BAR QUESTIONS ON INTELLECTUAL PROPERTY LAW

2015
I.
A. Differentiate trademark, copyright and patent from each other. (6%)
1. As to definition :
a. Trademark is any visible sign capable of distinguishing goods
b. Copyright is an incorporeal right granted by statute to the author or creator of original literary and artistic
works whereby he is invested for a limited period of time with the right carry out, authorize and prevent
the reproduction, distribution, transformation, rental, public performance and other forms of
communication of his work to the public.
c. Patent is any technical solution of any problem in any field of human activity which is new, requires an
inventive step and industrially applicable.

2. As to object
a. The object of trademark are goods
b. The object of copyright are original literary and artistic works
c. The object of patent is invention

3. As to term
a. The term of trademark is 10 years
b. The term of copyright is generally 50 years
c. The term of patent is 20 years from application

4. As to how acquired
a. Trademark is acquired through registration and use
b. Copyright is acquired from the moment of creation
c. Patent is acquired through application with the IPO

B. What is the doctrine of equivalents? (2%)

Under the doctrine of equivalents, infringement of patent occurs when a device appropriates a prior invention by
incorporating its innovative concept and albeit with some modifications and change performs the same function in
substantially the same way to achieve the same result. (Godines vs. Court of Appeals, 226 SCRA 338)

C. In what ways would a case for infringement of trademark be different from a case for unfair competition?
(3%)
1. In infringement of trademark, prior registration of the trademark is a prerequisite to the action whereas in
unfair competition trademark registration is not necessary
2. Trademark infringement is the unauthorized use of the registered trademark while unfair competition is
the passing off one’s goods as those of another
3. In infringement of trademark, fraudulent intent is unnecessary whereas in unfair competition fraudulent
intent is essential (Delmonte Corporation vs Court of Appeals, 181 SCRA 410)

II.
CHEN, Inc., a Taiwanese company, is a manufacturer of tires with the mark Light Year. From 2009 to 2014, Clark
Enterprises, a Philippine- registered corporation, imported tires from CHEN, Inc. under several sales contracts
and sold them here in the Philippines. In 2015, CHEN, Inc. filed a trademark application with thE Intellectual
Property Office (IPO) for the mark Light Year to be used for tires.

The IPO issued CHEN, Inc. a certificate of registration (COR) for said mark. Clark Enterprises sought the
cancellation of the COR and claimed it had a better right to register the mark Light Year. CHEN, Inc. asserted that
it was the owner of the mark and Clark Enterprises was a mere distributor. Clark Enterprises argued that there
was no evidence on record that the tires it imported from CHEN, Inc. bore the mark Light Year and Clark
Enterprises was able to prove that it was the first to use the mark here in the Philippines. Decide the case. (4%)

While RA 8293 removed the previous requirement of proof of actual use prior to the filing of an application for
registration of a mark, proof of prior and continuous use is necessary to establish ownership of trademark. Such
ownership of the trademark confers the right to register the trademark. Since Chen owns the trademark as
evidenced by its actual and continuous use prior to the Clark Enterprises, then it is the one entitled to the
registration of the trademark. The fact that Clark was the first one to use the mark here in the Philippines will not
matter. Chen’s prior actual use of the trademark even in another country bars Clark from applying for the
registration of the same trademark. (E.Y Industrial Sales vs. Shien Dar Electricity and Machinery, GR no. 184850,
October 20, 2010; Ecole de Cuisine Manille vs Renaud Cointreau, GR 185830, June 5, 2013)

2016
I.
ABC Appliances Corporation (ABC) is a domestic corporation engaged in the production and sale of televisions
and other appliances. YYY Engineers, a Taiwanese company, is the manufacturer of televisions and other
appliances from whom ABC actually purchases appliances. From 2000, when ABC started doing business with
YYY, it has been using the mark "TTubes" in the Philippines for the television units that were bought from YYY.
In 2015, YYY filed a trademark application for "TTubes." Later, ABC also filed its application. Both claim the right
over the trademark "TTubes" for television products. YYY relies on the principle of "first to file" while ABC
involves the "doctrine of prior use."

[a] Does the fact that YYY filed its application ahead of ABC mean that YYY has the prior right over the
trademark? Explain briefly. (2.5%)

No. Since YYY is not the owner of the trademark, it has no right to apply for registration. Registration of trademark,
by itself, is not a mode of acquiring ownership. It is the ownership of a trademark that confers the right to register
the same. (Birkenstock Orthopaedia GMBH vs. Philippine Shoe Expo Marketing Corporation, GR No. 194307,
November 20, 2013.)

[b] Does the prior registration also mean a conclusive assumption that YYY Engineers is in fact the
owner of the trademark "TTubes?" Briefly explain your answer. (2.5%)

NO. Registration merely creates a prima facile presumption of the validity of the registration, of the registrant’s
ownership of the trademark and the exclusive right to the use thereof. The presumption of ownership accorded to
a registrant is rebuttable and must yield to evidence to the contrary.

II

X's "MINI-ME" burgers are bestsellers in the country. Its "MINI-ME" logo, which bears the color blue, is a
registered mark and has been so since the year 2010. Y, a competitor ofX, has her own burger which she named
"ME-TOO" and her logo thereon is printed in bluish-green. When X sued Y for trademark infringement, the trial
court ruled in favor of the plaintiff by applying the Holistic Test. The court held that Y infringed on X's mark since
the dissimilarities between the two marks are too trifling and frivolous such that Y's "ME-TOO," when compared
to X's "MINI-ME," will likely cause confusion among consumers.

Is the application of the Holistic Test correct? (5%)

The application of the Holistic Test is not correct. In cases involving burger products, the Supreme Court has
consistently applied the dominancy test. Under the dominancy test, the focus is on the dominant feature of the
competing trademarks. Big Mak has been held to be confusingly similar with Big Mac and so with McDo and Mcjoy
both under the dominancy test. Accordingly, MINI-ME trademark is confusingly similar with the ME-TOO mark.
(McDonald’s Corporation vs LC Big Mak Burger, Inc, GR no. 143993, August 18, 2004)

III.
MS Brewery Corporation (MS) is a manufacturer and distributor of the popular beer "MS Lite." It faces stiff
competition from BA Brewery Corporation (BA) whose sales of its own beer product, "BA Lighter," has soared to
new heights. Meanwhile, sales of the "MS Lite" decreased considerably. The distribution and marketing
personnel of MS later discovered that BA has stored thousands of empty bottles of "MS Lite" manufactured by
MS in one of its warehouses. MS filed a suit for unfair competition against BA before the Regional Trial Court
(RTC). Finding a connection between the dwindling sales of MS and the increased sales of BA, the RTC ruled that
BA resorted to acts of unfair competition to the detriment of MS. Is the RTC correct? Explain. (5%)

The RTC is not correct. Hoarding, or the act of accumulating empty bottles to impede circulation of the bottled
product, does not amount to unfair competition. BA did not fraudulently “pass off“ its product as that of MS Lite.
There was no representation or misrepresentation on the part of BA that would confuse or tend to confuse its
goods with those of MS Lite. (Coca Cola Bottlers Philippines vs GOMEZ, GR No. 154491, November 14, 2008.)

2017
I.
A.
Virtucio was a composer of Ilocano songs who has been quite popular in the Ilocos Region. Pascuala is a
professor of music in a local university with special focus on indigenous music. When she heard the musical
works of Virtucio, she purchased a CD of his works. She copied thte CD and sent the second copy to her Music
class with instructions for the class to listen to the CD and analyze the works of Virtucio.

Did Pascuala thereby infringe Virtucio’s copyright? Explain your answer. (4%)

Pascuala did not infringe on the rights of Virtucio. The fair use of a copyrighted work for criticism, comment, news
reporting, teaching including limited number of copies for classroom use, scholarship, research and similar
purposes is not an infringement of copyright. (Section 185 of RA 8293, as amended) In this case, Virtucio’s
reproduction of the limited number of CD was for classroom use and educational purposes thus negating copyright
infringement.

B.
Super Biology Corporation (Super Biology) invented and patented a miracle medicine for the cure of AIDS. Being
the sole manufacturer, Super Biology sold the medicine at an exorbitant price. Because of the sudden
prevalence of AIDS cases in Metro Manila and other urban areas, the Department of Health (DOH) asked Super
Biology for a license to produce and sell the AIDS medicine to the public at a substantially lower price. Super
Biology, citing the huge costs and expenses incurred for research and development, refused.

Assuming you are asked your opinion as the legal consultant of DOH, discuss how you will resolve the matter.
(4%)

DOH may file a petition for compulsory license with the Director of Legal Affairs of the Intellectual Property Office
to exploit the patented medicine even without the agreement of the patent owner on the ground of public
interest, in particular, health (Section 193 of RA 8293, as amended). Once granted, the DOH may then produce and
sell the AIDS medicines for a cheaper price subject to payment of reasonable royalties to Super Biology.

II.
News reports are not copyrightable. (2%)

True, news reports are not subject to copyright by express provision of the law. It is the expression of the news
that is copyrightable.
 2018
I.
A distinctive-tasting pastillas is well-known throughout the country as having been developed within a close-knit
women's group in Barangay San Ysmael which is located along a very busy national highway. Its popularity has
encouraged the setting up of several shops selling similar delicacies, with the most famous product being the
pastillas of "Barangay San Ysmael." Eventually, the pastillas of Aling Voling under the brand name "Ysmaellas"
began to attract national distinction. Aling Voling therefore registered it as a copyright with the National Library.
Her neighbor, Aling Yasmin, realizing the commercial value of the brand, started using the term "Ysmaellas" for
her pastillas but used different colors. Aling Yasmin registered the brand name "Ysmaellas" with the Intellectual
Property Office (IPO).

(a) Can Aling Voling successfully obtain court relief to prohibit Aling Yasmin from using the brand name
"Ysmaellas" in her products on the basis of her (Aling Yoling's) copyright? What is the difference between
registration as a copyright and registration as a trade or brand name? (2.5%)

(b) Can Aling Yasmin seek injunctive relief against Aling Voling from using the brand name "Ysmaellas,"
the latter relying on the doctrine of "prior use" as evidenced by her prior copyright registration? (2.5%)

(c) Can Aling Voling seek the cancellation of Aling Yasmin's trademark registration of the brand name
"Ysmaellas" on the ground of "Well Known Brand" clearly evidenced by her (Aling Yoling's) prior copyright
registration, actual use of the brand, and several magazine articles? (2.5%)

II.

Yosha was able to put together a mechanical water pump in his garage consisting of suction systems capable of
drawing water from the earth using less human effort than what was then required by existing models. The
water pump system provides for a new system which has the elements of novelty and inventive steps. Yosha,
while preparing to have his invention registered with the IPO, had several models of his new system fabricated
and sold in his province.

(a) Is Yosha's invention no longer patentable by virtue of the fact that he had sold several models to the
public before the formal application for registration of patent was filed with the IPO? (2.5%)

(b) If Yosha is able to properly register his patent with the IPO, can he prevent anyone who has
possession of the earlier models from using them? (2.5%)