Republic Act No.

8293

 Intellectual Property Code of the Philippines

 A codification of the country’s various intellectual property laws
 Repealed all acts and parts of acts inconsistent with it:
o R.A. No. 165 – established an independent Patent system
o R.A. No. 166 – governs Trademark and
o Nn Presidential Decree No. 49 known as the “Decree on Intellectual Property
 Repealed Articles 188 and 189 of the Revised Penal Code (See Sec. 239)
o 188 – Substituting and altering trademarks, trade names, or service marks.
o 189 – Unfair competition, fraudulent registration of trade name, trademark,
or service mark, fraudulent designation of origin, and false description
 The law is a consolidation of Senate Bill No. 1719 and House Bill No. 8098
 Approved by President Fidel V. Ramos on June 6, 1997
o Effective date: January 1, 1998 (See Sec. 241)

Purpose of R.A. 8293

To give effect to the Agreement of Trade-Related Aspects of the Intellectual Property Rights
(TRIPS) that was ratified by the Philippine Senate on December 14, 1994

Non-Retroactivity

Will an action based on R.A. No. 8293 prosper?

No. In the case of Mighty Corporation v. E & J Gallo Winery, G.R. No. 154342, July 14,
20014, the Supreme Court Said

It is fundamental principle that the validity and obligatory force of a law proceed
from the fact that it has first been promulgated. A law that is not yet effective cannot
be considered as conclusively known by the populace. To make a law binding even
before it takes effect may lead to the arbitrary exercise of the legislative power. Nova
constitutio futuris formam imponere debet non praeteritis. A new state of the law
ought to affect the future, not the past. Any doubt must generally be resolved
against the retroactive operation of laws, whether these are original enactments,
amendments or repeals. There are only a few instances when laws may be given
retroactive effect, none of which is present in the case.

The IP Code, repealing the Trademark Law, was approved on June 6, 1997. Section
241 thereof expressly decreed that it was to take effect only on January 1, 1998,
without any provision for retroactive application. Thus, the Makati RTC and the CA
should have limited the consideration of the present case within the parameters of
the Trademark Law and the Paris Convention, the laws in force at the time of the
filing of the complaint.
Section 2 of the IP Code
Provides for the state policies on intellectual and industrial property system

Section 3 of the IP Code

Any person 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, agreement or treaty relating
to intellectual property rights or the repression of unfair competition, to which the
Philippines shall be entitled to benefits to the extent necessary to give effect to any
provision of such convention, treaty or reciprocal law, in addition to the rights to which the
owner of an intellectual property right is otherwise entitled by law.

Any condition, restriction, limitation, diminution, requirement, penalty or any similar

burden imposed by the law of a foreign country on a Philippine national seeking protection
of intellectual property rights in that country shall reciprocally be enforceable upon
nationals of said country within Philippine jurisdiction.

Intellectual Property Rights Defined

The term has a statutory definition as that consisting of

a) Copyright and related rights

b) Trademark and service mark
c) Geographical indication
d) Industrial design
e) Patent
f) Layout design (topographies) of Integrated Circuit
g) Protection of undisclosed information

Trademark

 Any visible sign capable of distinguishing goods (trademark) and services (service
mark) of an enterprise which shall include stamped or marked container of goods
 Trade name means the name or designation identifying or distinguishing an
enterprise

Copyright
 Confined to literary and artistic works which are original intellectual creations in the
literary and artistic domain protected from the moment of their creation
 Pearl and Dean Case
o Copyright extends only to the description or expression of the object and not
to the object itself
o Copyright is purely a statutory right, it can cover only the works falling within
the statutory enumeration or description
o Only expression of the idea is protected, not the idea itself

Patentable inventions
 Refer to any technical solution of a problem in any field of human activity which is
 o New
o Involves inventive step
o Industrially applicable
Case: Pearl and Dean vs Shoemart Inc.

Complaint: Infringement of Trademark and Copyright

Shoemart’s Defense

The word “poster ads” is a generic term which cannot be appropriated as a

trademark and as such, registration of such mark is invalid
P&D is not entitled to the reliefs prayed for in its complaintsince its advertising
display unitss contained no copyright notice in violation of Section 27, P.D. No. 49
o Section 27. Each copy of a work published or offered for sale shall contain a
notice bearing the name of the copyright owner, the year of its first
publication, and, in copies produced after the creator's death, the year of such
death.

Rulings:

RTC ruled in favor of P&D

CA reversed the ruling of the RTC

Since the light boxes cannot by any stretch of the imagination be considered as either
prints, pictorial illustrations, advertising copies, labels, tags or box wraps, to be
properly classified as a copyrightable class “O” work, we have to agree with SMI
when it posited that what was copyrighted were the technical drawings only and not
the light boxes themselves.

Supreme Court

Trademark, copyright and patents are different intellectual property rights that cannot be
interchanged with one another.

Copyright Infringement Issue

P&D secured its copyright under the classification class “O” work. This being so, petitioner’s
copyright protection extended only to the technical drawings and not to the light box itself
because the latter was not at all in the category of prints, pictorial illustrations, advertising
copies, labels, tags or box wraps (Section 2, P.D. 49). The strict application of the law’s
enumeration in Section 2 prevents us from giving petitioner a leeway even if the the title of
the copyright certificate is “Advertising Display Units” What the law does not include, it
excludes and for a good reason, the light box is not a literary or artistic piece of work which
can be copyrighted under the copyright law.

Other Jurisprudence
 Baker vs. Selden (101 U.S. 841 [1879]) – The court held that exclusivity to the actual
forms is not extended by a copyright

Muller vs. Triborough Bridge Authority (43 F. Supp. 298 [S.D.N.Y. [1942]) –
Copyright extends only to the description or expression of the object not to the object
itself. It does not prevent one from using the drawings to construct the object
portrayed in the drawing.

Patent Infringement Issue

Petitioner never secured a patent for the light boxes. It therefore acquired no patent rights
which could have protected its invention. And because it had no patent, petitioner cannot
legally prevent anyone from manufacturing or commercially using the contraption.

In Creser Precision Systems Inc vs. Court of Appeals, the court held that there can be no
infringement of patent until a patent has been issued, since whatever right one has to the
invention covered by the patent arises alone from the grant of patent. A patent gives the
inventor the right to exclude others. As a patentee he has the exclusive right of making,
selling or using the invention. To be able to effectively and legally preclude others from
copying and profiting from the invention, a patent is a PRIMORDIAL REQUIREMENT. NO
PATENT NO PROTECTION

It is only after an exhaustive examination by the patent office that a patent is issued. There
is no such scrutiny in the case of copyrights nor any notice published before its grant to the
effect that a person is claiming the creation of a work. Therefore, not having gone through
the arduous examination for patents, the petitioner cannot exclude others from the
manufacture, sale or commercial use of the light boxes on the sole basis of its copyright
certificate over the technical drawings.

What P&D seeks is exclusivity without any opportunity for the patent office (IPO) to
scrutinize the lightbox’s eligibility as a patentable invention.

Illustration. Certain Mixtures of medicines are found to be of great value in the healing art

If the discovere writes and publishes a book on the subject, he gains no exclusive right to
the manufacture and sale of the medicine; HE GIVES THAT TO THE PUBLIC.

If he desires to acquire such exclusive right, he must obtain a patent for the mixture as a
new art. Copyrighting of the book only secures him the right of printing and publishing of
the book. Since it is not patented, it is open and free to the use of the public

Trademark Infringement Issue

P&D secured a certificate for the mark “Poster Ads” but one where the goods specified are
“Stationeries, such as letterheads, envelopes, calling cards and newsletters.” In Faberge,
Inc. vs IAC, invoking Section 20 of the Trademark Law, the certificate of registration issued
by the Director of Patents can only confer the exclusive right to use only to those goods
specified in the certificate which in this case does not include “lightbox.” The failure of P&D
to secure a trademark registration for specific use on the light boxes meant that there could
not have been any trademark infringement since registration is an essential element
thereof.

UNFAIR COMPETITION ISSUE

In this case, there was no evidence that that P&D’s use of poster ads was distinctive or well
known. In the mind of the public, the goods and services carrying out the trademark poster
ads could not be distinguished from the goods and services of other entitites. The doctrine
of SECONDARY Meaning cannot be applied since the term poster ads is generic and
incapable of being used as a trademark. Secondary meaning means that a word or phrase
originally incapable of exclusive appropriation with reference to an article in the market
might nevertheless have been used for so long and exclusively by one producer in the trade
that the public now associates the word or phrase to mean that the article was his property

Section 20, R.A. 166

Section 20. Certificate of registration prima facie evidence of validity. - A certificate

of registration of a mark or trade-name shall be prima facie evidence of the validity
of the registration, the registrant's ownership of the mark or trade-name, and of the
registrant's exclusive right to use the same in connection with the goods, business
or services specified in the certificate, subject to any conditions and limitations
stated therein.

Jurisprudence has interpreted Section 20 of the Trademark Law as an implicit

permission to a manufacturer to venture into production of goods and allow that to
producer to appropriate the brand name of the senior registrant on goods other
than those stated in the certificate of registration