2000 Bar Exam – No
LIP questions
2001 Bar Exam – No
LIP questions
2002 Bar Exam – No
LIP questions
2003 Bar Exam – No
LIP questions
2004
Bar Exam
Intellectual Creation (2004)
Dr. ALX is a scientist
honored for work related to the human genome project. Among his pioneering
efforts concern stem cell research for the cure of Alzheimer’s disease. Under
corporate sponsorship, he helped develop a microbe that ate and digested oil spills
in the sea. Now he leads a college team for cancer research in MSS State. The
team has experimented on a mouse whose body cells replicate and bear cancerous
tumor. Called ―oncomouse, it is a life-form useful for medical research and it
is a novel creation. Its body cells do not naturally occur in nature but are
the product of man’s intellect, industry and ingenuity. However, there is a
doubt whether local property laws and ethics would allow rights of exclusive
ownership on any life-form. Dr. ALX needs your advice:
a.
Whether the reciprocity principle in
private international law could be applied in our jurisdiction; and
SUGGESTED
ANSWER:
The reciprocity principle
in private international law may be applied in our jurisdiction. Section 3 of
R.A. 8293, the Intellectual Property Code, provides for reciprocity, as
follows: "Any person who is a national, or who is domiciled, or has a real
and effective industrial establishment in a country which is a party to any
convention, treaty or agreement relating to intellectual property rights or the
repression of unfair competition, to which the Philippines is also a party, or
extends reciprocal rights to nationals of the Philippines by law, shall be
entitled to benefits to the extent necessary to give effect to any provision of
such convention, treaty or reciprocal law, in addition to the rights to which
any owner of an intellectual property right is otherwise entitled by this Act.
(n)" To illustrate: the Philippines may refrain from imposing a
requirement of local incorporation or establishment of a local domicile for the
protection of industrial property rights of foreign nationals (citizens of Canada,
Switzerland, U.S.) if the countries of said foreign nationals refrain from
imposing said requirement on Filipino citizens.
ALTERNATIVE
ANSWER:
Reciprocity principle
cannot be applied in our jurisdiction because the Philippines is a party to the
TRIPS agreement and the WTO. The principle involved is the most-favored nation
clause which is the principle of non-discrimination. The protection afforded to
intellectual property protection in the Philippines also applies to other
members of the WTO. Thus, it is not really reciprocity principle in private
international law that applies, but the most-favored nation clause under public
international law.
b.
Whether there are legal and ethical
reasons that could frustrate his claim of exclusive ownership over the life-form
called ―oncomouse‖ in Manila? What will be your advice to him? (5%)
SUGGESTED
ANSWER:
There is no legal reason
why "oncomouse" cannot be protected under the law. Among those
excluded from patent protection are "plant varieties or animal breeds, or
essentially biological process for the production of plants and animals"
(Section 22.4 Intellectual Property Code, R.A. No. 8293). The
"oncomouse" in the problem is not an essentially 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, intellect
and industry. The breeding of oncomouse has novelty, inventive step and
industrial application. These are the three requisites of patentability. (Sec.
29, IPC) There are no ethical reasons why Dr. ADX and his college team cannot
be given exclusive ownership over their invention. The use of such genetically
modified mouse, useful for cancer research, outweighs considerations for animal
rights. There are no legal and ethical reasons that would frustrate Dr. ALX's
claim of exclusive ownership over "oncomouse". Animals are property
capable of being appropriated and owned'. In fact, one can own pet dogs or
cats, or any other animal. If wild animals are capable of being owned, with
more reason animals technologically enhanced or corrupted by man's invention or
industry are susceptible to exclusive ownership by the inventor.
ALTERNATIVE
ANSWER:
The oncomouse is a higher
life form which does not fall within the definition of the term
"invention". Neither may it fall within the ambit of the term
"manufacture" which usually implies a non-living mechanistic product.
The oncomouse is better regarded as a "discovery" which is the common
patrimony of man.
ALTERNATIVE
ANSWER:
The "oncomouse"
is a non-patentable invention. Hence, cannot be owned exclusively by its
inventor. It is a method for the treatment of the human or animal body by
surgery or therapy and diagnostic methods practiced on said bodies are not patentable
under Sec. 22 of the IPC.
----
COPYRIGHT;
COMMISSIONED ARTIST (2004)
BR and CT are noted artists whose
paintings are highly prized by collectors. Dr. DL commissioned them to paint a
mural at the main lobby of his new hospital for children. Both agreed to
collaborate on the project for a total fee of two million pesos to be equally
divided between them. It was also agreed that Dr. DL had to provide all the
materials for the painting and pay for the wages of technicians and laborers
needed for the work on the project.
Assume that the project is completed
and both BR and CT are fully paid the amount of P2M as artists' fee by DL.
Under the law on intellectual property, who will own the mural? Who will own
the copyright in the mural? Why? Explain. (5%)
SUGGESTED
ANSWER:
Under Section 178.4 of the
Intellectual Property Code, in case of commissioned work, the creator (in the
absence of a written stipulation to the contrary) owns the copyright, but the
work itself belongs to the person who commissioned its creation. Accordingly,
the mural belongs to DL. However, BR and CT own the copyright, since there is
no stipulation to the contrary.
2005 Bar Exam
PATENTS
(2005)
Cesar works in a car manufacturing
company owned by Joab. Cesar is quite innovative and loves to tinker with
things. With the materials and parts of the car, he was able to invent a
gas-saving device that will enable cars to consume less gas. Francis, a
co-worker saw how Cesar created the device and likewise came up with a similar
gadget, also using scrap materials and spare parts of the company. Thereafter,
Francis an application for registration of his device with the Bureau of
Patents. 18 months later, Cesar filed his application for the registration of
the device with the Bureau of Patents
a. Is the gas-saving device
patentable?
b. Assuming that it is patentable, who
is entitled to the patent? What if any is the remedy of the losing party
c. Supposing Joab got wind of the
inventions of his employees and also laid a claim to the patents. Asserting
that cesar and francis where using materials and company time in making the
devices will his claim prevail over those of his employees?
SUGGESTED
ANSWERS:
a. It is patentable because it is new.
It involves an inventive step and its industry applicable (Sec 21 IPC)
b. Francis is entitled to patent,
because he has earlier filing date (sec 29 IPC). The remedy of Cesar is to file
a petition in court for the cancellation of the patent of Francis on the ground
that he is the true and actual inventor and ask for substitution as patentee
(sec 67-68 IPC)
c. The claim of Joab will not prevail
over those of his employees, even if they used his materials and company time
in making the gas-saving device. The invention of the gas-saving device is not
part of their regular duties as employees (sec 30.2(a) IPC)
2006 Bar
Exam
PATENTS
(2006)
Supposing Albert Einstein were alive
today and he filed with the Intellectual Property Office an application for
patent of his theory of relativity expressed in the formula E=mc2.
The IPO disapproved Einstein application on the ground that his theory if
relativity is not patentable
Is the IPO action correct?
SUGGESTED
ANSWER:
Yes, the IPO's action is correct that
the theory of relativity is not patentable. Under section 22.1 of the IPC.m
" discoveries, scientific theories and mathematical methods" are not
patentable.
---
COPYRIGHT
(2006)
In a written legal opinion for a
client on the difference between apprenticeship and learnership, Liza quoted
without permission a Labor Law expert's comment appearing in his book
"Annotations On Labor Code"
Can the Labor Law expert hold Liza
liable for infringement of copyright for quoting a portion of his book without
his permission?
SUGGESTED
ANSWER:
No, the Labor Law expert cannot hold
Liza liable for infringement of copyright. Under Sec 184.1(k) of the IPC.
"Any use made of a work for the purpose of any judicial proceedings or for
the giving of professional advice by a legal practitioner" shall not constitute
infringement of copyright.
2007 Bar Exam
Copyright; Infringement (2007)
Diana and Piolo are famous
personalities in show business who kept their love affair secret. They use a
special instant messaging service which allows them to see one another’s typing
on their own screen as each letter key is pressed. When Greg, the controller of
the service facility, found out their identities, he kept a copy of all the
messages Diana and Piolo sent each other and published them. Is Greg liable for
copyright infringement? Reason briefly.(5%)
SUGGESTED
ANSWER:
Yes, Greg is liable for copyright
infringement. Letter are among the works which are protected from the moment of
their creation (Section 172,intellectual Property Code; Columbia Pictures, Inc.
v Court of Appeals, 261SCRA 144 [1996]).
The publication of the letters without
the consent of their writers constitutes infringement of copyright.
ALTERNATIVE
ANSWER:
No, Greg is not liable for copyright
infringement. There is no copyright protecting electronic documents. What are
involved here are text messages, not letter in their ordinary sense. Hence, the
protection under the copyright law does not extend to text messages
(Section172, Intellectual Property Code).The messages that Diana and Piolo
exchanged through the use of messaging service do not constitute literary and
artistic works under Section 172 of the Intellectual Property Code. They are
not letter under Section 172(d).
For copyright to subsist in a
“message”, it must qualify as a “work” (Section 172, Intellectual Property
Code). Whether the messages are entitled or not to copyright protection would
have to be resolved in the light of the provision of the Intellectual Property
Code.
Note: Since the law on this matter is
not clear, it is suggested that either of the above of the above suggested
answers should be given full credit.
2008
Bar Exam
Copyright; Commissioned Artist (2008)
In 1999, Mocha warn, an American
musician, had a bit rap single called Warm Warm Honey which he himself composed
and performed. The single was produced by a California record company, Galactic
Records. Many notice that some passages from Warm Warm Honey sounded eerily
similar to parts of Under Hassle, a 1978 hit song by the British rock and
Majesty. A copyright infringement suit was filed in the United States against
Mocha Warm by Majesty. It was later settled out of court, with Majesty
receiving attribution as co-author of Warm Warm Honey as well as a share in the
royalties. By 2002, Mocha Warm was nearing bankruptcy and he sold his economic
rights over Warm Warm Honey to Galactic Records for $10,000. In 2008, 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 use in
one of its latest films, Astig!. DJ Chef Jean remixed Warm Warm Honey with a
salsa beat, and interspersed as well a recital of poetic stanza by John Blake,
century Scottish poet. DJ Chef Jean died shortly after submitting the remixed
Warm Warm Honey to Planet Films. Prior to the release of Astig!. Mocha Warm
learns of the remixed Warm Warm Honey and demands that he be publicly
identified as the author of the remixed song is all the CD covers and publicity
releases of Planet Films.
a.
Who
are the parties or entities entitled to be credited as author of the remixed
Warm Warm Honey? Reason out your answers. (3%)
SUGGESTED
ANSWER:
The parties entitled to be credited as
authors of the remixed Warm Warm Honey are Mocha Warm, Majesty, DJ Chef Jean
and John Blake, for the segments that was the product of the irrespective
intellectual efforts. n the case of Mocha Warm and Majesty, who are the
attributed co-authors, and in spite of the sale of the economic right to
Galactic Records, they retain their moral rights to the copyrighted rap, which
include the right to demand attribution to them of the authorship (Sec.
193,IPC).Which respect to DJ Chef Jean, in spite of his death, and although he
was commissioned by Planet Films for the remix, the rule is that the person who
so commissioned work shall have ownership of the work, but copyright thereto
shall remain with creator, 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 creative work should properly be
credited.
b.
Who
are the particular parties or entities who exercise copyright over there mixed
Warm Warm Honey? Explain. (3%)
SUGGESTED
ANSWER:
The parties who exercise copyright or economic
rights over the remixed Warm Warm Honey would be Galactic Records and Planet
Films. In the case of Galactic Records, it bought the economic rights of Mocha
Warm. In the case of Planet Films, it commissioned the remixed work.
---
Copyright; Commissioned Work (2008)
Eloise, an accomplished writer, was
hired by Petong to write a bimonthly newspaper column for Diario de Manila, a
newly-established newspaper of which Petong was the editor-in-chief. Eloise was
to be paid P1,000 for each column that was published. In the course of two
months, Eloise submitted three columns which, after some slight editing, were
printed in the newspaper. However, Diario de Manila proved unprofitable and
closed only after two months. Due to the minimal amounts involved, Eloise chose
not to pursue any claim for payment from the newspaper, which was owned by New
Media Enterprises. Three years later, Eloise was planning to publish an
anthology of her works, and wanted to include the three columns that appeared
in the Diario de Manila in her anthology. She asks for you legal advice:
a.
Does
Eloise have to secure authorization from New Media Enterprises to be able to
publish her Diario de Manila columns in her own anthology? Explain fully. (4%)
SUGGESTED
ANSWER:
Eloise may publish the columns without
securing authorization from New Media Enterprises. Under Sec. 172 of the
Intellectual Property Code, original intellectual creations in the literary and
artistic domain are protected from the moment of their creation and shall include
those in periodicals and newspapers. Under Sec. 178, copyright ownership shall
belong to the author. In case of commissioned work, the person who so
commissioned work shall have ownership of work, but copyright shall remain with
creator, unless there is a written stipulation to the contrary.
b.
Assume
that New Media Enterprises plans to publish Eloise’s columns in its own
anthology entitled, ―The Best of Diario de Manila‖ Eloise wants to prevent the
publication of her columns in that anthology since she was never paid by the
newspaper. Name one irrefutable legal argument Eloise could cite to enjoin New
Media Enterprises from including her columns in its anthology. (2%)
SUGGESTED
ANSWER:
Under the IPC, the copyright or
economic rights to the columns she authored pertains only to Eloise. She can
invoke the right to either “authorize or prevent” reproduction of the work,
including the public distribution of the original and each copy of the work “by
sale or other forms of transfer of ownership,” Since this would be the effect
of including her column in the anthology.
2009 Bar Exam
Denicola Test (2009)
True or False: The Denicola Test in
Intellectual Property :aw states that if design elements of an article reflect
a merger of aesthetic and functional considerations, the artistic aspects of
the work cannot be conceptually separable from the utilitarian aspects; thus
,the article cannot be copyrighted.
SUGGESTED
ANSWER:
True. Applying the Denicola Test in
Brandir 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 from the
utilitarian elements, then the aesthetic element may be copyrighted.(Note: It
is suggested that the candidate be given full credit for whatever answer or
lack of it. Further, it is suggested that terms or any matter originating from
foreign laws or jurisprudence should not be asked.)
Infringement; Trademark, Copyright (2009)
After disposing of his last opponent
in only two rounds in Las Vegas, the renowned Filipino boxer Sonny Bachao
arrived at the Ninoy Aquino International Airport met by thousands of
hero-worshipping fans and hundreds of media photographers. The following day, a
colored photograph of Sonny wearing a black polo shirt embroidered with the
2-inch Lacoste Crocodile logo appeared on the front page of every Philippine
newspaper. Lacoste International, the French firm that manufactures lacoste
apparel and owns the Lacoste trademark, decided to cash in on the universal
popularity of the boxing icon. It reprinted the photographs, with thepermission
of the newspaper 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 loves Lacoste. When Sonny sees the Lacoste
advertisements, he hires you as lawyer and asks you to sue Lacoste
International before a Philippine court:
b.
For
trademark Infringement in the Philippines because Lacoste International used
his image without his permission:(2%)
SUGGESTED
ANSWER:
Sonny Bachao cannot sue for
infringement of trademark. The photographs showing him wearing a Lacoste shirt
were not registered as a trademark (Pearl & Dean (Phil.), Inc. v.Shoemart,
Inc., 409 SCRA 231 (2003)).
c.
For
copyright infringement because of the unauthorized use of the published
photographs; (2%)
SUGGESTED
ANSWER:
Sonny Bachao cannot sue for
infringement of copyright for the unauthorized use of the photographs showing
him wearing a Lacoste shirt. The copyright to the 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 Property Code(IPC)).Moreover, the newspaper publishers
authorized the reproduction of the photographs (Section 177,Intellectual
Property Code).
d.
For
injunction in order to stop Lacoste International from featuring him in their
commssercials. (2%) Will these actions prosper? Explain.
SUGGESTED
ANSWER:
The complaint for injunction to stop
Lacoste International from featuring him in its advertisements will prosper.
This is a violation of subsection 123, 4(c) ofthe IPC and Art.169 in relation
to Art.170 of the IPC.
e.
Can
Lacoste International validly invoke the defense that it is not a Philippine
company and, therefore, Philippine courts have no jurisdiction? Explain. (2%)
SUGGESTED
ANSWER:
No. Philippine courts have
jurisdiction over it, if it is doing business in the Philippines. Moreover,
under Section133 of the Corporation Code, while a foreign corporation doing
business in the Philippines without license to do business, cannot sue or intervene
in any action, it may be sued or proceeded against before our courts or
administrative tribunal (De Joya v.Marquez, 481 SCRA 376 (2006)).
2010
Bar Exam
Agreements: Technology Transfer Agreements; Requisites &
Prohibitions (2010)
a. What contractual stipulations are
required in all technology transfer agreements? (2%)
SUGGESTED
ANSWER:
The following stipulations are
required in all technology transfer agreements:
1.
The
laws of the Philippines shall govern its interpretation and in the event of
litigation, the venue shall be the proper court in the place where the licensee
has its principal office;
2.
Continued
access to improvements in techniques and processes related to the technology
shall be made available during the period of the technology transfer
arrangement;
3.
In
case it shall provide for arbitration, the Procedure of Arbitration of the
Arbitration Law of the Philippines or the Arbitration Rules of the United
Nations Commission on International Trade Law or the Rules of Arbitration of
the International Chamber of Commerce(ICC) shall apply and the venue of
arbitration shall be the Philippines or any neutral country;
4.
The
Philippine taxes on all payments relating to the technology transfer agreement
shall be borne by the licensor(Sec. 88, Intellectual Property Code).
b. Enumerate three stipulations that
are prohibited in technology transfer agreements. (3%)
SUGGESTED
ANSWER:
The following stipulations are
prohibited in technology transfer agreements:
1.
Those
that contain restrictions regarding the volume and structure of production;
2.
Those
that prohibit the use of competitive technologies in a non-exclusive agreement;
and
3.
Those
that establish a full or partial purchase option in favor of the licensor
---
Article of Commerce; As Trademark, Patent & Copyright (2010)
Can an article of commerce serve as a
trademark and at the same time enjoy patent and copyright protection? Explain
and give an example. (2%)
SUGGESTED
ANSWER:
A stamped or marked container of goods
can be registered as trademark(subsections 113.1 of the Intellectual Property
Code). An original ornamental design or model for articles of manufacturer can
be copyrighted (Subsection 172.1 of the Intellectual Property Code). An
ornamental design cannot be patented, because aesthetic creations cannot be
patented (Section 22of the Intellectual Property Code).However, it can be
registered as an industrial design (Subsections 113.1 and172.1 of the
Intellectual Code). Thus, a container of goods which has an original ornamental
design can be registered as trademark, can be copyrighted, and can be
registered as an industrial design.
ALTERNATIVE
ANSWER:
It is entirely possible for an article
of commerce to bear a registered trademark, be protected by a patent and have
most, or some part of it copyrighted. A book is a good example. The name of the
publisher or the colophon used in the book may be registered trademarks, the
ink used in producing the book may be covered by a patent, and the text and
design of the book may be covered by copyrighted.
---
Infringement; Claims (2010)
While vacationing in Boracay,
Valentino surreptitiously took photographs of his girlfriend Monaliza in her
skimpy bikini. Two weeks later, her photographs appeared in the Internet and in
a national celebrity magazine. Monaliza found out that Valentino had sold the
photographs to the magazine, adding insult to injury, uploaded them to his
personal blog on the Internet.
a.
Monaliza
filed a complaint against Valentino damages based on, among other grounds,
violation of her intellectual property rights. Does she have any cause of
action? Explain. (2%)
SUGGESTED
ANSWER:
Monaliza cannot sue Valentino for
violation of her intellectual property rights, because she was not the one who
took the pictures (Subsection 178.1 of the Intellectual Property Code). She may
sue Valentino instead for violation of her right to privacy. He surreptitiously
took photographs of her and then sold the photographs to a magazine and
uploaded them to his personal blog in the Internet (Tolentino, Commentaries and
Jurisprudence on the Civil Code of the Philippines, Vol. I, 1987 ed., p. 169).
b.
Valentino’s
friend Francesco stole the photographs and duplicated them and sold them to a
magazine publication. Valentino sued Francisco for infringement and damages.
Does Valentino have any cause of action? Explain. (2%)
SUGGESTED
ANSWER:
Valentino cannot sue Francesco for
infringement, because he has already sold the photographs to a magazine(Angeles
vs. Premier Productions, Inc., 6CAR (2s) 159).
ALTERNATIVE
ANSWER:
Yes, as the author of the photographs,
Valentino has exclusive economic rights thereto, which include the rights to
reproduce, to distribute, to perform, to display, and to prepare derivative
works based upon the copyrighted work. He sold only the photographs to the
magazine; however, he still retained some economic rights thereto. Thus, he has
a cause of action against infringement against Francesco.
c.
Does
Monaliza have any cause of action against Francesco? Explain. (2%)
SUGGESTED
ANSWER:
Monaliza can also sue Francesco for
violation of her right to privacy.
---
Patent: Non-Patentable; Method of Diagnosis & Treatment (2010)
Dr. Nobel discovered a new method of
treating Alzheimer’s involving a special method of diagnosing the disease,
treating it with a new medicine that has been discovered after long
experimentation and field testing, and novel mental isometric exercises. He
comes to you for advice on how he can have his discoveries protected. Can he
legally protect his new method of diagnosis, the new medicine, and the new
method of treatment? If no, why? If yes, how? (4%)
SUGGESTED
ANSWER:
Dr. Nobel can be protected by a patent
for the new medicine as it falls within the scope of Sec. 21 of the
Intellectual Property Code (Rep. Act No. 8293, as amended). But no protection
can be legally extended to him for the method of diagnosis and method of treatment
which are expressly non-patentable (Sec.22, Intellectual Property Code).
---
Trademark; Unfair Competition (2010)
For years, Y has been engaged in the
parallel importation of famous brands, including shoes carrying the foreign
brand MAGIC. Exclusive distributor X demands that Y cease importation because
of his appointment as exclusive distributor of MAGIC shoes in the Philippines.
Y counters that the trademark MAGIC is not registered with the Intellectual
Property Office as a trademark and therefore no one has the right to prevent
its parallel importation.
a. Who is correct? Why? (2%)
SUGGESTED
ANSWER:
X is correct. His rights under his
exclusive distributorship agreement are property rights entitled to protection.
The importation and sale by Y of MAGIC shoes constitute unfair competition
(Yuv. Court of Appeals, 217 SCRA 328(1993)). Registration of the trademark is not
necessary in case of an action for unfair competition (Del Monte Corporation v.
Court of Appeals, 181SCRA 410 (1990)).
ALTERNATIVE
ANSWER:
Y is correct. The rights in a
trademark are acquired through registration made validly in accordance with the
Intellectual Property Code (Section 122of the Intellectual Property Code).
b. Suppose the shoes are covered by a
Philippine patent issued to the owner, what would your answer be? Explain. (2%)
SUGGESTED
ANSWER:
A patent for a product confers upon
its owner the exclusive right of importing the product (Subsection 71.1 of the
Intellectual Property Code). The importation of a patented product without the
authorization of the owner of the patent constitutes infringement of the patent
(Subsection 76.1 of the Intellectual Property Code). X can prevent the parallel
importation of such shoes by Y without its authorization.
2011 Bar Exam – No
LIP questions
2012 Bar Exam – No
LIP questions
2013 Bar Exam
Copyright (2013)
Ruby is a fine arts student in a university.
He stays in a boarding house with Bernie as his roommate. During his free time,
Rudy would paint and leave his finished works lying around the boarding house.
One day, Rudy saw one of his works – an abstract painting entitled Manila
Traffic Jam –on display at the university cafeteria. The cafeteria operator
said he purchased the painting from Bernie who represented himself as its
painter and owner Rudy and the cafeteria operator immediately confronted
Bernie. While admitting that he did not do the painting,. Bernie claimed
ownership of its copyright since he had already registered it in his name with
the National Library as provided in the Intellectual Property Code. Who owns
the copyright to the painting? Explain (8%).
SUGGESTED
ANSWER:
Rudy owns the copyright to the
painting because he was the one who actually created it. (Section 178.1 of then
Intellectual Property Code) His rights existed from the moment of its
creation(Section 172 of the Intellectual Property Code; Unilever Philippines (PRC)
v. Court of Appeals, 498 SCRA 334, 2006). The registration of the painting by
Bernie with the National Library did not confer copyright upon him. The
registration is merely for the purpose of completing the records of the
National Library. (Section191 of the Intellectual Property Code).
2014
Bar Exam
Trademarks (2014)
Jinggy went to Kluwer University (KU)
in Germany for his doctorate degree (Ph.D.). He completed his degree with the
highest honors in the shortest time. When he came back, he decided to set-up
his own graduate school in his hometown in Zamboanga. After seeking free legal
advice from his high-flying lawyer-friends, he learned that the Philippines
follows the territoriality principle in trademark law, i.e., trademark rights
are acquired through valid registration in accordance with the law. Forth with,
Jinggy named his school the Kluwer Graduate School of Business of Mindanao and
immediately secured registration with the Bureau of Trademarks. KU did not like
the unauthorized use of its name by its top alumnus no less. KU sought your
help. What advice can you give KU? (4%)
SUGGESTED
ANSWER:
I can advise KU to file a petition to
cancel the registration of the name “Kluwer” Graduate School of Business of
Mindanao “KGSBM” with the Bureau of Trademarks.
The petition could be anchored on the
following facts: Kluwer University is the owner of the name “Kluwer.” Jinggy
registered the trademark in bad faith. He came to know of the trademark because
he went to Kluwer University in Germany for his doctorate degree. KU is the
owner of the name “Kluwer” and has the sole right to register the same. Foreign
marks that are not registered are still accorded protection against
infringement and/or unfair competition under the Paris Convention for the
Protection of Industrial Property. Both the Philippines and Germany are
signatories to the Paris Convention. Under the said Convention, the trademark
of a national or signatory to the Paris Convention is entitled to its
protection in other countries that are also signatories to the Convention
without need of registering the trademark.
The petition could also be based on
the fact, if it were proven by KU, that “Kluwer: is a well-known mark and
entitled to protection as KU and KGSBM belong to the same class of services
i.e. Class 41 (education and entertainment). KU must also prove that a competent
authority of the Philippines has designated “Kluwer” to be well-known
internationally and in the Philippines.
Finally, the petition could also be
based on the fact, if it were proven by KU, that “Kluwer” is a trade name that
KU has adopted and used before its use and registration by Jinggy (Ecole de
Cuisine Manille [Cordon Bleu of the Philippines], Inc. v. Renaud Cointreau
& Cie and Le Cordon Bleu Int’l., B.V., G.R. No. 185830, June 5, 2013).
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FRAUDULENT
INTENT (2014)
In intellectual property cases,
fraudulent intent is not an element of the cause of action except in cases
involving:
A. Trademark
infringement
B. Copyright
infringement
C. Patent
infringement
D. Unfair
competition
SUGGESTED
ANSWER:
D. Unfair competition
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TRADEMARKS; HOLISTIC OR DOMINANCY TEST (2014)
Skechers Corporation sued
Inter-Oacific for trademark infringement, claiming that Inter-Pacific used
Skechers’ registered “S” logo mark on Inter-Pacific’s shoe products without its
consent. Skechers has registered the trademark “SKECHERS” and the trademark “S”
(with an oval design) with the IPO.
In its complaint, Skechers points out
the following similarities: the color scheme of the blue, white, and gray
utilized by Skechers. Even the design and “wave-like” pattern of the mid-sole
and outer sole of Inter Pacific’s shoes are very similar to Skechers’ shoes, if
not exact patterns thereof. On the side of Inter-Pacific’s shoes, near the
upper part, appears the stylized “S” placed in the exact location as that of
the stylized “S” the Skechers shoes. On top of the “tongue” of both shoes,
appears the stylized “S” in practically the same location and size.
In its defense, Inter-Pacific claims
that under the Holistic Test, the following dissimilarities are present: the
mark “S” found in Strong shoes is not enclosed in an “oval design;” the word
“Strong” for Inter-Pacific and “Skechers USA” for Skechers; and, Strong shoes
are modestly priced compared to the costs of Skechers shoes.
Under the foregoing circumstances,
which is the proper test to be applied- Holistic or Dominancy Test? Decide.
SUGGESTED
ANSWER:
Considering the facts given and the
arguments of the parties, the dominancy test is the proper test to apply. Thus,
the appropriation and use of the letter “S” by Inter Pacific on its rubber
shoes constituted an infringement of the trademark of Skechers.
The essential element of infringement
under the IPC is that the infringing mark is likely to cause confusion. In
determining similarity and likelihood of confusion, jurisprudence has developed
tests- the Dominancy and the Holistic Tests. The Dominancy Test focuses on the
similarity of the competing trademakrs that might cause confusion, mistake, and
deception in the mind of the purchasing public. Duplication or imitation is not
necessary; neither is it required that the mark sought to be registered suggest
an effort to imitate. Given more consideration are the aural and visual
impressions created by the marks on the buyers of goods, giving little weight
to factors like prices, quality, sales outlets, and market segments.
In contrast, the Holistic or Totality
Test necessitates 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
predominant words, but also on the other features appearing on both labels so
that the observer may draw conclusion on whether one is confusingly similar to
the other.
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).
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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, KK’s 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.
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