1. INTELLECTUAL PROPERTY
MERLYN A. NACHOR, DPAc

2. TOPIC(s): WHAT IS INTELLECTUAL PROPERTY?
IMPORTANCE OF LEARNING IP FOR STUDENTS/PROFESSORS
DIFFERENT TYPES OF INTELLECTUAL PROPERTY
JURISPRUNDENCE
INTERNATIONAL CONVENTIONS
SUMMARY

3. Are intellectual property rights (IPRs) really rights
Are intellectual property rights (IPRs) really rights? And if so, what kind of rights?
I begin by clearing up some misunderstandings about legal rights. The primary one is that rights are absolute. A secondary one is that one need do nothing to obtain or exercise a right, and that therefore any legal entitlement that requires affirmative steps to secure cannot be a right. Next I consider a prominent critique of the idea that IP rights are property rights, which holds that they are more akin to government regulation. After that I turn to an enumeration of the details of IP rights, described in the terms laid down by the prominent theorist of legal relations, Wesley Newcomb Hohfeld.

4. INTELLECTUAL PROPERTY
Industrial Property
Copyright
Intellectual property (IP) refers to creations of the mind, such as inventions; literary and artistic works; designs; and symbols, names and images used in commerce.
IP is protected in law by, for example, patents, copyright and trademarks, which enable people to earn recognition or financial benefit from what they invent or create. By striking the right balance between the interests of innovators and the wider public interest, the IP system aims to foster an environment in which creativity and innovation can flourish.
The Intellectual Property Office of the Philippines (IPOPHL) is the lead agency responsible for handling the registration and conflict resolution of intellectual property rights. It was created by virtue of Republic Act No or the Intellectual Property Code of the Philippines, which took effect on 01 January, 1998 under the presidency of Fidel V. Ramos.

5. ATTRIBUTES OF IP
It is ‘good against the world’ – no prior contract or other legal relationship is required to create a duty on the part of third parties to respect the right;
2. It defines uses of an asset that are under control of the owner;
3. It is broadly transferable; yet the owner retains residual rights over those aspects of the right that are not transferred.

6. LIMITATIONS
IPRs are:
Contingent; they are subject to government processes to acquire or enforce, such as perfection, approval, maintenance, and the like;
2. Time-limited; most IP rights have specified terms, and even those that do not will usually lapse at some time;
3. Bounded in scope; the class of assets the IP rights cover is subject to boundaries drawn with more or less precision.

7. Your rights to intellectual property are not automatically protected.
WHY THE STUDENTS NEED TO KNOW
Your rights to intellectual property are not automatically protected.

8. Tangible Intangible TYPE OF PROPERTY land houses Intellectual property
Role of IP as intangible property—economic rights; commercial exploitation of owner of IP; capital expenditure; transfer technology; cultural development
IP as property—can be sold; can be bought; can be lease/rent; can pass under a will; can be assigned

9. WHY PROTECT IP? Capital expenditure for new products R and D
Marketing and advertisement
No free loaders
Maintaining loyal followers
profit

10. Geographical Indications
DIFFERENT TYPES OF IP
COPYRIGHT
INDUSTRIAL PROPERTY
Trademarks
Patents
Industrial Designs
Geographical Indications

11. A trademark is a word, a group of words, sign, symbol, logo or a combination thereof that identifies and differentiates the source of the goods or services of one entity from those of others. 

12. WORLD’S TOP 20 BRAND

13. WORLD’S TOP 20 BRAND

14. PROTECTION Commercial exploitation of a product
To identify the product, giving it a name
“mark” includes a device, brand, heading, label, ticket, name, signature,word, letter, numeral or any combination.
Does not include sound or smell

15. Can either be registered or not registered
Advantages of registered trade marks
Application can be made for goods and services
Perform certain function such as indication of quality,identifying a trade connection

16. DURATION OF PROTECTION
A trademark or service mark registration is valid for ten (10) years.

17. THE MAINTENANCE OF REGISTRATION
After the registration of a trademark, the registrant is required to file a Declaration of Actual Use with proof of such use 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 Trademark Register by the IPO.

18. EXCUSES/EXEMPTION
where the applicant or registrant is prohibited from using the mark in commerce because of a requirement imposed by another government agency prior to putting the goods in the market or rendering of the services;
(2) where a restraining order or injunction was issued by the Bureau of Legal Affairs, the courts or quasi-judicial bodies prohibiting the use of the mark; or
(3) where the mark is the subject of an opposition or cancellation case.

19. PROOF OF ACTUAL USE labels of the mark as these are used;
(2) downloaded pages from the website of the applicant or registrant clearlyshowing that the goods are being sold or the services are being rendered in the Philippines;
(3) photographs (including digital photographs printed on ordinary paper) of goods bearing the marks as these are actually used or of the stamped or marked container of goods and of the establishment is where the services are being rendered;
(4) brochures or advertising materials showing the actual use of the mark on the goods being sold or services being rendered in the Philippines;
(5) for online sale, receipts of sale of the goods or services rendered or other similar evidence of use, showing that the goods are placed on the market or the services are available in the Philippines or that the transaction took place in the Philippines;
(6) copies of contracts for services showing the use of the mark.

20. WHAT CAN BE REGISTERED? Word mark Figurative mark
Figurative mark with words
3D mark
Stamped or marked container of goods
In any of the above types, generally, the distinctiveness of the mark is the key point of consideration for grant of registration. Note that under the present IP Code (RA 8293), other forms of marks such as sound marks and scent marks are not yet registrable with the IPOPHL.

21. REGISTRABILITY
(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;

22. (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 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;

23. REGISTRABILITY
(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;

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

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

26. APPLE
TOMATO

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

28. (m) Is contrary to public order or morality.

29. Copyright is the legal protection extended to the owner of the rights in an original work. “Original work” refers to every production in the literary, scientific and artistic domain.
Among the literary and artistic works enumerated in the IP Code includes books and other writings, musical works, films, paintings and other works, and computer programs.
Copyright laws grant authors, artists and other creators automatic protection for their literary and artistic creations, from the moment they create it.

30. WHO OWNS THE COPYRIGHT
Generally, the author of the work holds the copyright to it but different rules may apply in the following situations:
The work was created during and under the course of employment
The employee owns the copyright if it was created
The work is commissioned
The copyright belongs to different stakeholders in audiovisual works (producer, author of a scenario, music composer, film director, author of the work adapted into the audiovisual form) but subject to stipulations by the creators.
In joint authorship,the co-authors are the copyright holders and in the absence of an agreement, rules of co-ownership applies ,except if the work’s parts can be used separately, and the corresponding authors can be identified in which case, each author has copyright over his own part.

31. RIGHTS COVERED
“Original work” refers to every production in the literary, scientific and artistic domain. The literary and artistic works include: books and other writings, music, paintings, sculptures, movies, photos, ornamental designs, computer programs and other literary and artistic works.
“Derivative work” refers to works based upon one or more preexisting works. It includes dramatizations, translations, adaptations, abridgments, collections of literary, scholarly or artistic works.

32. LIMITATIONS
Copyright protection is not intended to give the copyright owner absolute control over all possible exploitation of his work. The law provides for limitations (“statutory fair uses”) on the economic rights of authors comprising of acts which do not constitute copyright infringement even if done without the consent of the copyright holder.

33. VIOLATIONS
Copyright infringement occurs when there is a violation of the economic rights granted to the copyright owner, or to the owners of related rights. It may also consist in aiding or abetting such infringement.

34. Requirements for Registration
Two (2) copies of the Copyright Deposit Form
Two (2) copies of your original work.

35. An invention patent is a government-issued grant, bestowing an exclusive right to an inventor over a product or process that provides any technical solution to a problem in any field of human activity which is new, inventive, and industrially applicable.

38. PROTECTION OF PATENT Basic idea of granting a patent
“ the applicant applied to the government for the right of patent and in return for the monopoly given he must disclose everything about the invention in the patent document” ( the description)
Duration 20 years.

39. Patent for invention
Patent can be applied for a product or a process.
Patentable invention must be new,involves an inventive step and industrially applicable
Priority date- first to file

40. INDUSTRIAL DESIGN
An industrial design is the ornamental or aesthetic aspect of an article. Design, in this sense, may be three-dimensional features (shape or surface of an article), or the two-dimensional features (patterns or lines of color). Handicrafts, jewelry, vehicles, appliances - the subject of industrial designs range from fashion to industrial goods.

41. PROTECTION Protection for industrial designs that are new or original
Design are feature of shape, configuration, pattern or ornament
The design must be applied to an article
The design must be applied by an industrial process.
Appeal to the eye.

42. BENEFITS OF PROTECTION
The owner of a registered industrial design has the right to prevent third parties from making, selling or importing articles bearing or embodying a design which is a copy, or substantially a copy, of the protected design, when such acts are undertaken for commercial purposes.

43. TERMS OF PROTECTION
The registration for an industrial design is for a period of 5 years from the filing date of the application. The registration of an industrial design may be renewed for not more than two (2) consecutive periods of five (5) years each by paying a renewal fee. The fee should be paid within a year of the expiration of the registration.
Industrial design registrations are governed by some of the same provisions that apply to patents. See what these are in Section 119  of the Intellectual Property Code of the Philippines. 

44. JURISPRUDENCE

45. Mang Inasal Philippines, Inc. vs. IFP Manufacturing Corporation (2017)
TM Opposition
Mang Inasal Philippines, Inc. vs.
IFP Manufacturing Corporation (2017)

46. TM Opposition Dy and/or Philites Electronic & Lighting Products vs.
Koninklijke Philips Electronics, N.V. (2017)

47. Trademark Opposition case:
Opposer UFC/NutriAsia arguments:
The dominant feature is the word “PAPA”. Opposer’s sister company manufactures “Mang Tomas”, a popular lechon sauce. Hence, consumers may confuse the “Papa Boy” lechon sauce as related to Opposer.
Applicant’s arguments:
The dominant features of PAPA BOY” and the hog-like character; for the Opposer’s mark, it’s “PAPA KETSARAP”
* Same class of goods (Class 30).
* Opposer has used the mark “PAPA” for the last 52 years while its sister company has manufactured lechon sauce for 41 years.

48. Decisions IPOPHL-BLA--- sustained the opposition IPOHL-ODG—applicant’s appeal denied. SUPREME COURT- REVERSED THE COURT OF APPEALS * Dominancy Test- PAPA is the dominant feature of KETSARAP and PAPA BOY * Lechon sauce and banana catsup are related products * Opposer did not register the word PAPA to mean FATHER but as the surname of the original owner of the brand

49. Unfair Competition and TM Cancellation
IN-N-OUT Burger, Inc. vs. Sehwani Incorporated (2009)
IN-N-OUT (foreign corp. not engaged in business in Ph) arguments –
IN-N-OUT marks are well known; registered in US
Sehwani is passing off his goods as IN-N-OUT’s
Sehwani arguments –
Use of the mark since 1982, registered in
IN-N-OUT has no legal capacity to sue in Ph.

50. DG – Found Sehwani guilty of unfair competition.
IPV Decisions
BLA – IN-N-OUT has the capacity to sue since the US is a party to be Convention of Paris on Protection of Industrial Property. However, no bad faith/fraud on the part of Sehwani so no unfair competition.
DG – Found Sehwani guilty of unfair competition.
CA – Reversed the Decision of the DG
SC – Reversed the CA / reinstated the decision of the DG
IPO has jurisdiction over IP Violations cases (concurrent with regular courts)
Substantial evidence supports a finding of unfair competition (Sehwani
claimed use since 1982 but did not offer evidence to support the claim)

51. INTERNATIONAL CONVENTION:1
PARIS CONVENTION FOR PROTECTION OF INDUSTRIAL PROPERTY 1967 (1989) 2
BERNE CONVENTION FOR THE PROTECTION OF LITERARY AND ARTISTIC WORKS 1971 (1990) 3
TRADE-RELATED ASPECTS OF INTELLECTUAL PROPERTY AGREEMENT 1994 (1995) 4
WCT (digital agenda) 5
PCT 2004

52. PARIS CONVENTION Protection for industrial property Trade mark Patent
Unfair competition
Governed by domestic legislation

53. fbaccount: Mer Lyn
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