2004 Bar Exam biological process for the production of animals.

It is
a real invention because its body cells do not naturally
occur in nature but are the product of man's ingenuity,
INTELLECTUAL CREATION (2004) intellect and industry. The breeding of oncomouse has
Dr. ALX is a scientist honored for work related to the novelty, inventive step and industrial application.
human genome project. Among his pioneering efforts These are the three requisites of patentability. (Sec.
concern stem cell research for the cure of Alzheimers 29, IPC) There are no ethical reasons why Dr. ADX and
disease. Under corporate sponsorship, he helped his college team cannot be given exclusive ownership
develop a microbe that ate and digested oil spills in over their invention. The use of such genetically
the sea. Now he leads a college team for cancer modified mouse, useful for cancer research,
research in MSS State. The team has experimented on outweighs considerations for animal rights. There are
a mouse whose body cells replicate and bear no legal and ethical reasons that would frustrate Dr.
cancerous tumor. Called oncomouse, it is a life-form ALX's claim of exclusive ownership over "oncomouse".
useful for medical research and it is a novel creation. Animals are property capable of being appropriated
Its body cells do not naturally occur in nature but are and owned'. In fact, one can own pet dogs or cats, or
the product of mans intellect, industry and ingenuity. any other animal. If wild animals are capable of being
However, there is a doubt whether local property laws owned, with more reason animals technologically
and ethics would allow rights of exclusive ownership enhanced or corrupted by man's invention or industry
on any life-form. Dr. ALX needs your advice: are susceptible to exclusive ownership by the
inventor.
a. Whether the reciprocity principle in private
international law could be applied in our jurisdiction; ALTERNATIVE ANSWER:
and The oncomouse is a higher life form which does not
fall within the definition of the term "invention".
SUGGESTED ANSWER: Neither may it fall within the ambit of the term
The reciprocity principle in private international law "manufacture" which usually implies a non-living
may be applied in our jurisdiction. Section 3 of R.A. mechanistic product. The oncomouse is better
8293, the Intellectual Property Code, provides for regarded as a "discovery" which is the common
reciprocity, as follows: "Any person who is a national, patrimony of man.
or who is domiciled, or has a real and effective
industrial establishment in a country which is a party ALTERNATIVE ANSWER:
to any convention, treaty or agreement relating to The "oncomouse" is a non-patentable invention.
intellectual property rights or the repression of unfair Hence, cannot be owned exclusively by its inventor. It
competition, to which the Philippines is also a party, is a method for the treatment of the human or animal
or extends reciprocal rights to nationals of the body by surgery or therapy and diagnostic methods
Philippines by law, shall be entitled to benefits to the practiced on said bodies are not patentable under Sec.
extent necessary to give effect to any provision of 22 of the IPC.
such convention, treaty or reciprocal law, in addition
to the rights to which any owner of an intellectual ----
property right is otherwise entitled by this Act. (n)" To
illustrate: the Philippines may refrain from imposing a COPYRIGHT; COMMISSIONED ARTIST (2004)
requirement of local incorporation or establishment of BR and CT are noted artists whose paintings are highly
a local domicile for the protection of industrial prized by collectors. Dr. DL commissioned them to
property rights of foreign nationals (citizens of paint a mural at the main lobby of his new hospital for
Canada, Switzerland, U.S.) if the countries of said children. Both agreed to collaborate on the project
foreign nationals refrain from imposing said for a total fee of two million pesos to be equally
requirement on Filipino citizens. divided between them. It was also agreed that Dr. DL
had to provide all the materials for the painting and
ALTERNATIVE ANSWER: pay for the wages of technicians and laborers needed
Reciprocity principle cannot be applied in our for the work on the project.
jurisdiction because the Philippines is a party to the
TRIPS agreement and the WTO. The principle involved Assume that the project is completed and both BR and
is the most-favored nation clause which is the CT are fully paid the amount of P2M as artists' fee by
principle of non-discrimination. The protection DL. Under the law on intellectual property, who will
afforded to intellectual property protection in the own the mural? Who will own the copyright in the
Philippines also applies to other members of the WTO. mural? Why? Explain. (5%)
Thus, it is not really reciprocity principle in private
international law that applies, but the most-favored SUGGESTED ANSWER:
nation clause under public international law. Under Section 178.4 of the Intellectual Property Code,
in case of commissioned work, the creator (in the
b. Whether there are legal and ethical reasons that could absence of a written stipulation to the contrary) owns
frustrate his claim of exclusive ownership over the the copyright, but the work itself belongs to the
life-form called oncomouse in Manila? What will be person who commissioned its creation. Accordingly,
your advice to him? (5%) the mural belongs to DL. However, BR and CT own the
copyright, since there is no stipulation to the
SUGGESTED ANSWER: contrary.
There is no legal reason why "oncomouse" cannot be
protected under the law. Among those excluded from 2005 Bar Exam
patent protection are "plant varieties or animal
breeds, or essentially biological process for the PATENTS (2005)
production of plants and animals" (Section 22.4 Cesar works in a car manufacturing company owned
Intellectual Property Code, R.A. No. 8293). The by Joab. Cesar is quite innovative and loves to tinker
"oncomouse" in the problem is not an essentially with things. With the materials and parts of the car,
he was able to invent a gas-saving device that will advice by a legal practitioner" shall not constitute
enable cars to consume less gas. Francis, a co-worker infringement of copyright.
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 2007 Bar Exam
an application for registration of his device with the
Bureau of Patents. 18 months later, Cesar filed his
application for the registration of the device with the COPYRIGHT; INFRINGEMENT (2007)
Bureau of Patents Diana and Piolo are famous personalities in show
business who kept their love affair secret. They use a
a. Is the gas-saving device patentable? special instant messaging service which allows them
b. Assuming that it is patentable, who is entitled to to see one anothers typing on their own screen as
the patent? What if any is the remedy of the losing each letter key is pressed. When Greg, the controller
party of the service facility, found out their identities, he
c. Supposing Joab got wind of the inventions of his kept a copy of all the messages Diana and Piolo sent
employees and also laid a claim to the patents. each other and published them. Is Greg liable for
Asserting that cesar and francis where using materials copyright infringement? Reason briefly.(5%)
and company time in making the devices will his claim
prevail over those of his employees? SUGGESTED ANSWER:
Yes, Greg is liable for copyright infringement. Letter
SUGGESTED ANSWERS: are among the works which are protected from the
a. It is patentable because it is new. It involves an moment of their creation (Section 172,intellectual
inventive step and its industry applicable (Sec 21 IPC) Property Code; Columbia Pictures, Inc. v Court of
Appeals, 261SCRA 144 [1996]).
b. Francis is entitled to patent, because he has earlier
filing date (sec 29 IPC). The remedy of Cesar is to file The publication of the letters without the consent of
a petition in court for the cancellation of the patent their writers constitutes infringement of copyright.
of Francis on the ground that he is the true and actual
inventor and ask for substitution as patentee (sec 67-
68 IPC)
ALTERNATIVE ANSWER:
c. The claim of Joab will not prevail over those of his No, Greg is not liable for copyright infringement.
employees, even if they used his materials and There is no copyright protecting electronic
company time in making the gas-saving device. The documents. What are involved here are text
invention of the gas-saving device is not part of their messages, not letter in their ordinary sense. Hence,
regular duties as employees (sec 30.2(a) IPC) the protection under the copyright law does not
extend to text messages (Section172, Intellectual
Property Code).The messages that Diana and Piolo
2006 Bar Exam exchanged through the use of messaging service do
not constitute literary and artistic works under
PATENTS (2006) Section 172 of the Intellectual Property Code. They
Supposing Albert Einstein were alive today and he are not letter under Section 172(d).
filed with the Intellectual Property Office an
application for patent of his theory of relativity For copyright to subsist in a message, it must qualify
expressed in the formula E=mc2. The IPO disapproved as a work (Section 172, Intellectual Property Code).
Einstein application on the ground that his theory if Whether the messages are entitled or not to copyright
relativity is not patentable protection would have to be resolved in the light of
the provision of the Intellectual Property Code.
Is the IPO action correct?
Note: Since the law on this matter is not clear, it is
SUGGESTED ANSWER: suggested that either of the above of the above
Yes, the IPO's action is correct that the theory of suggested answers should be given full credit.
relativity is not patentable. Under section 22.1 of the
IPC.m " discoveries, scientific theories and
mathematical methods" are not patentable. 2008 Bar Exam

--- COPYRIGHT; COMMISSIONED ARTIST (2008)

In 1999, Mocha warn, an American musician, had a bit
COPYRIGHT (2006) rap single called Warm Warm Honey which he himself
In a written legal opinion for a client on the difference composed and performed. The single was produced by
between apprenticeship and learnership, Liza quoted a California record company, Galactic Records. Many
without permission a Labor Law expert's comment notice that some passages from Warm Warm Honey
appearing in his book "Annotations On Labor Code" sounded eerily similar to parts of Under Hassle, a 1978
Can the Labor Law expert hold Liza liable for hit song by the British rock and Majesty. A copyright
infringement of copyright for quoting a portion of his infringement suit was filed in the United States
book without his permission? against Mocha Warm by Majesty. It was later settled
out of court, with Majesty receiving attribution as co-
SUGGESTED ANSWER: author of Warm Warm Honey as well as a share in the
No, the Labor Law expert cannot hold Liza liable for royalties. By 2002, Mocha Warm was nearing
infringement of copyright. Under Sec 184.1(k) of the bankruptcy and he sold his economic rights over Warm
IPC. "Any use made of a work for the purpose of any Warm Honey to Galactic Records for $10,000. In 2008,
judicial proceedings or for the giving of professional Planet Films, a Filipino movie producing company,
commissioned DJ Chef Jean, a Filipino musician, to
 produce an original re-mix of Warm Warm Honey for SUGGESTED ANSWER:
use in one of its latest films, Astig!. DJ Chef Jean Eloise may publish the columns without securing
remixed Warm Warm Honey with a salsa beat, and authorization from New Media Enterprises. Under Sec.
interspersed as well a recital of poetic stanza by John 172 of the Intellectual Property Code, original
Blake, century Scottish poet. DJ Chef Jean died intellectual creations in the literary and artistic
shortly after submitting the remixed Warm Warm domain are protected from the moment of their
Honey to Planet Films. Prior to the release of Astig!. creation and shall include those in periodicals and
Mocha Warm learns of the remixed Warm Warm Honey newspapers. Under Sec. 178, copyright ownership
and demands that he be publicly identified as the shall belong to the author. In case of commissioned
author of the remixed song is all the CD covers and work, the person who so commissioned work shall
publicity releases of Planet Films. have ownership of work, but copyright shall remain
with creator, unless there is a written stipulation to
a. Who are the parties or entities entitled to be credited the contrary.
as author of the remixed Warm Warm Honey? Reason
out your answers. (3%) b. Assume that New Media Enterprises plans to publish
Eloises columns in its own anthology entitled, The
SUGGESTED ANSWER: Best of Diario de Manila Eloise wants to prevent the
The parties entitled to be credited as authors of the publication of her columns in that anthology since she
remixed Warm Warm Honey are Mocha Warm, was never paid by the newspaper. Name one
Majesty, DJ Chef Jean and John Blake, for the irrefutable legal argument Eloise could cite to enjoin
segments that was the product of the irrespective New Media Enterprises from including her columns in
intellectual efforts. n the case of Mocha Warm and its anthology. (2%)
Majesty, who are the attributed co-authors, and in
spite of the sale of the economic right to Galactic SUGGESTED ANSWER:
Records, they retain their moral rights to the Under the IPC, the copyright or economic rights to the
copyrighted rap, which include the right to demand columns she authored pertains only to Eloise. She can
attribution to them of the authorship (Sec. invoke the right to either authorize or prevent
193,IPC).Which respect to DJ Chef Jean, in spite of his reproduction of the work, including the public
death, and although he was commissioned by Planet distribution of the original and each copy of the work
Films for the remix, the rule is that the person who so by sale or other forms of transfer of ownership,
commissioned work shall have ownership of the work, Since this would be the effect of including her column
but copyright thereto shall remain with creator, in the anthology.
unless there is a written stipulation to the contrary.
Even if no copyright exist in favor ofpoet John Blake,
intellectual integrity requires that the authors of 2009 Bar Exam
creative work should properly be credited.
DENICOLA TEST (2009)
b. Who are the particular parties or entities who exercise True or False: The Denicola Test in Intellectual
copyright over there mixed Warm Warm Honey? Property :aw states that if design elements of an
Explain. (3%) article reflect a merger of aesthetic and functional
SUGGESTED ANSWER: considerations, the artistic aspects of the work cannot
The parties who exercise copyright or economic rights be conceptually separable from the utilitarian
over the remixed Warm Warm Honey would be aspects; thus ,the article cannot be copyrighted.
Galactic Records and Planet Films. In the case of
Galactic Records, it bought the economic rights of SUGGESTED ANSWER:
Mocha Warm. In the case of Planet Films, it True. Applying the Denicola Test in Brandir
commissioned the remixed work. International, Inc. v. Cascade 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 element which can be separated
COPYRIGHT; COMMISSIONED WORK (2008) from the utilitarian elements, then the aesthetic
Eloise, an accomplished writer, was hired by Petong element may be copyrighted.(Note: It is suggested
to write a bimonthly newspaper column for Diario de that the candidate be given full credit for whatever
Manila, a newly-established newspaper of which answer or lack of it. Further, it is suggested that terms
Petong was the editor-in-chief. Eloise was to be paid or any matter originating from foreign laws or
P1,000 for each column that was published. In the jurisprudence should not be asked.)
course of two months, Eloise submitted three columns
which, after some slight editing, were printed in the INFRINGEMENT; TRADEMARK, COPYRIGHT (2009)
newspaper. However, Diario de Manila proved After disposing of his last opponent in only two rounds
unprofitable and closed only after two months. Due to in Las Vegas, the renowned Filipino boxer Sonny
the minimal amounts involved, Eloise chose not to Bachao arrived at the Ninoy Aquino International
pursue any claim for payment from the newspaper, Airport met by thousands of hero-worshipping fans and
which was owned by New Media Enterprises. Three hundreds of media photographers. The following day,
years later, Eloise was planning to publish an a colored photograph of Sonny wearing a black polo
anthology of her works, and wanted to include the shirt embroidered with the 2-inch Lacoste Crocodile
three columns that appeared in the Diario de Manila logo appeared on the front page of every Philippine
in her anthology. She asks for you legal advice: newspaper. Lacoste International, the French firm
that manufactures lacoste apparel and owns the
a. Does Eloise have to secure authorization from New Lacoste trademark, decided to cash in on the universal
Media Enterprises to be able to publish her Diario de popularity of the boxing icon. It reprinted the
Manila columns in her own anthology? Explain fully. photographs, with thepermission of the newspaper
(4%) publishers, and went on a world-wide blitz of print
commercials in which Sonny is shown wearing a
 Lacoste shirt alongside the phrase Sonny Bachao just or the Arbitration Rules of the United Nations
loves Lacoste. When Sonny sees the Lacoste Commission on International Trade Law or the Rules
advertisements, he hires you as lawyer and asks you of Arbitration of the International Chamber of
to sue Lacoste International before a Philippine court: Commerce(ICC) shall apply and the venue of
arbitration shall be the Philippines or any neutral
b. For trademark Infringement in the Philippines because country;
Lacoste International used his image without his 4. The Philippine taxes on all payments relating to the
permission:(2%) technology transfer agreement shall be borne by the
licensor(Sec. 88, Intellectual Property Code).
SUGGESTED ANSWER:
Sonny Bachao cannot sue for infringement of b. Enumerate three stipulations that are prohibited in
trademark. The photographs showing him wearing a technology transfer agreements. (3%)
Lacoste shirt were not registered as a trademark
(Pearl & Dean (Phil.), Inc. v.Shoemart, Inc., 409 SCRA SUGGESTED ANSWER:
231 (2003)). The following stipulations are prohibited in
technology transfer agreements:
c. For copyright infringement because of the 1. Those that contain restrictions regarding the volume
unauthorized use of the published photographs; (2%) and structure of production;
SUGGESTED ANSWER: 2. Those that prohibit the use of competitive
Sonny Bachao cannot sue for infringement of copyright technologies in a non-exclusive agreement; and
for the unauthorized use of the photographs showing 3. Those that establish a full or partial purchase option
him wearing a Lacoste shirt. The copyright to the in favor of the licensor
photographs belong to the newspapers which
published them inasmuch as the photographs were the ---
result of the performance of the regular duties of the
photographers (Subsection173.3 (b), Intellectual ARTICLE OF COMMERCE; AS TRADEMARK, PATENT &
Property Code(IPC)).Moreover, the newspaper COPYRIGHT (2010)
publishers authorized the reproduction of the Can an article of commerce serve as a trademark and
photographs (Section 177,Intellectual Property Code). at the same time enjoy patent and copyright
protection? Explain and give an example. (2%)
d. For injunction in order to stop Lacoste International
from featuring him in their commssercials. (2%) Will SUGGESTED ANSWER:
these actions prosper? Explain. A stamped or marked container of goods can be
registered as trademark(subsections 113.1 of the
SUGGESTED ANSWER: Intellectual Property Code). An original ornamental
The complaint for injunction to stop Lacoste design or model for articles of manufacturer can be
International from featuring him in its advertisements copyrighted (Subsection 172.1 of the Intellectual
will prosper. This is a violation of subsection 123, 4(c) Property Code). An ornamental design cannot be
ofthe IPC and Art.169 in relation to Art.170 of the IPC. patented, because aesthetic creations cannot be
patented (Section 22of the Intellectual Property
e. Can Lacoste International validly invoke the defense Code).However, it can be registered as an industrial
that it is not a Philippine company and, therefore, design (Subsections 113.1 and172.1 of the Intellectual
Philippine courts have no jurisdiction? Explain. (2%) Code). Thus, a container of goods which has an
original ornamental design can be registered as
SUGGESTED ANSWER: trademark, can be copyrighted, and can be registered
No. Philippine courts have jurisdiction over it, if it is as an industrial design.
doing business in the Philippines. Moreover, under
Section133 of the Corporation Code, while a foreign ALTERNATIVE ANSWER:
corporation doing business in the Philippines without It is entirely possible for an article of commerce to
license to do business, cannot sue or intervene in any bear a registered trademark, be protected by a patent
action, it may be sued or proceeded against before and have most, or some part of it copyrighted. A book
our courts or administrative tribunal (De Joya is a good example. The name of the publisher or the
v.Marquez, 481 SCRA 376 (2006)). colophon used in the book may be registered
2010 Bar Exam trademarks, the ink used in producing the book may
be covered by a patent, and the text and design of the
AGREEMENTS: TECHNOLOGY TRANSFER book may be covered by copyrighted.
AGREEMENTS; REQUISITES & PROHIBITIONS (2010)
a. What contractual stipulations are required in all ---
technology transfer agreements? (2%)
INFRINGEMENT; CLAIMS (2010)
SUGGESTED ANSWER: While vacationing in Boracay, Valentino
The following stipulations are required in all surreptitiously took photographs of his girlfriend
technology transfer agreements: Monaliza in her skimpy bikini. Two weeks later, her
1. The laws of the Philippines shall govern its photographs appeared in the Internet and in a national
interpretation and in the event of litigation, the venue celebrity magazine. Monaliza found out that Valentino
shall be the proper court in the place where the had sold the photographs to the magazine, adding
licensee has its principal office; insult to injury, uploaded them to his personal blog on
2. Continued access to improvements in techniques and the Internet.
processes related to the technology shall be made
available during the period of the technology transfer a. Monaliza filed a complaint against Valentino damages
arrangement; based on, among other grounds, violation of her
3. In case it shall provide for arbitration, the Procedure intellectual property rights. Does she have any cause
of Arbitration of the Arbitration Law of the Philippines of action? Explain. (2%)
 MAGIC shoes in the Philippines. Y counters that the
SUGGESTED ANSWER: trademark MAGIC is not registered with the
Monaliza cannot sue Valentino for violation of her Intellectual Property Office as a trademark and
intellectual property rights, because she was not the therefore no one has the right to prevent its parallel
one who took the pictures (Subsection 178.1 of the importation.
Intellectual Property Code). She may sue Valentino
instead for violation of her right to privacy. He a. Who is correct? Why? (2%)
surreptitiously took photographs of her and then sold
the photographs to a magazine and uploaded them to SUGGESTED ANSWER:
his personal blog in the Internet (Tolentino, X is correct. His rights under his exclusive
Commentaries and Jurisprudence on the Civil Code of distributorship agreement are property rights entitled
the Philippines, Vol. I, 1987 ed., p. 169). to protection. The importation and sale by Y of MAGIC
shoes constitute unfair competition (Yuv. Court of
b. Valentinos friend Francesco stole the photographs Appeals, 217 SCRA 328(1993)). Registration of the
and duplicated them and sold them to a magazine trademark is not necessary in case of an action for
publication. Valentino sued Francisco for infringement unfair competition (Del Monte Corporation v. Court of
and damages. Does Valentino have any cause of Appeals, 181SCRA 410 (1990)).
action? Explain. (2%)
ALTERNATIVE ANSWER:
SUGGESTED ANSWER: Y is correct. The rights in a trademark are acquired
Valentino cannot sue Francesco for infringement, through registration made validly in accordance with
because he has already sold the photographs to a the Intellectual Property Code (Section 122of the
magazine(Angeles vs. Premier Productions, Inc., 6CAR Intellectual Property Code).
(2s) 159).
b. Suppose the shoes are covered by a Philippine
ALTERNATIVE ANSWER: patent issued to the owner, what would your answer
Yes, as the author of the photographs, Valentino has be? Explain. (2%)
exclusive economic rights thereto, which include the
rights to reproduce, to distribute, to perform, to SUGGESTED ANSWER:
display, and to prepare derivative works based upon A patent for a product confers upon its owner the
the copyrighted work. He sold only the photographs to exclusive right of importing the product (Subsection
the magazine; however, he still retained some 71.1 of the Intellectual Property Code). The
economic rights thereto. Thus, he has a cause of importation of a patented product without the
action against infringement against Francesco. authorization of the owner of the patent constitutes
infringement of the patent (Subsection 76.1 of the
c. Does Monaliza have any cause of action against Intellectual Property Code). X can prevent the parallel
Francesco? Explain. (2%) importation of such shoes by Y without its
authorization.
SUGGESTED ANSWER:
Monaliza can also sue Francesco for violation of her
right to privacy. 2011 Bar Exam No LIP questions
2012 Bar Exam No LIP questions
---

PATENT: NON-PATENTABLE; METHOD OF DIAGNOSIS

& TREATMENT (2010) 2013 Bar Exam
Dr. Nobel discovered a new method of treating
Alzheimers involving a special method of diagnosing
the disease, treating it with a new medicine that has COPYRIGHT (2013)
been discovered after long experimentation and field Ruby is a fine arts student in a university. He stays in
testing, and novel mental isometric exercises. He a boarding house with Bernie as his roommate. During
comes to you for advice on how he can have his his free time, Rudy would paint and leave his finished
discoveries protected. Can he legally protect his new works lying around the boarding house. One day, Rudy
method of diagnosis, the new medicine, and the new saw one of his works an abstract painting entitled
method of treatment? If no, why? If yes, how? (4%) Manila Traffic Jam on display at the university
cafeteria. The cafeteria operator said he purchased
SUGGESTED ANSWER: the painting from Bernie who represented himself as
Dr. Nobel can be protected by a patent for the new its painter and owner Rudy and the cafeteria operator
medicine as it falls within the scope of Sec. 21 of the immediately confronted Bernie. While admitting that
Intellectual Property Code (Rep. Act No. 8293, as he did not do the painting,. Bernie claimed ownership
amended). But no protection can be legally extended of its copyright since he had already registered it in
to him for the method of diagnosis and method of his name with the National Library as provided in the
treatment which are expressly non-patentable Intellectual Property Code. Who owns the copyright to
(Sec.22, Intellectual Property Code). the painting? Explain (8%).

--- SUGGESTED ANSWER:

Rudy owns the copyright to the painting because he
TRADEMARK; UNFAIR COMPETITION (2010) was the one who actually created it. (Section 178.1 of
For years, Y has been engaged in the parallel then Intellectual Property Code) His rights existed
importation of famous brands, including shoes from the moment of its creation(Section 172 of the
carrying the foreign brand MAGIC. Exclusive Intellectual Property Code; Unilever Philippines (PRC)
distributor X demands that Y cease importation v. Court of Appeals, 498 SCRA 334, 2006). The
because of his appointment as exclusive distributor of registration of the painting by Bernie with the
National Library did not confer copyright upon him. B. Copyright infringement
The registration is merely for the purpose of C. Patent infringement
completing the records of the National Library. D. Unfair competition
(Section191 of the Intellectual Property Code).
SUGGESTED ANSWER:
D. Unfair competition

2014 Bar Exam ---

TRADEMARKS (2014) TRADEMARKS; HOLISTIC OR DOMINANCY TEST

Jinggy went to Kluwer University (KU) in Germany for (2014)
his doctorate degree (Ph.D.). He completed his degree Skechers Corporation sued Inter-Oacific for trademark
with the highest honors in the shortest time. When he infringement, claiming that Inter-Pacific used
came back, he decided to set-up his own graduate Skechers registered S logo mark on Inter-Pacifics
school in his hometown in Zamboanga. After seeking shoe products without its consent. Skechers has
free legal advice from his high-flying lawyer-friends, registered the trademark SKECHERS and the
he learned that the Philippines follows the trademark S (with an oval design) with the IPO.
territoriality principle in trademark law, i.e.,
trademark rights are acquired through valid In its complaint, Skechers points out the following
registration in accordance with the law. Forth with, similarities: the color scheme of the blue, white, and
Jinggy named his school the Kluwer Graduate School gray utilized by Skechers. Even the design and wave-
of Business of Mindanao and immediately secured like pattern of the mid-sole and outer sole of Inter
registration with the Bureau of Trademarks. KU did Pacifics shoes are very similar to Skechers shoes, if
not like the unauthorized use of its name by its top not exact patterns thereof. On the side of Inter-
alumnus no less. KU sought your help. What advice can Pacifics shoes, near the upper part, appears the
you give KU? (4%) stylized S placed in the exact location as that of the
stylized S the Skechers shoes. On top of the
SUGGESTED ANSWER: tongue of both shoes, appears the stylized S in
I can advise KU to file a petition to cancel the practically the same location and size.
registration of the name Kluwer Graduate School of In its defense, Inter-Pacific claims that under the
Business of Mindanao KGSBM with the Bureau of Holistic Test, the following dissimilarities are present:
Trademarks. the mark S found in Strong shoes is not enclosed in
an oval design; the word Strong for Inter-Pacific
The petition could be anchored on the following facts: and Skechers USA for Skechers; and, Strong shoes
Kluwer University is the owner of the name Kluwer. are modestly priced compared to the costs of Skechers
Jinggy registered the trademark in bad faith. He came shoes.
to know of the trademark because he went to Kluwer
University in Germany for his doctorate degree. KU is Under the foregoing circumstances, which is the
the owner of the name Kluwer and has the sole right proper test to be applied- Holistic or Dominancy Test?
to register the same. Foreign marks that are not Decide.
registered are still accorded protection against
infringement and/or unfair competition under the SUGGESTED ANSWER:
Paris Convention for the Protection of Industrial Considering the facts given and the arguments of the
Property. Both the Philippines and Germany are parties, the dominancy test is the proper test to
signatories to the Paris Convention. Under the said apply. Thus, the appropriation and use of the letter
Convention, the trademark of a national or signatory S by Inter Pacific on its rubber shoes constituted an
to the Paris Convention is entitled to its protection in infringement of the trademark of Skechers.
other countries that are also signatories to the
Convention without need of registering the The essential element of infringement under the IPC
trademark. is that the infringing mark is likely to cause confusion.
The petition could also be based on the fact, if it were In determining similarity and likelihood of confusion,
proven by KU, that Kluwer: is a well-known mark and jurisprudence has developed tests- the Dominancy and
entitled to protection as KU and KGSBM belong to the the Holistic Tests. The Dominancy Test focuses on the
same class of services i.e. Class 41 (education and similarity of the competing trademakrs that might
entertainment). KU must also prove that a competent cause confusion, mistake, and deception in the mind
authority of the Philippines has designated Kluwer of the purchasing public. Duplication or imitation is
to be well-known internationally and in the not necessary; neither is it required that the mark
Philippines. sought to be registered suggest an effort to imitate.
Finally, the petition could also be based on the fact, Given more consideration are the aural and visual
if it were proven by KU, that Kluwer is a trade name impressions created by the marks on the buyers of
that KU has adopted and used before its use and goods, giving little weight to factors like prices,
registration by Jinggy (Ecole de Cuisine Manille quality, sales outlets, and market segments.
[Cordon Bleu of the Philippines], Inc. v. Renaud
Cointreau & Cie and Le Cordon Bleu Intl., B.V., G.R. In contrast, the Holistic or Totality Test necessitates
No. 185830, June 5, 2013). a consideration of the entirety of the marks as applied
to the products, including the labels and packaging, in
--- determining confusing similarity. The discerning eye
of the observer must focus not only on the
FRAUDULENT INTENT (2014) predominant words, but also on the other features
In intellectual property cases, fraudulent intent is not appearing on both labels so that the observer may
an element of the cause of action except in cases draw conclusion on whether one is confusingly similar
involving: to the other.
A. Trademark infringement
 Applying the Dominancy Test to the problem, we find
that the use of the stylized S by Inter-Pacific in its
Strong rubber shoes infringes on the mark already
registered by Skechers with the IPO. While it is
undisputed that stylized S of Skechers is within an
oval design, the dominant feature of the trademark is
the stylized S, as it is precisely the stylized S
which catches the eye of the purchaser. Thus, even if
Inter-Pacific did not use the oval-design, the mere
fact that it used the same stylized S, the same being
the dominant feature of the trademark of Skechers,
already constitutes infringement under the
Dominancy Test (Skechers USA Inc v. Inter Pacific
Industrial Trading Corp., et al., G.R. No. 164321, Nov.
30, 2006).

---

COPYRIGHT INFRINGEMENT (2014)

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%)

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.

Applying the above-listed factors to the problem, KKs

importation of the books and their sale local clearly
show the unfairness of her use of the books,
particularly the adverse effect of her price
discounting on the business of XX