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2004 Bar Exam requirement of local incorporation or establishment of a local domicile for

the protection of industrial property rights of foreign nationals (citizens of


Canada, Switzerland, U.S.) if the countries of said foreign nationals refrain
INTELLECTUAL CREATION (2004) from imposing said requirement on Filipino citizens.
Dr. ALX is a scientist honored for work related to the human genome project.
Among his pioneering efforts concern stem cell research for the cure of ALTERNATIVE ANSWER:
Alzheimer’s disease. Under corporate sponsorship, he helped develop a Reciprocity principle cannot be applied in our jurisdiction because the
microbe that ate and digested oil spills in the sea. Now he leads a college Philippines is a party to the TRIPS agreement and the WTO. The principle
team for cancer research in MSS State. The team has experimented on a involved is the most-favored nation clause which is the principle of non-
mouse whose body cells replicate and bear cancerous tumor. Called discrimination. The protection afforded to intellectual property protection in
―oncomouse, it is a life-form useful for medical research and it is a novel the Philippines also applies to other members of the WTO. Thus, it is not
creation. Its body cells do not naturally occur in nature but are the product of really reciprocity principle in private international law that applies, but the
man’s intellect, industry and ingenuity. However, there is a doubt whether most-favored nation clause under public international law.
local property laws and ethics would allow rights of exclusive ownership on
any life-form. Dr. ALX needs your advice: b. Whether there are legal and ethical reasons that could frustrate his claim of
exclusive ownership over the life-form called ―oncomouse‖ in Manila? What
a. Whether the reciprocity principle in private international law could be will be your advice to him? (5%)
applied in our jurisdiction; and
SUGGESTED ANSWER:
SUGGESTED ANSWER: There is no legal reason why "oncomouse" cannot be protected under the
The reciprocity principle in private international law may be applied in our law. Among those excluded from patent protection are "plant varieties or
jurisdiction. Section 3 of R.A. 8293, the Intellectual Property Code, provides animal breeds, or essentially biological process for the production of plants
for reciprocity, as follows: "Any person who is a national, or who is domiciled, and animals" (Section 22.4 Intellectual Property Code, R.A. No. 8293). The
or has a real and effective industrial establishment in a country which is a "oncomouse" in the problem is not an essentially biological process for the
party to any convention, treaty or agreement relating to intellectual property production of animals. It is a real invention because its body cells do not
rights or the repression of unfair competition, to which the Philippines is also naturally occur in nature but are the product of man's ingenuity, intellect and
a party, or extends reciprocal rights to nationals of the Philippines by law, industry. The breeding of oncomouse has novelty, inventive step and
shall be entitled to benefits to the extent necessary to give effect to any industrial application. These are the three requisites of patentability. (Sec. 29,
provision of such convention, treaty or reciprocal law, in addition to the rights IPC) There are no ethical reasons why Dr. ADX and his college team cannot be
to which any owner of an intellectual property right is otherwise entitled by given exclusive ownership over their invention. The use of such genetically
this Act. (n)" To illustrate: the Philippines may refrain from imposing a modified mouse, useful for cancer research, outweighs considerations for
animal rights. There are no legal and ethical reasons that would frustrate Dr. Assume that the project is completed and both BR and CT are fully paid the
ALX's claim of exclusive ownership over "oncomouse". Animals are property amount of P2M as artists' fee by DL. Under the law on intellectual property,
capable of being appropriated and owned'. In fact, one can own pet dogs or who will own the mural? Who will own the copyright in the mural? Why?
cats, or any other animal. If wild animals are capable of being owned, with Explain. (5%)
more reason animals technologically enhanced or corrupted by man's
invention or industry are susceptible to exclusive ownership by the inventor. SUGGESTED ANSWER:
Under Section 178.4 of the Intellectual Property Code, in case of
ALTERNATIVE ANSWER: commissioned work, the creator (in the absence of a written stipulation to
The oncomouse is a higher life form which does not fall within the definition the contrary) owns the copyright, but the work itself belongs to the person
of the term "invention". Neither may it fall within the ambit of the term who commissioned its creation. Accordingly, the mural belongs to DL.
"manufacture" which usually implies a non-living mechanistic product. The However, BR and CT own the copyright, since there is no stipulation to the
oncomouse is better regarded as a "discovery" which is the common contrary.
patrimony of man.
2005 Bar Exam
ALTERNATIVE ANSWER:
The "oncomouse" is a non-patentable invention. Hence, cannot be owned PATENTS (2005)
exclusively by its inventor. It is a method for the treatment of the human or Cesar works in a car manufacturing company owned by Joab. Cesar is quite
animal body by surgery or therapy and diagnostic methods practiced on said innovative and loves to tinker with things. With the materials and parts of the
bodies are not patentable under Sec. 22 of the IPC. car, he was able to invent a gas-saving device that will enable cars to
consume less gas. Francis, a co-worker saw how Cesar created the device and
---- likewise came up with a similar gadget, also using scrap materials and spare
parts of the company. Thereafter, Francis an application for registration of his
COPYRIGHT; COMMISSIONED ARTIST (2004) device with the Bureau of Patents. 18 months later, Cesar filed his application
BR and CT are noted artists whose paintings are highly prized by collectors. for the registration of the device with the Bureau of Patents
Dr. DL commissioned them to paint a mural at the main lobby of his new
hospital for children. Both agreed to collaborate on the project for a total fee a. Is the gas-saving device patentable?
of two million pesos to be equally divided between them. It was also agreed b. Assuming that it is patentable, who is entitled to the patent? What if any is
that Dr. DL had to provide all the materials for the painting and pay for the the remedy of the losing party
wages of technicians and laborers needed for the work on the project. c. Supposing Joab got wind of the inventions of his employees and also laid a
claim to the patents. Asserting that cesar and francis where using materials
and company time in making the devices will his claim prevail over those of Yes, the IPO's action is correct that the theory of relativity is not patentable.
his employees? Under section 22.1 of the IPC.m " discoveries, scientific theories and
mathematical methods" are not patentable.
SUGGESTED ANSWERS:
a. It is patentable because it is new. It involves an inventive step and its ---
industry applicable (Sec 21 IPC)
COPYRIGHT (2006)
b. Francis is entitled to patent, because he has earlier filing date (sec 29 IPC). In a written legal opinion for a client on the difference between
The remedy of Cesar is to file a petition in court for the cancellation of the apprenticeship and learnership, Liza quoted without permission a Labor Law
patent of Francis on the ground that he is the true and actual inventor and expert's comment appearing in his book "Annotations On Labor Code"
ask for substitution as patentee (sec 67-68 IPC) Can the Labor Law expert hold Liza liable for infringement of copyright for
quoting a portion of his book without his permission?
c. The claim of Joab will not prevail over those of his employees, even if they
used his materials and company time in making the gas-saving device. The SUGGESTED ANSWER:
invention of the gas-saving device is not part of their regular duties as No, the Labor Law expert cannot hold Liza liable for infringement of
employees (sec 30.2(a) IPC) copyright. Under Sec 184.1(k) of the IPC. "Any use made of a work for the
purpose of any judicial proceedings or for the giving of professional advice by
a legal practitioner" shall not constitute infringement of copyright.
2006 Bar Exam

PATENTS (2006) 2007 Bar Exam


Supposing Albert Einstein were alive today and he filed with the Intellectual
Property Office an application for patent of his theory of relativity expressed
in the formula E=mc2. The IPO disapproved Einstein application on the ground COPYRIGHT; INFRINGEMENT (2007)
that his theory if relativity is not patentable Diana and Piolo are famous personalities in show business who kept their
love affair secret. They use a special instant messaging service which allows
Is the IPO action correct? them to see one another’s typing on their own screen as each letter key is
pressed. When Greg, the controller of the service facility, found out their
SUGGESTED ANSWER: identities, he kept a copy of all the messages Diana and Piolo sent each other
and published them. Is Greg liable for copyright infringement? Reason briefly.
(5%)
2008 Bar Exam
SUGGESTED ANSWER:
Yes, Greg is liable for copyright infringement. Letter are among the works COPYRIGHT; COMMISSIONED ARTIST (2008)
which are protected from the moment of their creation (Section In 1999, Mocha warn, an American musician, had a bit rap single called Warm
172,intellectual Property Code; Columbia Pictures, Inc. v Court of Appeals, Warm Honey which he himself composed and performed. The single was
261SCRA 144 [1996]). produced by a California record company, Galactic Records. Many notice that
some passages from Warm Warm Honey sounded eerily similar to parts of
The publication of the letters without the consent of their writers constitutes Under Hassle, a 1978 hit song by the British rock and Majesty. A copyright
infringement of copyright. infringement suit was filed in the United States against Mocha Warm by
Majesty. It was later settled out of court, with Majesty receiving attribution as
co-author of Warm Warm Honey as well as a share in the royalties. By 2002,
Mocha Warm was nearing bankruptcy and he sold his economic rights over
ALTERNATIVE ANSWER: Warm Warm Honey to Galactic Records for $10,000. In 2008, Planet Films, a
No, Greg is not liable for copyright infringement. There is no copyright Filipino movie producing company, commissioned DJ Chef Jean, a Filipino
protecting electronic documents. What are involved here are text messages, musician, to produce an original re-mix of Warm Warm Honey for use in one
not letter in their ordinary sense. Hence, the protection under the copyright of its latest films, Astig!. DJ Chef Jean remixed Warm Warm Honey with a
law does not extend to text messages (Section172, Intellectual Property salsa beat, and interspersed as well a recital of poetic stanza by John Blake,
Code).The messages that Diana and Piolo exchanged through the use of century Scottish poet. DJ Chef Jean died shortly after submitting the remixed
messaging service do not constitute literary and artistic works under Section Warm Warm Honey to Planet Films. Prior to the release of Astig!. Mocha
172 of the Intellectual Property Code. They are not letter under Section Warm learns of the remixed Warm Warm Honey and demands that he be
172(d). publicly identified as the author of the remixed song is all the CD covers and
publicity releases of Planet Films.
For copyright to subsist in a “message”, it must qualify as a “work” (Section
172, Intellectual Property Code). Whether the messages are entitled or not to a. Who are the parties or entities entitled to be credited as author of the
copyright protection would have to be resolved in the light of the provision of remixed Warm Warm Honey? Reason out your answers. (3%)
the Intellectual Property Code.
SUGGESTED ANSWER:
Note: Since the law on this matter is not clear, it is suggested that either of The parties entitled to be credited as authors of the remixed Warm Warm
the above of the above suggested answers should be given full credit. Honey are Mocha Warm, Majesty, DJ Chef Jean and John Blake, for the
segments that was the product of the irrespective intellectual efforts. n the
case of Mocha Warm and Majesty, who are the attributed co-authors, and in
spite of the sale of the economic right to Galactic Records, they retain their appeared in the Diario de Manila in her anthology. She asks for you legal
moral rights to the copyrighted rap, which include the right to demand advice:
attribution to them of the authorship (Sec. 193,IPC).Which respect to DJ Chef
Jean, in spite of his death, and although he was commissioned by Planet a. Does Eloise have to secure authorization from New Media Enterprises to be
Films for the remix, the rule is that the person who so commissioned work able to publish her Diario de Manila columns in her own anthology? Explain
shall have ownership of the work, but copyright thereto shall remain with fully. (4%)
creator, unless there is a written stipulation to the contrary. Even if no
copyright exist in favor ofpoet John Blake, intellectual integrity requires that SUGGESTED ANSWER:
the authors of creative work should properly be credited. Eloise may publish the columns without securing authorization from New
Media Enterprises. Under Sec. 172 of the Intellectual Property Code, original
b. Who are the particular parties or entities who exercise copyright over there intellectual creations in the literary and artistic domain are protected from
mixed Warm Warm Honey? Explain. (3%) the moment of their creation and shall include those in periodicals and
SUGGESTED ANSWER: newspapers. Under Sec. 178, copyright ownership shall belong to the author.
The parties who exercise copyright or economic rights over the remixed In case of commissioned work, the person who so commissioned work shall
Warm Warm Honey would be Galactic Records and Planet Films. In the case have ownership of work, but copyright shall remain with creator, unless there
of Galactic Records, it bought the economic rights of Mocha Warm. In the is a written stipulation to the contrary.
case of Planet Films, it commissioned the remixed work.
b. Assume that New Media Enterprises plans to publish Eloise’s columns in its
--- own anthology entitled, ―The Best of Diario de Manila‖ Eloise wants to
prevent the publication of her columns in that anthology since she was never
COPYRIGHT; COMMISSIONED WORK (2008) paid by the newspaper. Name one irrefutable legal argument Eloise could cite
Eloise, an accomplished writer, was hired by Petong to write a bimonthly to enjoin New Media Enterprises from including her columns in its anthology.
newspaper column for Diario de Manila, a newly-established newspaper of (2%)
which Petong was the editor-in-chief. Eloise was to be paid P1,000 for each
column that was published. In the course of two months, Eloise submitted SUGGESTED ANSWER:
three columns which, after some slight editing, were printed in the Under the IPC, the copyright or economic rights to the columns she authored
newspaper. However, Diario de Manila proved unprofitable and closed only pertains only to Eloise. She can invoke the right to either “authorize or
after two months. Due to the minimal amounts involved, Eloise chose not to prevent” reproduction of the work, including the public distribution of the
pursue any claim for payment from the newspaper, which was owned by New original and each copy of the work “by sale or other forms of transfer of
Media Enterprises. Three years later, Eloise was planning to publish an ownership,” Since this would be the effect of including her column in the
anthology of her works, and wanted to include the three columns that anthology.
newspaper publishers, and went on a world-wide blitz of print commercials
in which Sonny is shown wearing a Lacoste shirt alongside the phrase
2009 Bar Exam ―Sonny Bachao just loves Lacoste. When Sonny sees the Lacoste
advertisements, he hires you as lawyer and asks you to sue Lacoste
DENICOLA TEST (2009) International before a Philippine court:
True or False: The Denicola Test in Intellectual Property :aw states that if
design elements of an article reflect a merger of aesthetic and functional b. For trademark Infringement in the Philippines because Lacoste International
considerations, the artistic aspects of the work cannot be conceptually used his image without his permission:(2%)
separable from the utilitarian aspects; thus ,the article cannot be
copyrighted. SUGGESTED ANSWER:
Sonny Bachao cannot sue for infringement of trademark. The photographs
SUGGESTED ANSWER: showing him wearing a Lacoste shirt were not registered as a trademark
True. Applying the Denicola Test in Brandir International, Inc. v. Cascade (Pearl & Dean (Phil.), Inc. v.Shoemart, Inc., 409 SCRA 231 (2003)).
Pacific Lumber Co. (834 F. 2d 1142,1988 Copr.L.Dec. P26), the United States
Court of Appeals for the Second Circuit held that if there is any aesthetic c. For copyright infringement because of the unauthorized use of the published
element which can be separated from the utilitarian elements, then the photographs; (2%)
aesthetic element may be copyrighted.(Note: It is suggested that the SUGGESTED ANSWER:
candidate be given full credit for whatever answer or lack of it. Further, it is Sonny Bachao cannot sue for infringement of copyright for the unauthorized
suggested that terms or any matter originating from foreign laws or use of the photographs showing him wearing a Lacoste shirt. The copyright to
jurisprudence should not be asked.) the photographs belong to the newspapers which published them inasmuch
as the photographs were the result of the performance of the regular duties
INFRINGEMENT; TRADEMARK, COPYRIGHT (2009) of the photographers (Subsection173.3 (b), Intellectual Property
After disposing of his last opponent in only two rounds in Las Vegas, the Code(IPC)).Moreover, the newspaper publishers authorized the reproduction
renowned Filipino boxer Sonny Bachao arrived at the Ninoy Aquino of the photographs (Section 177,Intellectual Property Code).
International Airport met by thousands of hero-worshipping fans and
hundreds of media photographers. The following day, a colored photograph d. For injunction in order to stop Lacoste International from featuring him in
of Sonny wearing a black polo shirt embroidered with the 2-inch Lacoste their commssercials. (2%) Will these actions prosper? Explain.
Crocodile logo appeared on the front page of every Philippine newspaper.
Lacoste International, the French firm that manufactures lacoste apparel and SUGGESTED ANSWER:
owns the Lacoste trademark, decided to cash in on the universal popularity of
the boxing icon. It reprinted the photographs, with thepermission of the
The complaint for injunction to stop Lacoste International from featuring him 2. Continued access to improvements in techniques and processes related to
in its advertisements will prosper. This is a violation of subsection 123, 4(c) the technology shall be made available during the period of the technology
ofthe IPC and Art.169 in relation to Art.170 of the IPC. transfer arrangement;
3. In case it shall provide for arbitration, the Procedure of Arbitration of the
e. Can Lacoste International validly invoke the defense that it is not a Philippine Arbitration Law of the Philippines or the Arbitration Rules of the United
company and, therefore, Philippine courts have no jurisdiction? Explain. (2%) Nations Commission on International Trade Law or the Rules of Arbitration of
the International Chamber of Commerce(ICC) shall apply and the venue of
SUGGESTED ANSWER: arbitration shall be the Philippines or any neutral country;
No. Philippine courts have jurisdiction over it, if it is doing business in the 4. The Philippine taxes on all payments relating to the technology transfer
Philippines. Moreover, under Section133 of the Corporation Code, while a agreement shall be borne by the licensor(Sec. 88, Intellectual Property Code).
foreign corporation doing business in the Philippines without license to do
business, cannot sue or intervene in any action, it may be sued or proceeded b. Enumerate three stipulations that are prohibited in technology transfer
against before our courts or administrative tribunal (De Joya v.Marquez, 481 agreements. (3%)
SCRA 376 (2006)).
SUGGESTED ANSWER:
The following stipulations are prohibited in technology transfer agreements:
1. Those that contain restrictions regarding the volume and structure of
2010 Bar Exam production;
2. Those that prohibit the use of competitive technologies in a non-exclusive
AGREEMENTS: TECHNOLOGY TRANSFER AGREEMENTS; REQUISITES & agreement; and
PROHIBITIONS (2010) 3. Those that establish a full or partial purchase option in favor of the licensor
a. What contractual stipulations are required in all technology transfer
agreements? (2%) ---

SUGGESTED ANSWER: ARTICLE OF COMMERCE; AS TRADEMARK, PATENT & COPYRIGHT (2010)


The following stipulations are required in all technology transfer agreements: Can an article of commerce serve as a trademark and at the same time enjoy
1. The laws of the Philippines shall govern its interpretation and in the event of patent and copyright protection? Explain and give an example. (2%)
litigation, the venue shall be the proper court in the place where the licensee
has its principal office; SUGGESTED ANSWER:
A stamped or marked container of goods can be registered as
trademark(subsections 113.1 of the Intellectual Property Code). An original
ornamental design or model for articles of manufacturer can be copyrighted Monaliza cannot sue Valentino for violation of her intellectual property
(Subsection 172.1 of the Intellectual Property Code). An ornamental design rights, because she was not the one who took the pictures (Subsection 178.1
cannot be patented, because aesthetic creations cannot be patented (Section of the Intellectual Property Code). She may sue Valentino instead for violation
22of the Intellectual Property Code).However, it can be registered as an of her right to privacy. He surreptitiously took photographs of her and then
industrial design (Subsections 113.1 and172.1 of the Intellectual Code). Thus, sold the photographs to a magazine and uploaded them to his personal blog
a container of goods which has an original ornamental design can be in the Internet (Tolentino, Commentaries and Jurisprudence on the Civil Code
registered as trademark, can be copyrighted, and can be registered as an of the Philippines, Vol. I, 1987 ed., p. 169).
industrial design.
b. Valentino’s friend Francesco stole the photographs and duplicated them and
ALTERNATIVE ANSWER: sold them to a magazine publication. Valentino sued Francisco for
It is entirely possible for an article of commerce to bear a registered infringement and damages. Does Valentino have any cause of action? Explain.
trademark, be protected by a patent and have most, or some part of it (2%)
copyrighted. A book is a good example. The name of the publisher or the
colophon used in the book may be registered trademarks, the ink used in SUGGESTED ANSWER:
producing the book may be covered by a patent, and the text and design of Valentino cannot sue Francesco for infringement, because he has already sold
the book may be covered by copyrighted. the photographs to a magazine(Angeles vs. Premier Productions, Inc., 6CAR
(2s) 159).
---
ALTERNATIVE ANSWER:
INFRINGEMENT; CLAIMS (2010) Yes, as the author of the photographs, Valentino has exclusive economic
While vacationing in Boracay, Valentino surreptitiously took photographs of rights thereto, which include the rights to reproduce, to distribute, to
his girlfriend Monaliza in her skimpy bikini. Two weeks later, her photographs perform, to display, and to prepare derivative works based upon the
appeared in the Internet and in a national celebrity magazine. Monaliza copyrighted work. He sold only the photographs to the magazine; however,
found out that Valentino had sold the photographs to the magazine, adding he still retained some economic rights thereto. Thus, he has a cause of action
insult to injury, uploaded them to his personal blog on the Internet. against infringement against Francesco.

a. Monaliza filed a complaint against Valentino damages based on, among c. Does Monaliza have any cause of action against Francesco? Explain. (2%)
other grounds, violation of her intellectual property rights. Does she have any
cause of action? Explain. (2%) SUGGESTED ANSWER:
Monaliza can also sue Francesco for violation of her right to privacy.
SUGGESTED ANSWER:
--- X is correct. His rights under his exclusive distributorship agreement are
property rights entitled to protection. The importation and sale by Y of
PATENT: NON-PATENTABLE; METHOD OF DIAGNOSIS & TREATMENT (2010) MAGIC shoes constitute unfair competition (Yuv. Court of Appeals, 217 SCRA
Dr. Nobel discovered a new method of treating Alzheimer’s involving a special 328(1993)). Registration of the trademark is not necessary in case of an
method of diagnosing the disease, treating it with a new medicine that has action for unfair competition (Del Monte Corporation v. Court of Appeals,
been discovered after long experimentation and field testing, and novel 181SCRA 410 (1990)).
mental isometric exercises. He comes to you for advice on how he can have
his discoveries protected. Can he legally protect his new method of diagnosis, ALTERNATIVE ANSWER:
the new medicine, and the new method of treatment? If no, why? If yes, Y is correct. The rights in a trademark are acquired through registration made
how? (4%) validly in accordance with the Intellectual Property Code (Section 122of the
Intellectual Property Code).
SUGGESTED ANSWER:
Dr. Nobel can be protected by a patent for the new medicine as it falls within b. Suppose the shoes are covered by a Philippine patent issued to the owner,
the scope of Sec. 21 of the Intellectual Property Code (Rep. Act No. 8293, as what would your answer be? Explain. (2%)
amended). But no protection can be legally extended to him for the method
of diagnosis and method of treatment which are expressly non-patentable SUGGESTED ANSWER:
(Sec.22, Intellectual Property Code). A patent for a product confers upon its owner 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 patent constitutes infringement of the patent (Subsection 76.1 of the
TRADEMARK; UNFAIR COMPETITION (2010) Intellectual Property Code). X can prevent the parallel importation of such
For years, Y has been engaged in the parallel importation of famous brands, shoes by Y without its authorization.
including shoes carrying the foreign brand MAGIC. Exclusive distributor X
demands that Y cease importation because of his appointment as exclusive
distributor of MAGIC shoes in the Philippines. Y counters that the trademark 2011 Bar Exam – No LIP questions
MAGIC is not registered with the Intellectual Property Office as a trademark 2012 Bar Exam – No LIP questions
and therefore no one has the right to prevent its parallel importation.

a. Who is correct? Why? (2%)


2013 Bar Exam
SUGGESTED ANSWER:
time. When he came back, he decided to set-up his own graduate school in
COPYRIGHT (2013) his hometown in Zamboanga. After seeking free legal advice from his high-
Ruby is a fine arts student in a university. He stays in a boarding house with flying lawyer-friends, he learned that the Philippines follows the territoriality
Bernie as his roommate. During his free time, Rudy would paint and leave his principle in trademark law, i.e., trademark rights are acquired through valid
finished works lying around the boarding house. One day, Rudy saw one of registration in accordance with the law. Forth with, Jinggy named his school
his works – an abstract painting entitled Manila Traffic Jam –on display at the the Kluwer Graduate School of Business of Mindanao and immediately
university cafeteria. The cafeteria operator said he purchased the painting secured registration with the Bureau of Trademarks. KU did not like the
from Bernie who represented himself as its painter and owner Rudy and the unauthorized use of its name by its top alumnus no less. KU sought your help.
cafeteria operator immediately confronted Bernie. While admitting that he What advice can you give KU? (4%)
did not do the painting,. Bernie claimed ownership of its copyright since he
had already registered it in his name with the National Library as provided in SUGGESTED ANSWER:
the Intellectual Property Code. Who owns the copyright to the painting? I can advise KU to file a petition to cancel the registration of the name
Explain (8%). “Kluwer” Graduate School of Business of Mindanao “KGSBM” with the
Bureau of Trademarks.
SUGGESTED ANSWER:
Rudy owns the copyright to the painting because he was the one who The petition could be anchored on the following facts: Kluwer University is
actually created it. (Section 178.1 of then Intellectual Property Code) His the owner of the name “Kluwer.” Jinggy registered the trademark in bad faith.
rights existed from the moment of its creation(Section 172 of the Intellectual He came to know of the trademark because he went to Kluwer University in
Property Code; Unilever Philippines (PRC) v. Court of Appeals, 498 SCRA 334, Germany for his doctorate degree. KU is the owner of the name “Kluwer” and
2006). The registration of the painting by Bernie with the National Library did has the sole right to register the same. Foreign marks that are not registered
not confer copyright upon him. The registration is merely for the purpose of are still accorded protection against infringement and/or unfair competition
completing the records of the National Library. (Section191 of the Intellectual under the Paris Convention for the Protection of Industrial Property. Both the
Property Code). Philippines and Germany are signatories to the Paris Convention. Under the
said Convention, the trademark of a national or signatory to the Paris
Convention is entitled to its protection in other countries that are also
signatories to the Convention without need of registering the trademark.
2014 Bar Exam The petition could also be based on the fact, if it were proven by KU, that
“Kluwer: is a well-known mark and entitled to protection as KU and KGSBM
TRADEMARKS (2014) belong to the same class of services i.e. Class 41 (education and
Jinggy went to Kluwer University (KU) in Germany for his doctorate degree entertainment). KU must also prove that a competent authority of the
(Ph.D.). He completed his degree with the highest honors in the shortest
Philippines has designated “Kluwer” to be well-known internationally and in “wave-like” pattern of the mid-sole and outer sole of Inter Pacific’s shoes are
the Philippines. very similar to Skechers’ shoes, if not exact patterns thereof. On the side of
Finally, the petition could also be based on the fact, if it were proven by KU, Inter-Pacific’s shoes, near the upper part, appears the stylized “S” placed in
that “Kluwer” is a trade name that KU has adopted and used before its use the exact location as that of the stylized “S” the Skechers shoes. On top of the
and registration by Jinggy (Ecole de Cuisine Manille [Cordon Bleu of the “tongue” of both shoes, appears the stylized “S” in practically the same
Philippines], Inc. v. Renaud Cointreau & Cie and Le Cordon Bleu Int’l., B.V., location and size.
G.R. No. 185830, June 5, 2013). In its defense, Inter-Pacific claims that under the Holistic Test, the following
dissimilarities are present: the mark “S” found in Strong shoes is not enclosed
--- in an “oval design;” the word “Strong” for Inter-Pacific and “Skechers USA” for
Skechers; and, Strong shoes are modestly priced compared to the costs of
FRAUDULENT INTENT (2014) Skechers shoes.
In intellectual property cases, fraudulent intent is not an element of the
cause of action except in cases involving: Under the foregoing circumstances, which is the proper test to be applied-
A. Trademark infringement Holistic or Dominancy Test? Decide.
B. Copyright infringement
C. Patent infringement SUGGESTED ANSWER:
D. Unfair competition Considering the facts given and the arguments of the parties, the dominancy
test is the proper test to apply. Thus, the appropriation and use of the letter
SUGGESTED ANSWER: “S” by Inter Pacific on its rubber shoes constituted an infringement of the
D. Unfair competition trademark of Skechers.

--- The essential element of infringement under the IPC is that the infringing
mark is likely to cause confusion. In determining similarity and likelihood of
TRADEMARKS; HOLISTIC OR DOMINANCY TEST (2014) confusion, jurisprudence has developed tests- the Dominancy and the
Skechers Corporation sued Inter-Oacific for trademark infringement, claiming Holistic Tests. The Dominancy Test focuses on the similarity of the competing
that Inter-Pacific used Skechers’ registered “S” logo mark on Inter-Pacific’s trademakrs that might cause confusion, mistake, and deception in the mind
shoe products without its consent. Skechers has registered the trademark of the purchasing public. Duplication or imitation is not necessary; neither is
“SKECHERS” and the trademark “S” (with an oval design) with the IPO. it required that the mark sought to be registered suggest an effort to imitate.
Given more consideration are the aural and visual impressions created by the
In its complaint, Skechers points out the following similarities: the color marks on the buyers of goods, giving little weight to factors like prices,
scheme of the blue, white, and gray utilized by Skechers. Even the design and quality, sales outlets, and market segments.
KK is liable for infringement of copyright. XX, as exclusive licensed publisher,
In contrast, the Holistic or Totality Test necessitates a consideration of the is entitled, within the scope of the license, to all the rights and remedies that
entirety of the marks as applied to the products, including the labels and the licensor has with respect to the copyright (Sec. 180, IPC).
packaging, in determining confusing similarity. The discerning eye of the
observer must focus not only on the predominant words, but also on the The importation by KK of 50 copies of each foreign book prescribed in UST
other features appearing on both labels so that the observer may draw and selling them locally at 20 less than their respective prices in the
conclusion on whether one is confusingly similar to the other. Philippines is subject to the doctrine of fair use set out in Sec. 185.1 of the
Applying the Dominancy Test to the problem, we find that the use of the IPC. The factors to be considered in determining whether the use made of a
stylized “S” by Inter-Pacific in its Strong rubber shoes infringes on the mark work is fair use shall include:
already registered by Skechers with the IPO. While it is undisputed that a. The purpose and character of the use, including whether such use is of a
stylized “S” of Skechers is within an oval design, the dominant feature of the commercial nature or is for non-profit educational purposes;
trademark is the stylized “S”, as it is precisely the stylized “S” which catches b. The nature of the copyrighted work;
the eye of the purchaser. Thus, even if Inter-Pacific did not use the oval- c. The amount and substantiality of the portion used in relation to the
design, the mere fact that it used the same stylized “S”, the same being the copyrighted work as a whole;
dominant feature of the trademark of Skechers, already constitutes d. The effect of the use upon the potential market for or value of the
infringement under the Dominancy Test (Skechers USA Inc v. Inter Pacific copyrighted work.
Industrial Trading Corp., et al., G.R. No. 164321, Nov. 30, 2006).

--- Applying the above-listed factors to the problem, KK’s importation of the
books and their sale local clearly show the unfairness of her use of the books,
COPYRIGHT INFRINGEMENT (2014) particularly the adverse effect of her price discounting on the business of XX.
KK is from Bangkok, Thailand. She studies medicine in the Pontifical
University of Santo Tomas (UST). She learned that the same foreign books
prescribed in UST are 40-50% cheaper in 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%)

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