Our legislators tried to navigate an uncharted sea in their goal to fight terrorism and this is commendable. Nonetheless, no matter how good our intentions are, our laws must be done the right way in accordance with our fundamental law and international obligations.

Definition of Terrorism

Internationally up to this day, states are still resolving the general and specific definition of terrorism as each and every country has its own definition of terrorism. Read the definitions of terrorism mentioned on Wikipedia the latest being defined in 2019 as “the deliberate use of violence against civilian targets by a non-state actor to achieve political aims.” Notwithstanding, HB 6875 provides for the acts defined as terrorism and those which are excluded.

On the acts covered by terrorism

The proposed law provides that “when the purpose of such act, by its nature and context, is to intimidate the general public or a segment thereof, create an atmosphere or spread a message of fear, to provoke or influence by intimidation the government or any international organization…”

The definition of terrorism proposed by the UN and embodied in conventions which provide acts directed to international organization and government are as follows:

United Nations 1999 International Convention for the Suppression of the Financing of Terrorism (Terrorist Financing Convention), art. 2.1 (b) Any other act intended to cause death or serious bodily injury to a civilian, or to any other person not taking an active part in the hostilities in a situation of armed conflict, when the purpose of such act, by its nature or context, is to intimidate a population, or to compel a government or an international organization to do or to abstain from doing any act.

International Convention for the Suppression of Acts of Nuclear Terrorism Article 2.1(b) Uses in any way radioactive material or a device, or uses or damages a nuclear facility in a manner which releases or risks the release of radioactive material:
(i) With the intent to cause death or serious bodily injury; or
(ii) With the intent to cause substantial damage to property or to the environment; or
(iii) With the intent to compel a natural or legal person, an
international organization or a State to do or refrain from doing an act.

The rest of the international agreements or conventions provide “compel a Government or an international organization to do or to abstain from doing any act.”

It is interesting to note that the international definition of terrorism provides that intimidation is directed to the population but in our local definition in the Philippines, it is directed to the government and international organization. Our legislators went far beyond the definitions provided in the international conventions, I believe.

On the acts excluded

“…. terrorism as defined in this Section shall not include advocacy, protest, dissent, stoppage of work, industrial or mass action, and other similar exercises of civil and political rights, which are not intended to cause death or serious physical harm to a person, to endanger a person’s life, or to create a serious risk to public safety.”

The definition specifically provides acts included with a qualification “when the purpose of such act, by its nature and context, is to intimidate the general public or a segment thereof, create an atmosphere or spread a message of fear, to provoke or influence by intimidation the government or any international organization” and so on. However, the excluded acts have been reduced to advocacy, protest, dissent, stoppage of work, industrial or mass action, and other similar exercises of civil and political rights, which are not intended to cause death or serious physical harm to a person, to endanger a person’s life, or to create a serious risk and public safety.

The last phrase refers only to Section 4(a). This makes me realize that the acts excluded do not entirely complement the acts covered by the definition of terrorism.

Implementation

Many legal luminaries, some of them are my acquaintances, question the provisions on Section 29 on detention without a judicial warrant. They say that this violates the constitution particularly Section 1 of the Bill of Rights.

House Bill 6875 Section 29 on detention without a judicial warrant essentially provides for a detention period of 14 calendar days which can be extended to 10 days when it is established that further detention is necessary. During this period, the suspect shall be provided with a legal counsel as provided in Section 30 and upon arrest, the nearest court shall also be provided immediately with notice about the time, date, and manner of the arrest; location of the detention; physical and mental condition of the person arrested. The penalty for the arresting officer who fails to notify the judge, and to protect the rights of the detainee shall be imprisonment to ten years as provided in Section 29 and 31.

Nothing has been mentioned about the legal remedies of the person detained during the period of detention on cases of warrantless arrests. Could there be a violation of the Constitution particularly the bill of rights? Let us read the previous decisions of the Supreme Court.

• to follow

1. Online search, drafting and registration of intellectual properties are still allowed.
2. Online legal advice and other transactions are also allowed.
3. Personal appointments are allowed only through Skype, Messenger, or Whatsapp.

Contact fipalegalconsulting@gmail.com for more information.

Keep safe everyone and always update yourself with the latest information from the authorities.

On 12 April 2000, petitioner PHILITES filed a trademark application covering its fluorescent bulb, incandescent light, starter and ballast. After publication, respondent Koninklijke Philips Electronics, N .V. (“PHILIPS”) filed an opposition on 17 March 2006.

On 8 August 2006, petitioner posited that its PHILITES & LETTER P DEVICE trademark and respondent’s PHILIPS have vast dissimilarities in terms of spelling, sound and meaning.

On 9 November 2006, IPP-BLA Director Estrellita Beltran-Abelardo denied the Opposition filed by respondent PHILIPS and granted the application of Philites.

Upon appeal, the IPP-DG affirmed the decision of the IPP-BLA on 16 April 2008.

Upon intermediate appellate review, the CA ruled in favor of Philips and dismissed the application for registration of trademark by Philites on 7 October 2008. The motion for reconsideration was denied. 

ISSUES

1. Whether or not respondent’s mark is a registered and well-known mark in the Philippines; and

2. Whether or not the mark applied for by petitioner is identical or confusingly similar with that of respondent.

RULING

Petition for Review on Certiorari by Philites is DENIED.

A trademark is “any distinctive word, name, symbol, emblem, sign, or device, or any combination thereof, adopted and used by a manufacturer or merchant on his goods to identify and distinguish them from those manufactured, sold, or dealt by others.” It is “intellectual property deserving protection by law,” and “susceptible to registration if it is crafted fancifully or arbitrarily and is capable of identifying and distinguishing the goods of one manufacturer or seller from those of another.”

I.

Section 122 of the Intellectual Property Code of the Philippines (IPC) provides that rights to a mark shall be acquired through registration validly done in accordance with the provisions of this law. Corollary to that rule, Section 123 provides which marks cannot be registered.

Section 123. Registrability. – 123 .1. A mark cannot be registered if it:

xxx

(d) Is identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or priority date, in respect of:

(i) The same goods or services, or

(ii) Closely related goods or services, or

(iii) If it nearly resembles such a mark as to be likely to deceive or cause confusion;(e) Is identical with, or confusingly similar to, or constitutes a translation of a mark which is considered by the competent authority of the Philippines to be well-known internationally and in the Philippines, whether or not it is registered here, as being already the mark of a person other than the applicant for registration, and used for identical or similar goods or services: Provided, That in determining whether a mark is well-known, account shall be taken of the knowledge of the relevant sector of the public, rather than of the public at large, including knowledge in the Philippines which has been obtained as a result of the promotion of the mark.

Fredco Manufacturing Corporation v. Harvard University provides that Section 123.l(e) of R.A. No. 8293 now categorically states that ‘a mark which is considered by the competent authority of the Philippines to be well-known internationally and in the Philippines, whether or not it is registered here,’ cannot be registered by another in the Philippines. “

Rule l00(a) of the Rules and Regulations on Trademarks, Service Marks, Tradenames and Marked or Stamped Containers defines “competent authority” in the following manner:

(c) “Competent authority” for purposes of determining whether a mark is well-known, means the Court, the Director General, the Director of the Bureau of Legal Affairs, or any administrative agency or office vested with quasi-judicial or judicial jurisdiction to hear and adjudicate any action to enforce the rights to a mark.

As held in the Supreme Court Decision in Philips Export B. V, v. CA, the trademark of PHILIPS is a registered and well-known mark.

II.

Both parties are engaged in the same line of business: selling identical or similar goods such as fluorescent bulbs, incandescent lights, starters and ballasts.

In determining similarity and likelihood of confusion, jurisprudence has developed two tests: the dominancy test, and the holistic or totality test.

The dominancy test focuses on “the similarity of the prevalent or dominant features of the competing trademarks 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 suggests 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. “

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, it shows the uncanny resemblance or confusing similarity between the trademark applied for by respondent with that of petitioner’s registered trademark. Their dominant or prevalent feature is the five-letter “PHILI”, “PHILIPS” for petitioner, and “PHILITES” for respondent. The marks are confusingly similar with each other such that an ordinary purchaser can conclude an association or relation between the marks. The consuming public does not have the luxury of time to ruminate the phonetic sounds of the trademarks, to find out which one has a short or long vowel sound. At bottom, the letters “PHILI” visually catch the attention of the consuming public and the use of respondent’s trademark will likely deceive or cause confusion. Most importantly, both trademarks are used in the sale of the same goods, which are light bulbs.

The confusing similarity becomes even more prominent in the entirety of the marks used by petitioner and respondent, including the way the products are packaged. In using the holistic test, there is a confusing similarity between the registered marks PHILIPS and PHILITES. A comparison between petitioner’s registered trademark “PHILIPS” as used in the wrapper or packaging of its light bulbs and that of respondent’s applied for trademark “PHILITES” as depicted in the container or actual wrapper/packaging of the latter’s light bulbs will readily show that there is a strong similitude and likeness between the two trademarks that will likely cause deception or confusion to the purchasing public. The fact that the parties’ wrapper or packaging reflects negligible differences considering the use of a slightly different font and hue of the yellow is of no moment because taken in their entirety, respondent’s trademark “PHILITES” will likely cause confusion or deception to the ordinary purchaser with a modicum of intelligence.

MARIA LOURDES P.A. SERENO, TERESITA J. LEONARDO-DE CASTRO, MARIANO C. DEL CASTILLO, ESTELLA M. PERLAS-BERNABE , ALFREDO BENJAMIN S. CAGUIOA

The program will be in effect from May 20 to December 31, 2019 or after 100 requests for ISRs have been filed, whichever comes first.

COVERED BY THE PROGRAM ARE:

1) individual Filipino inventors and HEIs part of IPOPHL’s Innovation and Technology Support Office network.

2) foreign applicants from states included in the ‘WIPO List of eligible nationals or residents for 90% reduction in certain PCT fees’ (developing or least-developed countries). https://www.wipo.int/export/sites/www/pct/en/fees/fee_reduction.pdf

FOR FURTHER INFO, GO TO THIS LINK http://www.ipophil.gov.ph/patent-cooperation-treaty-pct-filing-assistance-program/

FACTS: E.I. Dupont Nemours and Company (E.I. Dupont Nemours) is an American corporation organized under the laws of the State of Delaware. On July 10, 1987, E.I. Dupont Nemours filed Philippine Patent Application No. 35526 before the Bureau of Patents, Trademarks, and Technology Transfer. The application covers Angiotensin II Receptor Blocking Imidazole (losartan), an invention related to the treatment of hypertension and congestive heart failure. The product was produced and marketed by Merck, Sharpe, and Dohme Corporation (Merck), E.I. Dupont Nemours’ licensee, under the brand names Cozaar and Hyzaar. The patent application was handled by Atty. Nicanor D. Mapili (Atty. Mapili), a local resident agent who handled a majority of E.I. Dupont Nemours’ patent applications in the Philippines from 1972 to 1996.chanleslaw

On December 19, 2000, E.I. Dupont Nemours’ new counsel, Ortega, Del Castillo, Bacorro, Odulio, Calma, and Carbonell, made a request to the Intellectual Property Office to act on Philippine Patent Application No. 35526 to which they replied by informing them that the appointed attorney on record was the late Atty. Nicanor D. Mapili and that the reconstituted documents provided no official revocation of his Power of Attorney and the appointment of the new applicant is required.

On May 29, 2002, E.I. Dupont Nemours submitted a Power of Attorney executed by Miriam Meconnahey, authorizing Ortega, Castillo, Del Castillo, Bacorro, Odulio, Calma, and Carbonell to prosecute and handle its patent applications and also filed a Petition for Revival with Cost of Philippine Patent Application No. 35526. They argued that Atty. Makapili did not inform them of the abandonment of their application, that the petitioner was not aware that its agent has already died.

On April 18, 2002, the Director of Patents denied the Petition for Revival for having been filed out of time. This was affirmed by the Director-General of the Intellectual Property Office on October 22, 2003. The Court of Appeals on August 31, 2004 made a decision in favor of the petitioner and granted it some relief from the gross negligence of its former lawyer. The OSG moved for reconsideration and in the interim, Therapharma, Inc. moved for leave to intervene. Therapharma, Inc. alleged that on January 4, 2003, it filed before the Bureau of Food and Drugs its own application for a losartan product “Lifezar,” a medication for hypertension, which the Bureau granted. CA granted the motion to intervene by Therapharma, Inc. and reversed its former own decision. Hence the review on certiorari under Rule 45.

ISSUE: Whether or not the patent application of losartan by Dupont should be revived.

HELD: No, the patent application for its revival was filed out of time.

Although it was in petitioner’s discretion as a foreign client to put its complete trust and confidence on its local resident agent, there was a correlative duty on its part to be diligent in keeping itself updated on the progress of its patent applications. Its failure to be informed of the abandonment of its patent application was caused by its own lack of prudence. Petitioner issued a Power of Attorney and Appointment of Resident Agent in favor of Bito, Lozada, Ortega & Castillo on March 25, 1996 but it only requested a status update of Philippine Patent Application No. 35526 on December 14, 2000, or four (4) years after it learned of Atty. Mapili’s death. The Power of Attorney shows that it was only to inform the Bureau that all notices relating to its pending patent applications should be sent to it and there was no request for specific status update. The four (4)-month period in Section 111 of the 1962 Revised Rules of Practice is not counted from actual notice of abandonment but from mailing of the notice. Since it appears from the Intellectual Property Office’s records that a notice of abandonment was mailed to petitioner’s resident agent on July 19, 1988, the time for taking action is counted from this period.

United States and the Philippines are signatories to the Paris Convention for the Protection of Industrial Property, an applicant who has filed a patent application in the United States may have a right of priority over the same invention in a patent application in the Philippines. However, this right of priority does not immediately entitle a patent applicant the grant of a patent. A right of priority is not equivalent to a patent. Otherwise, a patent holder of any member-state of the Paris Convention need not apply for patents in other countries where it wishes to exercise its patent.

Velasco, Jr., Del Castillo, and Mendoza, JJ., concur.
Brion, J., on leave

FACTS: Roma drug was selling medicines which were imported directly from abroad and not purchased through the local SmithKline, the authorized Philippine distributor of these products. For this reason, Glaxo Smithkline filed a case against Roma Drug for a violation of Section 4 (in relation to Sections 3 and 5) of Republic Act No. 8203, also known as the Special Law on Counterfeit Drugs (SLCD). Section 3(b)(3), includes “an unregistered imported drug product.” The seized imported drugs are exactly the same as their Philippine-registered counterparts and there is no claim that they were adulterated or mislabeled. They alleged “counterfeit” for the reason that they were imported abroad and not purchased from a registered owner of the patent of trademark of the drugs.

Issue: Whether or not the seized imported drugs were counterfeit.

Held: With the passage of Republic Act No. 9502, also known as the “Universally Accessible Cheaper and Quality Medicines Act of 2008”, Section 72 of the Intellectual Property Code has been effectively amended by Section 7 of Rep. Act No. 9502. R.A. No. 9502 unequivocally grants third persons the right to import drugs or medicines whose patent were registered in the Philippines by the owner of the product.

“Section 72 of Republic Act No. 8293, otherwise known as the Intellectual Property Code of the Philippines, is hereby amended to read as follows:

“Sec. 72. Limitations of Patent Rights. – The owner of a patent has no right to prevent third parties from performing, without his authorization, the acts referred to in Section 71 hereof in the following circumstances:

“72.1. Using a patented product which has been put on the market in the Philippines by the owner of the product, or with his express consent, insofar as such use is performed after that product has been so put on the said market: Provided, That, with regard to drugs and medicines, the limitation on patent rights shall apply after a drug or medicine has been introduced in the Philippines or anywhere else in the world by the patent owner, or by any party authorized to use the invention: Provided, further, That the right to import the drugs and medicines contemplated in this section shall be available to any government agency or any private third party;

72.2. Where the act is done privately and on a non-commercial scale or for a non-commercial purpose: Provided, That it does not significantly prejudice the economic interests of the owner of the patent;

72.3. Where the act consists of making or using exclusively for experimental use of the invention for scientific purposes or educational purposes and such other activities directly related to such scientific or educational experimental use;

72.4. In the case of drugs and medicines, where the act includes testing, using, making or selling the invention including any data related thereto, solely for purposes reasonably related to the development and submission of information and issuance of approvals by government regulatory agencies required under any law of the Philippines or of another country that regulates the manufacture, construction, use or sale of any product: Provided, That, in order to protect the data submitted by the original patent holder from unfair commercial use provided in Article 39.3 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement), the Intellectual Property Office, in consultation with the appropriate government agencies, shall issue the appropriate rules and regulations necessary therein not later than one hundred twenty (120) days after the enactment of this law;

72.5. Where the act consists of the preparation for individual cases, in a pharmacy or by a medical professional, of a medicine in accordance with a medical shall apply after a drug or medicine has been introduced in the Philippines or anywhere else in the world by the patent owner, or by any party authorized to use the invention: Provided, further, That the right to import the drugs and medicines contemplated in this section shall be available to any government agency or any private third party; xxx7″

DANTE O. TINGA CONCUR: LEONARDO A. QUISUMBING, CONCHITA CARPIO MORALES, PRESBITERO J. VELASCO, JR., ARTURO D. BRION