PEARL & DEAN PHIL INC. VS.

SHOEMART- Trademark,
Copyright and Patents

Trademark, copyright and patents are different intellectual property rights that cannot be
interchanged with one another. A trademark is any visible sign capable of distinguishing
the goods or services of an enterprise and shall include a stamped or marked container of
goods. The scope of a copyright is confined to literary and artistic works which are original
intellectual creations in the literary and artistic domain. Patentable inventions refer to any
technical solution of a problem in any field of human activity which is new, involves an
inventive step and is industrially applicable.

FACTS:

Pearl and Dean is a corporation in the manufacture of advertising display units also known
as light boxes, which were manufactured by Metro Industrial Services. A copyright
Registration was obtained in 1981. These were marketed in the name of "Poster Ads". They
also applied for a registration of trademark with the Bureau of Patents in 1983, but was
only approved in 19988. In 1985, petitioner had n agreement with respondent Shoemart
Inc (SMI) to install these light boxes in their Makati and Cubao branch, Only the Makati
branch was able to sigh the agreement. In 1986, the contract was rescinded unilaterally by
SMI, and instead contracted with Metro Industrial Services. They installed these lightboxes
in different SM city branches, including Cubao and Makati, with association with North
Edsa Marketing Inc (NEMI), SMI's sister company. Petitioner requested SMI and NEMI to
put down their installations of the light boxes, and payment of compensatory damages
worth P20M. Claiming that respondents failed to comply, they filed a case for infringement
of trademark and copyright, unfair competition and damages. RTC ruled in favor of
petitioner, but CA reversed.

ISSUES:

(1) Whether there was a copyright infringement

(2) Whether there was a patent infringement
(3) Whether there was a trademark infringement
(4) Whether there was unfair competition

RULING: No to all.

(1) Copyright is a statutory right, subject to the terms and conditions specified in the
statute. Therefore, it can only cover the works falling within the statutory enumeration or
description. Since the copyright was classified under class "O" works, which includes
"prints, pictorial illustrations, advertising copies, labels, tags and box wraps," and does not
include the light box itself. A lightbox, even admitted by the president of petitioner
company, was neither a literary nor an artistic work but an engineering or marketing
invention, thus not included under a copyright.

(2) Petitioner was not able to secure a patent for its lightboxes, and cannot legally prevent
anyone from manufacturing or commercially using the same. Patent has a three-fold
purpose: a) to foster and reward invention; b) promotes disclosures of invention and
permit public to use the same upon expiration; c) stringent requirements for patent
protection to ensure in the public domain remain there for free use of the public. Since
petitioner was not able to go through such examination, it cannot exclude others from
manufacturing, or selling such lightboxes. No patent, no protection.

(3) The certificate of registration issued by the Director of Patents gives exclusive right to
use its own symbol only to the description specified in the certificate. It cannot prevent
others to use the same trademark with a different description.

(4) "Poster Ads" is a general term that cannot be associated specifically to Pearl and Dean,
thus it cannot be considered to use such term to be unfair competition against the
petitioner.

G.R. No. 115758 March 19, 2002

ELIDAD C. KHO, doing business under the name and style of KEC COSMETICS LABORATORY, petitioner,
vs.
HON. COURT OF APPEALS, SUMMERVILLE GENERAL MERCHANDISING and COMPANY, and ANG TIAM
CHAY, respondents.

FACTS:
The petitioner's complaint alleges that petitioner, doing business under the name and style of KEC Cosmetics Laboratory, is the
registered owner of the copyrights Chin Chun Su and Oval Facial Cream Container/Case, as shown by Certificates of Copyright
Registration No. 0-1358 and No. 0-3678; that she also has patent rights on Chin Chun Su & Device and Chin Chun Su for
medicated cream after purchasing the same from Quintin Cheng

The respondents, on the other hand, alleged as their defense that Summerville is the exclusive and authorized importer, re-packer
and distributor of Chin Chun Su products manufactured by Shun Yi Factory of Taiwan; that the said Taiwanese manufacturing
company authorized Summerville to register its trade name Chin Chun Su Medicated Cream with the Philippine Patent Office
and other appropriate governmental agencies; that KEC Cosmetics Laboratory of the petitioner obtained the copyrights through
misrepresentation and falsification; and, that the authority of Quintin Cheng, assignee of the patent registration certificate, to
distribute and market Chin Chun Suproducts in the Philippines had already been terminated by the said Taiwanese Manufacturing
Company.

ISSUE:

WON the petitioner is entitled to use the trademark on Chin Chun Su

RULING:

We first find it appropriate to rule on whether the copyright and patent over the name and container of a beauty cream product
would entitle the registrant to the use and ownership over the same to the exclusion of others.

Trademark, copyright and patents are different intellectual property rights that cannot be interchanged with one another. A
trademark is any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise and shall
include a stamped or marked container of goods.12 In relation thereto, a trade name means the name or designation identifying or
distinguishing an enterprise.13 Meanwhile, the scope of a copyright is confined to literary and artistic works which are original
intellectual creations in the literary and artistic domain protected from the moment of their creation. 14 Patentable inventions, on
the other hand, refer to any technical solution of a problem in any field of human activity which is new, involves an inventive
step and is industrially applicable.15

Petitioner has no right to support her claim for the exclusive use of the subject trade name and its container. The name and
container of a beauty cream product are proper subjects of a trademark inasmuch as the same falls squarely within its definition.
In order to be entitled to exclusively use the same in the sale of the beauty cream product, the user must sufficiently prove that
she registered or used it before anybody else did. The petitioner's copyright and patent registration of the name and container
would not guarantee her the right to the exclusive use of the same for the reason that they are not appropriate subjects of the said
intellectual rights. Consequently, a preliminary injunction order cannot be issued for the reason that the petitioner has not proven
that she has a clear right over the said name and container to the exclusion of others, not having proven that she has registered a
trademark thereto or used the same before anyone did.
PEARL & DEAN PHIL INC. VS. SHOEMART- Trademark,
Copyright and Patents

Trademark, copyright and patents are different intellectual property rights that cannot be
interchanged with one another. A trademark is any visible sign capable of distinguishing
the goods or services of an enterprise and shall include a stamped or marked container of
goods. The scope of a copyright is confined to literary and artistic works which are original
intellectual creations in the literary and artistic domain. Patentable inventions refer to any
technical solution of a problem in any field of human activity which is new, involves an
inventive step and is industrially applicable.

FACTS:

Pearl and Dean is a corporation in the manufacture of advertising display units also known
as light boxes, which were manufactured by Metro Industrial Services. A copyright
Registration was obtained in 1981. These were marketed in the name of "Poster Ads". They
also applied for a registration of trademark with the Bureau of Patents in 1983, but was
only approved in 19988. In 1985, petitioner had n agreement with respondent Shoemart
Inc (SMI) to install these light boxes in their Makati and Cubao branch, Only the Makati
branch was able to sigh the agreement. In 1986, the contract was rescinded unilaterally by
SMI, and instead contracted with Metro Industrial Services. They installed these lightboxes
in different SM city branches, including Cubao and Makati, with association with North
Edsa Marketing Inc (NEMI), SMI's sister company. Petitioner requested SMI and NEMI to
put down their installations of the light boxes, and payment of compensatory damages
worth P20M. Claiming that respondents failed to comply, they filed a case for infringement
of trademark and copyright, unfair competition and damages. RTC ruled in favor of
petitioner, but CA reversed.

ISSUES:

(1) Whether there was a copyright infringement

(2) Whether there was a patent infringement
(3) Whether there was a trademark infringement
(4) Whether there was unfair competition
RULING: No to all.

(1) Copyright is a statutory right, subject to the terms and conditions specified in the
statute. Therefore, it can only cover the works falling within the statutory enumeration or
description. Since the copyright was classified under class "O" works, which includes
"prints, pictorial illustrations, advertising copies, labels, tags and box wraps," and does not
include the light box itself. A lightbox, even admitted by the president of petitioner
company, was neither a literary nor an artistic work but an engineering or marketing
invention, thus not included under a copyright.

(2) Petitioner was not able to secure a patent for its lightboxes, and cannot legally prevent
anyone from manufacturing or commercially using the same. Patent has a three-fold
purpose: a) to foster and reward invention; b) promotes disclosures of invention and
permit public to use the same upon expiration; c) stringent requirements for patent
protection to ensure in the public domain remain there for free use of the public. Since
petitioner was not able to go through such examination, it cannot exclude others from
manufacturing, or selling such lightboxes. No patent, no protection.

(3) The certificate of registration issued by the Director of Patents gives exclusive right to
use its own symbol only to the description specified in the certificate. It cannot prevent
others to use the same trademark with a different description.

(4) "Poster Ads" is a general term that cannot be associated specifically to Pearl and Dean,
thus it cannot be considered to use such term to be unfair competition against the
petitioner.
G.R. No. L-19439 October 31, 1964

MAURO MALANG SANTOS, plaintiff-appellant,

vs.
MCCULLOUGH PRINTING COMPANY, defendant-appellee.

FACTS:

The complaint alleges that plaintiff Mauro Malang Santos designed for former Ambassador Felino Neri, for his
personal Christmas Card greetings for the year 1959, the artistic motif in question. The following year the defendant McCullough
Printing Company, without the knowledge and authority of plaintiff, displayed the very design in its album of Christmas cards
and offered it for sale, for a price.

Defendant in answer to the complaint, after some denials and admissions, moved for a dismissal of the action claiming
that —

(1) The design claimed does not contain a clear notice that it belonged to him and that he prohibited its use by others;

(2) The design in question has been published but does not contain a notice of copyright, as in fact it had never been
copyrighted by the plaintiff, for which reason this action is barred by the Copyright Law;

(3) The complaint does not state a cause of action.

the lower court rendered judgment; As a general proposition, there can be no dispute that the artist acquires
ownership of the product of his art. At the time of its creation, he has the absolute dominion over it. To help the author
protect his rights the copyright law was enacted. However The plaintiff in this case did not choose to protect his
intellectual creation by a copyright.

ISSUE:

In his appeal to this Court, plaintiff-appellant pointed five (5) errors allegedly committed by the trial court, all
of which bring to the fore, the following propositions: (1) whether plaintiff is entitled to protection, notwithstanding
the, fact that he has not copyrighted his design; (2) whether the publication is limited, so as to prohibit its use by others,
or it is general publication, and (3) whether the provisions of the Civil Code or the Copyright Law should apply in the
case

RULING:
 Under the established facts, We find that plaintiff is not entitled to a protection, the provision of the Civil
Code, notwithstanding. Paragraph 33 of Patent Office Administrative Order No. 3 (as amended dated September 18,
1947) entitled "Rules of Practice in the Philippines Patent Office relating to the Registration of Copyright Claims"
promulgated pursuant to Republic Act 165, provides, among others, that an intellectual creation should be copyrighted
thirty (30) days after its publication, if made in Manila, or within sixty (60) day's if made elsewhere, failure of which
renders such creation public property.

In the case at bar, even as of this moment, there is no copyright for the design in question. We are not also
prepared to accept the contention of appellant that the publication of the design was a limited one, or that there was an
understanding that only Ambassador Neri should, have absolute right to use the same. In the first place, if such were
the condition then Ambassador Neri would be the aggrieved party, and not the appellant. In the second place, if there
was such a limited publication or prohibition, the same was not shown on the face of the design. When the purpose is a
limited publication, but the effect is general publication, irrevocable rights thereupon become vested in the public, in
consequence of which enforcement of the restriction becomes impossible

FRANCISCO G. JOAQUIN, JR. and BJ PRODUCTIONS, INC. vs. HONORABLE

RANKLIN M. DRILON, GABRIEL ZOSA, WILLIAM ESPOSO, FELIPE MEDINA, JR.,
and CASEY FRANCISCO

FACTS:

Petitioner BJ Productions, Inc. (BJPI) is the holder / grantee of Certificate of

Copyright No. M922, dated January 28, 1971, of Rhoda and Me, a dating game show
aired from 1970 to 1977.

On June 28, 1973, petitioner BJPI submitted to the National Library an addendum
to its certificate of copyright specifying the show’s format and style of presentation.

Upon complaint of petitioners, information for violation of PD No. 49 was filed

against private respondent Zosa together with certain officers of RPN 9 for airing It’s a
Date. It was assigned to Branch 104 of RTC Quezon City.

Zosa sought review of the resolution of the Assistant City Prosecutor before the
Department of Justice.

On August 12, 1992, respondent Secretary of Justice Franklin M. Drilon reversed

the Assistant City Prosecutor’s findings and directed him to move for the dismissal of the
case against private respondents.

Petitioner Joaquin filed motion for reconsideration but such was denied.

ISSUE:
 Whether the format or mechanics or petitioner’s television show is entitled to
copyright protection.

HELD:

The Court ruled that the format of the show is not copyrightable. Sec. 2 of PD No.
49, otherwise known as the Decree on Intellectual Property, enumerates the classes of
work entitled to copyright protection. The provision is substantially the same as Sec. 172
of the Intellectual Property Code of the Philippines (RA 8293). The format or mechanics
of a television show is not included in the list of protected works in Sec. 2 of PD No. 49.
For this reason, the protection afforded by the law cannot be extended to cover them.

Copyright, in the strict sense of the term, is purely a statutory right. It is a new
independent right granted by the statute and not simply a pre-existing right regulated by
the statute. Being a statutory grant, the rights are only such as the statute confers, and
may be obtained and enjoyed only with respect to the subjects and by the person and on
terms and conditions specified in the statute.

The Court is of the opinion that petitioner BJPI’s copyright covers audio-visual recordings
of each episode of Rhoda and Me, as falling within the class of works mentioned in PD
49.

The copyright does not extend to the general concept or format of its dating game show.

Mere description by words of the general format of the two dating game shows is
insufficient; the presentation of the master videotape in evidence was indispensable to
the determination of the existence of a probable cause.

A television show includes more than mere words can describe because it involves a
whole spectrum of visuals and effects, video and audio, such that no similarity or
dissimilarity may be found by merely describing the general copyright / format of both
dating game shows.