litigations dealing with the is-sue of whether the mark is a well-known mark; and,

(l) the presence or absence of identical or simi-lar marks validly registered for or used on identi-cal or similar goods or services and owned by persons other than the person claiming that his mark is a well-known mark.

Rule 103. Trade Names or Business Names. (a) A name or designation may not be used as a trade name if by its nature or the use to which such name or designation may be put, it is contrary to public order or morals and if, in particular, it is liable to deceive trade circles or the public as to the nature of the enterprise iden-tified by that name.

(b) Notwithstanding any laws or regulations pro-viding for any obligation to register trade names, such names shall be protected, even prior to or without registration, against any unlawful act committed by third parties. In particular, any subsequent use of the trade name by a third party, whether as a trade name or a mark or col-lective mark, or any such use of a similar trade name or mark, likely to mislead the public, shall be deemed unlawful.

(c) The remedies provided for cancellation and infringent of marks in Sections 153 to 156 and

Sections 166 and 167 of the IP Code shall apply to tradenames mutatis mutandis.

(d) Any change in the ownership of a trade name shall be made with the transfer of the enterprise or part thereof identified by that name. However, such transfer or assignment shall be null and void if it is liable to mislead the public, particularly as regards the nature, source, manufacturing process, characteristics, or suitability for their pur-pose, of the goods or services to which the mark is applied. PART 2 RIGHT TO A MARK

Rule 200. How Marks are Acquired. The rights in a mark shall be acquired through registration made validly in accordance with the law.

Rule 201. International Conventions and Reci-procity. (a) Any person who is a national or who is domiciled or has a real and effective industrial establishment in a country which is a party to any convention, treaty or agreement relating to intel-lectual property rights or the repression of unfair competition, to which the Philippines is also a party, or extends reciprocal rights to nationals of the Philippines by law, shall be entitled to benefits to the extent necessary to give effect to any provi-sion of such convention, treaty or reciprocal law, in addition to the rights to which any owner of an intellectual property right is otherwise entitled by the Intellectual Property Code.

(b) The registration of a mark of such person shall be independent of the registration in the country of origin and the duration, validity or transfer in the Philippines of such registration shall be governed by the IP Code and these Regulations.

Rule 202. Priority Right; Basis for Claiming Prior-ity Right. (a) An application for registration of a mark filed in the Philippines by a person referred to in Rule 201, and who previously duly filed an application for registration of the same mark in one of those countries, shall be considered as



filed as of the day the application was first filed in the foreign country.

(b) No registration of a mark in the Philippines by a person described in this rule shall be granted until such mark has been registered in the country of origin of the applicant.

(c) The country of origin of the applicant is the country in which he is a national, domiciled, or has a bona fide and effective industrial or com-mercial establishment.

(d) Nothing in this rule shall entitle the owner of a registration granted under this rule to sue for acts committed prior to the date on which his mark was registered in the Philippines. Pro-vided, That, notwithstanding the foregoing, the owner of a well-known mark, as defined in the IP Code and these Regulations, that is not regis-tered in the Philippines, may, against an identi-cal or confusingly similar mark, oppose its regis-tration, or petition the cancellation of its registra-tion or sue for unfair competition, without preju-dice to availing himself of other remedies pro-vided for under the law.

(e) In like manner and subject to the same con-ditions and requirements, the priority right may be based upon a subsequent regularly filed ap-plication in the same foreign country: Provided, That any foreign application that was made the basis of the priority right and filed prior to such subsequent application has been withdrawn, abandoned, or otherwise disposed of, without having been laid open to public inspection and without leaving any rights outstanding, and has not served as a basis for claiming a right of pri-ority shall not thereafter serve as a basis for claiming a right of priority.

Rule 203. Requirements for Applications Claim-ing Priority Right. An application claiming prior-ity right must be filed within six (6) months from the date the earliest foreign application was filed. A certified copy of the corresponding for-eign application together with an English transla-tion must filed within three (3) months from the date of filing in the Philippines.

Rule 204. Declaration of actual use. The Office will not require any proof of use in commerce in the processing of trademark applications. How-ever, without need of any notice from the Office, all applicants or registrants shall file a declaration of actual use of the mark with evidence to that ef-fect within three years, without possibility of exten-sion, from the filing date of the application. Other-wise, the application shall be refused or the mark shall be removed from the register by the Direc-tor motu proprio.

Rule 205. Contents of the declaration and evi-dence of actual use. The declaration shall be un-der oath, must refer to not more than one applica-tion or registration, must contain the name and address of the applicant or registrant declaring that the mark is in actual use in the Philippines, list the goods where the mark is attached; list the name or names and the exact location or locations of the outlet or outlets where the products are be-ing sold or where the services are being rendered, recite sufficient facts to show that the mark de-scribed in the application or registration is being actually used in the Philippines, specifying the na-ture of such use, attaching certified or original copies of purchase orders, sales invoices, official receipts, stating the volume of sales during the fis-cal year immediately preceding the filing of the declaration, furnishing copies of printed advertise-ment and other proofs of advertising with a state-ment of the advertising cost in the immediately preceeding fiscal year as shown in the corre-sponding audited financial statements where ap-plicable, or income tax returns in all cases. The declarant should also attach five labels as actually used on the goods or the picture of the stamped or marked container visibly and legibly showing the mark as well as proof of payment of the pre-scribed fee. PART 3 WHO MAY APPLY FOR A MARK

Rule 300. The Applicant. (a) Applicant may be a person or juridical person.

(b) Unless modified by this Chapter, all applica-tions for a mark should be in the name of the ap-plicant(s) who may sign the application. If there



are more than one applicant, all of them should be named as applicant but anyone may sign the application for and in behalf of all the appli-cants.

Rule 301. Assigned marks. In case the whole interest in the mark is assigned, the application may be filed in the name of the assignee who may sign the application. In case the assignee is a juridical person, any officer thereof may sign the application in behalf of the said person. In case of an aliquot portion or undivided interest, each of the joint owners will sign the applica-tion.

Rule 302. Representation; Address for Ser-vice. If the applicant is not domiciled or has no real and effective commercial establishment in the Philippines, he shall designate by a written document filed in the Office, the name and ad-dress of a Philippine resident who may be served notices or process in proceedings affect-ing the mark. Such notices or services may be served upon the person so designated by leav-ing a copy thereof at the address specified in the last designation filed. If the person so desig-nated cannot be found at the address given in the last designation, such notice or process may be served upon the Director.

Rule 303. Applicant may be represented by at-torney. The owner of a mark may file and prosecute his own application for registration, or he may be represented by any attorney or other person authorized to practice in such matters by the Office. The Office shall not aid in the selec-tion of an attorney or agent other than the fur-nishing of the list of Attorneys or agents autho-rized to practise before the Office.

Rule 304. Power of attorney or authorization. Before any attorney-at-law or other recognized person will be allowed to file an application or take action in any case or proceeding, ex parte or inter partes, a power of attorney or authoriza-tion must be filed in that particular case or pro-ceeding.

A substitute or associate attorney may be ap-pointed by an attorney only upon the written au-thorization of his principal; but a third attorney ap-pointed by the second will not be recognized.

Rule 305. Death, insanity, incapacity of appli-cant. When the applicant dies, becomes insane or otherwise incapacitated, the legally appointed executor, administrator, guardian, conservator or representative of the dead or insane or incapaci-tated applicant may prosecute the application in behalf of the heirs and successors-in-interest of the applicant.

Rule 306. Signature. and other means of Self-identification. (a) Where a signature is re-quired, the Office shall accept:

(1) A handwritten signature; or (2) The use of other forms of signature, such as a printed or stamped signature, or the use of a seal, instead of a hand-written signature: Provided, That where a seal is used, it should be accompanied by an indication in letters of the name of the signatory.

(b) No attestation, notarization, authentication, le-galization or other certification of any signature or other means of self-identification referred to in the preceding paragraphs, will be required, except, where the signature concerns the surrender of a registration. PART 4 TRADEMARK APPLICATION

Rule 400. Requirements of application. All appli-cations must be addressed to the Director and shall be in Filipino or English and shall contain the following:

(a) a request for registration;

(b) the name and address of the appli-cant;

(c) the name of a State of which the ap-plicant is a national or where he has domicile; and the name of a State in which the applicant has a real and effec-



tive industrial or commercial establish-ment, if any;

(d) where the applicant is a juridical entity, the law under which it is orga-nized and existing;

(e) the appointment of an agent or rep-resentative, if the applicant is not domi-ciled in the Philippines;

(f) where the applicant claims the pri-ority of an earlier application, a declara-tion claiming the priority of that earlier application, together with an indication of:

- the name of the State with whose National Office the ear-lier application was filed or if filed with an Office other than a National Office, the name of that Office;

- the date on which the earlier application was filed; and

- where available, the applica-tion number of the earlier ap-plication;

(g) where the applicant wishes to claim color as a distinctive feature of the mark, a statement to that effect as well as the name or names of the color or colors claimed and an indication, in re-spect of each color, of the principal parts of the mark which are in that color;

(h) where the mark is a three-dimen-sional mark, a statement to that effect;

(i) a reproduction of the mark and fac-similes thereof as provided in these Regulations;

(j) a transliteration or translation of the mark or of some parts of the mark, as prescribed in these Regulations;

(k) the names of the goods or services for which the registration is sought, grouped according to the classes of the Nice Classification, together with the number of the class of the said Classifi-cation to which each group of goods or services belongs;

(l) where the application is for a collective mark, a designation to that effect;

(m) a signature by, or other self-identifi-cation of, the applicant or his representa-tive;

(n) Power of Attorney if the filing is through a representative; and

(o) sworn Statement that the applicant is a small entity if such be the fact.

Rule 401. Office Application Form. For the con-venience of applicants, the Office shall draw up and make available a standard application form which may be reproduced at will by applicants and other persons at their own cost.

Rule 402. Label. The applicant may include the label as actually used or intended to be used on the goods or a copy or duplicate made by photo engraving or some similar process.

The mark must be bigger and more dominant than the generic term of goods except in the case of medicine as required by law.

Rule 403. Drawing. (a) The drawing of the mark shall be substantially exact representation thereof as actually used or intended to be used on or in connection with, the goods or services of the ap-plicant.



(b) A typed drawing may be accepted by the Ex-aminer if no special characteristics have to be shown such as design, style of lettering, color, diacritical marks, or unusual forms of punctua-tion.

A computer print-out may also be accepted by the Examiner if it substantially complies with the requirement that it must be the exact represen-tation of the mark.

(c) The provisions of this Rule shall, however be construed liberally in determining whether the applications shall be considered complete for the purpose of granting a filing date.

Rule 404. Drawing for a service mark may be dispensed with in certain cases. The drawing of a service mark may be dispensed with but the application must contain an adequate descrip-tion of such mark.

Rule 405. Drawing to be on Bristol board. The Drawing must be made upon pure white paper of a thickness of a Bristol board. The surface of the paper must be calendered and smooth.

Rule 406. Size of board; “sight”. The size of a sheet on which a Drawing is made must be ex-actly two hundred ten millimeters (210 mm) by two hundred ninety-seven millimeters (297 mm) or the size of an A4 paper. Nineteen millimeters (19 mm) from its edges, a single marginal line is to be drawn, leaving the “sight” precisely one hundred seventy-two millimeters (172 mm) by two hundred fifty-nine millimeters (259 mm). Within this margin all work and signatures must be included. One of the shorter sides of the sheet should be regarded as its top.

Rule 407. Drawing to be with the pen or by other processing giving satisfactory results. If colors are not claimed, all Drawings must be made with pen only or by a process which will give them satisfactory reproduction characteris-tics. Every line and letter, signatures included, must be absolutely black. This direction applies to all lines, however fine, and to shading. All lines must be clean, sharp, and solid, and they

must not be too fine or crowded. Surface shading, when used, should be open.

Rule 408. The name of the owner to be within marginal lines. The name of the proprietor of the trademark or service mark trade name must be within the marginal lines and should not encroach upon the drawing. It should be signed by the owner or his Attorney of record. However, a printed or stamped signature or the use of seal ac-companied by an indication in letters of the name of signatory is also accepted.

Rule 409. When board may be turned on its side. When the view is longer than the width of the sheet, the sheet should be turned on its side.

Rule 410. Manner of mailing the Drawing to the Bureau. Drawing transmitted to the Office should be sent flat, protected by a sheet of heavy binder’s board, or should be rolled for transmis-sion in a suitable mailing tube. They should never be folded.

Rule 411. Color. Where color is a material fea-ture of the mark as used or intended to be used, the color or colors employed may be actually re-produced in the drawings and facsimiles. Other-wise, a statement must be made giving the name or names of the color or colors claimed indicating the principal part or parts of the mark which are in such color or colors.

Rule 412. Informal Drawing. A Drawing not exe-cuted in conformity with the foregoing rules may be accepted for the purpose of examination, but the Drawing must be corrected or a new one fur-nished, as may be required, before the mark can be published for opposition or the application al-lowed. Substitute Drawings will not be accepted unless they have been required by the Examiner or unless correction of original Drawing would re-quire that the mark or trade name be substantially entirely redrawn.

Rule 413. Use of an old Drawing in a new appli-cation. In an application filed in place of an aban-doned or rejected application, a new complete ap-plication is required, but the old Drawing, if suit-



able, may be used. The application must be ac-companied by a request for the transfer of the Drawing, and by a permanent photographic copy, or an order for such copy, of the Drawing to be placed in the original file. A drawing so transferred or to be transferred cannot be amended.

Rule 414. The Small facsimiles of the Drawing, how prepared. The ten small facsimiles of the Drawing must be printed in black ink or in color, if colors are claimed, one facsimile on Bristol board and the other nine facsimiles on an ordi-nary coupon bond paper and must be capable of being satisfactorily reproduced when published in the IPO Gazette. The size of the sheet on which these facsimiles are to be printed must be seventy millimeters (70 mm) long and thirty-five millimeters (35 mm) wide.

Rule 415. Translation/Transliteration. A transla-tion or transliteration of the mark or of some parts of the mark must accompany the applica-tion if the mark or of some parts of the mark is/are foreign word(s), letter(s) and character(s), or foreign sounding.

Transliteration is an act, process or instance of representing or spelling of words, letters or char-acters of one language in the letters and charac-ters of another language or alphabet.

Translation is an act, process or instance of translating as rendering from one language or representational system into another.

Rule 416. Nice Classification. The applicant must indicate the names of the goods or ser-vices for which the registration is sought, grouped according to the classes of the Nice Classification, together with the number of the class of the Nice Classification to which each group of goods or services belongs.

CLASSIFICATION OF GOODSTITLE CLASS

1 Chemical products used in industry, science, photography, agriculture, horticulture, forestry;

artificial and synthetic resins; plastics in the form of powders, liquids or plates, for industrial use; manures (natural and artificial); fire extinguishing compositions; tempering substances and chemical preparations for soldering; chemical substances for preserving foodstuffs; tanning substances; ad-hesive substances used in industry.

2 Paints, varnishes, lacquers, preservatives against rust and against deterioration of wood; colouring matters; dyestuffs; mordants; natural resins; metals in foil and powder form for painters and decorators.

3 Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery; essen-tial oils, cosmetics, hair lotions, dentrifices.

4 Industrial oils and greases (other than edible oils and fats and essential oils); lubricants; dust laying and absorbing compositions; fuels (including mo-tor spirit) and illuminants; candles, tapers, night-lights and wicks.

5 Pharmaceutical, veterinary and sanitary sub-stances; infants’; and invalids’ foods; plasters, ma-terial for bandaging; material for stopping teeth, dental wax; disinfectants; preparations for killing weeds and destroying vermin.

6 Unwrought and partly wrought common metals and their alloys; anchors, anvils, bells, rolled and cast building materials; rails and other metallic materials for railway tracks; chains (except driving chains for vehicles); cables and wires (non-elec-tric); lock-smith’ work ; metallic pipes and tubes; safes and cash boxes; steel balls; horseshoes; nails and screws; other goods in non-precious metal not included in other classes; ores.

7 Machines and machine tools; motors (except for land vehicles); machine couplings and belting (ex-cept for land vehicles); large size agricultural im-plements; incubators.

8 Hand tools and instruments; cutlery, forks and spoons; side arms.



9 Scientific, nautical, surveying and electrical apparatus and instruments (including wireless), photographic, cinematographic, optical, weigh-ing, measuring, signalling, checking (supervi-sion), life saving and teaching apparatus and in-struments; coin or counter-freed apparatus; talk-ing machines; cash registers; calculating ma-chines; fire-extinguishing apparatus.

10 Surgical, medical, dental and veterinary in-struments and apparatus (including artificial limbs, eyes and teeth).

11 Installations for lighting, heating, steam gen-erating, cooking, refrigerating, drying, ventilat-ing, water supply and sanitary purposes.

12 Vehicles; apparatus for locomotion by land, air or water.

13 Firearms; ammunition and projectiles; explo-sive substances; fireworks.

14 Precious metals and their alloys and goods in precious metals or coated therewith ( except cutlery, forks and spoons); jewellery, precious stones; horological and other choronometric in-struments.

15 Musical instruments (other than talking ma-chines and wireless apparatus).

16 Paper and paper articles, cardboard and cardboard articles; printed matter, newspaper and periodicals, books; bookbinding materials; photographs; stationery, adhesive materials (stationery); artists’ materials; paint brushes; typewriters and Office requisites (other than fur-niture); instructional and teaching material (other than apparatus);playing cards; (printers’) type and cliches (stereotype).

17 Gutta percha, indiarubber, balata and substi-tutes, articles made from these substances, and not included in other classes; plastics in the form of sheets, blocks and rods, being for use in manufacturers; materials for packing, stopping

or insulating; asbestos, mica and their products; hose pipes (non-metallic).

18 Leather and imitations of leather, articles made from these materials, and not included in other classes; skins, hides, trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.

19 Building materials, natural and artificial stone, cement, lime, mortar, plaster and gravel; pipes of earthenware or cement; road-making materials; asphalt, pitch and bitumen; portable buildings; stone monuments; chimney pots.

20 Furniture, mirrors, picture frames; articles (not included in other classes) of wood, cork, reeds, cane, wicker, horn, bone, ivory, whale-bone, shell, amber, mother-of-pearl, meerschaum, celluloid, substitutes for all these material, or of plastic.

21 Small domestic utensils and containers (not of precious metal, nor coated therewith);combs and sponges; brushes (other than paint brushes);brush-making materials; instruments and materials for cleaning purposes; steel wool; un-worked or semi-worked glass (excluding glass used in building); glassware, porcelain and earth-enware not included in other classes.

22 Rope, string, nets, tents, awnings, tarpaulins, sails, sacks; padding and stuffing materials (hair, capoc, feathers, seaweeds, etc.); raw textile mate-rials.

23 Yarns, threads.

24 Tissues (piece goods); bed and table covers; textile articles not included in other classes.

25 Clothing, including boots, shoes and slippers.

26 Lace and embroidery, ribbons and braids; but-tons, press buttons, hooks and eyes, pins and needles; artificial flowers.



27 Carpets, rugs, mats and matting; linoleums and other materials for covering existing floors; wall hangings (non-textile).

28 Games and playthings; gymnastic and sport-ing articles (except clothing); ornaments and decorations for Christmas trees.

29 Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegeta-bles; jellies, jams; eggs; milk and other dairy products; edible oils and fats; preserves, pick-les.

30 Coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitutes; flour, and preparations made from cereals; bread, biscuits, cakes pastry and confectionery, ices; honey, treachel; yeast, bak-ing-powder; salt mustard; pepper, vinegar, sauces; spices; ice.

31 Agricultural, horticultural and forestry prod-ucts and grains not included in other classes; living animals; fresh fruits and vegetables; seeds; live plants and flowers; foodstuffs for ani-mals, malt.

32 Beer, ale and porter; mineral and aerated waters and other non-alcoholic drinks; syrups and other preparations for making beverages.

33 Wines, spirits and liquors.

34 Tobacco, raw or manufactured; smokers’ arti-cles; matches.

(b) CLASSIFICATION OF BUSINESS OR SER-VICES

35 Advertising and business 36 Insurance and financial 37 Construction and repair 38 Communication 39 Transportation and storage 40 Material treatment 41 Education and entertainment 42 Miscellaneous

Rule 417. Broad terms. In any application, the use of broad terms in identifying the goods, busi-ness or services shall be unacceptable. Appli-cants whose application are based on foreign reg-istration shall be required to specify the goods covered by such foreign registration in all cases where the foreign registration used broad terms in identifying the goods, business or services.

Rule 418. Single registration for goods and/or services. One (1) application may relate to sev-eral goods and/or services, whether they belong to one (1) class or to several classes of the Nice Classification. Where goods and/or services be-longing to several classes of the Nice Classifica-tion have been included in one (1) application, such an application shall result in one registra-tion.

Rule 419. Division of Applications. (a) Any ap-plication referring to several goods or services re-ferred to as the “ initial application” may be divided by the applicant into two (2) or more applications hereafter referred to as the “divisional applica-tions” by distributing among the latter the goods or services referred to in the initial application.

(b) A single class shall not be subdivided.

(c) The divisional applications must be submitted before examination of the initial application or within two (2) months from mailing date of the first action of the Bureau.

(d) Upon receipt of the divisional applications, the Office shall cancel the initial application together with its application number. New application num-bers shall be given to the divisional applications but the filing date shall be the same as the filing date of the initial application. The divisional appli-cations shall likewise preserve the benefit of the right of priority of the initial application. PART 5 THE FILING DATE



Rule 500. Filing Date. Subject to the provisions on priority right, the filing date of an application shall be the date on which the Office received the payment for the required fee and the follow-ing indications and elements in English or Fil-ipino:

(a) An express or implicit indication that the registration of a mark is sought;

(b) The identity of the applicant;

(c) Indications sufficient to contact the applicant or his representative, if any;

(d) A reproduction of the mark whose registration is sought; and

(e) The list of the goods or services for which the registration is sought.

Rule 501. Application Number and Filing Date. (a) Before starting to examine the regis-trability of a mark, the Examiner or such other personnel as the Director may authorize, shall examine whether the application satisfies the re-quirements for the grant of a filing date as pro-vided in these Regulations. If the application does not satisfy the filing date requirements, the Bureau shall notify the applicant who shall, within a period of one (1) month from mailing date of the notice, complete or correct the appli-cation as required; otherwise, the application shall be considered withdrawn.

(b) If the application did not satisfy the require-ments for grant of a filing date at the time that the filing fee and other indications were received by the Office, the filing date that was given shall be cancelled and a new filing date shall be en-tered in the records of the Office. The new filing date shall be the date on which the Office re-ceived the completed or corrected application as specified in the notice to the applicant. PART 6 PROCEEDINGS IN THE EXAMINATION OF AN APPLICATION FOR REGISTRATION

CHAPTER 1. NATURE OF THE PROCEED-INGS

Rule 600. Application prosecuted ex parte; protests. An application for registration is prose-cuted ex parte by the applicant; that is, the pro-ceedings are like a lawsuit in which there is a plaintiff (the applicant) but no defendant, the court itself (the Examiner) acting as the adverse party.

No attention shall be paid to ex parte statements or protests of persons concerning pending appli-cations to which they are not parties, unless infor-mation of the pendency of these applications shall have been voluntarily communicated by the appli-cants.

Rule 601. Proceedings a contest between Exam-iner and the Applicant. An ex parte proceeding in the Office for the registration of a mark is a law contest between the Examiner, representing the interest of the public and the applicant (or his at-torney), representing his own private interests.

Rule 602. Applicant supposed to look after his own interests. The Office, represented by the Examiner, is not supposed to look after the inter-est of an applicant. The law imposes that duty upon the applicant himself. The Examiner is charged with the protection of the interests of the public and hence must be vigilant to see that no registration issues for a mark contrary to law and these Regulations.

Rule 603. Preliminary adverse action of the Exam-iner valuable to Applicant. The positive value of a preliminary adverse action of the Examiner should be fully appreciated by the applicant or his attorney. A hard-fought application will produce a registration much more likely to stand in court than a registration which has slid through the Office easily. The reason for this is that every point raised by the Examiner and finally decided by the Office in favor of the applicant will give the appli-cant a prima facie standing on that point in court. The Office is empowered by law to pass upon ap-plications for registration and, because of the au-thority vested in it, its decisions with respect to the grant of a registration, or on any point connected



with it, are presumed to be correct by the courts.

Rule 604. A preliminary rejection should not be taken literally; Examiner is only trying to be help-ful. A preliminary rejection by the Examiner is never to be taken literally. An applicant should remember that the Examiner may not be actu-ally rejecting his application. The Examiner may in fact be quite prepared to admit the applica-tion, and is only trying to give the applicant a chance to explain away some reference or some difficulty rather than have him wait until the reg-istration is granted and become involved in a liti-gation, when it may then be difficult for him to make the explanation.

CHAPTER 2. MANNER OF EXAMINATION OF AN APPLICATION FOR REGISTRATION; AC-TION BY THE EXAMINER; RESPONSE BY THE APPLICANT; ABANDONMENT; RE-VIVAL.

Rule 605. Order of examination; priority of ac-tion. Applications shall be examined for regis-trability in the order in which the complete re-quirements for grant of filing date are received by the Office. Ordinarily, the order of the appli-cation number assigned to them by the Office will be followed and no application bearing a higher application number shall be examined in advance of the applications with lower applica-tion numbers unless the filing date or the priority date of the application bearing the higher num-ber is earlier than those bearing a lower num-ber.

Rule 606. Jurisdiction of the Examiner. The Examiners shall have original jurisdiction over the examination of all applications for registra-tion and over their allowance for publication in the IPO Gazette for purposes of opposition. Their decision, when final, shall be subject to petition and appeal to the Director. Applicants, their attorneys or agents shall take up the prob-lems arising from their pending applications only with the respective Examiners in charge and with no other person in the Office.

Rule 607. Examination of the application; action by the Examiner. (a) If, after the examination, the applicant is found not entitled to registration for any reason, he will be so notified by the Examiner. He will be advised of the reasons therefor and of any formal requirements or objections, and he will be given such information and references as may be helpful to him in the further prosecution of his application.

(b) All Examiners are required to include all grounds of objection existing at the time of the is-suance of an action in that action. Piece meal ac-tion shall be prohibited.

Rule 608. Deletion and/or disclaimer may be re-quired. The Examiners may require unregistrable matter to be deleted from the Drawing or dis-claimed in the application, but such disclaimer shall not prejudice or affect the applicant’s rights then existing under some other law or thereafter arising in the disclaimed matter, nor shall such disclaimer prejudice or affect the applicant’s rights to registration on another application of later date, where the disclaimed matter has become distinc-tive of the applicant’s goods, business or ser-vices.

The basic purpose of disclaimers is to make of record, that a significant element of a composite mark is not being exclusively appropriated by itself apart from the composite. The following portions of a mark when comprising less than the entire mark, must be disclaimed to permit registration, namely (a) a generic term; (b) a descriptive matter in the composite mark; (c) a matter which does not function as a trademark, or service mark or a trade name.

Rule 609. Interview with the Examiners: when no interview is permitted. Interviews with Examiners concerning applications pending before the Office can be held only upon written request specifying the query he would want to propound and after payment of the required fee, but in respect of which the Examiner has the discretion to grant the interview or instead reply to the query in writing. The interview shall take place within the premises of the Office and during regular office hours as



specified by the Examiner. All interviews or con-ferences with Examiners shall be reduced to writing and signed by the Examiner and the ap-plicant immediately after the conference. Such writing shall form part of the records of the Of-fice. Interviews for the discussion of pending applications shall not be held prior to the first of-ficial action thereon.

Rule 610. Period for response, action by appli-cant. The applicant has two (2) months from the mailing date of any action of the Examiner to re-spond thereto. Such response may be made with or without amendment and must include such proper action by the applicant as the na-ture of the action of the Examiner and the condi-tion of the case may require. The period to re-spond may be extended upon written request and upon payment of the required fee but in no case shall the total period to respond exceed four (4) months from the mailing date of the Ex-aminer’s action requiring the response.

Rule 611. Communications other than the origi-nal. “Communication” shall mean any response filed with the Office except compliance with filing date requirements. The Office shall accept com-munications to it by telecopier, or by electronic means. When communications are made by telefacsimile, the reproduction of the signature, or the reproduction of the seal together with, where required, the indication in letters of the name of the natural person whose seal is used, must appear. Within twenty-four (24) hours from receipt of the telefacsimile by a machine of the Office, the Examiner shall confirm the date of receipt of the telefacsimile by means of a notice requiring the applicant to pay the cost, as may be established by the Office from time to time, incurred by the Office to enable the Office to re-ceive such telefacsimile. The original copy such communication and the payment of the cost herein provided must be received by the Office within one (1) month from date of receipt of the telefacsimile. Otherwise, the communication shall be deemed withdrawn and expunged from the records. In all cases, the burden of proof lies on the applicant that such documents have been received by the Office.

Rule 612. Re-examination. After response by the applicant, the application will be re-examined or reconsidered by the Examiner, and if the registra-tion is again refused or formal requirements in-sisted upon, but not stated to be final, the appli-cant may respond again.

Rule 613. Final action. On the first or any subse-quent re-examination or reconsideration, the Ex-aminer may state that the refusal of the registra-tion or the insistence upon a requirement is final. Thus, the applicant’s recourse is limited to an ap-peal to the Director or to a compliance with the re-quirement made by the Examiner.

Rule 614. Abandonment; incomplete response. If an applicant fails to respond, or to submit a com-plete response, within the period given counted from the mailing date of an action of the Examiner, the application shall be deemed abandoned as of the day immediately following the last day of the aforesaid period.

Rule 615. Revival of abandoned application. (a) An abandoned application may be revived as a pending application within three (3) months from the date of abandonment, if it is shown to the sat-isfaction of the Director, and upon payment of the required fee, that the delay was due to fraud, acci-dent, mistake, or excusable negligence.

(b) A request to revive an abandoned application must be accompanied by a statement of the causes of the delay in submitting the complete re-sponse and by the proposed response, unless the same has been previously filed. Any application not revived within the specified time will be deemed forfeited upon the expiration of the three-month period to revive.

(c) There shall be no revival of an abandoned ap-plication that has been revived once before on the same issue.

Rule 616. Time less than four months; when re-quest for extension should be made. (a) The ap-plicant may be required to prosecute his applica-tion in a time shorter than four months but not less than one (1) month from the mailing date of the



examiner’s action whenever such shorter time is deemed necessary or expedient. Unless the ap-plicant is notified in writing that response is re-quired in less than four months, a maximum pe-riod of four months is allowed.

(b) The time for reply, when a time less than four months has been set, will be extended only for good and sufficient cause and for a reason-able time specified. Any request for such exten-sion must be filed on or before the day on which the response of the applicant is due. In all cases, the maximum time within which to submit a response to an action shall not exceed four months from the mailing date of the action.

Rule 617. Suspension of action by the Bureau. Action by the Bureau may be suspended upon written request of the applicant for good and suf-ficient cause, for a reasonable time specified and upon payment of the required fee. The Ex-aminer may grant only one suspension, and any further suspension shall be subject to the ap-proval of the Director. An Examiner’s action, which is awaiting a response by the applicant, shall not be subject to suspension.

Rule 618. Provisional Allowance. If the only issue remaining in an application based on for-eign application claiming priority right is the sub-mission of a certified copy of the foreign or home registration, the Examiner may provision-ally allow the application and suspend the sub-mission of the certified copy of the foreign or home registration for a period not exceeding twelve (12) months counted from allowance. On request of the applicant and subject to the ap-proval of the Director and payment of the re-quired fee, said twelve month period may be ex-tended for good cause by an additional period not exceeding twelve (12) months. Should the applicant fail to submit the certified copy of the foreign or home registration within the maximum period of twenty four (24) months counted from allowance, the applicant may waive his claim to priority right in writing and request that the appli-cation be considered based on intent to use. Said waiver and request shall be filed within two (2) months, without extension, counted from the

expiration of the maximum twenty four (24) month period without need of any notice from the Office. Otherwise, the application shall be deemed for-feited. The declaration of actual use shall be filed within twelve (12) months, without extension and without need of notice, counted from expiration of the twenty four (24) month period. Otherwise, the application shall be refused by the Director motu proprio.

Rule 619. Express abandonment. An application may be expressly abandoned by filing with the Bu-reau a written declaration of abandonment signed by the applicant himself or by the assignee of record.

CHAPTER 3. AMENDMENTS TO THE APPLICA-TION; RESPONSE TO OBJECTIONS OF THE EXAMINER.

Rule 620. Amendments to the application. The application may be amended to correct formali-ties, to overcome objections made by the Exam-iner, or for other reasons arising in the course of examination.

Rule 621. Amendments to description or draw-ing. Amendments to the description or drawing of the mark may be permitted only if warranted by the mark as shown on the labels originally filed, but may not be made if the nature of the mark is changed thereby.

Rule 622. Manner of making the amendment. In every amendment the exact word or words to be stricken out or inserted must be specified and the precise point indicated where the erasure or inser-tion is to be made. All such amendments must be on sheets of paper separate from the papers pre-viously filed, and written on only one side of the paper.

Rule 623. Prohibition against marking of papers or records of the Office by applicants. The applicant or his representative shall not make any erasure, addition, insertion, or mutilations of any papers or records of the Office.



PART 7 PUBLICATION, ALLOWANCE AND IS-SUANCE OF CERTIFICATE OF REGISTRA-TION Rule 700. Publication in the IPO Gazette; end of jurisdiction of the Examiner. An application for registration is subject to opposition proceeding before issuance of the certificate of registration. Thus, after examination or re-examination of an application for registration, if it should appear to the Examiner in charge of the examination thereof that the applicant is entitled to have his mark registered, the mark will, upon the recom-mendation of said Examiner, be ordered by the Director to be published in the IPO Gazette for opposition, and the applicant notified of such ac-tion.

The jurisdiction of an Examiner over an applica-tion ceases after the Director has ordered the mark to be published for opposition.

Rule 701. Examiner may petition for the remand to his jurisdiction, of an allowed application. Af-ter allowance and within one (1) month from publication of the allowed application, the Exam-iner may again exercise jurisdiction over an ap-plication upon petition by him to the Director on the ground of newly discovered ex parte objec-tions to the registration of the mark.

After an application has been remanded to the Examiner, any amendment recommended by the Examiner may be approved by the Director and may be made without withdrawing the al-lowance, provided the payment for the issuance of the certificate has not been received by the Office.

Rule 702. Examiner to be in charge of publica-tion for opposition; applications confidential prior to publication. The Examiner shall be in charge of all matters relating to the publication for oppo-sition of all marks and trade names ordered by the Director to be published as provided in these Regulations.

Access to files of pending applications will not be given to anyone prior to publication for oppo-

sition of the mark or trade name or name and other mark of ownership stamped on containers, without the written authority of the applicant. However, an index of pending applications stating the name and address of the applicant, a descrip-tion of the mark or trade name or name and other mark of ownership, the goods, business or service or container with which the mark or trade name or name or other mark of ownership is used, the class number, the application number and filing date of the application will be available for public inspection as soon as practicable after filing.

Rule 703. Allowance of application and issuance of certificate of registration. (a) Upon certification by the Director of the Bureau of Legal Affairs that no notice of opposition, whether or not verified and whether or not by means of the original copy, has been filed within one (1) month from the date of release for circulation of the IPO Gazette pub-lishing the application for opposition, and upon payment of the required fee, the office shall issue the certificate of registration. The Director of the Bureau of Legal Affairs shall issue such certifica-tion within two (2) months from the date of release for ciriculation of any IPO Gazette publishing ap-plications for opposition. The issuance of the cer-tificate of registration shall be published in the IPO Gazette and shall be entered on the records of the Office.

(b) If the application is deficient in any formal mat-ter relating to form, documents, or other papers necessary for the preparation and issuance of the certificate of registration or for the publication of such registration, the Examiner shall send a notice thereof to the applicant. The applicant shall com-plete such deficiency within two (2) months from mailing date of the notice; otherwise the applica-tion shall be declared abandoned. The aban-doned application, however, may be revived sub-ject to the requirements of these Regulations. PART 8 EFFECT AND NOTICE OF REGISTRATION Rule 800. Rights conferred. (a) The owner of a registered mark shall have the exclusive right to prevent all third parties not having the owner’s consent from using in the course of trade identical or similar signs or containers for goods or services



which are identical or similar to those in respect of which the mark is registered where such use would result in a likelihood of confusion. In case of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed.

(b) The exclusive right of the owner of a well-known mark which is registered in the Philip-pines, shall extend to goods and services which are not similar to those in respect of which the mark is registered: Provided, That use of the mark in relation to those goods or services would indicate a connection between those goods or services and the owner of the regis-tered mark: Provided further, That the interests of the owner of the registered mark are likely to be damaged by such use.

Rule 801. Duration. A certificate of registration shall remain in force for ten (10) years; Pro-vided, That, without need of any notice from the Office, the registrant shall file a declaration of actual use and evidence to that effect, or shall show valid reasons based on the existence of obstacles to such use, as prescribed by these Regulations, within one (1) year from the fifth anniversary of the date of the registration of the mark. Otherwise, the Office shall remove the mark from the Register. Within one (1) month from receipt of the declaration of actual use or reason for non-use, the Examiner shall notify the registrant of the action taken thereon such as acceptance or refusal.

Rule 802. Non-use of a mark when excused. (a) Non-use of a mark may be excused if caused by circumstances arising independently of the will of the trademark owner. Lack of funds shall not excuse non-use of a mark.

(b) The special circumstances to excuse non-use in affidavits of non-use shall not be ac-cepted unless they are clearly beyond the con-trol of the registrant such as the prohibition of sale imposed by government regulation.

Rule 803. Use of a mark in a different form. The use of the mark in a form different from the

form in which it is registered, which does not alter its distinctive character, shall not be ground for cancellation or removal of the mark and shall not diminish the protection granted to the mark.

Rule 804. Use of a mark for goods belonging to the class registered. The use of a mark in con-nection with one or more of the goods or services belonging to the class in respect of which the mark is registered shall prevent its cancellation or removal in respect of all other goods or services of the same class.

Rule 805. Use of a mark by related com-pany. The use of a mark by a company related with the registrant or applicant shall inure to the latter’s benefit, and such use shall not affect the validity of such mark or of its registration: Pro-vided, That such mark is not used in such manner as to deceive the public. If use of a mark by a person is controlled by the registrant or applicant with respect to the nature and quality of the goods or services, such use shall inure to the benefit of the registrant or applicant.

Rule 806. Certificate of registration; records and copies in registered cases. A certificate of regis-tration of a mark shall be prima facie evidence of the validity of the registration, the registrant’s own-ership of the mark, and of the registrant’s exclu-sive right to use the same in connection with the goods or services and those that are related thereto specified in the certificate.

After a mark or trade name or name or other mark of ownership has been registered, the statement, the drawings, and all documents relating to the case are subject to general inspection, and copies will be furnished upon payment of the required fees.

Rule 807. Contents of certificate of registra-tion. The certificate of registration of a mark shall include a reproduction of the mark and shall men-tion its number, the name and address of the reg-istered owner and, if the registered owner’s ad-dress is outside the country, his address for ser-vice within the country; the dates of application and registration; if priority is claimed, an indication



of this fact, and the number, date and country of the application, basis of the priority claims; the list of goods or services in respect of which reg-istration has been granted, with the indication of the corresponding class or classes; and such other data as the Regulations may prescribe from time to time.

Rule 808. Use of indications by third parties for purposes other than those for which the mark is used. Registration of the mark shall not confer on the registered owner the right to preclude third parties from using bona fide their names, addresses, pseudonyms, a geographical name, or exact indications concerning the kind, quality, quantity, destination, value, place of origin, or time of production or of supply, of their goods or services: Provided, That such use is confined to the purposes of mere identification or informa-tion and cannot mislead the public as to the source of the goods or services. PART 9 OTHER PROCEEDINGS AFFECTING THE APPLICATION OR REGIS-TRATION

CHAPTER 1. VOLUNTARY SURRENDER OR CANCELLATION, AMENDMENT, DISCLAIMER BY THE REGISTRANT OR BY ASSIGNEE OF RECORD, CORRECTION OF MISTAKES.

Rule 900. Jurisdiction of the Examiner. The Ex-aminer shall have original jurisdiction over all matters relating to voluntary surrender, voluntary cancellation, voluntary amendment, and volun-tary disclaimer of registration, and his decisions, when final, shall be subject to appeal to the Di-rector in the same manner that final decisions of the Examiners in respect of applications for reg-istration may be appealed to the Director. In all such matters, registrants or assignees, their at-torneys or agents will deal with him exclusively, or with such other officials and employees whom the Director may designate to assist him.

Rule 901. Cancellation upon application by reg-istrant. Upon application of the registrant, the Office may permit any registration to be surren-

dered for cancellation, and upon cancellation the appropriate entry shall be made in the records of the Office. The application for cancellation of reg-istration shall be under oath and shall be duly au-thenticated or legalized if the registrant is a non-resident.

Rule 902. Amendment or disclaimer of registra-tion. (a) Upon application of the registrant and payment of the prescribed fee, the Office, for good cause, may permit any registration to be amended or to be disclaimed in part: Provided, That the amendment or disclaimer does not alter materially the character of the mark. Appropriate entry shall be made in the records of the Office upon the cer-tificate of registration or, if said certificate is lost or destroyed, upon a certified copy thereof.

(b) Upon application of the registrant and pay-ment of the prescribed fee, a replacement certifi-cate may be issued by the Office stating on its face the fact that it is a replacement and bearing the same entry regarding the amendment or dis-claimer that was made on the certified copy of a lost or destroyed certificate. A duplicate original of such replacement certificate shall be kept in the records of the Office.

Rule 903. Correction of mistakes made by the Of-fice. Whenever a material mistake in a registra-tion incurred through the fault of the Office is clearly disclosed by the records of the Office, a certificate stating the fact and nature of such mis-take shall be issued without charge, recorded and a printed copy thereof shall be attached to each printed copy of the registration. Such corrected registration shall thereafter have the same effect as the original certificate; or in the discretion of the Director of the Administrative, Financial and Hu-man Resource Development Service Bureau a new certificate of registration may be issued in ac-cordance with these Regulations and without charge. All certificates of correction heretofore is-sued and the registration to which they are at-tached shall have the same force and effect as if such certificates and their issuance had been au-thorized by the IP Code.



Rule 904. Corrections of mistakes made by ap-plicant. (a) Whenever a mistake is made in a registration and such mistake occurred in good faith through the fault of the applicant, the Office may issue a certificate upon the payment of the prescribed fee: Provided, That the correction does not involve any change in the registration that requires republication of the mark.

(b) The application for correction must be under oath and must specify the mistake for which cor-rection is sought, the manner in which it arose and must state that it occurred in good faith. (c) A copy of the certificate of correction shall be attached to each copy of the registration.

Rule 905. Surrender, cancellation, amendment, disclaimer, and correction to be given public-ity. Notice of the cancellation, surrender, amendment, disclaimer, and correction shall be published in the IPO Gazette. The cost of publi-cation shall be for the account of the registrant or assignee of record, except when the notice of correction refers to a mistake of the Office.

CHAPTER 2. RECORDING OF ASSIGN-MENTS OF REGISTRATION OR ANY OTHER INSTRUMENT AFFECTING THE TITLE TO ANY REGISTERED MARK, INCLUDING LI-CENSES; DIVISION OF REGISTRATION.

Rule 906. Assignment and transfer of applica-tion and registration. An application for registra-tion of a mark, or its registration, may be as-signed or transferred with or without the transf*er of the business using the mark.

Such assignment or transfer shall, however, be null and void if it is liable to mislead the public particularly as regards the nature, source, man-ufacturing process, characteristics, or suitability for their purpose, of the goods or services to which the mark is applied.

Rule 907. Form of assignment or transfer. (a) The assignment of the application for registra-tion of a mark, or of its registration, shall be no-tarized and require the signature of the appli-

cant, registrant or the assignee of record in case of subsequent assignment. Transfers by mergers or other forms of succession may be evidenced by the deed of merger or by any document support-ing such transfer.

Rule 908. Recordal of assignment or trans-fer. Assignments and transfers shall have no ef-fect against third parties until they are recorded at the Office. Assignments and transfers of registra-tion of marks shall be recorded at the Office on payment of the prescribed fee; assignment and transfers of applications for registration shall, on payment of the same fee, be provisionally recorded, and the mark, when registered, shall be in the name of the assignee or transferee.

Rule 909. Assignment, other instruments affecting the registration, or license, and translation, to be submitted in duplicate. The original document of assignment, other instrument or license and its translation, together with a signed duplicate thereof, shall be submitted. After recordal, the Of-fice shall retain the signed duplicate, and return the original to the party filing the instrument with a notation of the fact of recording.

Rule 910. Date of receipt of instrument to be recorded considered its date of recording. The date of recording of an assignment, other docu-ment or license is the date of its receipt at the Of-fice in proper form and accompanied by the full recording fee.

Rule 911. A new certificate of registration must be issued to assignee. Upon written request of an assignee of record, and upon payment of the re-quired fee, a new certificate of registration for the unexpired period of the registration must be is-sued to the assignee.

Rule 912. Action may be taken by assignee of record in any proceeding in Office. Any action in any proceeding in the Office which may or must be taken by a registrant or applicant may be taken by the assignee to the exclusion of the original owner, registrant, applicant or earlier assignee, provided the assignment has been recorded. Un-



less such assignment has been recorded, no as-signee will be recognized to take action.

Rule 913. Clearance of Trademark License Agreement prior to recordal. Any trademark license agreement shall be ap-plied for clearance with the Documentation Infor-mation and Technology Transfer Bureau (DITTB) of the Office and shall be recorded only upon certification by the Director of the DITTB that the agreement does not violate Sections 87 and 88 of the IP Code.

Rule 914. Division of registration. At any time during the life of a certificate of registration, and upon payment of the required fee, the owner of the registered mark may request in writing and under oath that the registration be divided. The request must state the name and address of the owner of record or his representative of record, the mark, the number and date of issuance of the certificate to be divided, the goods and/or services into which the registration is to be di-vided specifying the number of the class of said goods and/or services according to the Nice Classification.

The Bureau may grant the request to divide the registration provided that the division shall not involve any change in the registration that re-quires republication of the mark and provided that a single class shall not be subdivided.

Rule 915. Cancellation of original certificate and issuance of transfer certificates of registra-tion. Upon approval of the request to divide a registration and payment of the required fee, the Director shall order that the original certificate be cancelled and new certificates of registration be issued for the remainder of the term covered by the original certificate.

Rule 916. Contents of transfer certificates of registration. The transfer certificates of registra-tion shall include a reproduction of the mark and shall mention their numbers, the name and ad-dress of the registered owner, and if the regis-tered owner’s address is outside the country, his address for service within the country; the name

of the registered owner of the original certificate in case the owner of the transfer certificate be a dif-ferent person; the date of request for division of the original registration; the date of the issuance of the transfer certificate of registration; the date of filing and registration of the original registration; if priority is claimed, an indication of this fact, and the number, date and country of the application which is the basis of the priority claims; the list of goods or services covered by the transfer certifi-cate of registration with the indication of the corre-sponding class or classes; and such other data as the Regulations may prescribe from time to time.

CHAPTER 3. RENEWAL OF REGISTRATION

Rule 917. Request for renewal. A certificate of registration may be renewed for periods of ten (10) years at its expiration upon payment of the prescribed fee and upon filing of a request. The request shall contain the following indications:

(a) An indication that renewal is sought;

(b) The name and address of the regis-trant or his successor-in-interest, here-after referred to as the “right holder”;

(c) The registration number of the regis-tration concerned;

(d) The filing date of the application which resulted in the registration con-cerned to be renewed;

(e) Where the right holder has a repre-sentative, the name and address of that representative;

(f) The names of the recorded goods or services for which the renewal is re-quested or the names of the recorded goods or services for which the renewal is not requested, grouped according to the classes of the Nice Classification to which that group of goods or services be-longs and presented in the order of the classes of the said Classifications; and



(g) A signature by the right holder or his representative.

(h) In case there has been material variation in the manner of display, five (5) sets of the new labels must be sub-mitted with the application.

Rule 918. When to file request for renewal. Such request shall be in Filipino or English and may be made at any time within six (6) months before the expiration of the period for which the registration was issued or renewed, or it may be made within six (6) months after such expiration on payment of the additional fee herein pre-scribed.

Rule 919. Jurisdiction of the Examiner. The Ex-aminer shall have original jurisdiction over appli-cations for renewal registration, and his deci-sions, when final, are subject to appeal to the Director under the conditions specified in these Regulations for appeals to the Director from the final decisions of the Examiners in respect of ap-plications for registration. If the Office refuses to renew the registration, it shall notify the regis-trant of his refusal and the reasons therefor.

Rule 920. Need for appointing a resident agent. If the registrant, assignee or other owner of the mark which is the subject of a petition for re-newal registration is not domiciled in the Philip-pines, and if the petition for renewal is being filed by a person who is not his representative or resident-agent of record, the power of attorney appointing the person filing the petition as the representative of the registrant must be filed and, upon payment of the required fee, must be recorded before the Office can act upon the peti-tion for renewal.

Rule 921. Renewal of prior Act registration; use and proof thereof, required. Marks registered under Republic Act No. 166 shall remain in force and effect but shall be deemed to have been granted under the IP Code and shall be re-newed within the time and manner provided for renewal of registration by these Regulations; provided, that marks whose registration have a

remaining duration as of January 1, 1998 of more than six and one-half (6 ½) years shall be required to submit the declaration and evidence of actual use prescribed in these Regulations within one (1) year following the tenth and fifteenth anniversaries of the registration or renewal registration under Republic Act No. 166; provided, further, that marks whose registrations have a remaining dura-tion of six and one-half (6 ½) years or less may no longer be subject to the requirement of declaration and evidence of use but shall be renewed within the time and in the manner provided for renewal of registration by these Regulations and, upon re-newal, shall be reclassified in accordance with the Nice Classification. The renewal shall be for a du-ration of ten (10) years. Trade names and marks registered in the Supplemental Register under Re-public Act No. 166 whose registration, including any renewal thereof, was subsisting as of January 1, 1998 shall remain in force but shall no longer be subject to renewal.

Rule 922. Prior Act certificate of registration to be surrendered. With the application for the renewal of a registration made under Republic Act No. 166 the certificate of registration to be renewed must be surrendered to the Office, if the official copy of such certificate of registration is not in the files of the Office.

After he has surrendered the certificate of registra-tion granted under Republic Act No. 166, the ap-plicant for renewal may, if he so desires, obtain a certified copy thereof, upon payment of the usual fees.

Rule 923. Refusal of renewal registration; appeal to the Director. The application for renewal may be refused by the Examiner for any valid reason. The application for renewal may then be com-pleted or amended in response to the refusal, or the case may be appealed to the Director if the re-fusal has become final.

Rule 924. Certificate of renewal of registra-tion. The Office may issue a certificate of renewal of registration in all cases where the request for renewal is approved and the registrant requests in writing and pays the required fee for the issuance



of said certificate. The certificate of renewal of registration shall contain the number of the cer-tificate of registration and the mark being re-newed, the date of original issuance thereof, the duration of the renewal registration, all the data required to be contained in a certificate of registration provided in these Regulations in-cluding any limitation contained in the order of the Director approving the renewal of the regis-tration.

PART 10 REGISTRATION OF STAMPED OR MARKED CONTAINER

Rule 1000. Rules on registration of trademarks and service marks to apply. Unless otherwise provided by these Regulations, the registration of container marks shall be the same as that of trademarks and service marks.

Rule 1001. “Stamped or marked container” de-fined. “Stamped or marked container” means any container of goods upon which a mark is im-pressed or molded which will give a distinctive effect, provided that the mark cannot be deleted or removed from the container. The stamp or mark on the container must be legible and visi-ble for registration.

Rule 1002. No drawing required. No drawing is required for this registration. In lieu of the draw-ing, two (2) photographs of the container, duly signed by the applicant or his representative, showing clearly and legibly the mark sought to be registered, shall be submitted. The photo-graphs shall be of the same size as required for trademarks and service marks. No “sight” is re-quired.

Rule 1003. No labels required; sample may be required. If the Examiner so requires, the appli-cant or his representative shall bring a sample of the container to the Bureau on a date and time specified by the Examiner. The sample shall not be left in the Office and shall be brought by the applicant or his representative with him immedi-ately after the viewing thereof by the Examiner.

PART 11 PETITIONS AND APPEAL

Rule 1100. Nature of the function of Examiners. The function of determining whether or not an ap-plication for registration or renewal thereof should be allowed or denied under the facts disclosed in the application and in the references consulted by the Examiner and under the applicable law (statu-tory and decisional), is a quasi-judicial function and involves the exercise of judicial discretion.

Thus, with respect to such function, the Director cannot lawfully exercise direct control, direction and supervision over the Examiners but only gen-eral supervision, exercised through a review of the recommendation they may make for the grant of registration and of other actions, and through a re-view of their adverse decisions by petition or ap-peal.

Rule 1101. Petition to the Director to question the correctness of the action of an Examiner on a matter not subject to appeal. Petition may be filed with the Director from any repeated action or requirement of the Examiner which is not subject to appeal and in other appropriate circumstances. Such petition, and any other petition which may be filed, must contain a statement of the facts in-volved and the point or points to be reviewed. Briefs or memoranda, if any, in support thereof should accompany or be embodied in the petition. The Examiner, as the case may be, may be di-rected by the Director to furnish a written state-ment setting forth the reasons for his decision upon the matter averred in the petition, supplying a copy thereof to the petitioner. The mere filing of a petition will not stay the maximum period of four months counted from the mailing date of the Ex-aminer’s action subject of the appeal for replying to an Examiner’s action nor act as a stay of other proceedings.

Rule 1102. Appeals to the Director. Every appli-cant for the registration of a mark or other mark of ownership may, upon the final refusal of the Ex-aminer to allow registration, appeal the matter to the Director. Appeal may also be taken to the Di-rector from any adverse action of the Examiner in



any matter over which these Regulations give original jurisdiction to the Examiner. A second adverse decision by the Examiner on the same grounds may be considered as final by the appli-cant, petitioner, or registrant for purposes of ap-peal.

Rule 1103. Effect of a final decision of an Ex-aminer which is not appealed. A final decision of an Examiner which is not appealed to the Di-rector within the time permitted, or, if appealed, the appeal is not prosecuted, shall be consid-ered as final to all intents and purposes, and shall have the effect of res judicata in respect of any subsequent action on the same subject mat-ter.

If an application is considered abandoned for failure of the applicant to respond to an action of the examiner on the merits e.g. citation of con-fusingly similar marks, the order declaring the application as abandoned which has become fi-nal shall likewise have the effect of res judi-cata.

Rule 1104. Time and manner of appeal. Any petition or appeal must be taken by filing the pe-tition in duplicate or a notice of appeal, as the case may be, and payment of the required fee within two (2) months from the mailing date of the action appealed from, must specify the vari-ous grounds upon which the appeal is taken, and must be signed by the petitioner or appel-lant or by his attorney of record. The period herein provided shall, in no case, exceed the maximum period of four (4) months from the mailing date of the action appealed from.

Rule 1105. Appellant’s brief required. In case of an appeal, the appellant shall, within two (2) months, without extension, from the date of filing of the notice of appeal, file a brief of the authori-ties and arguments on which he relies to main-tain his appeal. On failure to file the brief within the time allowed, the appeal shall stand dis-missed.

Rule 1106. The Examiner’s answer. The Ex-aminer shall furnish a written statement in an-

swer to the petition or appellant’s brief, as the case may be, within two (2) months from the or-der of the Director directing him to submit such statement. Copy of such statement shall be served on the petitioner or appellant by the Exam-iner.

Rule 1107. Appellant’s reply. In case of an ap-peal, the appellant may file a reply brief directed only to such new points as may be raised in the Examiner’s answer, within one (1) month from the date copy of such answer is received by him.

Rule 1108. Appeal to the Director General. The decision or order of the Director shall become final and executory fifteen (15) days after receipt of a copy thereof by the appellant unless within the said period, a motion for reconsideration is filed with the Director or an appeal to the Director Gen-eral has been perfected by filing a notice of appeal and payment of the required fee.

Only one motion for reconsideration of the deci-sion or order of the Director shall be allowed.

Rule 1109. Appellant’s brief required. The appel-lant shall, within one (1) month from the date of fil-ing of the notice of appeal, file a brief of the au-thorities and arguments on which he relies to maintain his appeal. On failure to file the brief within the time allowed, the appeal shall stand dis-missed.

Rule 1110. Director’s comment. The Director shall submit within one (1) month his comments on the appellant’s brief if so required by the Direc-tor General.

Rule 1111. Appeal to the Court of Appeals. The decision of the Director General shall be final and executory unless an appeal to the Court of Ap-peals is perfected in accordance with the Rules of Court applicable to appeals from decisions of Re-gional Trial Courts. No motion for reconsideration of the decision or order of the Director General shall be allowed.

FINAL PROVISIONS



Section 1. Correspondence. The following reg-ulations shall apply to correspondence between registrants/applicants and the Office or the Bu-reau:

(a) Business to be transacted in writ-ing. All business with the Office or Bu-reau shall be transacted in writing. Ac-tions will be based exclusively on the written record. No attention will be paid to any alleged oral promise, stipulation, or understanding.

(b) Personal attendance of applicants and other persons unnecessary. Un-less otherwise provided, the personal attendance of applicants and other per-sons at the Office is unnecessary. Their business can be transacted by correspondence.

(c) Correspondence to be in the name of the Director of Trademarks. All Of-fice letters with respect to matters within the jurisdiction of the Bureau must be sent in the name of the Direc-tor of Trademarks. All letters and other communications intended with respect to such matters must be addressed to him and if addressed to any other offi-cer, they will ordinarily be returned.

(d) Separate letter for each case. In every case, a separate letter shall be written in relation to each distinct sub-ject of inquiry.

(e) Letter relating to applica-tions. When a letter concerns an appli-cation it shall state the name of the ap-plicant, the mark or trade name or name or other mark of ownership sought to be registered, the application number and the filing date of the appli-cation.

(f) Letter relating to registra-tions. When the letter concerns a reg-istered mark, it shall state the name of the registrant, the mark registered, the

number and date of the certificate of reg-istration, and the classes of goods or ser-vices according to the Nice Classifica-tion.

(g) Subjects on which information cannot be given. The Office cannot respond to inquiries as to whether or not a mark is acceptable for registration in advance of the filing of an application.

On the propriety of making an application for the registration of a mark, the applicant must judge for himself or consult an attorney-at-law. The Office is open to him, and its records pertaining to all registrations granted may be inspected either by himself or by any attorney or agent he may call to his aid. Further than this the Office can render him no assistance until his application comes reg-ularly before it in the manner prescribed by law and by these Regulations. A copy of the law, rules, or circular of information, with a section marked, set to the individual making an inquiry of the character referred to, is intended as a respect-ful answer by the Office.

Examiners' digests are not open to public inspec-tion.

The foregoing shall not, in any way, be interpreted to prohibit the Office from undertaking an informa-tion dissemination activity in whatever format, to increase awareness on the trademark law.

Section 2. Fees and charges to be prepaid; fees and charges payable in advance. Express charges, freight, postage, telephone, telefacsimile including cost of paper and other related ex-penses, and all other charges on any matter sent to the Office must be prepaid in full. Otherwise, the Office shall not receive nor perform any action on such matters.

The filing fees and all other fees and charges payable to the Office shall be collected by the Of-fice in advance of any service to be rendered.

Section 3. Applications pending on effective date of the IP Code. The following regulations shall ap-



ply to applications pending on the effective date of the IP Code on January 1, 1998 (referred to in this Section as “pending applications”):

Section 3.1. Amendment of pending applications. On or before December 15, 1998, all pending applications may be amended, if practicable, to bring them under the provisions of the IP Code. Accordingly, applicants with pending applications for registration in the former Supplemental Register who wish to pursue the grant of registration may amend their applications to com-ply with requirements for registration under the IP Code.

Section 3.2. Filing date of pending ap-plications; declaration of actual use. Pending applications shall retain their priority date or original date of fil-ing with the Bureau of Patents Trade-marks and Technology Transfer. Appli-cants which elected to prosecute their applications under Republic Act No. 166 and its implementing rules and regulations under which they were re-quired to submit proof of use of the mark, particularly with reference to ap-plications for registration based on use in the Philippines, shall file the corre-sponding declaration of actual use with evidence to that effect as prescribed by these Regulations, without need of any notice from the Office, within three (3) years from the effectivity of these Reg-ulations, without possibility of exten-sion. Otherwise, the application shall be refused or the mark shall be re-moved from the register by the Direc-tor motu proprio.

Section 3.3. Processing of pending ap-plications. Pending applications amended in accordance with this Sec-tion shall be proceeded with and regis-tration thereof granted in accordance with these Regulations. Where there are no applicable provisions in the IP

Code and these Regulations, pending applications that are not amended in ac-cordance with this Section shall be pro-ceeded with and registration thereof granted in accordance with the laws and regulations under which they were filed.

Section 3.3.1. Interference. In all cases where interference could have been declared under Republic Act No. 166, as amended, and its implementing rules and regulations, as amended, but the same can not be declared such as when one of the applications has been amended and prosecuted under the IP Code while the other ap-plication or applications were not, the application which first meets all the requirements for registration shall be allowed and published for opposition in the IPO Gazette in accordance with these Regulations. The other applicant or applicants shall have the right to file a notice of opposition, without need of pay-ing the filing fee, to determine whether or not any of the appli-cant/s and/or oppositor/s has the right to the registration of the mark, and, all other issues including the registrability of the mark.

Section 3.4. Duration of registration. A certificate of registration granted to an application filed on or before December 31, 1997 and therefore pending on the effective date of the IP Code on January 1, 1998 shall be subject to the same con-ditions for maintenance as provided in these Regulations and shall have a term of twenty (20) years.

Section 3.5. Duration of renewal of reg-istration granted under Republic Act No. 166. The renewal of a registration granted under Republic Act No. 166 shall



have the same term of ten (10) years and shall be subject to the same re-quirements for renewal as a registra-tion granted under the IP Code.

Section 3.6. Registration in the Supple-mental Register. In compliance with the State policy declared in the IP Code, the IPO shall endeavor to issue certifi-cates of registration that can stand up to scrutiny in infringement and other cases. Considering that (i) marks or trade names that are not registrable on the principal register under Republic Act No. 166 are registrable in the Sup-plemental Register; (ii) marks or trade names not registrable on the said prin-cipal register are not registrable under the IP Code; and, (iii) the Supplemen-tal Register was abolished by the IP Code, all applications for registration in the Supplemental Register which do not meet requirements for registration under the IP Code shall be rejected.

Section 3.7. Renewal of a registration in the Supplemental Register. The fol-lowing regulations shall apply to the re-newal of a registration in the Supple-mental Register under Republic Act No. 166:

Section 3.7.1. Registrations subsisting on January 1, 1998. The registration or ex-tension thereof, in the Supple-mental Register under Repub-lic Act No. 166 of a trade name or mark which was sub-sisting on the effectivity of the IP Code on January 1, 1998 shall remain in force for the entire term for which it was granted. However, such regis-tration shall no longer be sub-ject to renewal.

Section 3.7.2. Registrations, or extension thereof, with term

ending on or before December 31, 1997. The renewal of a reg-istration, or any extension thereof, in the Supplemental Register whose term ended on or before December 31, 1997 may be granted as follows:

(a) The application for renewal of registration in the Supplemental Register was season-ably filed including full payment of the re-quired fee pursuant to Section 15 of Republic Act No. 166 and the applicable regula-tions;

(b) Full compliance with all the require-ments for renewal shall have been made by the applicant on or be-fore December 31, 1998;

(c) The renewal shall be for a term of twenty (20) years counted from the date of expira-tion of the registration or renewal subject of the application; and,

(d) The renewal herein granted shall no longer be subject to renewal.

Section 3.7.3. Notice to com-ply. For the effective implemen-tation of Section 3.7.2 (b), all concerned Examiners together with the Chief of the Trademark Examining Division of the for-mer Bureau of Patents Trade-marks and Technology Transfer have been directed to mail to



the applicants the correspond-ing notice to comply with re-quirements for renewal of registration, or extension thereof, on or before October 31, 1998. Further, applicants who have not received said notice may request for a copy thereof from the examiner concerned who shall issue said copy within two (2) work-ing days from receipt of the re-quest.

Section 4. Repeals. All rules and regulations, memoranda, circulars, and memorandum circu-lars and parts thereof inconsistent with these Regulations particularly the Rules of Practice in Trademark Cases, as amended, are hereby re-pealed: Provided, That such earlier rules or parts thereof shall be continued only for the pur-pose of prosecuting applications for registration in the principal register filed as of December 31, 1997 wherein the applicants expressly elected to prosecute said applications under Republic Act No. 166: and, Provided, further, That there are no applicable provisions in these Regula-tions.

Section 5. Separability. If any provision in these Regulations or application of such provi-sion to any circumstance is held invalid, the re-mainder of these Regulations shall not be af-fected thereby.

Section 6. Effectivity. These rules and regula-tions shall take effect fifteen (15) days after pub-lication in a newspaper of general circulation.

As Amended by Office Order No. 17 dated 01 December 1998.


Intellectual Property Law

Documents

use of intellectual

patents property rights

intellectual general

industrial property

related rights

patentable inventions

exclusive rights of

foreign country