Loading presentation...

Present Remotely

Send the link below via email or IM

Copy

Present to your audience

Start remote presentation

  • Invited audience members will follow you as you navigate and present
  • People invited to a presentation do not need a Prezi account
  • This link expires 10 minutes after you close the presentation
  • A maximum of 30 users can follow your presentation
  • Learn more about this feature in our knowledge base article

Do you really want to delete this prezi?

Neither you, nor the coeditors you shared it with will be able to recover it again.

DeleteCancel

Make your likes visible on Facebook?

Connect your Facebook account to Prezi and let your likes appear on your timeline.
You can change this under Settings & Account at any time.

No, thanks

Fundamentals of Intellectual Property for TIPQC

Presentation designed for teaching intellectual property fundamentals for Technical Institute of the Philippines, Quezon City
by

Bayani Loste

on 18 September 2017

Comments (0)

Please log in to add your comment.

Report abuse

Transcript of Fundamentals of Intellectual Property for TIPQC

Layout Designs of ICs
Trade Secrets

Fundamentals of Intellectual Property
Intellectual Property
An Overview
Trademarks &
Patents
Utility Models
Industrial Designs

Copyright and Related Rights


Legal Bases
Constitution
Republic Act 8293
Judicial and Quasi-Judicial Decisions
SECTION 13. The State 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 period as may be provided by law.
Article XIV
Intellectual Property Code of the Philippines, as amended
Effective Date: 1 January 1998
Supreme Court
Court of Appeals
RTC/Office of Director General

Geographical
Indications

HISTORY
Create something out of nothing...
Once created or registered,
exclude others from use
NATURE OF RIGHT
Similarity and difference
to Real (immovable) Property
and Personal (movable) Property
Legal Case Analysis
IPOPHL:
Copyright

is the legal protection
extended to the owner
of the rights
in an
original work
.
IPOPHL:
“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.
IPOPHL:
Works are protected by the
sole fact of their
creation,

regardless of their mode or form of expression,
as well as their content, quality and purpose.
(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 work 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
(o) Other literary, scholarly, scientific and artistic works.
Who owns the copyright?
IPOPHL: Generally, the
natural person
who
created the literary and artistic work
owns the copyright to the same.
Certain situations:
Employment:
Employee
- if the work is not part of his regular duties, even if he used the time, facilities and materials of the employer;
Employer
- if the work is the result of the performance of his regularly assigned duties, unless there is an express or implied agreement to the contrary.
Commissioned Works:
The person who commissioned the work
owns the work
but the copyright thereto
remains with the creator,
unless there is a written agreement
to the contrary.
For audiovisual works:
the
producer
,
the
author
of the scenario,
the
composer
of the music,
the
film director
, and
the
author
of the work so adapted.
Two Types of Rights Under Copyrights:
ECONOMIC RIGHTS
, allows creator to obtain remuneration from the exploitation of his works by third parties
MORAL RIGHTS
, allows creator to maintain and protect the personal connection between himself and the work
Reproduction
Transformation First public distribution
Rental
Public display
Public performance
Other communication to the public of the work
Economic Rights:
Right of Attribution
Right of Alteration
Right of Integrity (object to any prejudicial distortion)
Right to restrain use of his name.
Moral Rights:
Resale right:
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.
Related Rights
(a) performers
(b) producers of sound recordings
(c) broadcasting organizations
persons or entities who contribute substantial creative, technical or organizational skill in the process of making the works available to the public
Fair Use
-limitations on the economic rights of authors
-acts which do not constitute copyright infringement even if done without the consent
of the copyright holder
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
Examples of Fair Use #1
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
Examples of Fair Use #2
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 purpose
s and has
not been expressly reserved
: Provided, That the
source is clearly indicated
;
Examples of Fair Use #3
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;
Examples of Fair Use #4
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;
Example of Fair Use #6
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;
Examples of Fair Use #7
The making of
ephemeral recordings

by a broadcasting organization
by means of its own facilities and
for use in its own broadcast;
Examples of Fair Use #8
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;
Examples of Fair Use #9
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;
Examples of Fair Use #10
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;
Examples Of Fair Use #5
Any use made of a work for the purpose of any judicial proceedings or for the giving of professional advice by a legal practitioner.
Examples of Fair Use #11
"Limitations"
- does not conflict with the normal exploitation of the work
- does not unreasonably prejudice the right holder’s legitimate interest
Copyright Infringement
criticism, comment, news reporting,
teaching including multiple copies for
classroom use, scholarship, research,
and similar purposes
Generally, Fair Use
Factors to consider in determining Fair Use:
The purpose and character of the use, including whether such use is of a commercial nature or is for non-profit education purposes;
The nature of the copyrighted work;
The amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
The effect of the use upon the potential market for or value of the copyrighted work
Allowable Reproduction Based on Fair Use:
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
- consists in infringing any right secured or protected
- also consists in aiding or abetting such infringement
Person liable for infringement:
in possession an article which he knows, or ought to know, to be an infringing copy of the work for the purpose of:
Selling or letting for hire, or by way of trade offering or exposing for sale or hire, the article;
Distributing the article for the purpose of trade, or for any other purpose to an extent that will prejudice the rights of the copyright owner in the work; or
Trade exhibit of the article in public
Definitions
MARK
- any visible sign capable of distinguishing the goods or services of an enterprise
TRADE NAME
- the name or designation identifying or distinguishing an enterprise, also known or referred to as business identifier
History of Trademarks
Image from https://www.pinterest.com/pin/466544842623001368/ (last visited 7 August 2016
Roman blacksmiths
http://www.cyprusbeermaniacs.com/lowenbrau-original/

image source:
(last visited 7 August 2016)
Löwenbräu, 1383
http://robgrimmphoto.squarespace.com/
image source:
(last visited 7 August 2016)
Bass Brewery, 1876
http://www.trademarkologist.com/2013/11/maximize-your-federal-trademark-rights-by-filing-early/
image source:
(last visited 7 August 2016)
May 27, 1884
By Unknown - Original book, Public Domain, https://commons.wikimedia.org/w/index.php?curid=10502412 (last visited 6 August 2016)
1923 TM
1912 Copyright
By Own work Krupp - User:Stahlkocher took the picture himself, as he wrote; it is originated from the front mask of an old Krupp two stroke truck, built earlier than 1965. -- BerndB 18:27, 20 November 2006 (UTC), CC BY-SA 3.0, https://commons.wikimedia.org/w/index.php?curid=109145 (last visited 6 August 2016)
Krupp, 1875
Lion's Brew
three seamless train wheel tires
Founded by William Bass in 1777
J.P. Tolman Company,
a rope-making company
image source: https://gkskaggs.wordpress.com/tag/beer/ (last visited 7 August 2016)
Don Enrique Maria Barretto de Ycaza y Esteban
Founder of La Fabrica de Cerveza de San Miguel, September 29, 1890
image source: http://www.lougopal.com/manila/?p=2323 (last visited 7 August 2016)
Michaelmas, or the feast day of
Saint Michael the Archangel
image source: http://www.lougopal.com/manila/?p=2323 (last visited 7 August 2016)
Calzada de San Miguel-1870
image source: http://www.lougopal.com/manila/?p=2323 (last visited 7 August 2016)
image source: http://www.lougopal.com/manila/?p=2323 (last visited 7 August 2016)
image source: http://www.lougopal.com/manila/?p=2323 (last visited 7 August 2016)
San Miguel Fifty Fifty advertisement from 1940
Date of Filing: 2004-07-26
Date of Registration 2005-12-19
CLASS 32 BEERS, MINERAL AND AERATED WATERS, BOTTLED WATER, FRUIT DRINKS AND FRUIT JUICES.
Unregistrable Marks
(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:
(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
(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;
(m) Is contrary to public order
or morality
image source: http://www.trademarkologist.com/2015/05/5553/ (last visited 8 August 2016)
image source: https://twitter.com/robbreakenridge/status/675340495887855616 (last visited 8 August 2016)
image source: http://www.huffingtonpost.com/2012/04/30/fuku-restaurant-west-palm-beach_n_1464286.html (last visited 8 August 2016)
image source: http://masslawblog.com/trademark/federal-circuit-disparagement-provision-of-trademark-statute-is-unconstitutional/ (last visited 8 August 2016)
By Vectorized by Zachary Harden (User:Zscout370). - http://www.op.gov.ph/museum/symbols_coa.asp, Public Domain, https://commons.wikimedia.org/w/index.php?curid=6371562 9las visited 8 August 2016
image source: http://www.juice.ph/shopping/features/da-king-i-fernando-poe-jr-x-team-manila (last visited 8 August 2016)
image source: http://www.uberdigests.info/2012/02/mcdonalds-corporation-vs-macjoy-fastfood-corporation/ (last visited 9 August 2016)
image source: http://www.tshirtroundup.com/wp-content/uploads/2012/03/star-wars-coffee-rured.jpg (last visited 9 August 2016)
image source: http://www.wipo.int/branddb/ph/en/showData.jsp?ID=PHTM.42001003486 (last visited 9 August 2016)
image source: http://bravocooking.com/difference-champagne-sparkling-wines/ (last visited 9 August 2016)
image source: http://www.todayifoundout.com/index.php/2013/10/bloody-history-barber-pole/ (last visited 9 August 2016)
Applicant
Natural Person
vs.
Juridical Person
1. Organization
2. Capitalization
3. Liability
Agent
vs.
Representative
Representation of the Mark for Publication
Title and Description
of the Mark
Three Dimensional?
Claim of Colors?
Translation or Transliteration?
Disclaimer of non-registrable matters?
Collective mark applicant?
Nice Classification
Based on the Nice Agreement of 1957
establishes a classification of goods and services for the purpose of registering trademarks and service marks
35 goods and 11 services
Named after the city of Nice (/ˈniːs/), France
(sounds like 'knees')
Claim of "Convention" Priority
Paris Convention for the Protection of Industrial Property (1883)
Philippines a party to the Convention since 1965
Six-months priority claim, first-to-file rule
Big Entity vs. Small Entity
Trademark Application Process
THINK OF MOST
DISTINCTIVE MARK
SEARCH FOR
SIMILAR MARKS ONLINE
DRAW APPLICATION FORM,
FILE AND PAY APPLICATION
BUREAU OF TRADEMARKS
SEARCHES AND EXAMINES
TRADEMARK APPLICATION
IF MARK VIOLATES SEC. 123,
BOT ISSUES
REGISTRABILITY REPORT
TRADEMARK APPLICATION PUBLISHED
FOR 30 DAYS TO
ALLOW PUBLIC TO OPPOSE APPLICATION
OPPOSITION RESOLVED OR
NO OPPOSITION:
REGISTRATION CERTIFICATE
IS ISSUED

MAINTENANCE OF MARK
File 3rd Year Declaration of Actual Use, from filing date
File 5th-6th Year DAU, from date of registration
File Petition for Renewal on 10th registration anniversary
Trademark Concepts: Classification of Marks
Arbitrary
Suggestive
Descriptive
Generic
Geographic
McDonalds Corporation vs. L. C. Big Mak Burger, Inc.,
G.R. No. 143993, 18 August 2004
McDonald's owns a family of marks including the Big Mac mark for its double-decker hamburger sandwich.
LC applied with the BPTTT for the registration of the Big Mak mark for its hamburger sandwiches.
McDonald's opposed application and filed case for infringement and unfair competition against LC.
LC claimed its "BIG" and "MAK" are generic and descriptive.
RTC ruled in favor of McDonald's, Court of Appeals reversed RTC.
Supreme Court ruled that LC infringed upon McDonald's marks and is liable for unfair competition.
Generic marks
are commonly used as the name or description of a kind of goods, such as Lite for beer or Chocolate Fudge for chocolate soda drink.
Descriptive marks
, on the other hand, convey the characteristics, functions, qualities or ingredients of a product to one who has never seen it or does not know it exists, such as Arthriticare for arthritis medication.
On the contrary, Big Mac falls under the class of
fanciful or arbitrary
marks as it bears
no logical relation to the actual characteristics
of the product it represents.
As such, it is highly distinctive and thus valid.
Likelihood of Confusion: Dominancy vs. Holistic
Court of Appeals applied Holistic Test. Supreme Court said Dominant Test should have been applied.
greater weight to the similarity of the appearance of the product, disregarding minor differences
consider more the aural and visual impressions created in the public mind,
giving little weight to factors like prices, quality, sales outlets and market segments
SOCIETE DES PRODUITS NESTLE, S.A. and NESTLE PHILIPPINES, INC., vs. COURT OF APPEALS and CFC CORPORATION., G.R. No. 112012, 4 April 2001
Nestle is the owner of MASTER ROAST and MASTER BLEND marks covering coffee.
CFC filed an application for FLAVOR MASTER mark for coffee.
Nestle opposed the application of CFC, use of FLAVOR MASTER likely to cause confusion.
BPTTT (IPOPHL) denied the CFC's application, Court of Appeals reversed the BPTTT, using the Holistic or Totality Test.
Court of Appeals said ordinary purchaser "rash."
Supreme Court ruled that FLAVOR MASTER is, using the Dominancy Test, confusingly similar to MASTER ROAST and MASTER BLEND.
"The Court of Appeals held that the test to be applied should be the
totality or holistic test reasoning
, since what is of paramount consideration is the ordinary purchaser who is, in general,
undiscerningly rash in buying the more common and less expensive
household products like coffee, and is therefore less inclined to closely examine specific details of similarities and dissimilarities between competing products."
MASTER being generic and descriptive:
Generic terms are those which constitute the common descriptive name of an article or substance, or comprise the genus of which the particular product is a species, or are commonly used as the name or description of a kind of goods, or imply reference to every member of a genus and the exclusion of individuating characters, or refer to the basic nature of the wares or services provided rather than to the more idiosyncratic characteristics of a particular product, and are not legally protectable.
On the other hand, a term is descriptive and therefore invalid as a trademark if, as understood in its normal and natural sense, it forthwith conveys the characteristics, functions, qualities or ingredients of a product to one who has never seen it and does not know what it is, or if it forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the goods, or if it clearly denotes what goods or services are provided in such a way that the consumer does not have to exercise powers of perception or imagination.
MASTER is a suggestive term brought about by the advertising scheme of Nestle. Suggestive terms are those which, in the phraseology of one court, require imagination, thought and perception to reach a conclusion as to the nature of the goods. Such terms, which subtly connote something about the product, are eligible for protection in the absence of secondary meaning. While suggestive marks are capable of shedding some light upon certain characteristics of the goods or services in dispute, they nevertheless involve an element of incongruity, figurativeness, or imaginative effort on the part of the observer.
Supreme Court ruled that MASTER is suggestive:
ANDRES ROMERO, vs. MAIDEN FORM BRASSIERE CO., INC.,
and THE DIRECTOR OF PATENTS,
G.R. No. L-18289, 31 March 1964
Maiden Form Brassiere Co., Inc. is the owner of the ADAGIO mark for brassieres.
Maiden Form applied for registration of ADAGIO mark and BPTTT (IPOPHL) granted the certificate.
Romero petitioned for the cancellation of the certificate, claiming that ADAGIO is descriptive of brassieres.
Supreme Court ruled that ADAGIO is not descriptive for brassieres even though had been in use.
"Widespread dissemination, (as) the result of having the public purchase its article, would destroy a trademark."
COMPAÑIA GENERAL DE TABACOS DE FILIPINAS, vs.
ALHAMBRA CIGAR & CIGARETTE MANUFACTURING CO., G.R. No. L-10251, 10 February 1916
Alhambra Cigars was the manufacturer of ALHAMBRA ISABELAS for cigarettes.
Compania General sued Alhambra Cigars for infringement on the use of ISABELA on the cigarettes.
Court ruled in favor or Compania General and found Alhambra Cigars liable for infringement.
Supreme Court found that ISABELA is a geographic indication of the product being sold by Alhambra Cigars, thus it cannot be owned as a mark.
1. There is a province in the Island of Luzon known as Isabela Province. In that province grows tobacco of a class and quality not grown in any other province or place in the Philippine Islands.

2. That tobacco is known commercially and to the trade as Isabela tobacco and the expression "Isabela tobacco" has in the Philippine Islands a meaning as definite, certain and clear as the expression "Havanna tobacco" or "Virginia tobacco" in the United States.
Factors considered by the Supreme Court:
5. The phrase "La Flor de la Isabela" means in English, giving it a free translation, "The best tobacco grown in Isabela Province," or "The finest tobacco grown in Isabela Province," or "The finest quality of tobacco grown in Isabela Province." The phrase, in its primary sense, conveys the idea that the products on which it is placed are composed of the best tobacco grown in the Province of Isabela.

6. Plaintiff's cigarettes marked with the design "La Flor de la Isabela," and referred to in this case, are not manufactured or composed, either wholly or in part, of tobacco grown in Isabela Province.
3. The defendant has used on its cigarettes the words "Alhambra Isabela" with a statement that the cigarettes inclosed in the package are composed exclusively of Isabela tobacco. Aside from "Isabela" no other word or phrase or character is used on defendant's packages which it is claimed is in violation of plaintiff's rights.

4. There is absolutely no resemblance between the packages of cigarettes manufactured and sold by the plaintiff and those manufactured and sold by the defendant, except in the word "Isabela."
7. The cigarettes manufactured and sold by defendant as "Alhambra Isabelas" are composed exclusively of tobacco grown in Isabela Province.

8. The word "Isabela," when used in connection with tobacco, cigars or cigarettes, signifies in its primary sense that the tobacco itself, or that composing the cigars or cigarettes, is Isabela tobacco.
1. Coffee Partners, Inc. vs. San Francisco Coffee and Roastery, Inc. G.R. No. 169504, 3 March 2010
2. GREAT WHITE SHARK ENTERPRISES, INC. v. DANILO M. CARALDE, JR. . G.R. No. 192294, 21 November 2012
3. BIRKENSTOCK ORTHOPAEDIE GMBH AND CO. KG (formerly BIRKENSTOCK ORTHOPAEDIE GMBH), vs. PHILIPPINE SHOE EXPO MARKETING CORPORATION, G.R. No. 194307, 20 November 2013

Trademark Concepts:
Certificate of Registration
To Register
or
Not to Register
(I)t is not the application or registration of a trademark that vests ownership thereof, but it is the
ownership of a trademark
that confers the right to register the same.
BIRKENSTOCK ORTHOPAEDIE GMBH AND CO. KG (formerly BIRKENSTOCK ORTHOPAEDIE GMBH), vs.
PHILIPPINE SHOE EXPO MARKETING CORPORATION, G.R. No. 194307, 20 November 2013
But what about the First-To-File Rule?
A trademark is an industrial property over which its owner is entitled to property rights which cannot be appropriated by unscrupulous entities that, in one way or another,
happen to register such trademark ahead of its true and lawful owner
.
The presumption of ownership accorded to a registrant
must then necessarily yield
to superior evidence of actual and real ownership of a trademark.
(R)egistration of a trademark, by itself, is not a mode of acquiring ownership. If the applicant is not the owner of the trademark, he has no right to apply for its registration.
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. Such presumption, ***, is rebuttable and must give way to evidence to the contrary.
Importance of having an 'origins' story
As between actual use of a mark
without registration
, and registration of the mark
without actual use
thereof, the former prevails over the latter. For a rule widely accepted and firmly entrenched ***
is that actual use in commerce or business is a pre-requisite
to the acquisition of the right of ownership.
SHANGRI-LA INTERNATIONAL HOTEL MANAGEMENT, LTD., SHANGRI-LA PROPERTIES, INC., MAKATI SHANGRI-LA HOTEL & RESORT, INC., AND KUOK PHILIPPINES PROPERTIES, INC., vs. DEVELOPERS GROUP OF COMPANIES, INC., G.R. No. 159938, 31 March 2006
By itself
, registration is not a mode of acquiring ownership. When the
applicant is not the owner
of the trademark being applied for, he has
no right to apply for registration
of the same.
'Origins' Story of Shangri-La
Local Mark v. Local Mark
Berris Agricultural Co., Inc. vs. Norvy Abyadang, G.R. No. 183404, 13 October 2010
The ownership of a trademark is acquired
by its registration
and its
actual use
by the manufacturer or distributor of the goods
made available to the purchasing public
.
Adoption of the mark alone does not suffice. One may make advertisements, issue circulars, distribute price lists on certain goods, but these alone will not inure to the claim of ownership of the mark
until the goods bearing the mark are sold to the public in the market.
Accordingly, receipts, sales invoices, and testimonies of witnesses as customers, or orders of buyers, best prove the actual use of a mark in trade and commerce during a certain period of time.
D-10 80 WP v. NS D-10 PLUS
Unregistered Foreign Mark v. Local First Use
ECOLE DE CUISINE MANILLE (CORDON BLEU OF THE PHILIPPINES), INC., vs. RENAUD COINTREAU & CIE and LE CORDON BLEU INT'L., B.V. G.R. No. 185830, 5 June 2013
(C)ourts 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.
1. Cointreau has been using the subject mark in France since 1895, Ecole’s first use of the same in the Philippines 1948
2. Ecole’s present directress, Ms. Lourdes L. Dayrit (and even its foundress, Pat Limjuco Dayrit), had trained in Cointreau’s Le Cordon Bleu culinary school in Paris, France
3. Cointreau was likewise the first registrant of said mark under various classes, both abroad and in the Philippines, having secured Home Registration No. 1,390,912 dated November 25, 1986 from its country of origin, as well as several trademark registrations in the Philippines
Trademark Concepts:
Infringement
Is it likely to cause confusion?
Elements of Infringement
Registered mark, unregistered tradename
Reproduced, counterfeited, copied, colorably imitated
Infringing trademark or tradename used commercially
Likely to cause confusion as to the goods/services or to the origin of the goods/identity of business
No consent from trademark or tradename owner/assignee
PROSOURCE INTERNATIONAL, INC., v. HORPHAG RESEARCH MANAGEMENT SA, G.R.
No. 180073, November 25, 2009
Trademark Concepts:
Unfair Competition
Passing off or Palming off
Elements of Unfair Competition
1. any person who shall employ
deception or any other means contrary to good faith
2.
pass off
the goods manufactured by him or in which he deals, or his business, or services
3. for those of the
one having established such goodwill
Intellectual Property Code, Sec. 168.2
Examples 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 ordealer, 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;
Examples of Unfair Competition
(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 service of another who has identified such services in the mind of the public
Examples of Unfair Competition
(c) Any person who shall make any
false statement in the course of trade
or who shall commit a
ny other act contrary to good faith
of a nature calculated
to discredit
the goods, business or services of another
MIGHTY CORPORATION and LA CAMPANA FABRICA DE TABACO, INC. vs. E. & J. GALLO WINERY and THE ANDRESONS GROUP, INC., G.R. No. 154342, 14 July 2004
Prior Art Search and Analysis
STEP 1: Re-State the invention in terms of Problem-Solution Approach
• What problem does the invention solve?
• What is the invention? (structural)
• What does the invention do? (functional)
High speed police chases are a danger to people and property. The amount of time a high-speed chase continues will increase the chances of civilian or material harm. To prevent these chases from occurring, the need has arisen for a remote car disabling mechanism used by police officers to impede the progress of the getaway car. The mechanism would incorporate a tamper-proof receiver installed by default in every automobile upon manufacture that responds to the signal from a transmitter to cut the fuel supply and ignition to the engine. The receiver is connected to a relay that may cut off power to a vehicle’s electric fuel pump or activate a cutoff valve. The relay also cuts power to the ignition pack or distributor. Transmitters and control modules are installed in all police vehicles. The officer may use the control module to select the vehicle that requires disablement by identification (e.g., license plate number) and transmit a fuel-cutoff signal to the appropriate vehicle. The officer may be in a police vehicle such as a patrol car or helicopter.
D. Hunt, L. Nguyen, M. Rodgers, Patent Searching Tools & Techniques, John Wiley & Sons, 2007
D. Hunt, L. Nguyen, M. Rodgers, Patent Searching Tools & Techniques, John Wiley & Sons, 2007
The invention is a method for a law enforcement officer to stop a high-speed police chase by first selecting the vehicle to be disabled from the pursuing police vehicle, sending a disabling signal to the getaway vehicle, and cutting off the fuel supply and ignition to the getaway vehicle.
D. Hunt, L. Nguyen, M. Rodgers, Patent Searching Tools & Techniques, John Wiley & Sons, 2007
Product/Device/Apparatus Invention
Method/Process Invention
D. Hunt, L. Nguyen, M. Rodgers, Patent Searching Tools & Techniques, John Wiley & Sons, 2007
STEP 2: Generate Searchable Keywords
D. Hunt, L. Nguyen, M. Rodgers, Patent Searching Tools & Techniques, John Wiley & Sons, 2007
sTEP 3: Map-Out the Features of the Invention
D. Hunt, L. Nguyen, M. Rodgers, Patent Searching Tools & Techniques, John Wiley & Sons, 2007
sTEP 4: Choose Your Search Database
IPOPHL: http://onlineservices.ipophil.gov.ph/ipophilsearch/patentsearch.aspx
European Patent Office: https://worldwide.espacenet.com/
WIPO's Patentscope: https://patentscope.wipo.int/search/en/search.jsf
Japan Patent Office: https://www.j-platpat.inpit.go.jp/web/all/top/BTmTopEnglishPage
US Patent Office: http://patft.uspto.gov/netahtml/PTO/search-bool.html
Google Patents: https://patents.google.com/
https://www.youtube.com/?gl=PH
STEP 5: Organize your search by using a Search Form
https://dl.dropboxusercontent.com/u/38831947/SEARCH%20REPORT-Standard%20Form.docx
STEP 5: Organize your search by using a Search Form
https://dl.dropboxusercontent.com/u/38831947/SEARCH%20REPORT-Standard%20Form.docx
http://onlineservices.ipophil.gov.ph/etmfile/
Read also PRIBHDAS J. MIRPURI, vs. COURT OF APPEALS, DIRECTOR OF PATENTS and the BARBIZON CORPORATION, G.R. No. 114508, 19 November 1999 (http://sc.judiciary.gov.ph/jurisprudence/1999/nov99/114508.htm)
Trademarks history lesson from
Justice (soon Chief Justice) Puno.
IF THERE IS OPPOSITION,
APPLICANT AND OPPOSER GO TO
BUREAU OF LEGAL AFFAIRS,
DIRECTOR GENERAL,
HIGHER COURTS
IF DISTINCTIVE, BOT ISSUES
NOTICE OF ALLOWANCE
FOR PUBLICATION
Full transcript