Bran Joseph G.

Romares

Assignment in Intellectual Property Law

A.

1. P & D (Phil) Inc. v. Shoemart Inc. et. al GR No. 148222 August 15, 2003

Facts:

In the instant petition for review on certiorari, petitioner Pearl & Dean (Phil.) Inc. (P & D)
assails the decision of the Court of Appeals reversing the decision of the Regional Trial Court
which declared private respondents Shoemart Inc. (SMI) and North Edsa Marketing Inc.
(NEMI) liable for infringement of trademark and copyright, and unfair competition.

Plaintiff-appellant P & D (Phil.), Inc. is a corporation engaged in the manufacture of

P & D negotiated with SMI for the lease and installation of the light boxes in SM Makati and
SM Cubao. P & D submitted for signature the contracts covering SM Cubao and SM Makati. Only
the contract for SM Makati, however, was returned signed.

SMI’s house counsel informed P & D that it was rescinding the contract for SM Makati due to
non-performance of the terms thereof.

Two years later, P & D found out that exact copies of its light boxes were installed at
different SM stores. It was further discovered that SMI’s sister company NEMI, sells
advertising space in lighted display units located in SMI’s different branches.

P & D sent a letter to both SMI and NEMI enjoining them to cease using the subject light
boxes, remove the same from SMI’s establishments and to discontinue the use of the
trademark “Poster Ads,” as well as the payment of compensatory damages.

Claiming that both SMI and NEMI failed to meet all its demands, P & D filed this instant case
for infringement of trademark and copyright, unfair competition and damages.

SMI maintained that it independently developed its poster panels using commonly known
techniques and available technology, without notice of or reference to P & D’s copyright.
SMI noted that the registration of the mark “Poster Ads” was only for stationeries such as
letterheads, envelopes, and the like. Besides, according to SMI, the word “Poster Ads” is a
generic term which cannot be appropriated as a trademark, and, as such, registration of
such mark is invalid. On this basis, SMI, aside from praying for the dismissal of the case,
also counterclaimed for moral, actual and exemplary damages and for the cancellation of P
& D ‘s Certification of Copyright Registration, and Certificate of Trademark Registration.

The RTC of Makati City decided in favor of P & D. On appeal, however, the Court of Appeals
reversed the trial court.

Issue:

Whether or not SMI is liable for Copyright infringement of P & D’s “Light box”
Held:

No.  P & D’s complaint was that SMI infringed on its copyright over the light boxes when
SMI had the units manufactured by Metro and EYD Rainbow Advertising for its own account.
Obviously, petitioner’s position was premised on its belief that its copyright over the
engineering drawings extended ipso facto to the light boxes depicted or illustrated in said
drawings. In ruling that there was no copyright infringement, the Court of Appeals held that
the copyright was limited to the drawings alone and not to the light box itself. We agree
with the appellate court. Even as we find that P & D indeed owned a valid copyright, the
same could have referred only to the technical drawings within the category of "pictorial
illustrations." It could not have possibly stretched out to include the underlying light box.

WHEREFORE, the petition is hereby DENIED

Facts:

This is a petition for review on certiorari of the Decision of the Court of Appeals setting aside
and declaring as null and void the Orders of the Regional Trial Court, granting the issuance
of a writ of preliminary injunction.

Petitioner Elidad C. Kho filed a complaint for injunction and damages with a prayer for the
issuance of a writ of preliminary injunction against the respondents Summerville, for brevity
and Ang Tiam Chay.

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, 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 registered owner thereof in the Supplemental Register of the Philippine Patent
Office. that respondent Summerville advertised and sold petitioner's cream products under
the brand name Chin Chun Su, in similar containers that petitioner uses, thereby misleading
the public, and resulting in the decline in the petitioner's business sales and income; and,
that the respondents should be enjoined from allegedly infringing on the copyrights and
patents of the petitioner.

Trial court grants the preliminary injunction.

The respondents moved for reconsideration but their motion for reconsideration was denied
by the trial court.

the respondents filed a petition for certiorari with the CA. praying for the nullification of the
said writ of preliminary injunction issued by the trial court. the appellate court rendered a
Decision ruling in favor of the respondents

The petitioner filed a motion for reconsideration.  the trial court went on to hear petitioner's
complaint for final injunction and damages. the trial court rendered a Decision 7 barring the
petitioner from using the trademark Chin Chun Su and upholding the right of the
respondents to use the same, but recognizing the copyright of the petitioner over the oval
shaped container of her beauty cream.

CA promulgated a Resolution denying the petitioner's motions for reconsideration.

Hence, this petition

Issue:

Whether or not petitioner is entitled to exclusive use of Chin Chun Su based on her
copyright and patent registration over the product.

Held:

No. 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. In relation thereto, a trade name means the name
or designation identifying or distinguishing an enterprise. 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. 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.

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. 

WHEREFORE, the petition is DENIED.

Facts:

This is a Petition for Review on  Certiorari of petitioner Fernando U. Juan that seeks to
reverse and set aside the Decision of the Court of Appeals (CA) dismissing his appeal for
failure to comply with the requirements of Section 13, Rule 44 and Section 1, Rule 50 of the
Rules of Court.

Respondent Roberto U. Juan claimed that he began using the name and mark "Lavandera
Ko" in his laundry business on July 4, 1994.  The National Library issued to him a certificate
of copyright over said name and mark. the laundry business expanded with numerous
franchise outlets. Respondent then formed a corporation to handle the said business, hence,
Laundromatic Corporation (Laundromatic) was incorporated in 1997, while "Lavandera Ko"
was registered as a business name on November 13, 1998 with the Department of Trade
and Industry  (DTI). respondent discovered that his brother, petitioner Fernando was able to
register the name and mark "Lavandera Ko" with the Intellectual Property Office  (IPO) on
October 18, 2001, the registration of which was filed on June 5, 1995.

Thus, respondent Roberto filed a petition for injunction, unfair competition, infringement of
copyright, cancellation of trademark and name with/and prayer for TRO and Preliminary
Injunction with the Regional Trial Court (RTC).  RTC issued a writ of preliminary injunction
against petitioner. due to the death of respondent Roberto, the latter was substituted by his
son, Christian Juan (Christian). RTC rendered a Resolution dated September 23, 2013,
dismissing the petition and ruling that neither of the parties had a right to the exclusive use
or appropriation of the mark "Lavandera Ko" because the same was the original mark and
work of a certain Santiago S. Suarez (Santiago). According to the RTC, the mark in question
was created by Suarez in 1942 in his musical composition called, "Lavandera Ko" and both
parties of the present case failed to prove that they were the originators of the same mark.
The dispositive portion of the RTC's resolution.

Herein petitioner elevated the case to the CA through a notice of appeal. In his appeal,
petitioner contended that a mark is different from a copyright and not interchangeable.
Petitioner Fernando insisted that he is the owner of the service mark in question as he was
able to register the same with the IPO pursuant to Section 122 of R.A. No. 8293.

The CA, in its Decision dated May 7, 2015, dismissed the petitioner's appeal based on
technical grounds

Issue:

Whether or not a mark is the same as a copyright.

Held:

No. The law on trademarks, service marks and trade names are found under Part III of
Republic Act (R.A.) No. 8293, or the Intellectual Property Code of the Philippines , while Part
IV of the same law governs copyrights.
"Lavandera Ko," the mark in question in this case is being used as a trade name or
specifically, a service name since the business in which it pertains involves the rendering of
laundry services. Under Section 121.1 of R.A. No. 8293, "mark" is defined as 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. As such, the basic contention of
the parties is, who has the better right to use "Lavandera Ko" as a service name because
Section 165.2 of the said law, guarantees the protection of trade names and business
names even prior to or without registration, against any unlawful act committed by third
parties.

By their very definitions, copyright and trade or service name are different. Copyright is the
right of literary property as recognized and sanctioned by positive law. Trade name, on the
other hand, is any designation which (a) is adopted and used by person to denominate
goods which he markets, or services which he renders, or business which he conducts, or
has come to be so used by other, and (b) through its association with such goods, services
or business, has acquired a special significance as the name thereof, and (c) the use of
which for the purpose stated in (a) is prohibited neither by legislative enactment nor by
otherwise defined public policy.

As such, "Lavandera Ko," being a musical composition with words is protected under the
copyright law (Part IV, R.A. No. 8293) and not under the trademarks, service marks and
trade names law (Part III, R.A. No. 8293).

WHEREFORE, the Petition for Review on Certiorari  is GRANTED.