Final-transcript-for-ipl.docx

1 INTELLECTUAL PROPERTY LAW Finals Reviewer + Transcript + Cases Intellectual Property Law – September 16, 2017 Overview of Jurisdiction

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Doctrine of Exhaustion of Administrative Remedies o Must be lodged before administrative tribunals. In the case of IPL cases, it should be lodged first before the IP Office.

Institution of Actions (Chapter XIX) Check section 225 and 226 Samson vs Cabanos (2005)

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Jurisdiction is a statutory matter. It is the law that provides for such mechanisms. In IPL cases, usually the Regional Trial Court, in accordance with its special jurisdiction, not general. o - General – they acquire a case, they are the only court that can decide such cases by virtue of their power o - Special – some RTCs are delegated by virtue of the authority of the SC  Ex. Dec. of nullity of Marriage/Legal Separation -> RTC, specially functioning as the Family Courts.

RTC specially functioning as the Special Commercial Courts – RTC Level. Exercise of Special Jurisdiction (by delegation of law). It is by virtue of this that RTCs can take cognizance of IP cases.

Jurisdiction Case; Filed before the RTC Takeaway by sir: There was an information filed, criminal liability on unfair competition vs Samson. Argument: MTC had Jurisdiction. Ruling: it was proper that the RTC had jurisdiction.

[G.R. No. 161693. June 28, 2005] MANOLO P. SAMSON, petitioner, vs. HON. VICTORIANO B. CABANOS, In his capacity as Acting Presiding Judge, Regional Trial Court of Antipolo City, Branch 71, PEOPLE OF THE PHILIPPINES and CATERPILLAR, INC., respondents.

Under the principle of co-equal courts.

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There is only one RTC in a region, divided according to branches. Such branches are still considered one regional trial court. If you lodge the complaint at another branch, which is not delegated with such special jurisdiction. o No dismissal if given to the wrong branch, because as per principle of co-equal court, it can still just be transferred. It cannot be invoked to have the information quashed by virtue of lack of jurisdiction. Rule 23, Sec. 2

Relevant Portion: RA 7691 vs Special Rules Rule 1 In the case at bar, R.A. No. 8293 and R.A. No. 166 are special laws conferring jurisdiction over violations of intellectual property rights to the Regional Trial Court. They should therefore prevail over R.A. No. 7691, which is a general law. Hence, jurisdiction over the instant criminal case for unfair competition is properly lodged with the Regional Trial Court even if the penalty therefor is imprisonment of less than 6 years, or from 2 to 5 years and a fine ranging from P50,000.00 to P200,000.00. In fact, to implement and ensure the speedy disposition of cases involving violations of intellectual property rights under R.A. No. 8293, the Court issued A.M. No. 02-1-11-SC dated February 19, 2002 designating certain Regional Trial Courts as Intellectual Property Courts. On June 17, 2003, the Court further issued a Resolution consolidating jurisdiction to hear and decide Intellectual Property Code and Securities and Exchange Commission cases in specific Regional Trial Courts designated as Special Commercial Courts.

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Generally, with respect to IP cases, it should be lodged before the RTC. It has the RTC that has jurisdiction over IP cases. Is it the RTC of general jurisdiction, or special jurisdiction? o In RE: Criminal Procedure  Since an administrative bodies finds probable cause, the complaint shall be lodged in court.

Rule 1, Sec. 1 -> Construe it in relation to Rule 23 of the General Rules Rule 1, Sec. 3 of Special Rules -> Rule 1, Sec. 4 of the General Rules  General Rule: Special Rules on Procedure on IPL courts will govern the procedure of litigation. o Exception: However, if there are complex, legal issues that are not covered by the specific/special rules, then the general rules may be used. o Suppletory Character, if there are issues that are not addressed by the courts.  Generally, judgements are executory. You can implement the terms of the judgement. o When it comes to the Special Rules, all the decisions, they are immediately executory. You can implement the judgement right away.  Re: Rule 39.  Ex: RTC promulgates judgement, then it can be immediately executed. Rule 1, Sec. 5 of Special Rules -> in relation to the general rules

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Generally, verification require only need to be verified only when it is specifically provided by the GENERAL rules. o All pleadings under the general rule shall be verified. A pleading shall be verified by an affidavit. Rule 1, Sec. 6 Rule 2 Rule 2, Sec. 1 o Discusses the scope of the application of the rules of civil procedure. GENERAL Rules shall apply as well. o See Enumeration o Note: Collective Mark vs Trade Mark. CM shall be cancelled at the RTC. TMs shall be cancelled at the BLA. o Note: Breach of Contract.  Patents – voluntary licensing, etc.  If these contracts provided for in the IPL code under umbrella topics, it shall be tried at the RTC. o Note: As to the Civil Aspect, RTC. o Construe in relation to Rule 2 until Rule 9 of the Civil Procedure. Rule 2, Sec. 2  Talks about where to go to apply seizure and writs  However, correlate with general rules -> Rule 126, Sec. 2 o General Rule under GRs, if you want to apply, go to the court which has territorial jurisdiction. o It is an exception in IP cases: You have to go to the special commercial courts in [enumerated in the rule]  However, read that in relation to A.M. 03-8-02 Sec. 12 o Provides for the issuance of special criminal cases of manila and quezon city. o It is up to the executive judge who will hear the application of the search and seizure warrants 

Jump to Rule 126, Sec. 26 of the General Rules of Court. COMPARE THE RULES with the SPECIAL RULES. 

September 23, 2017

REVIEW: Trademark vs. Copyright.  

With regards to rights covered With regards to treaties covered (Trademark is protected worldwide)

In Relation to Current Events:   

Tinalak Copyright Mangoes (Specific seeds + plants) are patented Lebron James’ Tattoo o Copyright - It is owned by the artist, not a the person’s body.

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REVIEW: Actions filed in Court 

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Can be Personal or Real Action; may also be according to Foundation/Basis o Action in Personam  Jurisdiction over the person must be acquired  Warrant Arrest; Valid Warrantless Arrest; Voluntary Appearance o Action in Rem  Jurisdiction over the Res must be acquired  The subject matter of the case o Ex. If it as action involving reconveyance of a property. o Ex. Issues regarding the Accion Publiciana, Accion Reinvidicatoria, etc. (Look into whether or not jurisdiction over the res must be acquired) o Actions quasi-in Rem  Relates to: Status or Title  It does not pertain to the parties, nor the res, but it pertains to the status of a title of the person. o Ex. Special proceedings with respect to change of name; Quieting of Title (preventive or remedial) Rule 2 o Applies with the Civil Aspect/Procedure o If there is a suit regarding Intellectual Property (may be licensing agreements, etc), it may also apply. o You may apply for a writ of search and seizures. These actions are actions in rem. Even if you have not acquired jurisdiction over the infringer, even over the adverse person, under sec. 2, you can acquire jurisdiction over the res.  You apply a writ for search and seizure. Follow the rules under this rule.  Ex. Too many infringers or importers infringing the thing, then it is practicable to just acquire jurisdiction over the res.  These writs are applicable nationwide.

Lever Rule 

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The lever rule provides that if the goods you are selling abroad under your trademark, are improted back in the Philippines, which are counterfeited. In such case, you can invoke the lever rule.  You may apply for an injunction to prohibit or stop the re-importation of the goods that you have exported.  You have authorized the export of these goods, but since you have not allowed the reimporation of these goods; even if they are counterfeited, as the TM owner, you may stop these reimportation. Emphasis on Injunction.

Case: Thomas v. CIDG (2016, it deals with the rules on IP) 

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Emphasis on: o Validity on the Search warrant Issued o With regards to endorsing of the search warrants Inputs by Sir: o Defective Warrant? It was contended that the warrant should be quashed because it was not done via in accordance with the rules o The law provides no prohibition that they may delegate matters to their subordinates, re: issuance and exercising of warrants. o Check the administrative matter on this case. Rule 3. Commencement of Action

Important Terms [Use the Proper Legal Language]   

Motion – Denied/Grant Action – Dismissed/ Objection – Sustained/Overruled

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In Re: Initiation. Initiated by the filing of pleadings in court. It is allowed under 7 ways in the regular rules of court. In the special rules, it is only 4. In Re: Pleadings Verification. Special rules provide for need of verification, unlike the regular rules. o How to verify? It must be made thru an affidavit. Such affidavit must be under oath. In Re: Why may File an Action o IP Right Owner himself o Under a claim of Ownership

Anton Piller Order. A form of Ex parte order for a search and seizure  *** Ex Parte  When applying in court, it usually has another party. In hearings, the other party is notified.

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Ex parte means without need of a hearing; outside of the parties.

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Also applies to Broadcasters; Assignees; Voluntary Licensees; Etc o Sec. 3 of the Intellectual Property Code is Incorporated. The Rule on Reciprocity. It is the second paragraph of Sec. 2 of Rule 2 of the Special Rules. They have the right to file actions. Civil Procedure Concept: Standing In Court Similar to the concept of locus standi This is what is being discussed in Rule 2; who has standing to file actions.

Rule 3 Sec. 3 – Relate to Rule 3, Sec. 5. Of General Rules.  What happens when there is a defective certification against forum shopping? o Under the General Rules, it will provide you with the effect if it is absent, defective, etc. Check Rule 3, Sec. 5. Rule 3. Sec. 4 Prohibited Pleadings  There are pleadings which, in accordance with the speedy disposition of cases, these pleadings must satisfy elements/requisites. There are elements are usually with regards to filing of actions, regarding standing, etc. These must be fulfilled.  In Re: Motion to Dismiss o Under the special rules, it is prohibited. Look at the list under the rule.  In Re: Motion for a bill of particulars o For clarification of the complaint; for clarification of the issue or prayer sought. Rule 3. Sec 5 – Affidavits  Statements which are material to your allegations  In Re: Format of Affidavit. Under the special rules, it is required that affidavit submitted must be in question and answer format. o In Contrast with the general rules which require in statement form. Rule 3. Sec. 6 - Failure to file complaint where a writ of search and seizure is issued.  The Court may lift the writ if no case is filed within the period of 31 Calendar Days.  In Relation to: Rule 2 Sec. 2 of Special Rules  This happened in the case of Levi v. Strauss. (was sustained because the special rules were not yet around)  In Re: Motion of the Return of the Goods. Rule 4. Answer Rule 4. Sec. 1: In Re Summons. Literally a summon, the court will summon the defendant. In the summon, attached with it is the complaint, with all the necessary and material allegations. Rule 4, Sec. 2: Service of Summons.

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Summons are not filed. But rather, pleadings. Summons are SERVED. o In Re: Foreign Private Juridical Entity  Under the Corporation Code, if you are a nonresident foreign corporation doing business in the Philippines, requires that you have resident agent.  Summons are given to the resident agent.  Or the Government Official, usually the SEC, because it is dealing with a foreign private juridical entity. How summons are service: (summons In Re: Defendant) o Personal Service  ACTUAL - Actually handing it over to the person  TENDERED – If that person will refuse to accept, it shall be tendered upon him. It shall be annotated that the defendant has refused. It is still noted that the defendant has been notified. It is considered to have been personally served. o Substituted Service o Service by Publication  Summons will be published. Especially true when the defendant is a non-resident person. (Innovation in the Future) E-Summons and E-Filing o Filing of complaints electronically; online. There is an innovative mechanism that summons also serv ed electronically. Read Service of Summons Rules 13 Sec. 12 and Rule s13. Sec. 14 – General Rules.

Short Discussion of Sir (Diagram) Actions in Rem: Jurisdiction -> Over the Res (Rule 2. Sec. 2) -> Through a Writ of Search and Seizure Jurisdiction -> Rule III (file of Complaint) within 31 days > Motion of Return of Goods (61 days) -> Disposal of Goods.

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Take note of: Infringement

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Defenses

Ex: Plaintiff (Passenger) v. Defendant (Bus Company) o Ex. Breach of Contract of Carriage. o Defendant interposes that driver should be liable. o By virtue of quasi delict o Defendant company also interposes that by virtue of the passenger’s behavior of dancing around, the bus was disrupted, causing the accident. Hence, in their answer, defendant also includes a counter claim. If such answers do not contain such counter claims, them these should be barred. In application to IP cases (check recording)

Period 15 days from the service of summons the Court MOTU PROPRIO (Emphasis on MP) In Comparison to the General Rules: o Upon the motion of one of the parties, the other party may be declared in default. It must be upon the motion of the plaintiff. o In the special rules, however, the court may MOTU PROPRIO (in its own accord or initiative) it an declare the defendant in default, even without the motion of the plaintiff. o The effect? Submission already for judgement. Rule judgement based on the paintiff’s evidence.

Rule 4, Sec. 5 – Affidavits attached to the answer Rule 5 – Modes of Discovery 

Joinder of Issues o Filed always after the answers o If the defendant interposes a counter claim, then the plaintiff must then file an answer first before a joinder of issues will be provided.

Failure to appear in Pre Trial by the Plaintiff - Sec. 2 – Dismissal of the complaint with prejudice

Rule 4. Sec. 4 – Failure to File Answer 

Where the parties can stipulate certain facts according to the case. Admissions to the parties of the case; presentation of documentary evidence and witnesses. After the period of availing of a mode of discovery

Period of Prescription for Trademark

Cross Claims 

If you want an admission to be made, in such case, you will abbreviate the proceedings. Just Read Sec. 3 and Sec. 4 Rule 6 – Pre Trial

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Answer -> Affirmative/Negative Defense

Affirmative – confession/avoidance. You admit, but by virtue or confession, you interpose that such action is impossible or should be dismissed. o Ex. Prescription. “A indeed has basis for cause of action against me, but such cause of action has already prescribed”

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Take note of: Period of Prescription for Damages – 4 years from the time of commission of acts constituting damage, whether inf. or unfair competition

Rule III (Complaint) -> Summons –> Served 15 days -> File of Answer from the time of the Service of Summons (15 Days)

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Negative – which you specifically deny and set out your defense there to. In Re: Waive of Defenses. o Exception: Affirmative and negative defenses not pleaded in the answer shall be deemed waived, except when the court has no jurisdiction over the subject matter, when there is another action pending between the same parties for the same cause, or when the action is barred by a prior judgment or by the statute of limitations.

General Concept

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Will be barred forever; exception, if ordered by the court. Sec. 3. If defendant’s part; dismissal of the counter claim, but not the answer. - - - Notes for Sept. 30 Missing - - Oct. 7, 2017

Rule 16. Admissibility and Weight of Evidence  

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 Rule 17.

There is a difference between admissibility and weight Sec. 3. When it is relevant to the issue, if not excluded by the law; a matter of statute and a matter of law that tells us whether or not such evidence may be presented in court. o Weight is different, because it is a matter of materiality. It is sufficiency. It is a subjective matter, and not a matter of law. Question o Admissibility is Objective. Common Rules. o Sec. 1. Good Faith. Need not be established. It is not a defense, except. Prior User; Fair Use. When you try to prove foreign official documents; you follow the same rule in various cases in persons and family relations; plead the foreign documents o Sec. 2 Foreign Official Documents Sec.3-5 just read

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Sec. 1 – Burden of proof in patent infringement. o How to prove? Spell out the elements in the complaints; that there is a reproduction, or that a patent is reproduced and you are the owner of such o Burden of Proof v. Burden of Evidence  BF – persuasiveness of complaint, determining whether you are worthy to have your prayer sought for; primarily focuses on the complaint  BE – during trial; the persuasiveness of your evidence. Weight and sufficiency, as to how it will persuade the court, that you have a right of action. Sec. 2 – Patents are presumed valid. Sec. 3 – Just Read the Section Sec. 4 – Commissioners Sec. 6 – Intent to Defraud or Deceive. o Presumption of Law only; it may be rebutted. Hence, it does not violate the constitution right to presumed innocent (which is a presumption of fact) Sec. 7. Test for Generic Mark o In foreign jurisprudence, it is called as the test of “genericide”. The quality of being generic of a mark.

UFC Case – Used Rule 18/17, it used the presumptions in this case. Rule 19 

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Sec. 1 – Doctrine of Automatic Presumption. Copyright is protected from the time of creation of the literary, scholarly, or artistic work. But it is not only copyright. Read Art. 39 of the TRIPS agreement. o Trade Secret – are also intellectual property rights which are protected from the time of its creation. Just Read Sec. 2 to 4

Example: Scribd – is distributing works to the public; they are not committing copyright infringement, there is no violation of the rights; They are only rendering Creatives Commons Licensee Agreement. Rule 20. Order of Destruction 

Just Read the Sections.