ISSUES:
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rescinded unilaterally by SMI, and instead contracted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.
(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.
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
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.
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.

HELD:

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,
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.