the philippines by aleli angela g. quirino apaa 50 th council meeting 24-27 october 2004 fukuoka,...

The Philippinesby

ALELI ANGELA G. QUIRINO

APAA 50th Council Meeting24-27 October 2004

Fukuoka, Japan

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I. Changes in Intellectual Property Laws

Optical Media Act of 2004

- Enacted into law on 02 March 2004.

- Implementing agency: Optical Media Board (“OMB”)

- IRR, not yet promulgated

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Optical Media Act of 2004- Optical Media (elements): 1. A storage medium or device 2. Contains information,

including sounds and/or images, or software code, which has been stored, either by mastering or replication

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Optical Media Act of 2004- Optical Media (elements):

3. May be accessed & read using a lens scanning mechanism employing a high intensity light source such as a laser or such other means as may be developed in the future

4. Includes, but is not limited to, devices which shall be listed in the IRR, or as prescribed by the OMB

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Optical Media Act of 2004- Regulated activities (license, required from OMB): 1. Importation, exportation, acquisition, sale & distribution of optical media & equipment for manufacturing or replicating optical media 2. Possession or operation of optical media manufacturing/replicating equipment

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Optical Media Act of 2004- Regulated activities (license,

required from OMB): 3. Mastering, manufacture,

replication, importation, or exportation of optical media

- License, valid for a period of three (3) years

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Optical Media Act of 2004- Source Identification Code (“SID

Code”): A system of codes used to identify the

source of all optical media mastered, manufactured, or replicated by any establishment or entity

- OMB prescribes the SID Codes for all licensed/registered persons &

entities. The Philippines

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Optical Media Act of 2004- Punishable Acts: 1. Engaging in a regulated activity

without the necessary license from the OMB

2. Failing to affix the proper SID Code

3. Affixing a false SID Code 4. Affixing the SID Code assigned

to another personThe

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Optical Media Act of 2004- Punishable Acts: 5. Manufacturing/replicating

any intellectual property in optical media without the authority or consent of the owner thereof

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Amendments to the Philippine Rules on PCT Applications

1. IPO Office Order No. 123 - Int’l application, deemed

regularly filed with the IPO as of the int’l filing date, subject to certain requisites

2. IPO Office Order No. 124 - Guidelines for requesting early

publication of application

II. Changes in Intellectual Property Practice

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Incorporation of Classes 42, 43, 44 & 45 of the Nice

Classification in the IPO Rules- IPO Office Order No. 104

Optional registration of trademark agents, patent agents, patent & trademark agents, and resident representatives

- IPO Office Order Nos. 129 and 14


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Rental of IPO Boxes- IPO Office Order No. 127 To be eligible, law offices

must have at least one (1) senior officer who is duly registered with the IPO as a resident representative or a patent agent.


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Increase in the IPO fees- IPO Office Order No. 128 Increases ranging from 30% to 300%

50% reduction for youth filers 20% reduction for electronic

filing


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Notice of IP registration to recover damages in infringement cases- IPO Office Order No. 02 Types of registration notice: 1. “Registered Mark”, “®”, or “Reg.IPOPHIL”, for registered

marks 2. “Philippine Patent” or

“Reg.IPOPHIL” & patent number, for registered patents


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Protection of state emblems & logos- IPO Memorandum Circular No. 4 Government agencies are encouraged to submit to

the IPO two (2) sets of the representation of their official logos, seals, etc..


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A. Court Decisions Smith Kline v. Court of Appeals

(GR No. 126627, 8/14/2003): The Supreme Court (“SC”) refused to apply the doctrine of equivalents and dismissed Smith Kline’s infringement case against Tryco Pharma for failure to show that its patent covers the compound “Albendazole”.

III. Relevant IntellectualProperty Decisions

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246 Corp./Rolex Music Lounge v. Daway & Montres Rolex S.A. (GR No. 157216; 11/20/2003): The SC held that the determination of the existence/absence of the requisites for the application of the IP Code provision on well-known marks registered in the Philippines, i.e., Sec. 123.1(f), is lodged with the trial courts.

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Mighty Corporation v. E&J Gallo Winery (GR No. 154342; 7/14/2004): The SC dismissed the infringement & unfair competition case filed by Gallo Winery, finding that no damage & likelihood of confusion will result due to –

1. Unrelated goods (cigarettes v. wines)

2. Differences in the marks, applying both the dominancy & holistic tests The

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McDonald’s Corp. & McGeorge Foods Industries v. L.C. Big Mak Burger, Inc. (GR No. 143993; 8/18/2004): Applying the dominancy test, the SC found L.C. Big Mak guilty of trademark infringement & unfair competition for using the mark “BIG MAK”, a colorable imitation of McDonald’s “BIG MAC” mark, for hamburger sandwiches.

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Sonic Steel Industries v. Steel Corp. (Case No. 04110958, Manila RTC Branch 24; 9/28/2004): Manila trial court dismissed Sonic’s case against Steel Corp. and upheld the latter’s copyright over a certain metal ornamentation & design found on its aluminum-zinc coated G.I.

sheets.


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B. Bureau of Legal Affairs, IPO (“BLA-IPO”) Decisions

Patents No significant patent cases were

decided by the BLA-IPO.


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Trademarks Absolute & complete ownership of

a trademark is acquired through actual commercial use of the same.

- Mighty Corporation v. Associated Anglo American Tobacco Corp.: “HONGTASHAN” & “MILLION” marks for cigarettes; BLA-IPO ruled that Mighty Corp. is the true owner of the marks for having presented adequate proof of actual use (tax clearance, sales records, etc.).


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Absolute & complete ownership of a trademark is acquired through

actual commercial use of the same.- Storm Products, Inc. v. Sun 99 Limited

of London (IPC No. 14-2002-00021; 3/31/2004): “STORM” mark for

Classes 25 & 28; BLA-IPO upheld Sun 99’s TM application for “STORM” since it was able to present proof of actual use & due to Storm’s failure to substantiate its claim of actual use.


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Absolute & complete ownership of a trademark is acquired through actual commercial use of the same.

- Macario Co Yu Kang v. BTR Industries Limited (IPC No. 14-2003-00051; 7/29/2004): “DUNLOP”

mark for Class 25; BLA-IPO upheld Kang’s cancellation petition since he was able to present sufficient proof of actual use of “DUNLOP” & BTR Industries abandoned its registration by not using & renewing the same. The

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Cases decided applying the holistic test

- DC Comics v. William Lim: “SUPERMAN” for magazines v. “SUPERBITES” for corn snacks; BLA-IPO found that the similarity in the two marks, i.e., “SUPER”, fades in the light of the substantial differences in

meaning, pronunciation, spelling, & goods covered.


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- Origin Products Ltd. v. Carmelita Cruz (IPC No. 14-2002-00057; 2/26/2004): “POLLY POCKET” for Class 28 v. “POLLY POCKET & Design” for Class 25; BLA-IPO found that Cruz’s mark (“POLLY POCKET

& Design”) is identical in all aspects with Origin’s mark (“POLLY POCKET”)


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- Snak King Corp. v. JO-NA’s Int’l (IPC No. 14-2001-00050; 4/1/2004): “SNAK KING” v. “SNAK KING & Crown Device”;BLA-IPO ruled that both marks are identical both in appearance and to the goods for which they are used, i.e., pork rinds


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- ACCO World Corp. v. Choa Beng (Inter Partes Case No. 3262;

4/12/2004): “ACCO” for Class 16 v. “ARCO” for Class 16; BLA-IPO ruled that the differences in spelling & sound, despite the similarity in most of the letters

used, results in two distinct & dissimilar marks


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Cases decided applying the holistic test- Warner Lambert Co. v. Perfetti S.p.A. (IPC No. 4043; 5/31/2004):

“CLORETS” v. “CHLORALIT”; BLA-IPO ruled that the two marks are not confusingly similar finding that the only similarity between the two is the use of four identical letters in their first syllables, i.e., “C”, “L”, “O” and “R”


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Case decided applying the dominancy test

- Zamboanga Restaurant v. Cathay Pacific Multi Commodities Corp. IPC No. 14-1998- 00073; 3/31/2004): “ZAMBOANGA” for restaurant services v. “ZAMBOANGA Brand & Device” for seafood products; BLA-IPO ruled

that the two marks are confusingly similar, finding that they both use the word “ZAMBOANGA” as their dominant feature, notwithstanding the presence of other words & devices


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Abandonment, when considered forfeiture of rights to a mark

- Westpoint Pepperell, Inc. v. Universal Towel Mfg. Co. (IPC No. 3414;

5/28/2004): Abandonment must be shown by clear & convincing evidence. To work as a forfeiture of one’s right, disuse must be permanent, intentional, & voluntary. BLA- IPO ruled that non-use due to a pending case cannot be considered as abandonment.


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Protection accorded to owner’s of well- known marks applies only if covered goods/services are similar

- DC Comics v. Fortune Tobacco (IPC No. 14- 2002-00025; 3/31/2004): “SUPERMAN” for magazines v. “SUPERMAN” for cigarettes; BLA-IPO said that the protection of the Paris Convention on well-

known marks applies if the goods/services covered by the competing marks are similar or related. Nonetheless, BLA-IPO ruled that DC Comics’ goodwill will be whittled away by Fortune’s use of “SUPERMAN”.


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Supervision of the IPO transferred from the Office of the President to the Department of Trade & Industry

on 09 August 2004

IV. Other Mattersof General Interest

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Creation of a Permanent IP Unit in the Bureau of Customs

- Customs Special Order No. 19-2003: Functions of the IP Unit include –

1. Supervising the implementation of IP border control policies

2. Processing applications for Customs recordal of IP rights


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Creation of a Permanent IP Unit in the Bureau of Customs

- Functions of the IP Unit include:

3. Acting on requests for Alert or Hold Order 4. Investigating & prosecuting

IPR violations in the proper forfeiture

proceedings


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Creation of an IPR Unit in the National Telecommunications Commission (“NTC”)- Discussions ongoing between

the IPO and the NTC- Possible regulation of cable TV operations


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Consequences of abolition of special IP courts and merging the same with SEC courts; new courts named Special Commercial Courts (“SCC”)

- Pending IP cases retained by the original special IP courts

- Training of new SCC judges


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IP-REAP gaining ground- Template ordinance adopted by

LGUs- Colloquium for judges (WIPO)- Training of prosecutors/law

enforcement authorities- IPR awareness caravans- IPR awareness as part of values

formation in schools- MOA with NTC


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IPR week Celebration- ASEAN seminar/workshop (ECAP)- Trademarks fair (“Catchy Marks to Catch Your Customers”)

- On-the-spot painting contest / poster making contest- National essay writing contest- “Bright ideas” contest- Launching of book on IPO

decisions


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MARAMING SALAMAT!

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the philippines by aleli angela g. quirino apaa 50 th council meeting 24-27 october 2004 fukuoka,...

Documents

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optical media board

ipo rules ipo office

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