PHILIPPINES Law and Practice Contributed by: Ignatius Michael D Ingles and Daphne Marie M Gomez, Law Firm of Ingles Laurel Calderon
erally, only a registered trade mark is protected by law. Once registered, third parties may not use it without the owner’s consent. The law prohibits the registration of a mark which: • is immoral, deceptive, or scandalous; • disparages or falsely suggests a connection with a person (whether living or dead), institutions, beliefs, or national symbols; • brings contempt or disrepute to another; • has the Philippine flag (or flag of another country) on it; • includes the name, portrait, or signature of a living person, except with their consent; • uses the portrait of a dead president, during the life of their spouse, except with the latter’s consent; • is misleading as to nature, quality, characteristic, or geographical origin; • is generic or simply identifies the product it will be used on; Notable registered sports trade marks involve those of collegiate teams, where the numerous marks associ - ated to a college or university are all registered with the IPO, as well as the respective trade marks of sports teams and the companies that own them. 5.2 Copyright/Database Rights The law on copyright is found in Part IV of the Intel - lectual Property Code of the Philippines (the “IP Code”). Under the IP Code, literary and artistic works are considered original intellectual creations, and are protected from the moment of their creation. Com - mon defences include fair use, the fact that the work is a non-copyrightable work, private reproduction in a single copy for use in study or research, and personal use. As regards the existence of a legal database right, the law on copyright protects the creation of such data - base, as it might be considered a derivative work or a compilation of data and other materials. To establish such a claim, it must be proven that the process of creating the database (such as the selection, coordi - • is simply descriptive of the product; or • is contrary to public order or morals.
nation, and arrangement of the compiled information and data) is original to the creator. 5.3 Recognising Personality/Image Rights Image rights in the Philippines generally equate to the right of publicity; a right recognised in the United States. While the right of publicity has yet to explicitly find its way into Philippine jurisprudence or in express provisions of law, aggrieved parties may seek relief under Section 169.1 of the IP Code. This section refers to false designations of origin or false descrip - tion or representation. World Champion Boxer Manny Pacquiao used Sec - tion 169.1 to sue a videoke product-maker for making use of his name and image without his consent. He won the case in the Court of Appeals in 2009, with the Court of Appeals stating that Pacquiao’s image should be protected from unauthorised endorsements under Section 169.1. 5.4 Protecting Personality/Image Rights Common law doctrines, such as unfair competition, have largely been codified in the IP Code, particu - larly Section 168. This Section makes it, among other things, illegal for any person to induce a false belief that they are offering the services of another who has identified such services in the mind of the public. False statements made in the course of trade are also considered unfair competition in the eyes of the law. Section 168, along with Section 169.1 as noted in 5.3 Recognising Personality/Image Rights , can be used to protect an athlete’s image rights and prevent the unauthorised exploitation of those rights. 5.5 Licensing Sports bodies and athletes monetise their IP and image rights through both licensing and endorsement contracts. In terms of assigning IP rights to third par - ties, the assignment must be in writing and filed in the IPO. If the assignment is not registered, it is void with respect to third parties; however, it is still binding between the parties. 5.6 Assignment of IP Rights The assignment of IP rights is considered a form of technology transfer under the IP Code. It is governed by Chapter IX of the IP Code, which aims to encour -
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