INTELLECTUAL PROPERTY
pointers & cases
larry p. ignacio ©
COPYRIGHT
Principle of automatic protection.
Works are protected by the sole fact of their creation, irrespective of their mode or form of
expression, as well as their content, quality and purpose (Sec. 172.2, IPL).
The copyright of a work is acquired by an intellectual creator from the moment of creation even
in the absence of registration and deposit (Columbia Pictures v. CA, 261 SCRA 144 [1966]).
ABS-CBN Co. v. Gozon, G.R. No. 195956, March 11, 2015 (Leonen, J.)
ABS-CBN charged GMA 7 with copyright infringement when GMA 7 aired footage of the
arrival and homecoming of OFW Angelo de la Cruz at the NAIA from Iraq without the
consent of ABS-CBN. GMA 7 alleged that the footage was from a live news feed from
Reuters of which GMA 7 is a subscriber.
GMA 7 claims that it is not aware that ABS-CBN allowed Reuters to air the footage
under a special embargo agreement where there is no access to any Philippine
subscriber. GMA 7 promptly shut off the broadcast after about 5 seconds upon seeing
ABS-CBN’s logo and reporter. GMA 7 added that the footage is not subject to copyright
protection because the event or the arrival of Angelo de la Cruz is a newsworthy event,
and its use falls under the fair use act.
A news report expressed in a video footage is entitled to copyright
protection.
News or the event itself is not copyrightable. However, an event can be captured and
presented in a specific medium. News as expressed in a video footage is entitled to
copyright protection. Broadcasting organizations have not only copyright on but also
neighboring rights over their broadcasts. Copyrightability of a work is different from fair
use of a work for purposes of news reporting.
fair use
Fair use is "a privilege to use the copyrighted material in a reasonable manner without
the consent of the copyright owner or as copying the theme or ideas rather than their
expression." Fair use is an exception to the copyright owner's monopoly of the use of
the work to avoid stifling "the very creativity which that law is designed to foster.”
four-factor test if there is fair use (Sec. 185)
1. The purpose and character of the use, including whether such use is of a
commercial nature or is for non-profit educational purposes;
2. The nature of the copyrighted work;
3. The amount and substantiality of the portion used in relation to the copyrighted
work as a whole; and
4. The effect of the use upon the potential market for or value of the copyrighted
work.
the transformative test
The "transformative test" is generally used in reviewing the purpose and character of
the usage of the copyrighted work. This court must look into whether the copy of the
work adds "new expression, meaning or message" to transform it into something else.
INTELLECTUAL PROPERTY –18 July 2018 (l.p. ignacio) 2
Good faith or lack of knowledge is not a valid defense in
infringement of copyright.
A copyright is infringed by the mere fact of the repetition of it or a substantial portion of
it, without authority from the author or writer of the copyrighted work. Good faith or lack
of knowledge is not a valid defense.
Offenses involving infringement of copyright protections should be considered malum
prohibitum. It is the act of infringement, not the intent, which causes the damage. To
require or assume the need to prove intent defeats the purpose of intellectual property
protection.
Copyright Infringement; When Committed (Computer Programs)
Microsoft Corporation vs. Manansala, G.R. No. 166391 October 21, 2015
The charge for copyright infringement was dismissed against Manansala. Although he is
selling Microsoft computer software programs bearing the copyrights and trademarks
owned by Microsoft Corporation without authority from latter, there is no proof that
Manansala was the one who really printed or copied the products of Microsoft for sale in
his store. The CA upheld the dismissal and required that the computer programs be first
photographed, photo-engraved, or pictorially illustrated as a condition for the
commission of copyright infringement.
The dismissal and the ruling is not proper.
The mere sale of the illicit copies of the software programs was enough by itself to show
the existence of probable cause for copyright infringement. There was no need to still
prove who copied, replicated, or reproduced the software programs. There is NO need
that the computer programs be first photographed, photo-engraved, or pictorially
illustrated as a condition for the commission of copyright infringement
The "gravamen of copyright infringement,"
It is not merely the unauthorized manufacturing of intellectual works but rather the
unauthorized performance of any of the acts covered by Section 5. Hence, any
person who performs any of the acts under Section 5 (among which is TO SELL the
copyrighted work) without obtaining the copyright owners prior consent renders
himself civilly and criminally liable for copyright infringement.
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Infringement of tradename
A trade name need not be registered with the IPO before an infringement suit maybe
filed by its owners against the owner of an infringing trade mark. All that is required is
that the trade name be previously used in trade or commerce in the Philippines (Coffee
Partners, Inc. v. San Francisco Coffee & Roastery, Inc., GR No. 169504, 03 March 2010).
The elements of the offense of trademark infringement:
1. The trademark being infringed is registered in the Intellectual Property Office;
2. The trademark is reproduced, counterfeited, copied, or colorably imitated by the
infringer;
3. The infringing mark is used in connection with the sale, offering for sale, or
advertising of any goods, business or services; or the infringing mark is applied to
labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be
used upon or in connection with such goods, business or services;
INTELLECTUAL PROPERTY –18 July 2018 (l.p. ignacio) 3
4. The use or application of the infringing mark is likely to cause confusion or
mistake or to deceive purchasers or others as to the goods or services themselves
or as to the source or origin of such goods or services or the identity of such business;
and
5. The use or application of the infringing mark is without the consent of the trademark
owner or the assignee thereof.
trade name need not be registered
A trade name need not be registered with the IPO before an infringement suit maybe
filed by its owners against the owner of an infringing trade mark. All that is required is
that the trade name be previously used in trade or commerce in the Philippines (Coffee
Partners, Inc. v. San Francisco Coffee & Roastery, Inc., GR No. 169504, 03 March 2010).
Internationally well-known marks are entitled to protection;
territoriality principle
Section 123.1(e) does not require that the well-known mark be used in commerce in the
Philippines but only that it be well-known in the Philippines (Fredco Mfg. Corp. v. President and
Fellows of Harvard College (Harvard University), 650 SCRA 232, 01 June 2011).
While under the territoriality principle a mark must be used in commerce in the
Philippines to be entitled to protection, internationally well-known marks are the
exceptions to this rule (ibid.).
• Foreign marks which are not registered are still accorded protection against
infringement and/or unfair competition (Ecole de Cuisine Manille (Cordon Bleu of the Philippines),
Inc. v. Renaud Caintreau & Cie, 697 SCRA 345, 05 June 2013).
Courts will protect trade names or marks, although not registered or properly
selected as trademarks, on the broad ground of enforcing justice and
protecting one in the fruits of his toil (Ecole de Cuisine Manille (Cordon Bleu of the Philippines),
Inc. v. Renaud Caintreau & Cie, 697 SCRA 345, 05 June 2013).
Actual sale of counterfeit goods not essential for trademark infringement
Under the IPC, preparatory steps necessary to carry out the sale of any goods or
services or in connection with which such use is likely to cause confusion. Or to cause
mistake, or to deceive (Sec. 155.1) and to reproduce, counterfeit, copy or colorably
imitate a registered mark or a dominant feature thereof and apply such reproduction,
counterfeit, copy or colorable imitation to label, signs, prints, packages, wrappers,
receptacles or advertisements intended to be used in commerce (Sec. 155.2) are acts
of infringement regardless of whether there is actual sale of goods or services using the
infringing material (Gemma Ong a.k.a. Ma. Theresa Gemma Catacutan v. People, GR No. 169440, 23 Nov. 2011).
*****
The likelihood of confusion is the gravamen of the offense of trademark infringement.
(Philip Morris v. Fortune, 493 SCRA 437).
*****
Factors to be considered in determining the likelihood of confusion
[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.
(Seri Soomboonsakdikul, G.R. No. 188996. February 1, 2017, Jardelez, J.)
INTELLECTUAL PROPERTY –18 July 2018 (l.p. ignacio) 4
two (2) types of confusion that may be created
a) CONFUSION OF GOODS – the ordinary prudent purchaser would be induced to
purchase one product in the belief that he was purchasing the other.
b) CONFUSION OF BUSINESS – Though the goods of the parties are different,
defendant’s product is such as might reasonably be assumed to originate with the
plaintiff, and the public would then be deceived either into that belief or into the
belief that there is some connection between the plaintiff and the defendant which,
in fact does not exist.
Confusion of business exists when the products are non-competing but related enough
to produce confusion of affiliation (Mcdonalds v. LC BigMak, 437 SCRA 10 [2004]).
TWO TESTS TO DETERMINE LIKELIHOOD OF CONFUSION
1) The dominancy test focuses on the similarity of the main, prevalent or essential
features of the competing trademarks that might cause confusion. Infringement takes
place when the competing trademark contains the essential features of another.
Imitation or an effort to imitate is unnecessary. The question is whether the use of the
marks is likely to cause confusion or deceive purchasers.
2) The holistic test considers the entirety of the marks, including labels and packaging,
in determining confusing similarity. The focus is not only on the predominant words but
also on the other features appearing on the labels
WHAT TEST SHOULD BE APPLIED IN A TRADEMARK INFRINGEMENT CASE?
In trademark cases, particularly in ascertaining whether one trademark is confusingly
similar to another, no set rules can be deduced because each case must be
decided on its merits. In such cases, even more than in any other litigation, precedent
must be studied in the light of the facts of the particular case. That is the reason why in
trademark cases, jurisprudential precedents should be applied only to a case if
they are specifically in point.
trademark extends to the use of containers
• RA 623 extends trademark protection in the use of containers duly registered with
the Philippine Patent Office. It does not disallow the sale or transfer of ownership of
the marked bottles or containers.
The mere unauthorized use of a container bearing a registered trademark in connection
with the sale, distribution or advertisement of goods or services which is likely to
cause confusion, mistake or deception among buyers or consumers can be
considered as trademark infringement (Republic Gas Corp. v. Petron Corp., 698 SCRA 666, 17 June 2013).
ACQUISITION OF OWNERSHIP OF MARK:
The mere fact that one person has adopted and used a trademark on his goods would
not, without more, prevent the adoption and use of the same trademark by others on
unrelated articles of a different kind. (TAIWAN KOLIN CORPORATION, LTD. vs. KOLIN ELECTRONICS CO.,
INC., G.R. No. 209843, March 25, 2015, J. Velasco, Jr.)
use of trademark in UNRELATED articles of a different kind allowed
• Registration of the trademark “SHELL” or “ESSO” for cigarettes was allowed
although there is a prior registrant for gasoline and petroleum products (Shell v. CA, GR
No. L-49145, 21 May 1979; Esso Standard Eastern, Inc. v. CA, 116 SCRA 336 [19982]).
• “CANNON” for sandals was allowed despite prior registration of the same for paints,
chemical products, toner and dyestuff (Canon Kabushki Kaisha v. CA & NSR Rubber Corp., 336 SCRA 266
[2001]).
INTELLECTUAL PROPERTY –18 July 2018 (l.p. ignacio) 5
• “GALLO” can be used for cigarettes without infringing the rights of the owner of
another mark which also contains the same word for wine (Mighty Corporation v. E & J Gallo, 434
SCRA 473 [2004]).
• “BRUTE” for briefs was allowed although similar to the symbol “BRUT” for after-
shave lotion, shaving cream, deodorant, talcum powder and toilet soap (Faberge, Inc. v.
IAC, 215 SCRA 316 [1992]).
*****
Passing off (or palming off)/unfair competition
Passing off (or palming off) takes place where the defendant by imitative devices on
the general appearance of the goods, misleads prospective purchasers into buying
his merchandise under the impression that they are buying that of his competitors
(Properties Realty Corp. (formerly The Shang Grand Tower Corp.) v. St. Francis Development Corp., 730 SCRA 275, 21 July
2014).
• Unfair competition has been defined as the passing (or palming off) or attempting to
pass off upon the public of the goods or business of one person as the goods or
business of another with the end and probable effect of deceiving the public (Republic
Gas Corp. v. Petron Corp., 698 SCRA 666, 17 June 2013).
*****
First to file rule
RA 8293 espouses the “first-to-file” rule x x x. Under this provision, the registration of a
mark is prevented with the filing of an earlier application for registration. This must, not,
however, be interpreted to mean that ownership should be based upon an earlier filing
date. While RA 8293 removed the previous requirement of proof of actual use prior to
the filing of an application for registration of a mark, proof of prior and continuous use is
necessary to establish ownership of a mark. Such ownership constitutes sufficient
evidence to oppose the registration of a mark ( E.Y. Industrial Sales, Inc. v. Shen Dar Electricity and
Machinery Co., Ltd., 634 SCRA 363, 20 October 2010).
*******
PATENTS
NO PATENT, NO PROTECTION
Ideas, once disclosed to the public without protection of a valid patent, are subject to
appropriation without significant restraint (Pearl v. SM, 409 SCRA 231 [2003]).
prejudicial disclosure
Whatever right one has to the invention covered by the patent arises alone from the
application date.
Thus, if the inventor voluntarily discloses it, such as by offering it for sale, the world is
free to copy and use it with impunity. Ideas once disclosed to the public without
protection of a valid patent, are subject to appropriation without significant restraint. (Pearl
v. SM, 409 SCRA 231)
non-prejudicial disclosure (Sec. 25, IPC)
The disclosure of information contained in the application during the twelve (12) months
preceding the filing date or the priority date of the application shall not prejudice the
applicant on the ground of lack of novelty if such disclosure was made by:
(a) The inventor;
(b) A patent office and the information was contained (a) in another application
filed by the inventor and should not have been disclosed by the office, or (b) in
INTELLECTUAL PROPERTY –18 July 2018 (l.p. ignacio) 6
an application filed without the knowledge or consent of the inventor by a third
party which obtained the information directly or indirectly from the inventor; or
(c) A third party which obtained the information directly or indirectly from the
inventor.
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