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.
SECTION 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.
SECTION 89. Rights of Licensor. — In the absence of any provision to the contrary in
granting further licenses to third person nor from exploiting the subject matter of the technology transfer arrangement himself.
SECTION 90. Rights of Licensee. — The licensee shall be entitled to exploit the
subject matter of the technology transfer arrangement during the whole term of the technology transfer arrangement.
SECTION 91. Exceptional Cases. — In exceptional or meritorious cases where substantial benefits will accrue to the economy, such as high technology content, increase in foreign exchange earnings, employment generation, regional dispersal of industries and/or substitution with or use of local raw materials, or in the case of Board
of Investments, registered companies with pioneer status, exemption from any of the above requirements may be allowed by the Documentation, Information and Technology
Transfer Bureau after evaluation thereof on a case by case basis.
SECTION 92. Non-Registration with the Documentation, Information and Technology Transfer Bureau. — Technology transfer arrangements that conform with the
provisions of Sections 86 and 87 need not be registered with the Documentation, Information and Technology Transfer Bureau. Non-conformance with any of the provisions of Sections 87 and 88, however, shall automatically render the technology transfer arrangement unenforceable, unless said technology transfer arrangement is approved and registered with the Documentation, Information and Technology Transfer Bureau under the provisions of Section 91 on exceptional cases.
ALBAÑA vs. DIRECTOR OF PATENTS [G.R. No. L-4572. May 22, 1953]
Assignments of patents and inventions covered thereby may be recorded in books and records kept for the purpose in the Patent Office if presented in due form (Republic Act 165, sections 51-53). But where a person other than the inventor files a motion with the Director of Patents praying that the applicant-inventor be compelled to sign the contract executed by a co- applicant-inventor and both applicant-inventors to acknowledge it before a notary public as well as another document which refers to the minutes of a meeting of the organizers of a manufacturing corporation, and then to have both documents recorded in the Patent Office and in the office of the registrar of deeds, the Director of Patents has no power and authority to compel the applicant-inventors to do what the movant is asking them to perform. What the movant asks the Director of Patents to do for him is essentially a judicial function which would require the determination of finding by a court of competent jurisdiction as to whether there was a meeting of the minds of the contracting parties before it could compel any of them to perform what the movant prays the court to order him to do.
THE LAW ON TRADEMARKS
1. DEFINITION
SECTION 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;
DISTILLERIA WASHINGTON, INC. vs. COURT OF APPEALS [G.R. No. 120961. October
17, 1996]
A trademark refers to a word, name, symbol, emblem, sign or device or any combination thereof adopted and used by a merchant to identify, and distinguish from others, his goods of commerce. It is basically an intellectual creation that is susceptible to ownership.
2. FUNCTIONS
ANG TIBAY vs. TEODORO [G.R. No. 48226. December 14, 1942]
The function of a trademark is to point distinctively, either by its own meaning or by association, to the origin or ownership of the wares to which it is applied.
ETEPHA vs. DIRECTOR OF PATENTS [G.R. No. L-20635. March 31, 1966]
The objects of a trademark are to point out distinctly the origin or ownership of the article to which it is affixed, to secure to him who has been instrumental in bringing into market a superior article of merchandise the fruit of his industry and skill, and to prevent fraud and imposition.
MIRPURI vs. COURT OF APPEALS [G.R. No. 114508. November 19, 1999]
The function of a trademark is to point out distinctly the origin or ownership of the goods to which it is affixed; to secure to him, who has been instrumental in bringing into the market a superior article of merchandise, the fruit of his industry and skill; to assure the public that they are procuring the genuine article; to prevent fraud and imposition; and to protect the manufacturer against substitution and sale of an inferior and different article as his product.
3. ACQUISITION
SECTION 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. Cases decided under Rep. Act 166 §2-A, which states that:
“Ownership of trademarks, tradenames and service marks; how acquired. — Anyone who lawfully produces or deals in merchandise of any kind or who engages in any lawful business, or who renders any lawful service in commerce, by actual use thereof in manufacture or trade, in business, and in the service rendered, may appropriate to his exclusive use a trademark, a tradename, or a service mark not so appropriated by another, to distinguish his merchandise, business or service from the merchandise, business or service of
others. The ownership or possession of a trademark, tradename, service mark, heretofore or hereafter appropriated, as in this section provided, shall be recognized and protected in the same manner and to the same extent as are other property rights known to the law.”
UNNO COMMERCIAL ENTERPRISES vs. GENERAL MILLING CORP. [G.R. No. L-28554.
February 28, 1983]
Registration merely creates a prima facie presumption of the validity of the registration, of the registrant's ownership of the trademark and of the exclusive right to the use thereof. Registration does not perfect a trademark right. Evidence may be presented to overcome the presumption. Prior use by one will controvert a claim of legal appropriation by subsequent users.
KABUSHI KAISHA ISETAN vs. IAC [G.R. No. 75420. November 15, 1991]
A fundamental principle of Philippine Trademarks Law is that actual use in commerce in the Philippines is a pre-requisite to the acquisition of ownership over a trademark or a trade name. A prior registrant cannot claim exclusive use of the trademark unless it uses it in commerce.
PHILIP MORRIS, INC., et al. vs. COURT OF APPEALS [G.R. No. 91332. July 16, 1993]
Albeit petitioners are holders of certificate of registration in the Philippines of their symbols as admitted by private respondent, the fact of exclusive ownership cannot be made to rest solely on these documents since dominion over trademarks is not acquired by the mere fact of registration alone and does not perfect a trademark right.
NB: As the law now stands, there is no need for prior use.