PATENT INFRINGEMENT – is the making, using, offering for sale, selling or importing a patented product or a product obtained directly or indirectly from a patented process without the authorization of the patentee.
CONTRIBUTORY INFRINGER – any person who 1. actively induces the infringement of patent or 2. 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-infringement
Liability of Contributory Infringer – jointly and severally liable with the infringer
RULES ON DAMAGES
1. Damages cannot be recovered for acts of infringement committed before the infringer had known or had reasonable grounds to know of the patent.
2. 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.
3. No damages can be recovered for infringement committed more than four (4) years before the institution of the action for infringement.
ASSESSORS – possessed of the necessary scientific and technical knowledge required by the subject matter in litigation, may be appointed by the court.
Sec. 77. Infringement Action by a Foreign National – Any foreign national or juridical entity who meets the requirements of Section 3 of the Code and not engaged in business in the Philippines, to which a patent has been granted or assigned, may bring an action for infringement of the patent, whether or not it is licensed to do business in the Philippines under existing law.
Sec. 78. Process Patents; Burden of Proof. - If the subject matter of a patent is a process for obtaining a product, any identical product shall be presumed to have been obtained through the use of the patented process if the product is new or there is substantial likelihood that the identical product was made by the process and the owner of the patent has been unable despite reasonable efforts, to determine the process actually used. In ordering the defendant to prove that the process to obtain the identical product is different from the patented process, the court shall adopt measures to protect, as far as practicable, his manufacturing and business secrets. (n)
Defendant must prove that the process to obtain the identical product is different from the patented process.
The court shall adopt measures to protect, as far as practicable, defendant’s manufacturing and business secrets.
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Sec. 82 Patent Found Invalid May Be Cancelled – In an action for infringement, if the court shall find the patent or any claim to be invalid, it shall cancel the same, and the Director of Legal Affairs upon receipt of the final judgment of cancellation by the court, shall record that fact in the register of the Office and shall publish a notice to that effect in the IPO Gazette.
Sec 81. Defenses in Action for Infringement – In an action for infringement, the defendant, in addition to other defenses available to him, may show the invalidity of the patent, or any claim thereof, on any of the grounds on which a petition for cancellation can be brought.
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.
TECHNOLOGY TRANSFER ARRANGEMENT or TTA refers to contracts involving the transfer of systematic knowledge for the manufacture of a product, the application of process, or rendering of service including management contracts, and the transfer, assignment or licensing of all forms of intellectual property rights, including licensing of computer software except computer software developed for mass market.
The nationality of parties in the agreement is no longer relevant in determining if an agreement is TTA that is covered by the IP Code.
The IP Code no longer requires the registration of the TTAs. It neither imposes any restriction on royalty payments or the duration of the TTAs. However, it provides that a TTA will be unenforceable if it contains any of the prohibited clauses in Section 87.
Annex J – Prohibited Clauses and Mandatory Clauses in a Voluntary Licensing Contract
RIGHTS OF LICENSOR RIGHTS OF LICENSEE Grant of license shall not
prevent the licensor from granting further licenses to 3rd persons nor from
The licensee shall be entitled to exploit the subject matter of the TTA during the whole term of
exploiting the subject matter of the TTA himself, ABSENT any contrary provision in the TTA
the TTA.
CASES WHEREIN EXEMPTION FROM ANY OF THE REQUIREMENTS IN A VOLUNTARY LICENSING CONTRACT MAY BE ALLOWED – where, after evaluation by the DITT Bureau, substantial benefits will accrue to the economy such as:
1. high technology content
2. increase in foreign exchange earnings 3. employment generation
4. regional dispersal of industries and/or
5. substitution with or use of local raw materials or
6. registered companies with pioneer status General Rule – One cannot exploit a patent without the consent of the patentee.
Exception – Through compulsory license
Annex - GROUNDS FOR THE GRANT OF COMPULSORY LICENSES
WHAT PETITIONER FOR COMPULSORY LICENSING CONTRACT MUST DO –
1. Petitioner must file his petition for compulsory license with the Bureau of Legal Affairs of the IPO.
2. He must show his capability to exploit the invention – if he is staffed with adequate and competent manpower and facilities to exploit the invention
3. Subject to certain exceptions, the would-be compulsory licensee has negotiated seriously with rightholders to obtain exclusive licenses on reasonable terms but such efforts are not successful.
4. Pay the patentee adequate remuneration, taking into account the economic value of the grant except in cases where grant of license is to:
a. Remedy a practice which was determined to be anti-competitive b. Need to correct the anti-competitive
practice may be taken into account in fixing the amount of remuneration
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Law on Trademarks
Sec 121.1 Mark means any visible sign capable of distinguishing the goods or services of an enterprise and shall include a stamped or marked container of goods.
EXERCISE OF INTELLECTUAL PROPERTY RIGHTS = MONOPOLY?
1. Monopoly – is the control obtained by one supplier over the commercial market within a given region.
2. In a way, Intellectual Property Rights is a form of monopoly. Copyrights allow others to enjoy an author’s economic rights when there is permission. Trademarks protect goodwill, it does not prevent production of similar goods.
It is only allowed by the Constitution because it provides incentive for innovation and technological advancement.
SALIENT FEATURES OF THE PARIS CONVENTION ON TRADEMARKS
1. National Treatment Principle – foreign nationals are to be given the same treatment in each of the member countries as that country makes available in its own citizens.
2. Right of Priority – any person who has duly filed registration for trademark shall enjoy a right of priority of six (6) months.
3. Protection against Unfair Competition 4. Protection of Tradenames – protected in all
countries without obligation of filing or registration
5. Protection of Well-Known Marks – each country-member of the Union may refuse, cancel the registration and prohibit the use of a trademark which is a reproduction, imitation or translation (or any essential part of which constitutes such), liable to create confusion;
of a mark considered by competent authority where protection is sought to be well-known in the country as being the mark of a person entitled to the benefits of the convention; and used for similar or identical goods.
TRADEMARK COLLECTIVE MARK
OR COLLECTIVE TRADENAME
Any visible sign capable of distinguishing the goods.
Three (3) Distinct
Any visible sign designated as such in the application for registration and capable of distinguishing the
Functions of Trademarks
1. indicate origin or ownership
2. guarantee the quality of the goods and
3. advertise the articles they symbolize
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.
Arce & Sons vs. Selecta Biscuit Co. 1 SCRA 253 The word Selecta is an ordinary or common word but once adopted or coined in connection with one’s business as an emblem or as a badge of authenticity, it may acquire a secondary meaning as to be exclusively associated with its products and business.
Converse Rubber Corp. vs. Universal Rubber Products 147 SCRA 154
Boundless choice of words are available and when there is no reasonable explanation for the defendant’s choice of such a mark, the inference is inevitable that it was chosen to deceive. Actual use of goods in the local market establishes trademark use which serves as the basis for action aimed at trademark pre-emption. Sales invoices are best proof of actual sales of the products in the Philippines.
Philips Export B.V. vs. Court of Appeals GR No.
96161
The right to use a corporate name is a property right, a right in rem which it may assert.
Corporation Code gives two (2) requirements: (1) That complaint acquired a prior right over such name and (2) that the proposed name is either identical, deceptively or confusingly similar, or patently deceptive. The test is whether it would be confusing to an ordinary person.
Canon Kabushiki vs. Court of Appeals GR No.
120900
Ownership of trademark is a property right which is entitled to protection. However, when a TM is used for a product in which the other party does not deal, the use of the same trademark on the latter’s product cannot be validly objected to.
Trademark owner is entitled to protection when junior user (2nd user) forestalls the normal expansion of the business, but Canon Japan has failed to attach
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evidence that would convince that it has also embarked in the production of footwear products.
Kho vs. Court of Appeals GR No. 115758
Trademark, copyright and patents are different intellectual property rights that cannot be interchanged with one another.
Pearl & Dean vs. Shoemart GR No. 148222
The certificate of registration can confer the exclusive right to use its own symbol only to those goods specified in the certificate and that 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.
DOCTRINE OF SECONDARY MEANING – a word or phrase originally incapable of exclusive appropriation with reference to an article in the market (because it is geographically or otherwise descriptive) might nevertheless have been used for so long and so exclusively by one producer with reference to his article that, in the trade and to that branch of the purchasing public, the word or phrase has come to mean that the article was his property.
Asia Brewery Inc. vs. Court of Appeals GR No.
103543
Unfair competition is the employment of deception or any other means contrary to good faith by which a person shall pass off the goods manufactured by him or in which he deals, or his business, or services, for those of another who has already established goodwill for his similar goods, business, or services, or any acts calculated to produce the same result.
The use of steinie bottle, similar but not identical, is not unlawful. Being of functional and common use and not the exclusive invention of anyone, it is available to all who might need to use it within the industry. Nobody can acquire any exclusive right to market articles supplying a simple human need in containers or wrappers of the general form, size, and character commonly and immediately used in marketing such articles.
Dissent of Justice Cruz in Asia Brewery Case – The test is whether the two (2) articles are distinguishable by their labels when put side by side, but whether the general confusion made by the article upon the eye of the casual customer who is unsuspicious and off his guard is such as is likely to
result in confounding it with the original, not side by side comparison.
ELEMENTS OF SUITABLE TRADEMARK AND CLASSIFICATION
1. Arbitrary - common words which when applied to certain goods or services, neither suggest nor describe any characteristic of those goods or services. Examples are Camel cigarettes and Apple Computer.
2. Fanciful – “coined” words invented solely for the purpose of functioning as a mark.
Examples are Clorox and Kodak.
3. Suggestive – requires imagination/deduction.
4. Descriptive – marks that describe some characteristic or alleged merit of a product or service. Because descriptive terms may be truthfully applied to the goods and services, they are not entitled to protection unless they have acquired “secondary meaning” in the marketplace.
5. Generic – marks that tell what a product or service is, rather than indicating the source of a product; thus, they must remain in the public domain and can never function as a trademark. Examples are fresh fruits, flower shop.
APPLICATION FOR TRADEMARK REGISTRATION must contain:
1. the request for registration of trademark 2. the goods and/or services in connection with
which the mark will be used and
3. name of the applicant and his representative and enclose the reproduction of mark.
Application must be filed at the Bureau of Trademarks in the Intellectual Property Office. On receipt of application, an examiner checks if the application includes all the requirements needed to get the filing date. The filing date is very important under the current ‘first to file’ system because it serves to determine, in case of a dispute with another application for the same or similar mark, who has the prior right and, therefore, entitled to the registration of a mark.
Annex L – GROUNDS FOR REFUSAL OF TRADEMARK REGISTRATION
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Sec 124.2 Use in Commerce – 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.
General Rule – What is required is actual use in the Philippines
Exception – Internationally Well-Known Marks
INTERNATIONALLY WELL-KNOWN MARK - is that which is determined by a competent authority (the courts or the Bureau of Legal Affairs (BLA) of the IPO when adjudicating infringement cases) to be well-known internationally and in the Philippines, whether or not it is registered in the Philippines, as being already owned by someone taking into account the knowledge of the relevant sector in the Philippines which has been obtained as a result of the promotion of the mark.
CONDITIONS TO CLAIM BENEFITS OF AN INTERNATIONALLY WELL-KNOWN MARKS IN THE PARIS CONVENTION
1. the mark must be internationally known or well known
2. the subject of the right must be trademark, not a patent or copyright or anything else 3. the mark must be for use in the same or
similar kinds of goods and
4. the person claiming must be the owner of the mark
EFFECT OF NON-USE – If the registered owner without legitimate reason fails to use the mark within the Philippines, or to cause it to be used in the Philippines by virtue of a license during an uninterrupted period of three (3) years or longer, a petition may be filed for the cancellation of the mark.
RIGHTS CONFERRED BY THE REGISTRATION OF THE MARK
1. protection against the reproduction or
imitation or unauthorized use of the mark (the legal term is infringement of mark);
2. right to stop the entry of imported
merchandise into the country containing a mark identical or similar to the registered mark; and
3. right to transfer or license out the mark.
Polaroid Corp vs. Polaroid Elect. Corp., 287 F. 2d 492
Factors to consider in deciding TM infringement when the products are different:
1. Strength of the mark
2. Degree of similarity between the two marks 3. Proximity of the products
4. Likelihood that the prior owner will bridge the gap 5. Actual confusion
6. Defendant’s good faith in adopting its own mark 7. Quality of the defendant’s product
8. Sophistication of the buyers
McDonald’s Corporation vs. LC Big Mak Burgers Inc., GR No. 143993
To establish trademark infringement, the following elements: (1) validity of plaintiff’s mark, (2) the plaintiff’s ownership of the mark, and (3) use of the mark or its colorable imitation by the alleged infringer results in the likelihood of confusion.
Del Monte Corp vs. Court of Appeals, GR No.
78325
The question is not whether the two articles are distinguishable by their label when set side by side but whether the general confusion made by the article upon the eye of the casual purchaser who is unsuspicious and off his guard, is such as to likely result in his confounding it with the original. The general impression of the ordinary purchaser buying, buying under the normally prevalent conditions in trade and giving the attention such purchasers usually give in buying that class of goods is the touchstone.
KINDS OF CONFUSION, WHICH CAN BE BROUGHT BY INFRINGEMENT
Confusion of goods Confusion of Business When the ordinarily
prudent purchaser would be induced to purchase one product in the belief that he was purchasing the other.
When although the goods of the parties are different, the defendant’s products is such as might be 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
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plaintiff and defendant which, in fact, does not exist.
TWO TESTS IN DETERMINING THE LIKELIHOOD OF CONFUSION
Dominancy Test Holistic Test It focuses on the
similarity of the prevalent features of the competing trademarks that might cause confusion.
It requires the court to consider the entirety of the marks as applied to the products, including the labels and packaging, in determining confusing
similarity
Annex M – TRADEMARK INFRINGEMENT vs.
UNFAIR COMPETITION
RELATED GOODS DOCTRINE - When goods are so related that the public may be, or is actually, deceived and misled that they come from the same maker or manufacturer, trademark infringement occurs.
Alhambra Cigar vs. Mojica, 27 Phil. 266
Unfair competition is passing off or attempting to pass off upon the public the goods/business of one person as for the goods/business of another. Any conduct the end and probable effect of which is to deceive the public or pass off the goods or business of a person as that for
Unfair competition is passing off or attempting to pass off upon the public the goods/business of one person as for the goods/business of another. Any conduct the end and probable effect of which is to deceive the public or pass off the goods or business of a person as that for