1. pear & dean vs. shoemart

7/25/2019 1. Pear & Dean vs. Shoemart

http://slidepdf.com/reader/full/1-pear-dean-vs-shoemart 1/18

1. Pear and Dean (CA decision AFFIRMED)



THIRD DIVISION

[G.R. No. 148222. August 15, 2003]

PEARL & DEAN (PHIL.), INCRPRA!ED, petitioner , vs. "HE#AR!,

INCRPRA!ED, $% NR!H ED"A

#AR'E!ING, INCRPRA!ED,respondents.

D E C I " I N

CRNA, J .

In the instant etition !or re"ie# on certiorari $nder R$%e &' o! the R$%es o! Co$rt

etitioner Pear% Dean (Phi%.) Inc. (P D) assai%s the Ma* ++ +,,1 decision-1

o! theCo$rt o! Aea%s re"ersin/ the Octo0er 1 1223 decision -+ o! the Re/iona% Tria% Co$rt o!

Ma4ati 5ranch 1 in Ci"i% Case No. 2+6'13 #hich dec%ared ri"ate resondents

Shoe7art Inc. (SMI) and North Edsa Mar4etin/ Inc. (NEMI) %ia0%e !or in!rin/e7ent o!

trade7ar4 and co*ri/ht and $n!air co7etition.

AC!*AL AN!ECEDEN!"

The Ma* ++ +,,1 decision o! the Co$rt o! Aea%s - contained a s$77ar* o! this

dis$te8

Plaintiff-appellant Pearl and Dean (Phil.), Inc. is a corporation engaged in the

manufacture of advertising display units simply referred to as light boxes. These

units utilie specially printed posters sand!iched bet!een plastic sheets and

illuminated !ith bac" lights. Pearl and Dean !as able to secure a #ertificate of

#opyright $egistration dated %anuary &', * over these illuminated display

units. The advertising light boxes !ere mar"eted under the trademar" Poster

+ds. The application for registration of the trademar" !as filed !ith the ureau

of Patents, Trademar"s and Technology Transfer on %une &', *, but !as

approved only on eptember &, **, per $egistration /o. 012. 3rom * toabout **, Pearl and Dean employed the services of 4etro Industrial ervices

to manufacture its advertising displays.

ometime in *2, Pearl and Dean negotiated !ith defendant-appellant

hoemart, Inc. (4I) for the lease and installation of the light boxes in 4 #ity

http://sc.judiciary.gov.ph/jurisprudence/2003/aug2003/148222.htm#_ftn1










/orth 5dsa. ince 4 #ity /orth 5dsa !as under construction at that time, 4I

offered as an alternative, 4 4a"ati and 4 #ubao, to !hich Pearl and Dean

agreed. 6n eptember , *2, Pearl and Deans 7eneral 4anager, $odolfo

8ergara, submitted for signature the contracts covering 4 #ubao and 4

4a"ati to 4Is +dvertising Promotions and Publicity Division 4anager,$amonlito +bano. 6nly the contract for 4 4a"ati, ho!ever, !as returned

signed. 6n 6ctober 0, *2, 8ergara !rote +bano in9uiring about the other

contract and reminding him that their agreement for installation of light boxes

!as not only for its 4 4a"ati branch, but also for 4 #ubao. 4I did not

bother to reply.

Instead, in a letter dated %anuary 0, *1, 4Is house counsel informed Pearl

and Dean that it !as rescinding the contract for 4 4a"ati due to non-

performance of the terms thereof. In his reply dated 3ebruary :, *1, 8ergara protested the unilateral action of 4I, saying it !as !ithout basis. In the same

letter, he pushed for the signing of the contract for 4 #ubao.

T!o years later, 4etro Industrial ervices, the company formerly contracted by

Pearl and Dean to fabricate its display units, offered to construct light boxes for

hoemarts chain of stores. 4I approved the proposal and ten (') light boxes

!ere subse9uently fabricated by 4etro Industrial for 4I. +fter its contract !ith

4etro Industrial !as terminated, 4I engaged the services of 5;D $ainbo!

+dvertising #orporation to ma"e the light boxes. ome '' units !ere fabricated

in . These !ere delivered on a staggered basis and installed at 4 4egamall

and 4 #ity.

ometime in *, Pearl and Dean, received reports that exact copies of its light

boxes !ere installed at 4 #ity and in the fastfood section of 4 #ubao. <pon

investigation, Pearl and Dean found out that aside from the t!o (&) reported 4

branches, light boxes similar to those it manufactures !ere also installed in t!o

(&) other 4 stores. It further discovered that defendant-appellant /orth 5dsa

4ar"eting Inc. (/54I), through its mar"eting arm, Prime pots 4ar"eting

ervices, !as set up primarily to sell advertising space in lighted display units

located in 4Is different branches. Pearl and Dean noted that /54I is a sister

company of 4I.



In the light of its discoveries, Pearl and Dean sent a letter dated December ,

to both 4I and /54I en=oining them to cease using the sub=ect light

boxes and to remove the same from 4Is establishments. It also demanded the

discontinued use of the trademar" Poster +ds, and the payment to Pearl and Dean

of compensatory damages in the amount of T!enty 4illion Pesos(P&',''','''.'').

<pon receipt of the demand letter, 4I suspended the leasing of t!o hundred

t!enty-four (&&0) light boxes and /54I too" do!n its advertisements for Poster

+ds from the lighted display units in 4Is stores. #laiming that both 4I and

/54I failed to meet all its demands, Pearl and Dean filed this instant case for

infringement of trademar" and copyright, unfair competition and damages.

In denying the charges hurled against it, 4I maintained that it independentlydeveloped its poster panels using commonly "no!n techni9ues and available

technology, !ithout notice of or reference to Pearl and Deans copyright. 4I

noted that the registration of the mar" Poster +ds !as only for stationeries such

as letterheads, envelopes, and the li"e. esides, according to 4I, the !ord

Poster +ds is a generic term !hich cannot be appropriated as a

trademar", and, as such, registration of such mar" is invalid. It also

stressed that Pearl and Dean is not entitled to the reliefs prayed for in its

complaint since its advertising display units contained no copyright notice, inviolation of ection &: of P.D. 0. 4I alleged that Pearl and Dean had no cause

of action against it and that the suit !as purely intended to malign 4Is good

name. 6n this basis, 4I, aside from praying for the dismissal of the case, also

counterclaimed for moral, actual and exemplary damages and for the cancellation

of Pearl and Deans #ertification of #opyright $egistration /o. PD-$-&22* dated

%anuary &', * and #ertificate of Trademar" $egistration /o. 012 dated

eptember &, **.

/54I, for its part, denied having manufactured, installed or used any advertisingdisplay units, nor having engaged in the business of advertising. It repleaded

4Is averments, admissions and denials and prayed for similar reliefs and

counterclaims as 4I.

The RTC o! Ma4ati Cit* decided in !a"or o! P D8



>herefore, defendants 4I and /54I are found =ointly and severally liable for

infringement of copyright under ection & of PD 0, as amended, and infringement of

trademar" under ection && of $+ /o. 11, as amended, and are hereby penalied

under ection &* of PD 0, as amended, and ections & and &0 of $+ 11, as

amended. +ccordingly, defendants are hereby directed?

() to pay plaintiff the follo!ing damages?

(a) actual damages - P1,1'','''.'',

representing profits

derived by defendants

as a result of infringe-

ment of plaintiffs copyright

from to &

(b) moral damages - P,'''.'''.''

(c) exemplary damages - P,''','''.''

(d) attorneys fees - P,''','''.''

plus

(e) costs of suit@

(&) to deliver, under oath, for impounding in the /ational Aibrary, all light

boxes of 4I !hich !ere fabricated by 4etro Industrial ervices and

5;D $ainbo! +dvertising #orporation@

() to deliver, under oath, to the /ational Aibrary, all filler-posters using the

trademar" Poster +ds, for destruction@ and

(0) to permanently refrain from infringing the copyright on plaintiffs light

boxes and its trademar" Poster +ds.



Defendants counterclaims are hereby ordered dismissed for lac" of merit.

6 6$D5$5D.B0C

On aea% ho#e"er the Co$rt o! Aea%s re"ersed the tria% co$rt8

ince the light boxes cannot, by any stretch of the imagination, be

considered as either prints, pictorial illustrations, advertising copies, labels,

tags or box !raps, to be properly classified as a copyrightable class 6

!or", !e have to agree !ith 4I !hen it posited that !hat !as

copyrighted !ere the technical dra!ings only, and not the light boxes

themselves, thus?

0&. >hen a dra!ing is technical and depicts a utilitarian ob=ect, a copyright over the

dra!ings li"e plaintiff-appellants !ill not extend to the actual ob=ect. It has so been

held under =urisprudence, of !hich the leading case is a"er vs. elden (' <..

*0 (*:). In that case, elden had obtained a copyright protection for a boo"

entitled eldens #ondensed Aedger or oo""eeping implified !hich purported to

explain a ne! system of boo""eeping. Included as part of the boo" !ere blan"

forms and illustrations consisting of ruled lines and headings, specially designed for

use in connection !ith the system explained in the !or". These forms sho!ed the

entire operation of a day or a !ee" or a month on a single page, or on t!o pagesfollo!ing each other. The defendant a"er then produced forms !hich !ere similar

to the forms illustrated in eldens copyrighted boo"s. The #ourt held that

exclusivity to the actual forms is not extended by a copyright. The

reason !as that to grant a monopoly in the underlying art !hen no

examination of its novelty has ever been made !ould be a surprise and

a fraud upon the public@ that is the province of letters patent, not of

copyright. +nd that is precisely the point. /o doubt a!are that its alleged original

design !ould never pass the rigorous examination of a patent application, plaintiff-

appellant fought to foist a fraudulent monopoly on the public by conveniently

resorting to a copyright registration !hich merely employs a recordal system

!ithout the benefit of an in-depth examination of novelty.





The principle in Baker vs. Selden !as li"e!ise applied in Muller vs. Triborough

Bridge Authority B0 3. upp. &* (.D./.;. 0&)C. In this case, 4uller had obtained

a copyright over an unpublished dra!ing entitled ridge +pproach the dra!ing

sho!ed a novel bridge approach to unsnarl traffic congestion. The defendant

constructed a bridge approach !hich !as alleged to be an infringement of the ne!design illustrated in plaintiffs dra!ings. In this case it !as held that protection of the

dra!ing does not extend to the unauthoried duplication of the ob=ect dra!n because

copyright extends only to the description or expression of the ob=ect and

not to the ob=ect itself. It does not prevent one from using the dra!ings to

construct the ob=ect portrayed in the dra!ing.

In t!o other cases, Imperial Homes Corp. v. Lamont , 02* 3. &d *2 and Scholt

Homes! Inc. v. Maddo", : 3. &d *0, it !as held that there is no copyrightinfringement !hen one !ho, !ithout being authoried, uses a

copyrighted architectural plan to construct a structure. This is because

the copyright does not extend to the structures themselves.

In fine, !e cannot find 4I liable for infringing Pearl and Deans copyright over the

technical dra!ings of the latters advertising display units.

xxx xxx xxx

The upreme #ourt trenchantly held in #aberge! Incorporated vs. Intermediate

Appellate Court that the protective mantle of the Trademar" Aa! extends only to the

goods used by the first user as specified in the certificate of registration, follo!ing the

clear mandate conveyed by ection &' of $epublic +ct 11, as amended, other!ise

"no!n as the Trademar" Aa!, !hich reads?

5#. &'. Certi$ication o$ registration prima $acie evidence o$ validity.- +

certificate of registration of a mar" or trade-name shall be prima $acie evidence

of the validity of the registration, the registrants o!nership of the mar" or

trade-name, and of the registrants exclusive right to use the same in connection

!ith the goods, business or services specified in the certificate, sub=ect to any

conditions and limitations stated therein. (underscoring supplied )



The records sho! that on %une &', *, Pearl and Dean applied for the registration of

the trademar" Poster +ds !ith the ureau of Patents, Trademar"s, and Technology

Transfer. aid trademar" !as recorded in the Principal $egister on eptember &,

** under $egistration /o. 012 covering the follo!ing products? stationeries such

as letterheads, envelopes and calling cards and ne!sletters.

>ith this as factual bac"drop, !e see no legal basis to the finding of liability on the

part of the defendants-appellants for their use of the !ords Poster +ds, in the

advertising display units in suit. %urisprudence has interpreted ection &' of the

Trademar" Aa! as an implicit permission to a manufacturer to venture into the

production of goods and allo! that producer to appropriate the brand name of the

senior registrant on goods other than those stated in the certificate of registration. The

upreme #ourt further emphasied the restrictive meaning of ection &' !hen it

stated, through %ustice #onrado 8. anche, that?

$eally, if the certificate of registration !ere to be deemed as including goods not

specified therein, then a situation may arise !hereby an applicant may be tempted to

register a trademar" on any and all goods !hich his mind may conceive even if he had

never intended to use the trademar" for the said goods. >e believe that such omnibus

registration is not contemplated by our Trademar" Aa!.

>hile !e do not discount the stri"ing similarity bet!een Pearl and Deans registered

trademar" and defendants-appellants Poster +ds design, as !ell as the parallel use by!hich said !ords !ere used in the parties respective advertising copies, !e cannot

find defendants-appellants liable for infringement of trademar". Poster +ds !as

registered by Pearl and Dean for specific use in its stationeries, in contrast to

defendants-appellants !ho used the same !ords in their advertising display

units. >hy Pearl and Dean limited the use of its trademar" to stationeries is simply

beyond us. ut, having already done so, it must stand by the conse9uence of the

registration !hich it had caused.

xxx xxx xxx

>e are constrained to adopt the vie! of defendants-appellants that the !ords Poster

+ds are a simple contraction of the generic term poster advertising. In the absence of

any convincing proof that Poster +ds has ac9uired a secondary meaning in this



=urisdiction, !e find that Pearl and Deans exclusive right to the use of Poster +ds is

limited to !hat is !ritten in its certificate of registration, namely, stationeries.

Defendants-appellants cannot thus be held liable for infringement of the trademar"

Poster +ds.

There being no finding of either copyright or trademar" infringement on the part of

4I and /54I, the monetary a!ard granted by the lo!er court to Pearl and Dean has

no leg to stand on.

xxx xxx xxx

>5$536$5, premises considered, the assailed decision is $585$5D and 5T

+ID5, and another is rendered DI4II/7 the complaint and counterclaims in the

above-entitled case for lac" of merit. B2C

Dissatis!ied #ith the a0o"e decision etitioner P D !i%ed the instant etition

assi/nin/ the !o%%o#in/ errors !or the Co$rts consideration8

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I""*E"

In reso%"in/ this "er* interestin/ case #e are cha%%en/ed once a/ain to $t into

roer ersecti"e !o$r 7ain concerns o! inte%%ect$a% roert* %a# atents co*ri/hts

trade7ar4s and $n!air co7etition arisin/ !ro7 in!rin/e7ent o! an* o! the !irst three. 9e

sha%% !oc$s then on the !o%%o#in/ iss$es8

() if the engineering or technical dra!ings of an advertising display unit

(light box) are granted copyright protection (copyright certificate of

registration) by the /ational Aibrary, is the light box depicted in such

engineering dra!ings ipso facto also protected by such copyrightH

(&) or should the light box be registered separately and protected by a patent

issued by the ureau of Patents Trademar"s and Technology Transfer (no!

Intellectual Property 6ffice) in addition to the copyright of the engineering

dra!ingsH

() can the o!ner of a registered trademar" legally prevent others from using

such trademar" if it is a mere abbreviation of a term descriptive of his goods,

services or businessH

N !HE I""*E CP+RIGH! INRINGE#EN!

Petitioner P Ds co7%aint #as that SMI in!rin/ed on its co*ri/ht o"er the %i/ht0o:es #hen SMI had the $nits 7an$!act$red 0* Metro and E;D Rain0o# Ad"ertisin/

!or its o#n acco$nt. O0"io$s%* etitioners osition #as re7ised on its 0e%ie! that its

co*ri/ht o"er the en/ineerin/ dra#in/s e:tended ipso facto to the %i/ht 0o:es deicted

or i%%$strated in said dra#in/s. 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.

First etitioners a%ication !or a co*ri/ht certi!icate as #e%% as Co*ri/htCerti!icate No. PD6R+'<< iss$ed 0* the Nationa% =i0rar* on >an$ar* +, 12<1 c%ear%*

stated that it #as !or a c%ass O #or4 $nder Section + (O) o! PD &2 (The Inte%%ect$a%

Proert* Decree) #hich #as the stat$te then re"ai%in/. Said Section + e:ress%*

en$7erated the #or4s s$0?ect to co*ri/ht8



5#. &. The rights granted by this Decree shall, from the moment of creation, subsist

!ith respect to any of the follo!ing !or"s?

x x x x x x x x x

(6) Prints, pictorial illustrations, advertising copies, labels, tags, and box !raps@

x x x x x x x x x

A%tho$/h etitioners co*ri/ht certi!icate #as entit%ed Ad"ertisin/ Dis%a* @nits

(#hich deicted the 0o:6t*e e%ectrica% de"ices) its c%ai7 o! co*ri/ht in!rin/e7ent

cannot 0e s$stained.

Co*ri/ht in the strict sense o! the ter7 is $re%* a stat$tor* ri/ht. 5ein/ a 7ere

stat$tor* /rant the ri/hts are %i7ited to #hat the stat$te con!ers. It 7a* 0e o0tained anden?o*ed on%* #ith resect to the s$0?ects and 0* the ersons and on ter7s and

conditions seci!ied in the stat$te. - Accordingly, it can cover only the works falling within

the statutory enumeration or description. -<

P D sec$red its co*ri/ht $nder the c%assi!ication class O work. This 0ein/ so

etitioners co*ri/ht rotection e:tended on%* to the technica% dra#in/s and

not to the %i/ht 0o: itse%! 0eca$se the %atter #as not at a%% in the cate/or* o!

rints ictoria% i%%$strations ad"ertisin/ coies %a0e%s ta/s and 0o:

#ras. Stated other#ise e"en as #e !ind that P D indeed o#ned a "a%id co*ri/htthe sa7e co$%d ha"e re!erred on%* to the technica% dra#in/s #ithin the cate/or* o!

ictoria% i%%$strations. It co$%d not ha"e ossi0%* stretched o$t to inc%$de the $nder%*in/

%i/ht 0o:. The strict a%ication-2 o! the %a#s en$7eration in Section + re"ents $s !ro7

/i"in/ etitioner e"en a %itt%e %ee#a* that is e"en i! its co*ri/ht certi!icate #as entit%ed

Ad"ertisin/ Dis%a* @nits. 9hat the %a# does not inc%$de it e:c%$des and !or the /ood

reason8 the %i/ht 0o: #as not a %iterar* or artistic iece #hich co$%d 0e co*ri/hted

$nder the co*ri/ht %a#. And no %ess c%ear%* neither co$%d the %ac4 o! stat$tor* a$thorit*

to 7a4e the %i/ht 0o: co*ri/hta0%e 0e re7edied 0* the si7%istic act o! entit%in/ the

co*ri/ht certi!icate iss$ed 0* the Nationa% =i0rar* as Ad"ertisin/ Dis%a* @nits.

In !ine i! SMI and NEMI rerinted P Ds technica% dra#in/s !or sa%e to the $0%ic

#itho$t %icense !ro7 P D then no do$0t the* #o$%d ha"e 0een /$i%t* o! co*ri/ht

in!rin/e7ent. 5$t this #as not the case. SMIs and NEMIs acts co7%ained o! 0* P D

#ere to ha"e $nits si7i%ar or identica% to the %i/ht 0o: i%%$strated in the technica% dra#in/s

7an$!act$red 0* Metro and E;D Rain0o# Ad"ertisin/ !or %easin/ o$t to di!!erent









ad"ertisers. 9as this an in!rin/e7ent o! etitioners co*ri/ht o"er the technica%

dra#in/sB 9e do not thin4 so.

D$rin/ the tria% the resident o! P D hi7se%! ad7itted that the %i/ht 0o: #as

neither a %iterar* not an artistic #or4 0$t an en/ineerin/ or 7ar4etin/ in"ention.-1, O0"io$s%* there aeared to 0e so7e con!$sion re/ardin/ #hat o$/ht or o$/ht not to

0e the roer s$0?ects o! co*ri/hts atents and trade7ar4s. In the %eadin/ case

o! ho vs. Court of Appeals,-11 #e r$%ed that these three %e/a% ri/hts are co7%ete%*

distinct and searate !ro7 one another and the rotection a!!orded 0* one cannot 0e

$sed interchan/ea0%* to co"er ite7s or #or4s that e:c%$si"e%* ertain to the others8

Trademark, copyright and patents are different intellectual property

rights that cannot be interchanged !ith one another. A trademark is any

visible sign capable o$ distinguishing the goods %trademark& or services

%service mark& o$ an enterprise and shall include a stamped or marked container o$ goods. In relation thereto, a trade name means the name or

designation identifying or distinguishing an enterprise. 4ean!hile, the

scope o$ a copyright is con$ined to literary and artistic 'orks !hich are

original intellectual creations in the literary and artistic domain protected

from the moment of their creation. (atentable inventions! on the other

hand! re$er to any technical solution o$ a problem in any $ield o$ human

activity !hich is ne!, involves an inventive step and is industrially

applicable.

N !HE I""*E PA!EN! INRINGE#EN!

This 0rin/s $s to the ne:t oint8 i! desite its 7an$!act$re and co77ercia% $se o!

the light boxes #itho$t %icense !ro7 etitioner ri"ate resondents cannot 0e he%d

%e/a%%* %ia0%e !or in!rin/e7ent o! P Ds co*ri/ht o"er its technical drawings of the said

light boxes sho$%d the* 0e %ia0%e instead !or in!rin/e7ent o! atentB 9e do not thin4 so

either.

For so7e reason or another etitioner ne"er sec$red a atent !or the %i/ht

0o:es. It there!ore ac$ired no atent ri/hts #hich co$%d ha"e rotected its in"ention i!

in !act it rea%%* #as. And 0eca$se it had no atent etitioner co$%d not %e/a%%* re"ent

an*one !ro7 7an$!act$rin/ or co77ercia%%* $sin/ the contration. In Creser !recision

"ystems, Inc. vs. Court of Appeals,-1+ #e he%d that there can 0e no in!rin/e7ent o! a

atent $nti% a atent has 0een iss$ed since #hate"er ri/ht one has to the in"ention

co"ered 0* the atent arises alone from the grant of patent . : : : (A)n in"entor has no


http://sc.judiciary.gov.ph/jurisprudence/2002/mar2002/115758.htm


http://sc.judiciary.gov.ph/jurisprudence/1998/feb1998/118708.htm




http://sc.judiciary.gov.ph/jurisprudence/2002/mar2002/115758.htm







co77on %a# ri/ht to a 7onoo%* o! his in"ention. He has the ri/ht to 7a4e $se o! and

"end his in"ention 0$t i! he "o%$ntari%* disc%oses it s$ch as 0* o!!erin/ it !or sa%e the

#or%d is !ree to co* and $se it #ith i7$nit*. A atent ho#e"er /i"es the in"entor the

ri/ht to e:c%$de a%% others. As a atentee he has the e:c%$si"e ri/ht o! 7a4in/ se%%in/ or

$sin/ the in"ention.-1 On the ass$7tion that etitioners ad"ertisin/ $nits #ere

atenta0%e in"entions etitioner re"ea%ed the7 !$%%* to the $0%ic 0* s$07ittin/ the

en/ineerin/ dra#in/s thereo! to the Nationa% =i0rar*.

To 0e a0%e to e!!ecti"e%* and %e/a%%* rec%$de others !ro7 co*in/ and ro!itin/ !ro7

the in"ention a atent is a ri7ordia% re$ire7ent. No atent no rotection. The

$%ti7ate /oa% o! a atent s*ste7 is to 0rin/ ne# desi/ns and techno%o/ies into the $0%ic

do7ain thro$/h disc%os$re.-1& Ideas once disc%osed to the $0%ic #itho$t the rotection

o! a "a%id atent are s$0?ect to aroriation #itho$t si/ni!icant restraint. -1'

On one side o! the coin is the $0%ic #hich #i%% 0ene!it !ro7 ne# ideas on the other

are the in"entors #ho 7$st 0e rotected. As he%d in #auer $ Cie vs. O%onnel -13 The act

sec$red to the in"entor the e:c%$si"e ri/ht to 7a4e $se and "end the thin/ atented

and conse$ent%* to re"ent others !ro7 e:ercisin/ %i4e ri"i%e/es #itho$t the consent o!

the atentee. It #as assed !or the $rose o! enco$ra/in/ $se!$% in"ention and

ro7otin/ ne# and $se!$% in"entions 0* the rotection and sti7$%ation /i"en to in"enti"e

/eni$s and #as intended to sec$re to the $0%ic a!ter the %ase o! the e:c%$si"e

ri"i%e/es /ranted the 0ene!it o! s$ch in"entions and i7ro"e7ents.

The %a# atte7ts to stri4e an idea% 0a%ance 0et#een the t#o interests8

(The p)atent system thus embodies a carefully crafted bargain for encouraging the

creation and disclosure of ne! useful and non-obvious advances in technology and

design, in return for the exclusive right to practice the invention for a number of

years. The inventor may "eep his invention secret and reap its fruits indefinitely. In

consideration of its disclosure and the conse9uent benefit to the community, the patent

is granted. +n exclusive en=oyment is guaranteed him for : years, but upon the

expiration of that period, the "no!ledge of the invention inures to the people, !ho are

thus enabled to practice it and profit by its use.B:C

The atent %a# has a t-/o u-os8 !irst atent %a# see4s to

!oster and re#ard in"ention second it ro7otes disc%os$res o!

in"entions to sti7$%ate !$rther inno"ation and to er7it the $0%ic to

ractice the in"ention once the atent e:ires third the strin/ent













re$ire7ents !or atent rotection see4 to ens$re that ideas in the

$0%ic do7ain re7ain there !or the !ree $se o! the $0%ic.-1<

It is on%* a!ter an e:ha$sti"e e:a7ination 0* the atent o!!ice that a atent is

iss$ed. S$ch an in6deth in"esti/ation is re$ired 0eca$se in re#ardin/ a $se!$%in"ention the ri/hts and #e%!are o! the co77$nit* 7$st 0e !air%* dea%t #ith and

e!!ecti"e%* /$arded. To that end the rere$isites to o0tainin/ a atent are strict%*

o0ser"ed and #hen a atent is iss$ed the %i7itations on its e:ercise are e$a%%* strict%*

en!orced. To 0e/in #ith a /en$ine in"ention or disco"er* 7$st 0e de7onstrated %est in

the constant de7and !or ne# a%iances the hea"* hand o! tri0$te 0e %aid on each

s%i/ht techno%o/ica% ad"ance in art. -12

There is no s$ch scr$tin* in the case o! co*ri/hts nor an* notice $0%ished 0e!ore

its /rant to the e!!ect that a erson is c%ai7in/ the creation o! a #or4. The %a# con!ers

the co*ri/ht !ro7 the 7o7ent o! creation -+, and the co*ri/ht certi!icate is iss$ed $onre/istration #ith the Nationa% =i0rar* o! a s#orn ex&parte c%ai7 o! creation.

There!ore not ha"in/ /one thro$/h the ard$o$s e:a7ination !or atents the

etitioner cannot e:c%$de others !ro7 the 7an$!act$re sa%e or co77ercia% $se o! the

%i/ht 0o:es on the so%e 0asis o! its co*ri/ht certi!icate o"er the technica% dra#in/s.

Stated other#ise #hat etitioner see4s is e:c%$si"it* #itho$t an* oort$nit* !or the

atent o!!ice (IPO) to scr$tinie the %i/ht 0o:s e%i/i0i%it* as a atenta0%e in"ention. The

iron* here is that had etitioner sec$red a atent instead its e:c%$si"it* #o$%d ha"e

0een !or 1 *ears on%*. 5$t thro$/h the si7%i!ied roced$re o! co*ri/ht6re/istration#ith the Nationa% =i0rar* #itho$t $nder/oin/ the ri/or o! de!endin/ the atenta0i%it* o! its

in"ention 0e!ore the IPO and the $0%ic the etitioner #o$%d 0e rotected !or ',

*ears. This sit$ation co$%d not ha"e 0een the intention o! the %a#.

In the o!t6cited case o! #aker vs. "elden-+1 the @nited States S$re7e Co$rt he%d

that only the expression of an idea is protected by copyright, not the idea itself . In that

case the %ainti!! he%d the co*ri/ht o! a 0oo4 #hich e:o$nded on a ne# acco$ntin/

s*ste7 he had de"e%oed. The $0%ication i%%$strated 0%an4 !or7s o! %ed/ers $ti%ied in

s$ch a s*ste7. The de!endant rerod$ced !or7s si7i%ar to those i%%$strated in the

%ainti!!s co*ri/hted 0oo4. The @S S$re7e Co$rt r$%ed that8

There is no doubt that a !or" on the sub=ect of boo"-"eeping, though only

explanatory of !ell "no!n systems, may be the sub=ect of a copyright@ but, then, it is

claimed only as a boo". x x x. ut there is a clear distinction bet!een the boo"s, as

such, and the art, !hich it is, intended to illustrate. The mere statement of the











proposition is so evident that it re9uires hardly any argument to support it. The same

distinction may be predicated of every other art as !ell as that of boo""eeping. +

treatise on the composition and use of medicines, be they old or ne!@ on the

construction and use of ploughs or !atches or churns@ or on the mixture and

application of colors for painting or dyeing@ or on the mode of dra!ing lines to produce the effect of perspective, !ould be the sub=ect of copyright@ but no one !ould

contend that the copyright of the treatise !ould give the exclusive right to the art or

manufacture described therein. The copyright of the boo", if not pirated from other

!or"s, !ould be valid !ithout regard to the novelty or !ant of novelty of its sub=ect

matter. The novelty of the art or thing described or explained has nothing to do !ith

the validity of the copyright. To give to the author of the book an exclusive

property in the art described therein, when no examination of its novelty has

ever been officially made, would be a surprise and a fraud upon the public. That

is the province of letters patent, not of copyright. The claim to an invention of

discovery of an art or manufacture must be subjected to the examination of the

Patent Office before an exclusive right therein can be obtained; and a patent

from the government can only secure it.

The difference bet!een the t!o things, letters patent and copyright, may be illustrated

by reference to the sub=ects =ust enumerated. Ta"e the case of medicines. #ertain

mixtures are found to be of great value in the healing art. f the discoverer writes

and publishes a book on the subject !as regular physicians generally do", he gains

no exclusive right to the manufacture and sale of the medicine; he gives that to

the public. f he desires to ac#uire such exclusive right, he must obtain a patent

for the mixture as a new art, manufacture or composition of matter. $e may

copyright his book, if he pleases; but that only secures to him the exclusive right

of printing and publishing his book. %o of all other inventions or discoveries.

The copyright of a boo" on perspective, no matter ho! many dra!ings and

illustrations it may contain, gives no exclusive right to the modes of dra!ing

described, though they may never have been "no!n or used before. y publishing the boo" !ithout getting a patent for the art, the latter is given to the public.

x x x

/o!, !hilst no one has a right to print or publish his boo", or any material part

thereof, as a boo" intended to convey instruction in the art, any person may practice



and use the art itself !hich he has described and illustrated therein. The use of the art

is a totally different thing from a publication of the book explaining it. The

copyright of a boo" on boo""eeping cannot secure the exclusive right to ma"e, sell

and use account boo"s prepared upon the plan set forth in such boo". >hether the art

might or might not have been patented, is a 9uestion, !hich is not before us. It !asnot patented, and is open and free to the use of the public. +nd, of course, in using the

art, the ruled lines and headings of accounts must necessarily be used as incident to it.

The plausibility of the claim put for!ard by the complainant in this case arises from a

confusion of ideas produced by the peculiar nature of the art described in the boo"s,

!hich have been made the sub=ect of copyright. In describing the art, the illustrations

and diagrams employed happened to correspond more closely than usual !ith the

actual !or" performed by the operator !ho uses the art. x x x The description of the

art in a book, though entitled to the benefit of copyright, lays no foundation for

an exclusive claim to the art itself. The object of the one is explanation; the object

of the other is use. The former may be secured by copyright. The latter can only

be secured, if it can be secured at all, by letters patent. (underscoring supplied)

N !HE I""*E !RADE#AR' INRINGE#EN!

This iss$e concerns the $se 0* resondents o! the 7ar4 Poster Ads #hich

etitioners resident said #as a contraction o! oster ad"ertisin/. P D #as a0%e to

sec$re a trade7ar4 certi!icate !or it 0$t one #here the /oods seci!ied #erestationeries s$ch as %etterheads en"e%oes ca%%in/ cards and ne#s%etters. -++ Petitioner

ad7itted it did not co77ercia%%* en/a/e in or 7ar4et these /oods. On the contrar* it

dea%t in e%ectrica%%* oerated 0ac4%it ad"ertisin/ $nits and the sa%e o! ad"ertisin/ saces

thereon #hich ho#e"er #ere not at a%% seci!ied in the trade7ar4 certi!icate.

@nder the circ$7stances the Co$rt o! Aea%s correct%* cited 'aberge Inc. vs.

Intermediate Appellate Court -+ #here #e in"o4in/ Section +, o! the o%d Trade7ar4

=a# r$%ed that the certi!icate o! re/istration iss$ed 0* the Director o! Patents can con!er

($on etitioner) the e:c%$si"e ri/ht to $se its o#n s*70o% only to those goods specified

in the certificate s$0?ect to an* conditions and %i7itations seci!ied in the certi!icate : ::. One #ho has adoted and $sed a trade7ar4 on his /oods does not prevent the

adoption and use of the same trademark by others for products which are of a

different description.-+& 'aberge, Inc. #as correct and #as in !act recent%* reiterated

in Canon abushiki aisha vs. Court of Appeals.-+'




http://sc.judiciary.gov.ph/jurisprudence/2000/july2000/120900.htm





http://sc.judiciary.gov.ph/jurisprudence/2000/july2000/120900.htm




Ass$7in/ arguendo that Poster Ads co$%d "a%id%* $a%i!* as a trade7ar4 the !ai%$re

o! P D to sec$re a trade7ar4 re/istration !or seci!ic $se on the %i/ht 0o:es 7eant

that there co$%d not ha"e 0een an* trade7ar4 in!rin/e7ent since re/istration #as an

essentia% e%e7ent thereo!.

N !HE I""*E *NAIR C#PE!I!IN

I! at a%% the ca$se o! action sho$%d ha"e 0een !or $n!air co7etition a sit$ation

#hich #as ossi0%e e"en i! P D had no re/istration. -+3 Ho#e"er #hi%e the etitioners

co7%aint in the RTC a%so cited $n!air co7etition the tria% co$rt did not !ind ri"ate

resondents %ia0%e there!or. Petitioner did not aea% this artic$%ar oint hence it

cannot no# re"i"e its c%ai7 o! $n!air co7etition.

5$t e"en disre/ardin/ roced$ra% iss$es #e ne"erthe%ess cannot ho%d resondents

/$i%t* o! $n!air co7etition.

5* the nat$re o! thin/s there can 0e no $n!air co7etition $nder the %a# on

co*ri/hts a%tho$/h it is a%ica0%e to dis$tes o"er the $se o! trade7ar4s. E"en a na7e

or hrase incaa0%e o! aroriation as a trade7ar4 or tradena7e 7a* 0* %on/ and

e:c%$si"e $se 0* a 0$siness (s$ch that the na7e or hrase 0eco7es associated #ith

the 0$siness or rod$ct in the 7ind o! the $rchasin/ $0%ic) 0e entit%ed to rotection

a/ainst $n!air co7etition.-+ In this case there #as no e"idence that P Ds $se o!

Poster Ads #as distincti"e or #e%%64no#n. As noted 0* the Co$rt o! Aea%s etitioners

e:ert #itnesses hi7se%! had testi!ied that Poster Ads #as too /eneric a na7e. So it

#as di!!ic$%t to identi!* it #ith an* co7an* honest%* sea4in/.-+<

This cr$cia% ad7ission0* its o#n e:ert #itness that Poster Ads co$%d not 0e associated #ith P D sho#ed

that in the 7ind o! the $0%ic the /oods and ser"ices carr*in/ the trade7ar4 Poster

Ads co$%d not 0e distin/$ished !ro7 the /oods and ser"ices o! other entities.

This !act a%so re"ented the a%ication o! the doctrine o! secondar* 7eanin/.

Poster Ads #as /eneric and incaa0%e o! 0ein/ $sed as a trade7ar4 0eca$se it #as

$sed in the !ie%d o! oster ad"ertisin/ the "er* 0$siness en/a/ed in 0* etitioner.

Secondar* 7eanin/ 7eans that a #ord or hrase ori/ina%%* incaa0%e o! e:c%$si"e

aroriation #ith re!erence to an artic%e in the 7ar4et (0eca$se it is /eo/rahica%%* or

other#ise descriti"e) 7i/ht ne"erthe%ess ha"e 0een $sed !or so %on/ and soe:c%$si"e%* 0* one rod$cer #ith re!erence to his artic%e that in the trade and to that

0ranch o! the $rchasin/ $0%ic the #ord or hrase has co7e to 7ean that the artic%e

#as his roert*.-+2 The ad7ission 0* etitioners o#n e:ert #itness that he hi7se%!

co$%d not associate Poster Ads #ith etitioner P D 0eca$se it #as too /eneric

de!inite%* rec%$ded the a%ication o! this e:cetion.











Ha"in/ disc$ssed the 7ost i7ortant and critica% iss$es #e see no need to 0e%a0or

the rest.

A%% to%d the Co$rt !inds no re"ersi0%e error co77itted 0* the Co$rt o! Aea%s #hen

it re"ersed the Re/iona% Tria% Co$rt o! Ma4ati Cit*.

HERERE the etition is here0* DENIED and the decision o! the Co$rt o!

Aea%s dated Ma* ++ +,,1 is AFFIRMED in toto.

" RDERED.

!uno, (Chairman), !anganiban, "andoval&*utierre+, and Carpio&orales,

--., conc$r .

1. pear & dean vs. shoemart

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