2004 Bar Exam reciprocal law, in addition to the rights to which

any owner of an intellectual property right is

INTELLECTUAL CREATION (2004)
otherwise entitled by this Act. (n)" To illustrate:
Dr. ALX is a scientist honored for work related the Philippines may refrain from imposing a
to the human genome project. Among his requirement of local incorporation or
pioneering efforts concern stem cell research establishment of a local domicile for the
for the cure of Alzheimer’s disease. Under protection of industrial property rights of
corporate sponsorship, he helped develop a foreign nationals (citizens of Canada,
microbe that ate and digested oil spills in the Switzerland, U.S.) if the countries of said foreign
sea. Now he leads a college team for cancer nationals refrain from imposing said
research in MSS State. The team has requirement on Filipino citizens.
experimented on a mouse whose body cells
replicate and bear cancerous tumor. Called
―oncomouse, it is a life-form useful for medical ALTERNATIVE ANSWER:
research and it is a novel creation. Its body cells
Reciprocity principle cannot be applied in our
do not naturally occur in nature but are the
jurisdiction because the Philippines is a party to
product of man’s intellect, industry and
the TRIPS agreement and the WTO. The
ingenuity. However, there is a doubt whether
principle involved is the most-favored nation
local property laws and ethics would allow
clause which is the principle of non-
rights of exclusive ownership on any life-form.
discrimination. The protection afforded to
Dr. ALX needs your advice:
intellectual property protection in the
Philippines also applies to other members of
the WTO. Thus, it is not really reciprocity
a. Whether the reciprocity principle in private
principle in private international law that
international law could be applied in our
applies, but the most-favored nation clause
jurisdiction; and
under public international law.

SUGGESTED ANSWER:
b. Whether there are legal and ethical reasons
The reciprocity principle in private international that could frustrate his claim of exclusive
law may be applied in our jurisdiction. Section 3 ownership over the life-form called
of R.A. 8293, the Intellectual Property Code, ―oncomouse‖ in Manila? What will be your
provides for reciprocity, as follows: "Any person advice to him? (5%)
who is a national, or who is domiciled, or has a
real and effective industrial establishment in a
country which is a party to any convention, SUGGESTED ANSWER:
treaty or agreement relating to intellectual
There is no legal reason why "oncomouse"
property rights or the repression of unfair
cannot be protected under the law. Among
competition, to which the Philippines is also a
those excluded from patent protection are
party, or extends reciprocal rights to nationals
"plant varieties or animal breeds, or essentially
of the Philippines by law, shall be entitled to
biological process for the production of plants
benefits to the extent necessary to give effect
and animals" (Section 22.4 Intellectual Property
to any provision of such convention, treaty or
Code, R.A. No. 8293). The "oncomouse" in the
problem is not an essentially biological process
for the production of animals. It is a real
COPYRIGHT; COMMISSIONED ARTIST (2004)
invention because its body cells do not naturally
occur in nature but are the product of man's BR and CT are noted artists whose paintings are
ingenuity, intellect and industry. The breeding highly prized by collectors. Dr. DL commissioned
of oncomouse has novelty, inventive step and them to paint a mural at the main lobby of his
industrial application. These are the three new hospital for children. Both agreed to
requisites of patentability. (Sec. 29, IPC) There collaborate on the project for a total fee of two
are no ethical reasons why Dr. ADX and his million pesos to be equally divided between
college team cannot be given exclusive them. It was also agreed that Dr. DL had to
ownership over their invention. The use of such provide all the materials for the painting and
genetically modified mouse, useful for cancer pay for the wages of technicians and laborers
research, outweighs considerations for animal needed for the work on the project.
rights. There are no legal and ethical reasons
that would frustrate Dr. ALX's claim of exclusive
ownership over "oncomouse". Animals are Assume that the project is completed and both
property capable of being appropriated and BR and CT are fully paid the amount of P2M as
owned'. In fact, one can own pet dogs or cats, artists' fee by DL. Under the law on intellectual
or any other animal. If wild animals are capable property, who will own the mural? Who will
of being owned, with more reason animals own the copyright in the mural? Why? Explain.
technologically enhanced or corrupted by man's (5%)
invention or industry are susceptible to
exclusive ownership by the inventor.
SUGGESTED ANSWER:

ALTERNATIVE ANSWER: Under Section 178.4 of the Intellectual Property

Code, in case of commissioned work, the
The oncomouse is a higher life form which does creator (in the absence of a written stipulation
not fall within the definition of the term to the contrary) owns the copyright, but the
"invention". Neither may it fall within the ambit work itself belongs to the person who
of the term "manufacture" which usually commissioned its creation. Accordingly, the
implies a non-living mechanistic product. The mural belongs to DL. However, BR and CT own
oncomouse is better regarded as a "discovery" the copyright, since there is no stipulation to
which is the common patrimony of man. the contrary.

ALTERNATIVE ANSWER: 2005 Bar Exam

The "oncomouse" is a non-patentable
invention. Hence, cannot be owned exclusively
by its inventor. It is a method for the treatment PATENTS (2005)
of the human or animal body by surgery or Cesar works in a car manufacturing company
therapy and diagnostic methods practiced on owned by Joab. Cesar is quite innovative and
said bodies are not patentable under Sec. 22 of loves to tinker with things. With the materials
the IPC. and parts of the car, he was able to invent a
gas-saving device that will enable cars to saving device. The invention of the gas-saving
consume less gas. Francis, a co-worker saw how device is not part of their regular duties as
Cesar created the device and likewise came up employees (sec 30.2(a) IPC)
with a similar gadget, also using scrap materials
2006 Bar Exam
and spare parts of the company. Thereafter,
Francis an application for registration of his PATENTS (2006)
device with the Bureau of Patents. 18 months
later, Cesar filed his application for the Supposing Albert Einstein were alive today and
registration of the device with the Bureau of he filed with the Intellectual Property Office an
Patents application for patent of his theory of relativity
expressed in the formula E=mc2. The IPO
disapproved Einstein application on the ground
that his theory if relativity is not patentable
a. Is the gas-saving device patentable?

b. Assuming that it is patentable, who is entitled

to the patent? What if any is the remedy of the Is the IPO action correct?
losing party
SUGGESTED ANSWER:
c. Supposing Joab got wind of the inventions of
his employees and also laid a claim to the Yes, the IPO's action is correct that the theory
patents. Asserting that cesar and francis where of relativity is not patentable. Under section
using materials and company time in making 22.1 of the IPC.m " discoveries, scientific
the devices will his claim prevail over those of theories and mathematical methods" are not
his employees? patentable.

COPYRIGHT (2006)

SUGGESTED ANSWERS: In a written legal opinion for a client on the

difference between apprenticeship and
a. It is patentable because it is new. It involves learnership, Liza quoted without permission a
an inventive step and its industry applicable Labor Law expert's comment appearing in his
(Sec 21 IPC) book "Annotations On Labor Code"

Can the Labor Law expert hold Liza liable for

infringement of copyright for quoting a portion
b. Francis is entitled to patent, because he has
of his book without his permission?
earlier filing date (sec 29 IPC). The remedy of
Cesar is to file a petition in court for the
cancellation of the patent of Francis on the
ground that he is the true and actual inventor SUGGESTED ANSWER:
and ask for substitution as patentee (sec 67-68 No, the Labor Law expert cannot hold Liza liable
IPC) for infringement of copyright. Under Sec
184.1(k) of the IPC. "Any use made of a work for
the purpose of any judicial proceedings or for
c. The claim of Joab will not prevail over those the giving of professional advice by a legal
of his employees, even if they used his practitioner" shall not constitute infringement
materials and company time in making the gas- of copyright.
 constitute literary and artistic works under
Section 172 of the Intellectual Property Code.
They are not letter under Section 172(d).
2007 Bar Exam

COPYRIGHT; INFRINGEMENT (2007)

For copyright to subsist in a “message”, it must
Diana and Piolo are famous personalities in qualify as a “work” (Section 172, Intellectual
show business who kept their love affair secret. Property Code). Whether the messages are
They use a special instant messaging service entitled or not to copyright protection would
which allows them to see one another’s typing have to be resolved in the light of the provision
on their own screen as each letter key is of the Intellectual Property Code.
pressed. When Greg, the controller of the
service facility, found out their identities, he
kept a copy of all the messages Diana and Piolo Note: Since the law on this matter is not clear, it
sent each other and published them. Is Greg is suggested that either of the above of the
liable for copyright infringement? Reason above suggested answers should be given full
briefly.(5%) credit.

2008 Bar Exam

SUGGESTED ANSWER:

Yes, Greg is liable for copyright infringement. COPYRIGHT; COMMISSIONED ARTIST (2008)
Letter are among the works which are
In 1999, Mocha warn, an American musician,
protected from the moment of their creation
had a bit rap single called Warm Warm Honey
(Section 172,intellectual Property Code;
which he himself composed and performed.
Columbia Pictures, Inc. v Court of Appeals,
The single was produced by a California record
261SCRA 144 [1996]).
company, Galactic Records. Many notice that
some passages from Warm Warm Honey
sounded eerily similar to parts of Under Hassle,
The publication of the letters without the
a 1978 hit song by the British rock and Majesty.
consent of their writers constitutes
A copyright infringement suit was filed in the
infringement of copyright.
United States against Mocha Warm by Majesty.
It was later settled out of court, with Majesty
receiving attribution as co-author of Warm
ALTERNATIVE ANSWER: Warm Honey as well as a share in the royalties.
No, Greg is not liable for copyright By 2002, Mocha Warm was nearing bankruptcy
infringement. There is no copyright protecting and he sold his economic rights over Warm
electronic documents. What are involved here Warm Honey to Galactic Records for $10,000. In
are text messages, not letter in their ordinary 2008, Planet Films, a Filipino movie producing
sense. Hence, the protection under the company, commissioned DJ Chef Jean, a Filipino
copyright law does not extend to text messages musician, to produce an original re-mix of
(Section172, Intellectual Property Code).The Warm Warm Honey for use in one of its latest
messages that Diana and Piolo exchanged films, Astig!. DJ Chef Jean remixed Warm Warm
through the use of messaging service do not Honey with a salsa beat, and interspersed as
well a recital of poetic stanza by John Blake, The parties who exercise copyright or economic
century Scottish poet. DJ Chef Jean died shortly rights over the remixed Warm Warm Honey
after submitting the remixed Warm Warm would be Galactic Records and Planet Films. In
Honey to Planet Films. Prior to the release of the case of Galactic Records, it bought the
Astig!. Mocha Warm learns of the remixed economic rights of Mocha Warm. In the case of
Warm Warm Honey and demands that he be Planet Films, it commissioned the remixed
publicly identified as the author of the remixed work.
song is all the CD covers and publicity releases
of Planet Films.
COPYRIGHT; COMMISSIONED WORK (2008)
a. Who are the parties or entities entitled to
be credited as author of the remixed Warm Eloise, an accomplished writer, was hired by
Warm Honey? Reason out your answers. (3%) Petong to write a bimonthly newspaper column
for Diario de Manila, a newly-established
SUGGESTED ANSWER:
newspaper of which Petong was the editor-in-
The parties entitled to be credited as authors of chief. Eloise was to be paid P1,000 for each
the remixed Warm Warm Honey are Mocha column that was published. In the course of two
Warm, Majesty, DJ Chef Jean and John Blake, months, Eloise submitted three columns which,
for the segments that was the product of the after some slight editing, were printed in the
irrespective intellectual efforts. n the case of newspaper. However, Diario de Manila proved
Mocha Warm and Majesty, who are the unprofitable and closed only after two months.
attributed co-authors, and in spite of the sale of Due to the minimal amounts involved, Eloise
the economic right to Galactic Records, they chose not to pursue any claim for payment from
retain their moral rights to the copyrighted rap, the newspaper, which was owned by New
which include the right to demand attribution Media Enterprises. Three years later, Eloise was
to them of the authorship (Sec. 193,IPC).Which planning to publish an anthology of her works,
respect to DJ Chef Jean, in spite of his death, and wanted to include the three columns that
and although he was commissioned by Planet appeared in the Diario de Manila in her
Films for the remix, the rule is that the person anthology. She asks for you legal advice:
who so commissioned work shall have
ownership of the work, but copyright thereto
shall remain with creator, unless there is a a. Does Eloise have to secure authorization
written stipulation to the contrary. Even if no from New Media Enterprises to be able to
copyright exist in favor ofpoet John Blake, publish her Diario de Manila columns in her
intellectual integrity requires that the authors own anthology? Explain fully. (4%)
of creative work should properly be credited.
SUGGESTED ANSWER:

Eloise may publish the columns without

b. Who are the particular parties or entities securing authorization from New Media
who exercise copyright over there mixed Warm Enterprises. Under Sec. 172 of the Intellectual
Warm Honey? Explain. (3%) Property Code, original intellectual creations in
the literary and artistic domain are protected
SUGGESTED ANSWER:
from the moment of their creation and shall
include those in periodicals and newspapers.
Under Sec. 178, copyright ownership shall True. Applying the Denicola Test in Brandir
belong to the author. In case of commissioned International, Inc. v. Cascade Pacific Lumber Co.
work, the person who so commissioned work (834 F. 2d 1142,1988 Copr.L.Dec. P26), the
shall have ownership of work, but copyright United States Court of Appeals for the Second
shall remain with creator, unless there is a Circuit held that if there is any aesthetic
written stipulation to the contrary. element which can be separated from the
utilitarian elements, then the aesthetic element
may be copyrighted.(Note: It is suggested that
b. Assume that New Media Enterprises plans the candidate be given full credit for whatever
to publish Eloise’s columns in its own anthology answer or lack of it. Further, it is suggested that
entitled, ―The Best of Diario de Manila‖ Eloise terms or any matter originating from foreign
wants to prevent the publication of her columns laws or jurisprudence should not be asked.)
in that anthology since she was never paid by
INFRINGEMENT; TRADEMARK, COPYRIGHT
the newspaper. Name one irrefutable legal
(2009)
argument Eloise could cite to enjoin New Media
Enterprises from including her columns in its After disposing of his last opponent in only two
anthology. (2%) rounds in Las Vegas, the renowned Filipino
boxer Sonny Bachao arrived at the Ninoy
Aquino International Airport met by thousands
SUGGESTED ANSWER: of hero-worshipping fans and hundreds of
media photographers. The following day, a
Under the IPC, the copyright or economic rights colored photograph of Sonny wearing a black
to the columns she authored pertains only to polo shirt embroidered with the 2-inch Lacoste
Eloise. She can invoke the right to either Crocodile logo appeared on the front page of
“authorize or prevent” reproduction of the every Philippine newspaper. Lacoste
work, including the public distribution of the International, the French firm that
original and each copy of the work “by sale or manufactures lacoste apparel and owns the
other forms of transfer of ownership,” Since Lacoste trademark, decided to cash in on the
this would be the effect of including her column universal popularity of the boxing icon. It
in the anthology. reprinted the photographs, with thepermission
2009 Bar Exam of the newspaper publishers, and went on a
world-wide blitz of print commercials in which
DENICOLA TEST (2009) Sonny is shown wearing a Lacoste shirt
True or False: The Denicola Test in Intellectual alongside the phrase ―Sonny Bachao just loves
Property :aw states that if design elements of Lacoste. When Sonny sees the Lacoste
an article reflect a merger of aesthetic and advertisements, he hires you as lawyer and asks
functional considerations, the artistic aspects of you to sue Lacoste International before a
the work cannot be conceptually separable Philippine court:
from the utilitarian aspects; thus ,the article b. For trademark Infringement in the
cannot be copyrighted. Philippines because Lacoste International used
his image without his permission:(2%)

SUGGESTED ANSWER: SUGGESTED ANSWER:

Sonny Bachao cannot sue for infringement of SUGGESTED ANSWER:
trademark. The photographs showing him
No. Philippine courts have jurisdiction over it, if
wearing a Lacoste shirt were not registered as a
it is doing business in the Philippines. Moreover,
trademark (Pearl & Dean (Phil.), Inc.
under Section133 of the Corporation Code,
v.Shoemart, Inc., 409 SCRA 231 (2003)).
while a foreign corporation doing business in
the Philippines without license to do business,
cannot sue or intervene in any action, it may be
c. For copyright infringement because of the
sued or proceeded against before our courts or
unauthorized use of the published photographs;
administrative tribunal (De Joya v.Marquez, 481
(2%)
SCRA 376 (2006)).
SUGGESTED ANSWER:
2010 Bar Exam
Sonny Bachao cannot sue for infringement of
AGREEMENTS: TECHNOLOGY TRANSFER
copyright for the unauthorized use of the
AGREEMENTS; REQUISITES & PROHIBITIONS
photographs showing him wearing a Lacoste
(2010)
shirt. The copyright to the photographs belong
to the newspapers which published them a. What contractual stipulations are required in
inasmuch as the photographs were the result of all technology transfer agreements? (2%)
the performance of the regular duties of the
SUGGESTED ANSWER:
photographers (Subsection173.3 (b),
Intellectual Property Code(IPC)).Moreover, the The following stipulations are required in all
newspaper publishers authorized the technology transfer agreements:
reproduction of the photographs (Section
177,Intellectual Property Code). 1. The laws of the Philippines shall govern its
interpretation and in the event of litigation, the
venue shall be the proper court in the place
where the licensee has its principal office;
d. For injunction in order to stop Lacoste
International from featuring him in their 2. Continued access to improvements in
commssercials. (2%) Will these actions prosper? techniques and processes related to the
Explain. technology shall be made available during the
period of the technology transfer arrangement;
SUGGESTED ANSWER:
3. In case it shall provide for arbitration, the
The complaint for injunction to stop Lacoste
Procedure of Arbitration of the Arbitration Law
International from featuring him in its
of the Philippines or the Arbitration Rules of the
advertisements will prosper. This is a violation
United Nations Commission on International
of subsection 123, 4(c) ofthe IPC and Art.169 in
Trade Law or the Rules of Arbitration of the
relation to Art.170 of the IPC.
International Chamber of Commerce(ICC) shall
apply and the venue of arbitration shall be the
Philippines or any neutral country;
e. Can Lacoste International validly invoke the
defense that it is not a Philippine company and, 4. The Philippine taxes on all payments
therefore, Philippine courts have no relating to the technology transfer agreement
jurisdiction? Explain. (2%) shall be borne by the licensor(Sec. 88,
Intellectual Property Code).
 can be registered as trademark, can be
copyrighted, and can be registered as an
b. Enumerate three stipulations that are
industrial design.
prohibited in technology transfer agreements.
(3%)

ALTERNATIVE ANSWER:

SUGGESTED ANSWER: It is entirely possible for an article of commerce

to bear a registered trademark, be protected by
The following stipulations are prohibited in
a patent and have most, or some part of it
technology transfer agreements:
copyrighted. A book is a good example. The
1. Those that contain restrictions regarding name of the publisher or the colophon used in
the volume and structure of production; the book may be registered trademarks, the ink
used in producing the book may be covered by
2. Those that prohibit the use of competitive a patent, and the text and design of the book
technologies in a non-exclusive agreement; and may be covered by copyrighted.
3. Those that establish a full or partial
purchase option in favor of the licensor
INFRINGEMENT; CLAIMS (2010)

While vacationing in Boracay, Valentino

ARTICLE OF COMMERCE; AS TRADEMARK, surreptitiously took photographs of his
PATENT & COPYRIGHT (2010) girlfriend Monaliza in her skimpy bikini. Two
Can an article of commerce serve as a weeks later, her photographs appeared in the
trademark and at the same time enjoy patent Internet and in a national celebrity magazine.
and copyright protection? Explain and give an Monaliza found out that Valentino had sold the
example. (2%) photographs to the magazine, adding insult to
injury, uploaded them to his personal blog on
the Internet.

SUGGESTED ANSWER: a. Monaliza filed a complaint against

A stamped or marked container of goods can be Valentino damages based on, among other
registered as trademark(subsections 113.1 of grounds, violation of her intellectual property
the Intellectual Property Code). An original rights. Does she have any cause of action?
ornamental design or model for articles of Explain. (2%)
manufacturer can be copyrighted (Subsection
172.1 of the Intellectual Property Code). An
ornamental design cannot be patented,
because aesthetic creations cannot be patented
(Section 22of the Intellectual Property
Code).However, it can be registered as an SUGGESTED ANSWER:
industrial design (Subsections 113.1 and172.1
Monaliza cannot sue Valentino for violation of
of the Intellectual Code). Thus, a container of
her intellectual property rights, because she
goods which has an original ornamental design
was not the one who took the pictures Monaliza can also sue Francesco for violation of
(Subsection 178.1 of the Intellectual Property her right to privacy.
Code). She may sue Valentino instead for
violation of her right to privacy. He
surreptitiously took photographs of her and ---
then sold the photographs to a magazine and
uploaded them to his personal blog in the
Internet (Tolentino, Commentaries and PATENT: NON-PATENTABLE; METHOD OF
Jurisprudence on the Civil Code of the DIAGNOSIS & TREATMENT (2010)
Philippines, Vol. I, 1987 ed., p. 169).
Dr. Nobel discovered a new method of treating
Alzheimer’s involving a special method of
b. Valentino’s friend Francesco stole the diagnosing the disease, treating it with a new
photographs and duplicated them and sold medicine that has been discovered after long
them to a magazine publication. Valentino sued experimentation and field testing, and novel
Francisco for infringement and damages. Does mental isometric exercises. He comes to you for
Valentino have any cause of action? Explain. advice on how he can have his discoveries
(2%) protected. Can he legally protect his new
method of diagnosis, the new medicine, and the
new method of treatment? If no, why? If yes,
how? (4%)
SUGGESTED ANSWER:
SUGGESTED ANSWER:
Valentino cannot sue Francesco for
infringement, because he has already sold the Dr. Nobel can be protected by a patent for the
photographs to a magazine(Angeles vs. Premier new medicine as it falls within the scope of Sec.
Productions, Inc., 6CAR (2s) 159). 21 of the Intellectual Property Code (Rep. Act
No. 8293, as amended). But no protection can
be legally extended to him for the method of
ALTERNATIVE ANSWER: diagnosis and method of treatment which are
expressly non-patentable (Sec.22, Intellectual
Yes, as the author of the photographs,
Property Code).
Valentino has exclusive economic rights
thereto, which include the rights to reproduce,
to distribute, to perform, to display, and to
---
prepare derivative works based upon the
copyrighted work. He sold only the photographs
to the magazine; however, he still retained
some economic rights thereto. Thus, he has a TRADEMARK; UNFAIR COMPETITION (2010)
cause of action against infringement against For years, Y has been engaged in the parallel
Francesco. importation of famous brands, including shoes
c. Does Monaliza have any cause of action carrying the foreign brand MAGIC. Exclusive
against Francesco? Explain. (2%) distributor X demands that Y cease importation
because of his appointment as exclusive
SUGGESTED ANSWER: distributor of MAGIC shoes in the Philippines. Y
counters that the trademark MAGIC is not
registered with the Intellectual Property Office
as a trademark and therefore no one has the
COPYRIGHT (2013)
right to prevent its parallel importation.
Ruby is a fine arts student in a university. He
stays in a boarding house with Bernie as his
a. Who is correct? Why? (2%) roommate. During his free time, Rudy would
paint and leave his finished works lying around
the boarding house. One day, Rudy saw one of
SUGGESTED ANSWER: his works – an abstract painting entitled Manila
Traffic Jam –on display at the university
X is correct. His rights under his exclusive cafeteria. The cafeteria operator said he
distributorship agreement are property rights purchased the painting from Bernie who
entitled to protection. The importation and sale represented himself as its painter and owner
by Y of MAGIC shoes constitute unfair Rudy and the cafeteria operator immediately
competition (Yuv. Court of Appeals, 217 SCRA confronted Bernie. While admitting that he did
328(1993)). Registration of the trademark is not not do the painting,. Bernie claimed ownership
necessary in case of an action for unfair of its copyright since he had already registered
competition (Del Monte Corporation v. Court of it in his name with the National Library as
Appeals, 181SCRA 410 (1990)). provided in the Intellectual Property Code. Who
owns the copyright to the painting? Explain
(8%).
ALTERNATIVE ANSWER:

Y is correct. The rights in a trademark are

acquired through registration made validly in SUGGESTED ANSWER:
accordance with the Intellectual Property Code Rudy owns the copyright to the painting
(Section 122of the Intellectual Property Code). because he was the one who actually created it.
(Section 178.1 of then Intellectual Property
Code) His rights existed from the moment of its
b. Suppose the shoes are covered by a creation(Section 172 of the Intellectual Property
Philippine patent issued to the owner, what Code; Unilever Philippines (PRC) v. Court of
would your answer be? Explain. (2%) Appeals, 498 SCRA 334, 2006). The registration
of the painting by Bernie with the National
Library did not confer copyright upon him. The
SUGGESTED ANSWER: registration is merely for the purpose of
completing the records of the National Library.
A patent for a product confers upon its owner
(Section191 of the Intellectual Property Code).
the exclusive right of importing the product
(Subsection 71.1 of the Intellectual Property
Code). The importation of a patented product
without the authorization of the owner of the TRADEMARKS (2014)
patent constitutes infringement of the patent Jinggy went to Kluwer University (KU) in
(Subsection 76.1 of the Intellectual Property Germany for his doctorate degree (Ph.D.). He
Code). X can prevent the parallel importation of completed his degree with the highest honors
such shoes by Y without its authorization. in the shortest time. When he came back, he
decided to set-up his own graduate school in his The petition could also be based on the fact, if it
hometown in Zamboanga. After seeking free were proven by KU, that “Kluwer: is a well-
legal advice from his high-flying lawyer-friends, known mark and entitled to protection as KU
he learned that the Philippines follows the and KGSBM belong to the same class of services
territoriality principle in trademark law, i.e., i.e. Class 41 (education and entertainment). KU
trademark rights are acquired through valid must also prove that a competent authority of
registration in accordance with the law. Forth the Philippines has designated “Kluwer” to be
with, Jinggy named his school the Kluwer well-known internationally and in the
Graduate School of Business of Mindanao and Philippines.
immediately secured registration with the
Finally, the petition could also be based on the
Bureau of Trademarks. KU did not like the
fact, if it were proven by KU, that “Kluwer” is a
unauthorized use of its name by its top alumnus
trade name that KU has adopted and used
no less. KU sought your help. What advice can
before its use and registration by Jinggy (Ecole
you give KU? (4%)
de Cuisine Manille [Cordon Bleu of the
Philippines], Inc. v. Renaud Cointreau & Cie and
Le Cordon Bleu Int’l., B.V., G.R. No. 185830,
SUGGESTED ANSWER:
June 5, 2013).
I can advise KU to file a petition to cancel the
registration of the name “Kluwer” Graduate
School of Business of Mindanao “KGSBM” with FRAUDULENT INTENT (2014)
the Bureau of Trademarks.
In intellectual property cases, fraudulent intent
is not an element of the cause of action except
in cases involving:
The petition could be anchored on the following
facts: Kluwer University is the owner of the A. Trademark infringement
name “Kluwer.” Jinggy registered the trademark
B. Copyright infringement
in bad faith. He came to know of the trademark
because he went to Kluwer University in C. Patent infringement
Germany for his doctorate degree. KU is the
owner of the name “Kluwer” and has the sole D. Unfair competition
right to register the same. Foreign marks that
are not registered are still accorded protection
against infringement and/or unfair competition SUGGESTED ANSWER:
under the Paris Convention for the Protection D. Unfair competition
of Industrial Property. Both the Philippines and
Germany are signatories to the Paris
Convention. Under the said Convention, the
TRADEMARKS; HOLISTIC OR DOMINANCY TEST
trademark of a national or signatory to the Paris
(2014)
Convention is entitled to its protection in other
countries that are also signatories to the Skechers Corporation sued Inter-Oacific for
Convention without need of registering the trademark infringement, claiming that Inter-
trademark. Pacific used Skechers’ registered “S” logo mark
on Inter-Pacific’s shoe products without its
consent. Skechers has registered the trademark
“SKECHERS” and the trademark “S” (with an developed tests- the Dominancy and the
oval design) with the IPO. Holistic Tests. The Dominancy Test focuses on
the similarity of the competing trademakrs that
might cause confusion, mistake, and deception
In its complaint, Skechers points out the in the mind of the purchasing public.
following similarities: the color scheme of the Duplication or imitation is not necessary;
blue, white, and gray utilized by Skechers. Even neither is it required that the mark sought to be
the design and “wave-like” pattern of the mid- registered suggest an effort to imitate. Given
sole and outer sole of Inter Pacific’s shoes are more consideration are the aural and visual
very similar to Skechers’ shoes, if not exact impressions created by the marks on the buyers
patterns thereof. On the side of Inter-Pacific’s of goods, giving little weight to factors like
shoes, near the upper part, appears the stylized prices, quality, sales outlets, and market
“S” placed in the exact location as that of the segments.
stylized “S” the Skechers shoes. On top of the
“tongue” of both shoes, appears the stylized “S”
in practically the same location and size. In contrast, the Holistic or Totality Test
necessitates a consideration of the entirety of
In its defense, Inter-Pacific claims that under
the marks as applied to the products, including
the Holistic Test, the following dissimilarities
the labels and packaging, in determining
are present: the mark “S” found in Strong shoes
confusing similarity. The discerning eye of the
is not enclosed in an “oval design;” the word
observer must focus not only on the
“Strong” for Inter-Pacific and “Skechers USA”
predominant words, but also on the other
for Skechers; and, Strong shoes are modestly
features appearing on both labels so that the
priced compared to the costs of Skechers shoes.
observer may draw conclusion on whether one
is confusingly similar to the other.

Under the foregoing circumstances, which is the Applying the Dominancy Test to the problem,
proper test to be applied- Holistic or Dominancy we find that the use of the stylized “S” by Inter-
Test? Decide. Pacific in its Strong rubber shoes infringes on
the mark already registered by Skechers with
the IPO. While it is undisputed that stylized “S”
SUGGESTED ANSWER: of Skechers is within an oval design, the
dominant feature of the trademark is the
Considering the facts given and the arguments stylized “S”, as it is precisely the stylized “S”
of the parties, the dominancy test is the proper which catches the eye of the purchaser. Thus,
test to apply. Thus, the appropriation and use of even if Inter-Pacific did not use the oval-design,
the letter “S” by Inter Pacific on its rubber shoes the mere fact that it used the same stylized “S”,
constituted an infringement of the trademark of the same being the dominant feature of the
Skechers. trademark of Skechers, already constitutes
infringement under the Dominancy Test
(Skechers USA Inc v. Inter Pacific Industrial
The essential element of infringement under Trading Corp., et al., G.R. No. 164321, Nov. 30,
the IPC is that the infringing mark is likely to 2006).
cause confusion. In determining similarity and
likelihood of confusion, jurisprudence has
COPYRIGHT INFRINGEMENT (2014) Applying the above-listed factors to the
problem, KK’s importation of the books and
KK is from Bangkok, Thailand. She studies
their sale local clearly show the unfairness of
medicine in the Pontifical University of Santo
her use of the books, particularly the adverse
Tomas (UST). She learned that the same foreign
effect of her price discounting on the business
books prescribed in UST are 40-50% cheaper in
of XX.
Bangkok. So she ordered 50 copies of each book
for herself and her classmates and sold the
books at 20% less than the price in the
Philippines. XX, the exclusive licensed publisher
of the books in the Philippines, sued KK for
copyright infringement. Decide. (4%)

SUGGESTED ANSWER:

KK is liable for infringement of copyright. XX, as

exclusive licensed publisher, is entitled, within
the scope of the license, to all the rights and
remedies that the licensor has with respect to
the copyright (Sec. 180, IPC).

The importation by KK of 50 copies of each

foreign book prescribed in UST and selling them
locally at 20 less than their respective prices in
the Philippines is subject to the doctrine of fair
use set out in Sec. 185.1 of the IPC. The factors
to be considered in determining whether the
use made of a work is fair use shall include:

a. The purpose and character of the use,

including whether such use is of a commercial
nature or is for non-profit educational
purposes;

b. The nature of the copyrighted work;

c. The amount and substantiality of the

portion used in relation to the copyrighted work
as a whole;

d. The effect of the use upon the potential

market for or value of the copyrighted work.