COURSE SYLLABUS ON INTELLECTUAL PROPERTY LAW

NEW ERA UNIVERSITY – COLLEGE OF LAW

WEEK 4 Last Week of Trademarks

Duration of Trademarks, I.P.C. Sect. 145, 146

Trademark Infringement & Unfair Competition, I.P.C. Sect. 168

1. NBI – Microsoft Corporation v. Judy Hwang, G.R. 188225, Nov. 25, 2012

Tradenames Protection
2. The United States v. J Lyberg, G.R. 9458, Nov. 24, 1914
3. Shangri La Internation Hotel Management v. Developers Group of Companies, G.R. 159938, Mar. 31, 2006

Plant Variety Protection

Plant Variety Protection Act, Sect. 3 (m)

Overlapping to Intellectual Property Laws (Trademark)

Indigenous People Rights Act, Sect. 34 & 35
Wildlife Conservation and Protection Act, Sect. 7, 14, 25
Philippine Environmental Code, Sect. 28

Trade Secrets
Air Philippines Corporation v. Pennswell G.R. 172835, Dec. 13, 2007

Rights of Foreign Corporations to sue for Copyright Infringement, I.P.C. Sect. 160

False Designation of Origin, I.P.C. Sect. 169

1. Uyco v. Lo, G.R. No. 202423, Jan. 28, 2013

Trademarks and Medicine and Cheaper Medicine and Quality Medicines Act of 2008, I.P.C. Sect. 147

Geographical Indications
Article 22.2 TRIPS Agreement

Additional Cases for WEEK 4

1) Zuneca vs Natrapharm Sept 8,2020. G.R. 211850
2) Kolin vs Kolin Dec 01,2021 GR 221360-61
3) Kolin vs Kolin Feb 9, 2021 GR 229165
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Duration of Trademarks, I.P.C. Sect. 145, 146

SECTION 145. Duration. – A certificate of registration shall remain in force for ten (10) years: Provided, That the
registrant shall file a declaration of actual use and evidence to that effect, or shall show valid reasons based on
the existence of obstacles to such use, as prescribed by the Regulations, within one (1) year from the fifth
anniversary of the date of the registration of the mark. Otherwise, the mark shall be removed from the Register
by the Office. (Sec. 12, R.A. No. 166a)

SECTION 146. Renewal. – 146.1. A certificate of registration may be renewed for periods of ten (10) years at its
expiration upon payment of the prescribed fee and upon filing of a request. The request shall contain the
following indications:
(a) An indication that renewal is sought;
(b) The name and address of the registrant or his successor-in-interest, hereafter referred to as the “right
holder”;
(c) The registration number of the registration concerned;
(d) The filing date of the application which resulted in the registration concerned to be renewed;
(e) Where the right holder has a representative, the name and address of that representative;
(f) The names of the recorded goods or services for which the renewal is requested or the names of the recorded
goods or services for which the renewal is not requested, grouped according to the classes of the Nice
Classification to which that group of goods or services belongs and presented in the order of the classes of the
said Classification; and
(g) A signature by the right holder or his representative. 146.2. Such request shall be in Filipino or English and may
be made at any time within six (6) months before the expiration of the period for which the registration was
issued or renewed, or it may be made within six (6) months after such expiration on payment of the additional
fee herein prescribed.

146.3. If the Office refuses to renew the registration, it shall notify the registrant of his refusal and the reasons
therefore.

146.4. An applicant for renewal not domiciled in the Philippines shall be subject to and comply with the
requirements of this Act. (Sec. 15, R.A. No. 166a)

Trademark Infringement & Unfair Competition, I.P.C. Sect. 168

SECTION 168. Unfair Competition, Rights, Regulation and Remedies. – 168.1. A person who has identified in the
mind of the public the goods he manufactures or deals in, his business or services from those of others, whether
or not a registered mark is employed, has a property right in the goodwill of the said goods, business or services
so identified, which will be protected in the same manner as other property rights.

168.2. Any person who shall employ deception or any other means contrary to good faith by which he shall pass
off the goods manufactured by him or in which he deals, or his business, or services for those of the one having
established such goodwill, or who shall commit any acts calculated to produce said result, shall be guilty of unfair
competition, and shall be subject to an action therefore.

168.3. In particular, and without in any way limiting the scope of protection against unfair competition, the
following shall be deemed guilty of unfair competition:

(a) Any person, who is selling his goods and gives them the general appearance of goods of another
manufacturer or dealer, either as to the goods themselves or in the wrapping of the packages in which they are
contained, or the devices or words thereon, or in any other feature of their appearance, which would be likely to
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influence purchasers to believe that the goods offered are those of a manufacturer or dealer, other than the
actual manufacturer or dealer, or who otherwise clothes the goods with such appearance as shall deceive the
public and defraud another of his legitimate trade, or any subsequent vendor of such goods or any agent of any
vendor engaged in selling such goods with a like purpose;

(b) Any person who by any artifice, or device, or who employs any other means calculated to induce the false
belief that such person is offering the services of another who has identified such services in the mind of the
public; or

(c) Any person who shall make any false statement in the course of trade or who shall commit any other act
contrary to good faith of a nature calculated to discredit the goods, business or services of another.

168.4. The remedies provided by Sections 156, 157 and 161 shall apply mutatis mutandis. (Sec. 29, R.A. No. 166a)

NBI – Microsoft Corporation v. Judy Hwang, G.R. 188225, Nov. 25, 2012
FACTS:
In May 1993, Microsoft Corporation and Beltron Computer Philippines, Inc. entered into a Licensing Agreement.
Under Section 2(a) of the Agreement, Microsoft authorized Beltron, for a fee, to:

1. Reproduce and install no more than one copy of Windows on each Customer System hard disk;

2. Distribute directly or indirectly and license copies of Windows (reproduced as per Section 2 of the Agreement
and/or acquired from an Authorized Replicator or Authorized Distributor.

Their agreement allowed either party to terminate if one fails to comply with their respective obligations.
Microsoft terminated the Agreement in June 1995 because of Beltron’s non-payment of royalties. Later,
Microsoft learned that Beltron was illegally copying and selling copies of Windows. Microsoft then sought the
assistance of the National Bureau of Investigation. NBI agents made some purchases from Beltron where they
acquired a computer unit pre-installed with Windows 12 windows installer CDs packed as Microsoft products. The
agents were not given the end-user license agreements, user manuals, and certificates of authenticity for the
products purchased. They were given a receipt which has a header of “. (Phils) Inc. BELTRON COMPUTER”. TMTC
stands for Taiwan Machinery Display and Trade Center.

A search warrant was subsequently issued where 2,831 CDs of Windows installers, among others, were seized.
Based on the items seized from Beltron, Microsoft filed a case of copyright infringement against Beltron and
TMTC as well as their officers (Judy Hwang et al) before the Department of Justice (DOJ). Beltron, in its
counter-affidavit, argued the following:

1. That Microsoft’s issue with Beltron was really just to have leverage in forcing Beltron to pay the unpaid
royalties; and that Microsoft should have filed a collection suit.

2. That the computer unit allegedly purchased by the NBI agents from them cannot be decisively traced as coming
from Beltron because the receipt issued to the agents did not list the computer unit as one of the items bought.

3. That the 12 installers purchased by the agents which are actually listed in the receipt were not manufactured by
Beltron but rather they were genuine copies purchased by TMTC from an authorized Microsoft seller in
Singapore.
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4. That the 2,831 installers seized from them were not a property of Beltron but rather they were left to them by
someone for safekeeping.

The DOJ secretary agreed with Beltron and dismissed the case. The Secretary ruled that the issue of the authority
of Beltron to copy and sell Microsoft products should first be resolved in a civil suit. Microsoft appealed the
decision of the DOJ secretary before the Supreme Court. Meanwhile, Beltron filed a motion to quash the search
warrant before the RTC that issued the same. The RTC partially granted the quashal. The Court of Appeals
reversed the RTC. Hwang et al did not appeal the CA decision.

ISSUE:
Whether or not the DOJ Secretary is correct.

HELD:
No. Section 5 of Presidential Decree 49 enumerates the rights vested exclusively on the copyright owner.
Contrary to the DOJ’s ruling, the gravamen of copyright infringement is not merely the unauthorized
“manufacturing” of intellectual works but rather the unauthorized performance of any of the acts covered by
Section 5. Hence, any person who performs any of the acts under Section 5 without obtaining the copyright
owner’s prior consent renders himself civilly and criminally liable for copyright infringement.

Infringement of a copyright is a trespass on a private domain owned and occupied by the owner of the copyright,
and, therefore, protected by law, and infringement of copyright, or piracy, which is a synonymous term in this
connection, consists in the doing by any person, without the consent of the owner of the copyright, of anything
the sole right to do which is conferred by statute on the owner of the copyright.

Being the copyright and trademark owner of Microsoft software, Microsoft acted well within its rights in filing the
complaint before DOJ on the incriminating evidence obtained from Beltron. Hence, it was highly irregular for the
DOJ to hold that Microsoft sought the issuance of the search warrants and the filing of the complaint merely to
pressure Beltron to pay its overdue royalties to Microsoft.

There is no basis for the DOJ to rule that Microsoft must await a prior “resolution from the proper court of
whether or not the Agreement is still binding between the parties.” Beltron has not filed any suit to question
Microsoft’s termination of the Agreement. Microsoft can neither be expected nor compelled to wait until Beltron
decides to sue before Microsoft can seek remedies for violation of its intellectual property rights.

Furthermore, the articles seized from Beltron are counterfeit per se because Microsoft does not (and could not
have authorized anyone to) produce such CD installers The copying of the genuine Microsoft software to produce
these fake CDs and their distribution are illegal even if the copier or distributor is a Microsoft licensee. As far as
these installer CD-ROMs are concerned, the Agreement (and the alleged question on the validity of its
termination) is immaterial to the determination of Beltron’s liability for copyright infringement and unfair
competition. Beltron’s defense that the box of CD installers found in their possession was only left to them for
safekeeping is not tenable.

The United States v. J Lyberg, G.R. 9458, Nov. 24, 1914

FACTS:
● Defendant, J. Kyburz, was found guilty of violating the unauthorized use of a trade name, Meridian
watches, owned by Greilsammer Hermanos.
● Greilsammer Hermanos imported watches from a European manufacturer, engraved their trade-mark on
them, and sold them under the trade name of Meridian watches.
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● Kyburz also imported similar watches from the same manufacturer, advertised and sold them under the
name of Meridian watches.
● Kyburz was charged with using the trade name with the intent to defraud the public and Greilsammer
Hermanos.

ISSUE:
Whether Kyburz's use of the trade name Meridian watches constitutes a violation of the law and unfair
competition.

RULING:
● Kyburz is guilty of violating section 6 of the law.
● Kyburz's use of the trade name Meridian watches with the intent to defraud the public and Greilsammer
Hermanos constitutes unfair competition.
● Kyburz was sentenced to pay a fine.

Ratio:
● Trade names are protected against use or imitation on the grounds of unfair competition.
● No one may induce the public to believe that the goods he offers for sale are the goods of another, and
thereby appropriate to himself the value of the reputation which the other has acquired for the products
or merchandise manufactured or sold by him.
● Trade names are acquired by adoption and user, and belong to the one who first uses them and gives
them value.
● Greilsammer Hermanos had acquired the exclusive ownership of the trade name Meridian as applied to
their watches.
● Kyburz's use of the same trade name constituted an infringement of their rights.
● The master is criminally responsible for the acts of his servants and employees in violation of the law, as
long as he assents, either expressly or impliedly, to the commission of the act.

Conclusion:
Kyburz was found guilty of unfair competition and violating the unauthorized use of a trade name.
The court affirmed the judgment of the lower court and ordered Kyburz to pay the fine.

Shangri La Internation Hotel Management v. Developers Group of Companies, G.R. 159938, Mar. 31, 2006
FACTS:
Respondent DGCI applied for and was granted registration of the ‘Shangri-La’ mark and ‘S’ logo in its restaurant
business. Petitioner Shangri-La, chain of hotels and establishments owned by the Kuok family worldwide, moved
to cancel the registration of the mark on the ground that it was illegally and fraudulently obtained and
appropriated by respondents. Petitioner also moved to register the mark and logo in its own name. Later,
respondent DGCI filed before the trial court a complaint for infringement against petitioner alleging that DGCI
had been the prior exclusive user and the registered owner in the Philippines of said mark and logo. Petitioner
Shangri-La argued that respondent had no right to apply for the registration because it did not have prior actual
commercial use thereof. The trial court found for the respondent. CA affirmed.

ISSUE:
Whether or not respondent’s prior use of the mark is a requirement for its registration.
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RULING:
YES. While the present law on trademarks has dispensed with the requirement of prior actual use at the time of
registration, the law in force at the time of registration must be applied. Under the provisions of the former
trademark law, R.A. No. 166, as amended, hence, the law in force at the time of respondent’s application for
registration of trademark, the root of ownership of a trademark is actual use in commerce. Section 2 of said law
requires that before a trademark can be registered, it must have been actually used in commerce and service for
not less than two months in the Philippines prior to the filing of an application for its registration. Trademark is a
creation of use and therefore actual use is a prerequisite to exclusive ownership and its registration with the
Philippine Patent Office is a mere administrative confirmation of the existence of such right.

While the petitioners may not have qualified under Section 2 of R.A. No. 166 as a registrant, neither did
respondent DGCI, since the latter also failed to fulfill the 2-month actual use requirement. What is worse, DGCI
was not even the owner of the mark. For it to have been the owner, the mark must not have been already
appropriated (i.e., used) by someone else. At the time of respondent DGCI’s registration of the mark, the same
was already being used by the petitioners, albeit abroad, of which DGCI’s president was fully aware.

Plant Variety Protection Act, Sect. 3 (m)

m) “Variety” means a plant grouping within a single botanical taxon of the lowest known rank, that without
regard to whether the conditions for plant variety protection are fully met, can be defined by the expression of
the characteristics resulting from a given genotype or combination of genotypes, distinguished from any other
plant groupings by the expression of at least one (1) characteristic, and considered as a unit with regard to the
suitability for being propagated unchanged. A variety may be represented by seed, transplants, plants, tubers,
tissue culture plantlets, and other forms.

Indigenous People Rights Act, Sect. 34 & 35

SECTION 34. Right to Indigenous Knowledge Systems and Practices and to Develop own Sciences and
Technologies. — ICCs/IPs are entitled to the recognition of the full ownership and control and protection of their
cultural and intellectual rights. They shall have the right to special measures to control, develop and protect their
sciences, technologies and cultural manifestations, including human and other genetic resources, seeds, including
derivatives of these resources, traditional medicines and health practices, vital medicinal plants, animals and
minerals, indigenous knowledge systems and practices, knowledge of the properties of fauna and flora, oral
traditions, literature, designs, and visual and performing arts.

SECTION 35. Access to Biological and Genetic Resources. — Access to biological and genetic resources and to
indigenous knowledge related to the conservation, utilization and enhancement of these resources, shall be
allowed within ancestral lands and domains of the ICCs/IPs only with a free and prior informed consent of such
communities, obtained in accordance with customary laws of the concerned community.

Wildlife Conservation and Protection Act, Sect. 7, 14, 25

Section 7. Collection of Wildlife. ­Collection of wildlife may be allowed in accordance with Section 6 of this Act:
Provided, That in the collection of wildlife, appropriate and acceptable wildlife collection techniques with least or
no detrimental effects to the existing wildlife populations and their habitats shall, likewise, be required: Provided,
further, That collection of wildlife by indigenous people may be allowed for traditional use and not primarily for
trade: Provided, furthermore, That collection and utilization for said purpose shall not cover threatened species:
Provided, finally, That Section 23 of this Act shall govern the collection of threatened species.
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Section 14. Bioprospecting. - Bioprospecting shall be allowed upon execution of an undertaking by any
proponent, stipulating therein its compliance with and commitment(s) to reasonable terms and conditions that
may be imposed by the Secretary which are necessary to protect biological diversity.

The Secretary or the authorized representative, in consultation with the concerned agencies, before granting the
necessary permit, shall require that prior informed consent be obtained by the applicant from the concerned
indigenous cultural communities, local communities, management board under Republic Act No. 7586 or private
individual or entity. The applicant shall disclose fully the intent and scope of the bioprospecting activity in a
language and process understandable to the community. The prior informed consent from the indigenous
peoples shall be obtained in accordance with existing laws. The action on the bioprospecting proposal by
concerned bodies shall be made within a reasonable period.

Upon submission of the complete requirements, the Secretary shall act on the research proposal within a
reasonable period.

If the applicant is a foreign entity or individual, a local institution should be actively involved in the research,
collection and, whenever applicable and appropriate in the technological development of the products derived
from the biological and genetic resources.

Section 25. Establishment of Critical Habitats. - Within two (2) years following the effectivity of this Act, The
Secretary shall designate critical habitats outside protected areas under Republic Act No. 7586, where threatened
species are found. Such designation shall be made on the basis of the best scientific data taking into
consideration species endemicity and/or richness, presence of man-made pressures/threats to the survival of
wildlife living in the area, among others.

All designated, critical habitats shall be protected, in coordination with the local government units and other
concerned groups, from any form of exploitation or destruction which may be detrimental to the survival of the
threatened species dependent therein. For such purpose, the Secretary may acquire, by purchase, donation or
expropriation, lands, or interests therein, including the acquisition of usufruct, establishment of easements or
other undertakings appropriate in protecting the critical habitat.

Philippine Environmental Code, Sect. 28

Section 28.
The national government, through the Department of Natural Resources, shall establish a system of rational
exploitation and conservation of wildlife resources and shall encourage citizen participation in the maintenance
and/or enhancement of their continuous productivity.

Air Philippines Corporation v. Pennswell G.R. 172835, Dec. 13, 2007

FACTS:
Petitioner Air Philippines Corporation is a domestic corporation engaged in the business of air transportation
services. On the other hand, Respondent Pennswell, Inc. was organized to engage in the business of
manufacturing and selling industrial chemicals, solvents, and special lubricants. Both entered into a contract;
Petitioner failed to pay its outstanding balance. Respondent filed a collection of sum of money, and Petitioner
contended that its refusal is due to purported fraud of the ingredients of the object of their contract.

Petitioner also prayed that Respondent be ordered to provide a detailed list of their ingredients. Respondent
then raised the matter of "trade secret."
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ISSUE:
Are the ingredients of Respondent's products considered trade secrets and not subject to compulsory disclosure?

RULING:
Yes, Respondent's ingredients are considered trade secrets because the detailed ingredients sought to be
revealed will have a commercial value to the respondent.

In the case at bar, petitioner cannot rely on Section 77 of Republic Act 7394, or the Consumer Act of the
Philippines, in order to compel respondent to reveal the chemical components of its products. While it is true that
all consumer products domestically sold, whether manufactured locally or imported, shall indicate their general
make or active ingredients in their respective labels of packaging, the law does not apply to respondent.
Respondent's specialized lubricants are not consumer products. "Consumer products," as it is defined in Article
4(q), refers to goods, services and credits, debts or obligations which are primarily for personal, family, household
or agricultural purposes, which shall include, but not be limited to, food, drugs, cosmetics, and devices. This is not
the nature of the respondent's products. Its products are not intended for personal, family, household or
agricultural purposes. Rather, they are for industrial use, specifically for the use of aircraft propellers and engines.
Hence, it is a trade secret not subject to compulsory disclosure.

Rights of Foreign Corporations to sue for Copyright Infringement, I.P.C. Sect. 160
Section 160. Right of Foreign Corporation to Sue in Trademark or Service Mark Enforcement Action. - Any foreign
national or juridical person who meets the requirements of Section 3 of this Act and does not engage in business
in the Philippines may bring a civil or administrative action hereunder for opposition, cancellation, infringement,
unfair competition, or false designation of origin and false description, whether or not it is licensed to do business
in the Philippines under existing laws. (Sec. 21-A, R.A. No. 166a)

Uyco v. Lo, G.R. No. 202423, Jan. 28, 2013

DOCTRINES:
The law on trademarks and trade names precisely precludes a person from profiting from the business reputation
built by another and from deceiving the public as to the origins of products.

FACTS:
The disputed marks in this case are the “HIPOLITO & SEA HORSE & TRIANGULAR DEVICE,” “FAMA,” and other
related marks, service marks and trade names of Casa Hipolito S.A. Portugal appearing in kerosene burners.

Respondent Vicente Lo and Philippine Burners Manufacturing Corporation (PBMC) filed a complaint against the
officers of Wintrade Industrial Sales Corporation (Wintrade), including petitioners Chester Uyco, Winston
Uychiyong and Cherry Uyco-Ong, and of National Hardware, including Mario Sy Chua, for violation of Section
169.1, in relation to Section 170, of RA 8293.
Lo claimed in his complaint that Gasirel-Industria de Comercio e Componentes para Gass, Lda. (Gasirel), the
owner of the disputed marks, executed a deed of assignment transferring these marks in his favor, to be used in
all countries except for those in Europe and America. In a test buy, Lo purchased from National Hardware
kerosene burners with the subject marks and the designations “Made in Portugal” and “Original Portugal” in the
wrappers. These products were manufactured by Wintrade. Lo claimed that as the assignee for the trademarks,
he had not authorized Wintrade to use these marks, nor had Casa Hipolito S.A. Portugal. While a prior authority
was given to Wintrade’s predecessor-in-interest, Wonder Project & Development Corporation (Wonder), Casa
Hipolito S.A. Portugal had already revoked this authority through a letter of cancellation dated May 31, 1993. The
kerosene burners manufactured by Wintrade have caused confusion, mistake and deception on the part of the
buying public. Lo stated that the real and genuine burners are those manufactured by its agent, PBMC.
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After the preliminary investigation, the Chief State Prosecutor found probable cause to indict the petitioners for
violation of Section 169.1, in relation with Section 170, of RA 8293. This law punishes any person who uses in
commerce any false designation of origin which is likely to cause confusion or mistake as to the origin of the
product.

On appeal, the DOJ issued a resolution affirming the finding of probable case. It gave credence to Lo’s assertion
that he is the proper assignee of the subject marks. More importantly, it took note of the petitioners’ admission
that they used the words “Made in Portugal” when in fact, these products were made in the Philippines. Had they
intended to refer to the source of the design or the history of the manufacture, they should have explicitly said so
in their packaging.

ISSUE:
Whether or not petitioners should be held liable for violating Section 169.1, in relation to Section 170, of RA 8293.

HELD:
Yes.
The petitioners again try to convince the Court that they have not manufactured the products bearing the marks
“Made in Portugal” and “Original Portugal” that were bought during the test buy. However, their own admission
and the statement given by Chua that he was not aware that WINTRADE was no longer authorized to deal,
distribute or sell kerosene burner bearing the mark HIPOLITO and SEA HORSE Device, with markings “Made in
Portugal” on the wrapper as he was never informed of such by WINTRADE, bear considerable weight.

However, evidence shows that petitioners, who are officers of Wintrade, placed the words “Made in Portugal”
and “Original Portugal” with the disputed marks knowing fully well — because of their previous dealings with the
Portuguese company — that these were the marks used in the products of Casa Hipolito S.A. Portugal. More
importantly, the products that Wintrade sold were admittedly produced in the Philippines, with no authority from
Casa Hipolito S.A. Portugal. The law on trademarks and trade names precisely precludes a person from profiting
from the business reputation built by another and from deceiving the public as to the origins of products. These
facts support the consistent findings of the State Prosecutor, the DOJ and the CA that probable cause exists to
charge the petitioners with false designation of origin.

Trademarks and Medicine and Cheaper Medicine and Quality Medicines Act of 2008, I.P.C. Sect. 147
Section 147. Rights Conferred. - 147.1. The owner of a registered mark shall have the exclusive right to prevent all
third parties not having the owner's consent from using in the course of trade identical or similar signs or
containers for goods or services which are identical or similar to those in respect of which the trademark is
registered where such use would result in a likelihood of confusion. In case of the use of an identical sign for
identical goods or services, a likelihood of confusion shall be presumed.

147.2. The exclusive right of the owner of a well-known mark defined in Subsection 123.1(e) which is registered in
the Philippines, shall extend to goods and services which are not similar to those in respect of which the mark is
registered: Provided, That use of that mark in relation to those goods or services would indicate a connection
between those goods or services and the owner of the registered mark: Provided further, That the interests of
the owner of the registered mark are likely to be damaged by such use. (n)

Article 22.2 TRIPS Agreement

"Article 22.2 is found in Section 3 of Part II of the TRIPS Agreement. Part II sets out minimum standards
concerning the availability, scope and use of intellectual property rights, which is one of the objects and purposes
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of the Agreement, as highlighted in paragraph (b) of the second recital in its preamble. The first seven sections of
Part II contain standards relating to categories of intellectual property rights. Each Section provides for a different
category of intellectual property, setting out, as a minimum, the subject matter which is eligible for protection,
the scope of the rights conferred by the relevant category of intellectual property and permitted exceptions to
those rights. Section 3 contains all these features for the category of GIs, as highlighted in its title, which reads
'Protection of Geographical Indications'. Article 23.1 expressly provides for protection to prevent use of a GI for
wines and spirits. Whilst the protection of GIs affects the protection of trademarks, as expressly recognized in
Articles 22.3 and 23.2, Section 3 does not provide for trademark protection, except to the extent that trademark
systems are used to protect GIs. Therefore, read in context, the obligation in Article 22.2 to provide certain legal
means 'in respect of' GIs, is an obligation to provide for the protection of GIs.3 Australia's claim does not appear
to concern the protection of GIs, but rather the protection of other subject matter against the protection of GIs.
Therefore, it does not disclose a cause of action under Article 22.2."

4. In EC – Trademarks and Geographical Indications (US), the Panel found that the EC Regulation at issue did not
implement Article 22.2 but did not consider that this necessarily meant that the European Communities had failed
to implement Article 22.2:
"Turning to the Regulation, we note that it makes protection available, in the sense that it provides legal means
to protect GIs. However, those legal means have not been provided to interested parties with respect to GIs
located in a third country, including a WTO Member, that does not satisfy the equivalence and reciprocity
conditions, and the government of which does not examine and transmit an application. These interested parties
include persons who are 'nationals of other Members' within the meaning of Article 1.3 of the TRIPS Agreement.
Further, to the extent that the legal means may be provided to interested parties with respect to such GIs, the
Regulation alone does not provide them, because protection is contingent on satisfaction of conditions and
execution of certain functions by governments of third countries. Therefore, the Panel concludes that the United
States has made a prima facie case in support of its claim that the Regulation does not make available the legal
means to interested parties in accordance with Article 22.2 of the TRIPS Agreement. However, the obligation
under Article 22.2 is placed on the European Communities, not on the Regulation. The TRIPS Agreement creates
positive obligations in Parts II and III to accord protection according to certain minimum standards, in addition to
the prohibitions against discrimination found in the basic principles under Part I. In accordance with Article 1.1, the
European Communities is free to determine the appropriate method of implementing the provisions of the
Agreement within its own legal system and practice. It is not obliged to ensure that this particular Regulation
implements Article 22.2 where it has other measures that do so."

5. The Panel noted that there were alternative measures under which the European Communities potentially
implemented its obligations under Article 22.2 and, in the circumstances, did not find that the European
Communities had failed to implement those obligations: "Nevertheless, the United States chose to challenge only
the Regulation, as amended, 'and its related implementing and enforcement measures'. It has not demonstrated
that these alternative measures, which lie outside the Panel's terms of reference, are inadequate to provide GI
protection to for interested parties nationals of other Members as required under Article 22.2 of the TRIPS
Agreement. Therefore, it has not presented sufficient evidence to raise a presumption that the European
Communities (as opposed to the Regulation) does not implement its obligations under Article 22.2.
Accordingly, the Panel concludes that, with respect to the equivalence and reciprocity conditions and the
examination and transmission of applications under the Regulation, the United States has not made a prima facie
case that the European Communities has failed to implement its obligation under Article 22.2 of the TRIPS
Agreement."

With respect to the meaning of the term "interested party" as used in Article 22, in EC – Trademarks and
Geographical Indications (US) the Panel found that the provision regarding
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persons who may be deemed an "interested party" under Article 10(2) of the Paris Convention (1967) did not set
out a criterion for eligibility for protection for the purposes of the TRIPS Agreement although it may provide
guidance on the interpretation of Articles 22 and 23 of the TRIPS Agreement:
"The Panel accepts that an 'interested party' is a person who is entitled to receive protection under Articles 22
and 23 of the TRIPS Agreement. However, in the Panel's view, Article 10(2) of the Paris Convention (1967) does
not set out a criterion for eligibility for protection. Article 10(2) is a deeming provision for the term 'interested
party' used in Article 9(3) of the Paris Convention (1967), as made applicable under Article 10(1). Once a person
has qualified as a national, Article 10(2) may provide guidance on whether that person may be treated as an
interested party for the purposes of Articles 22 and 23 of the TRIPS Agreement." 1.3.2 No right of objection in
Article 22.2

8. In EC – Trademarks and Geographical Indications, the Panel rejected arguments in support of a claim under
Article 22.2 that an EC Regulation failed to provide a right of objection to the registration of a GI:
"Article 22.2 does not provide for a right of objection to the registration of a GI. Although Article 15.5 provides for
a right of objection to registration of a trademark, no provision in Part II of the TRIPS Agreement provides for
objections to the registration of a GI.

Therefore, the Panel rejects the United States' arguments in support of this claim insofar as they relate to
objections to GI registration, including objections by trademark owners.

There are provisions on the acquisition and maintenance of intellectual property rights, including GIs, in Article 62.
These specifically refer to related inter partes procedures such as opposition, revocation and cancellation, in
paragraph 4, which is cross-referenced in paragraph 5, where a Member's law provides for such procedures.

The opportunity or right to object forms part of an opposition procedure. However, Article 62 lies outside the
Panel's terms of reference."

Zuneca vs Natrapharm Sept 8,2020. G.R. 211850

FACTS:
Respondent Natrapharm filed a complaint against Petitioner Zuneca alleging that Zuneca’s “ZYNAPS” is
confusingly similar to its registered trademark, "ZYNAPSE," and that the confusion is dangerous because these
medical drugs are intended for different types of illnesses. Zuneca countered that it has been selling the medical
drug under the mark “ZYNAPS” since 2004, and that it was impossible that Natrapharm was unaware of its
existence before the latter had registered the name “ZYNAPSE” because Natrapharm and Zuneca had advertised
its products in the same publications and conventions. Finally, Zuneca argued that as the prior
user, it is the owner of the mark "ZYNAPS."

The Supreme Court held that Natrapharm is the lawful registrant of the “ZYNAPSE” but petitioners are
considered prior users in good faith and may continue to use “ZYNAPS.” The Court discussed that the intent of
the lawmakers was to adopt a system of acquiring rights over marks wherein the mode of acquiring ownership is
registration. In the sponsorship speech of Senator Raul Roco for the IP Code, he discussed that owing to the
country’s adherence to the Paris Convention for the Protection of Industrial Property, specifically in adopting the
Lisbon Act, the Philippines was required to adopt a system of registration of marks based not on use in the
Philippines but on foreign registration.
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RULING:
The Supreme Court affirmed the RTC’s decision that respondent Natrapharm is the lawful registrant of the
“ZYNAPSE” mark but ruled that petitioners, as prior users in good faith of the “ZYNAPS” mark, may continue to
use its mark.

The legislative intent is to abandon the rule that ownership of a mark is acquired through use. The lawmakers'
intention to change the system of acquiring rights over a mark is even more evident in the sponsorship speech of
the late Senator Raul Roco for the IP Code. The shift to a new system was brought about by the country's
adherence to treaties, and Senator Roco specifically stated that the bill abandons the rule that ownership of a
mark is acquired through use, thus:
“Part III of the Code is the new law on trademarks. On September 27, 1965, Mr. President, the Philippines adhered
to the Lisbon Act of the Paris Convention for the Protection of Industrial Property (Paris Convention). This obliged
the country to introduce a system of registration of marks of nationals of member countries of the Paris
Convention which is based not on use in the Philippines but on foreign registration. This procedure is defective in
several aspects: first, it provides to a foreign applicant a procedure which is less cumbersome compared to what
is required of local applicants who need to establish prior use as a condition for filing a trademark; and second, it
is incompatible with the "based on use" principle which is followed in the present Trademark Law.

Furthermore, Mr. President, our adherence to the Paris Convention binds us to protect well-known marks.
Unfortunately, the provisions of the Paris Convention on this matter are couched in broad terms which are not
defined in the Convention. This has given rise to litigation between local businessmen using the mark and
foreigners who own well-known marks. The conflicting court decisions on this issue aggravate the situation and
they are a compendium of contradictory cases.

The proposed [IP] Code seeks to correct these defects and provides solutions to these problems and make a
consistency in ruling for future purposes.

To comply with [the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement)] and
other international commitments, this bill no longer requires prior use of the mark as a requirement for filing a
trademark application. It also abandon the rule that ownership of a mark is acquired through use by now
requiring registration of the mark in the Intellectual Property Office. Unlike the present law, it establishes one
procedure for the registration of marks. This feature will facilitate the registration of marks.”

WHEREFORE the petition is PARTLY GRANTED and the Court hereby declares petitioners ZUNECA
PHARMACEUTICAL AND/OR AKRAM ARAIN AND/OR VENUS ARAIN, M.D., AND STYLE OF ZUNECA
PHARMACEUTICAL as the prior users in good faith of the "ZYNAPS" mark and accordingly protected under
Section 159.1 of the Intellectual Property Code of the Philippines. The assailed Decision and Resolution of the
Court of Appeals are AFFIRMED insofar as they declared respondent NATRAPHARM, INC. as the lawful registrant
of the "ZYNAPSE" mark and are SET ASIDE insofar as they hold petitioners liable for trademark infringement and
damages, directed the destruction of petitioners' goods, and enjoined petitioners from using "ZYNAPS."
SO ORDERED.

Kolin vs Kolin Dec 01,2021 GR 221360-61

FACTS:
● Kolin Electronics Co., Inc. (KECI) is a domestic corporation engaged in the manufacture, assembly, and
marketing of electronic products.
● Taiwan Kolin Corp. Ltd., represented by Kolin Philippines International, Inc. (KPII), is a corporation
organized under the laws of Taiwan and engaged in the home appliance business.
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● KECI filed an application for the registration of the "KOLIN" mark under Class 35 for the business of
manufacturing, assembling, importing, and selling electronic equipment or apparatus.
● Taiwan Kolin opposed the registration of the domain name "www.kolin.ph" on the grounds of violation of
the Intellectual Property Code and procedural non-compliance.

ISSUE:
● Whether Taiwan Kolin's failure to submit the original supporting documents in its Opposition warranted
the outright dismissal of its Opposition.
● Whether KECI has the right to register and use the mark "www.kolin.ph" consistent with its exclusive
right to use the "KOLIN" mark in relation to the goods/services covered by Class 35.
● Whether the IPO Director General erred in ruling that Taiwan Kolin's applications and registrations for the
"KOLIN" mark refer to goods and services not related to KECI's trademark application for "www.kolin.ph"
and that the registration of "www.kolin.ph" in favor of KECI is limited to the services covered by KECI's
trademark application.

RULING:
● The court denied the petitions for lack of merit.
● It upheld the dismissal of Taiwan Kolin's Opposition for procedural non-compliance.
● The court ruled that KECI has the right to register and use the mark "www.kolin.ph" under Class 35,
consistent with its exclusive right to use the "KOLIN" mark in relation to the goods/services covered by its
registration.
● The court also held that KECI's registration of "www.kolin.ph" is not limited to the services covered by its
Class 35 application.
● Taiwan Kolin's registrations for the "KOLIN" mark in other classes remain valid and enforceable.

Ratio:
● The court based its decision on the provisions of the Intellectual Property Code and the rules and
regulations governing trademark registration.
● It emphasized the importance of submitting the original or certified true copies of supporting documents
in an Opposition and the need to comply with the requirements of the law.
● The court recognized the rights of a registered trademark owner to register and use a domain name
containing its registered mark as a dominant feature, particularly in the online marketplace.
● It explained that the protection afforded to a registered trademark extends to market areas that are the
normal potential expansion of its business, but should not infringe on the rights of another trademark
owner with a registered mark in its favor.

Kolin vs Kolin Feb 9, 2021 GR 229165

FACTS:
● Kolin Electronics Co., Inc. (KECI) and Kolin Philippines International, Inc. (KPII) are involved in a dispute
over the ownership and registration of the trademark "KOLIN" for electronic products.
● KECI was declared the adjudicated owner of the "KOLIN" mark in a previous case involving KECI and TKC.
● TKC's trademark application for a similar mark was allowed by the Court in a separate case.
● KPII, an affiliate of TKC, filed a trademark application for the "KOLIN" mark covering televisions and DVD
players.
● KECI filed an opposition to the application, citing likelihood of confusion and potential damage to its
rights.
● The Intellectual Property Office Bureau of Legal Affairs (IPO-BLA) initially denied KPII's application, stating
that there was actual confusion among consumers and that KPII was an instrumentality of TKC.
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● The IPO-DG upheld the decision of the IPO-BLA.

● The Court of Appeals (CA) reversed the decision of the IPO-DG, citing the principle of res judicata and the
previous ruling in the TKC case.
● The CA allowed KPII's trademark application.

ISSUE:
● Whether KPII's trademark application should be granted despite KECI's opposition.

RULING:
● The Supreme Court ruled in favor of KECI and denied the registration of KPII's trademark application for
the "KOLIN" mark.
Ratio:
● The Court disagreed with the CA's application of res judicata, stating that all the elements of res judicata
were not present in this case.
● The Court clarified that the abandonment of the Holistic Test and the adoption of the Dominancy Test in
determining trademark resemblance.
● Using the Dominancy Test, the Court found that KPII's mark resembled KECI's mark and that the goods
covered by the marks were related.
● The Court also considered evidence of actual confusion among consumers.
● The Court concluded that KPII's trademark application should not be allowed because it would cause
damage to KECI's rights.
● The Court emphasized that KECI's mark was highly distinctive and that allowing concurrent use of the
mark would likely lead to confusion among consumers.
● The Court based its decision on the likelihood of confusion, relatedness of goods, evidence of actual
confusion, strength of the mark, and the potential for bad faith.