Intellectual Property Law (Intellectual Property Law Compendium by Gepty)

Question 1

What are the two (2) categories of IP?

Answer 1

1) Industrial Property - patents and trademarks

2) Copyright

Question 2

According to Section 4 of RA 8293 (Intellectual Property Code of the Philippines), what are the seven (7) entities or materials that should be granted intellectual property rights?

What is the definition of each entity?

CLIT GPP

Answer 2

1) Copyright and Related Rights
- exists over original and derivative intellectual creations in the literary and artistic domain protected from the moment of their creation.
(Sec. 172, IP Code)

2) Trademarks and Service Marks
- any visible sign capable of distinguishing the goods (trademarks) or services (service mark) of an enterprise and shall include a stamped or marked container of goods.
(Sec. 121.1, IP Code)

3) Geographic Indications
- indications which identify a good as originating in the territory of a Member of the Agreement, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin.
(Article 22, TRIPS Agreement)

4) Industrial Designs
- any composition of lines or colors or any three-dimensional form, whether or not associated with lines or colors, provided that such composition or form gives a special appearance to and can serve as pattern for an industrial product or handicraft. It must be new or original.
(Secs. 112 and 113, IP Code)

5) Patents
- any technical solution of a problem in any field of human activity which is new, involves an inventive step, and is industrially applicable. It may be, or may relate to, a product, or process, or an improvement of any of the foregoing.
(Sec. 21, IP Code)

6) Lay-out Designs (Topographies) of Integrated Circuits (ICs)

IC - means a product, in its final form, or an intermediate form, in which the elements, at least one of which is an active element and some or all of the interconnections are integrally formed in and/or on a piece of material, and which is intended to perform an electronic function.

Lay-out Design (Topography)
- the three-dimensional disposition, however expressed, of the elements, at least one of which is an active element, and of some or all of the interconnections of an integrated circuit, or such a three-dimensional disposition prepared for an integrated circuit intended for manufacture.
(Secs. 112.2 and 112.3, IP Code; as amended by RA 9150)

7) Protection of Undisclosed Information
- protection of information lawfully held from being disclosed to, acquired by, or
used by others without their consent in a manner contrary to
honest commercial practices so long as such information:

(a) is secret in the sense that it is not, as a body or in the precise
configuration and assembly of its components, generally known
among or readily accessible to persons within the circles that
normally deal with the kind of information in question;

(b) has
commercial value because it is secret; and

(c) has been subject
to reasonable steps under the circumstances, by the person
lawfully in control of the information, to keep it secret.
(Article 39, TRIPS Agreement)

Trade Secret
- a plan or process, tool, mechanism or compound known only to its owner and those of his employees to whom it is necessary to confide it. The
definition also extends to:

(a) a secret formula or process
not patented, but known only to certain individuals using it in
compounding some article of trade having a commercial
value; or

(b) any formula, pattern, device, or compilation of information that:
(1) is used in one’s business; and (2) gives the employer an opportunity to obtain an advantage over
competitors who do not possess the information.
(G.R. No. 172835)

Question 3

Guide on the Degree of Distinctiveness

FASDG

1) Fanciful
- e.g. Xerox (copier)

2) Arbitrary
- e.g. Apple (mobile phone)

3) Suggestive
- e.g. Tough (shoes)

4) Descriptive
- e.g. Fragrant (perfume)

5) Generic
- e.g. Pants (pants)

Question 4

Non-Registrable Marks
(Sec. 123, IPC)

1) Immoral, deceptive or scandalous matter

2) Simulation of flag or coat of arms or other insignia of the Philippines

3) Name, portrait, or signature of living individual (except with consent); name, portrait, or signature of deceased President of the Philippines, during the life of his widow (except with consent)

4) Identical with a registered mark, or mark with an earlier filing or priority date.

Question 5

Presumption of the Likelihood of Confusion
-Rule 18, Section 3
-Rule 18, Section 4

Rules of Procedure for Intellectual Property Rights Cases
(A.M. No. 10-3-10-SC, October 18, 2011)

Rule 18. Evidence in Trademark Infringement and Unfair Competition Cases

Section 3. Presumption of Likelihood of Confusion.
- Likelihood of confusion shall be presumed in case an identical sign or mark is used for identical goods or services.

Section 4. Likelihood of Confusion in Other Cases.
- In determining whether
one trademark is confusingly similar to or is a colorable imitation of another, the court must consider the general impression of the ordinary purchaser, buying under the normally prevalent conditions in trade and giving the
attention such purchasers usually give in buying that class of goods.

Visual, aural, connotative comparisons and overall impressions engendered
by the marks in controversy as they are encountered in the realities of the marketplace must be taken into account. Where there are both similarities and differences in the marks, these must be weighed against one another to
see which predominates.

In determining likelihood of confusion between marks used on non-identical goods or services, several factors may be taken into account, such as, but not limited to:

a) the strength of plaintiff’s mark;

b) the degree of similarity between the plaintiff’s and the
defendant’s marks;

c) the proximity of the products or services;

d) the likelihood that the plaintiff will bridge the gap;

e) evidence of actual confusion;

f) the defendant’s good faith in adopting the mark;

g) the quality of defendant’s product or service; and/or

h) the sophistication of the buyers.―

Colorable imitation denotes such a close or ingenious imitation as to be calculated to deceive ordinary persons, or such a resemblance to the
original as to deceive an ordinary purchaser giving such attention as a purchaser usually gives, as to cause him to purchase the one supposing
it to be the other.