News Archives - Page 3 of 6 - Federis & Associates Law

Who Owns A Copyright? IP Bureau Rules Against Creator Of a Copyrightable Work

February 15, 2016

In one of the few copyright infringement decisions to be released recently by the Bureau of Legal Affairs, it held that a company is the author of the work, even if the work was created by an individual (the Complainant) while working for the company (the Respondent Company) under a Consultancy Agreement.

The Complainant executed a Consultancy Agreement with Respondent Company, which described the scope of work as including the development of training policies and procedures manual, training manuals, English education materials and lesson plans. Complainant created a work entitled “Conversational English Study Guide First Edition” (the “Work”), which is intended to teach and improve one’s proficiency in the English language. Subsequently, an agent or representative of Respondent Company applied to register the Work with the National Library. Respondent Company also reproduced the Work as teaching materials in its classes and displayed copies of the Work inside its premises.

Complainant objected and demanded that the Respondent Company refrain from using his Work and to cancel the copyright registration issued by the National Library. Complainant then sued the Respondent Company for copyright infringement.

Respondent Company disputed Complainant’s claim of ownership arguing that he was merely an agent of the Respondent Company and that the Work was created while Complainant was performing his regularly-assigned duties.

Supreme Court Declines to Lift Permanent Injunction Banning the Sale of Zynaps in the Philippines

February 11, 2016

The Supreme Court rejected a request to lift a permanent injunction banning the sale of ZYNAPS, an anti-convulsant drug for epilepsy. In a Petition for Review seeking to set aside a Court of Appeals’ decision permanently enjoining the sale of ZYNAPS, the Supreme Court ruled that the issue has become moot in view of the trial court’s decision on the merits of a trademark infringement case. This is an important procedural case regarding the effect of a final decision on the merits when there is a pending appeal on an ancillary writ such as those involving a temporary restraining order or preliminary injunction.

The case originated from a complaint filed by Natrapharm, Inc., a local pharmaceutical company, which manufactures and sells a medicine for heart and stroke patients under the “ZYNAPSE” trademark. Natrapharm filed a case against Zuneca Pharmaceutical, the distributor of ZYNAPS, for trademark infringement with a prayer for a temporary restraining order or a writ for preliminary injunction. In its Answer, Zuneca alleged that it was the first to use the mark “ZYNAPS” based on a product registration issued in 2003. On the other hand, Natrapharm only obtained its trademark registration for “ZYNAPSE” in 2007.

SEC Cancels Third Party Company Names Using YAHOO and Variations Thereof

December 1, 2015

After a nearly 9-year effort, Yahoo! Inc. has finally prevailed in cancelling corporate names that use YAHOO! and variations thereof in a case filed with the Securities and Exchange Commission (“SEC” or “Commission”).

In February 2006, Yahoo! Inc. petitioned the SEC to cancel the corporate names of six (6) corporations on the ground that the unauthorized use of YAHOO or variations thereof, as corporate names, violated the trademark rights of Yahoo! Inc. The petition claimed that Yahoo! Inc. was the first to use and adopt the YAHOO! name and that the unauthorized use thereof violated its right as owner of this trademark, which has already been declared as famous by the Department of Trade and Industry (“DTI”).

The Petition was directed against these corporations: Yahoo Food Industries Inc., Yahoo Computer Center Co., Yahoo Trading Co., Yahoo Transport Inc., Yaho Corporation and Yaho Sales International Corporation (collectively, the “Respondents”).

Tale of Two Restaurants: Appeals Court Rules for First to Use

November 23, 2015

A trademark right acquired through use under the old law is preserved under the first-to-file system of the IP Code. This is the gist of the ruling issued by the Court of Appeals in its decision in Amber’s Best Restaurant & Ihaw-Ihaw, Inc. vs. Amber Golden Plate Restaurant, CA-G.R. Sp. No. 137629.

A popular restaurant called Amber Golden Plate Restaurant (“Respondent”) started operating in 1988. Sometime in the late 1990, an incorporator and former officer of Respondent, put up her own restaurant business using the name IHAW-IHAW SA AMBER. The latter was registered with the Securities and Exchange Commission in 2004 as “Amber’s Best Restaurant & Ihaw-Ihaw” (“Petitioner”). Until 2008, Petitioner conducted its business alongside Respondent’s business.

On October 7, 2008, Petitioner filed an application to register the mark AMBER’S BEST for several related goods and services. Respondent quickly filed its own trademark application for AMBER & LOGO on October 29, 2008. Meanwhile, Petitioner’s application was granted registration on March 9, 2009 and was cited as a blocking mark to Respondent’s application for AMBER & LOGO.

Appeals Court Rebukes Department of Justice for Dismissing Infringement Complaint

November 16, 2015

In what may be seen as a power struggle between the executive and judicial branches of government, the Court of Appeals issued a ten-page scathing decision declaring that the Department of Justice committed grave abuse of discretion in dismissing the trademark infringement complaint involving the HAVAIANAS trademark.

The case stemmed from a criminal complaint filed by the Brazilian company, Sao Paolo Alpargatas S.A. (SPASA), the registered owner of the HAVAIANAS trademark. The complaint was filed with the Office of the City Prosecutor of Caloocan City against Kentex Manufacturing Corporation (Kentex) and its owners for trademark infringement and damages. SPASA alleged that Kentex offered and sold flip flops using the trademark HAVANA knowing that they were colorable imitations or copies of the popular and well-known HAVAIANAS flip flops. Kentex denied liability and pleaded absence of likelihood of confusion, claiming: (1) that SPASA and Kentex target different markets; (2) that the selling price range between SPASA and Kentex merchandise is very different; and (3) that SPASA and Kentex cater to different sets of purchasers who are clearly smart and discerning enough to distinguish the goods. Kentex submitted certifications of copyright registration, design registrations and copies of trademark applications.

Inexcusable Neglect: What You Don’t Know Can Hurt You

November 9, 2015

Parties to a case, whether or not represented by counsel, must be proactive in monitoring what is going on at every stage of litigation. One must not simply wait for his lawyer to advise him of the status of his case. The party himself must be diligent in knowing how his case is shaping up at all times while a case is pending. This was the lesson taught in a recent case, which was brought to the Court of Appeals. (See Albert Tan vs. Intellectual Property Office, Office of the Director General and Coby Electronics Corporation, CA-G.R. Sp. No. 127039).

In this case, Albert Tan (“Petitioner”) applied for registration of the trademark “COBY” for use on goods under Class 9. Coby Electronics, Inc. opposed alleging, among others, that it is the prior user and owner of the “COBY” trademark in the Philippines. The Bureau of Legal Affairs denied the opposition after concluding that Coby Electronics failed to prove that “COBY” is a well-known trademark in the Philippines. The Bureau further held that Petitioner has a better right to “COBY” because his trademark application was filed earlier and hence deserves priority and protection.

Counterfeit Philip Morris Cigarettes Seized by Philippine Customs Bureau

November 1, 2015

A raid conducted by the Philippine Bureau of Customs on October 15, 2015 resulted in the confiscation of more than 31,000 packs of counterfeit Philip Morris cigarettes. The Customs Bureau’s website confirmed this successful campaign which it initiated after receiving information that counterfeit Philip Morris cigarettes were smuggled into the country.

Acting on the basis of a Letter of Authority signed by the Customs Commissioner, the Bureau’s Enforcement Group coordinated with the local police and the Barangay Chairman in the area where the counterfeit cigarettes were stored. The target of this raid was a four-storey building at the busy downtown area of Sta. Cruz, Manila, which was registered under the name of Paloma General Merchandise.

Honda Wins Oppositions but Fails to Enforce Three-Dimensional Marks

October 26, 2015

In one of the few decisions in the Philippines dealing with three-dimensional trademarks, the Bureau of Legal Affairs rejected two applications for three-dimensional trademarks consisting of colored engines. The applications were described as “A Three Dimensional Engine Colored Black, Red, White and Silver” and “A Three Dimensional Engine Colored Yellow, Black and Silver.”

The applicant filed two applications for three-dimensional trademarks. One trademark comprised of an engine using the colors black, red, white and silver, while the other trademark consisted of an engine using the colors yellow, black and silver. These applications were timely opposed by Honda Motor Co., Ltd. (“Honda”) on the ground, among others, that the applications were confusingly similar to its three dimensional trademarks consisting of general purpose engines.

Philippines Takes Step Towards Creating Framework for IP Financing

August 25, 2015

The Intellectual Property Office of the Philippines (IPOPHIL) took the initial step towards promoting the monetization of intellectual property assets in the Philippines. The IPOPHIL, in collaboration with KPMG, held a High-Level Forum on IP Financing last May 15, 2015. The forum was attended by representatives from various government agencies and research institutes, such as Bangko Sentral ng Pilipinas (BSP), Bureau of Internal Revenue (BIR), Department of Finance (DoF), Securities and Exchange Commission (SEC), Department of Science and Technology (DoST), National Economic and Development Authority (NEDA), University of the Philippines – Los Banos, Filipinas Copyright Licensing Society (FILCOLS), and the Philippine Institute of Certified Public Accountants (PICPA). The main purpose of the forum was to formally discuss the possibility of creating a framework for IP financing and IP valuation in the Philippines. This initiative of the IPOPHIL, as the government agency in-charge of advancing intellectual property rights, is a recognition of the growing trend of IP financing as an alternative source of credit, as well as the value of a good IP financing framework to the country’s economy.

Kawasaki Fails to Protect Patented Design for FURY 125 Motorcycle

July 22, 2015

The Japanese company, Kawasaki, and its Philippine subsidiaries, filed suit to stop a local company (Eastworld) from manufacturing and selling Sapphire 125 model motorcycles. Kawasaki complained that this motorcycle copies the design elements of its own motorcycle model Fury 125.

Kawasaki alleged that the design elements of its Fury 125 motorcycle are protected by a design patent which was issued a year prior to the launching of Sapphire 125. Kawasaki also claimed that its Fury 125 was launched one year before Sapphire 125 began selling in the local market.

The suit was lodged as an administrative action with the Bureau of Legal Affairs, and relied on two causes of action, patent infringement and unfair competition. The complaint asked for preliminary injunction.

The Bureau refused to issue a preliminary injunction and ruled against Kawasaki’s charges of infringement and unfair competition. The Bureau pointed out that infringement is committed only when one uses, makes, sells or imports patented design without the consent of the patentee. In this case, Eastworld did not need to get the consent of Kawasaki because its Sapphire 125 motorcycle used design elements that were covered by its own design patent.