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Intellectual Property Law Finals

Intellectual Property Law Finals

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Published by TheHoneybhie

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Categories:Types, Business/Law
Published by: TheHoneybhie on Aug 13, 2011
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09/03/2012

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Pearl and Dean (Phils.) Incorporated v. Shoemart IncorporatedG.R. # 148222Facts:Pearl & Dean (P&D) is engaged in the manufacture of advertising display units referredto as light boxes. These units utilize specially printed posters sandwiched between plasticsheets and illuminated with backlights. It was able to secure registration over these illuminateddisplay units. The advertising light boxes were marketed under the trademark “Poster Ads”.In 1985, P&D negotiated with defendant Shoemart, Inc. (SMI) for the lease andinstallation of the light boxes in SM North Edsa. However, since SM North Edsa was under construction, SMI offered as alternative SM Makati and Cubao. During the signing of theContract, SMI only returned the Contract with SM Makati. Manager of petitioner reminded SMIthat their agreement includes SM Cubao. However, SMI did not bother to reply. Instead,respondent informed petitioner that they are rescinding the contract for SM Makati due to non-performance.Two years later, SMI engaged the services of EYD Rainbow Advertising to make thelight boxes. These were delivered in a staggered basis and installed at SM Megamall and SMCity. In 1989, petitioner received reports that exact copy of its light boxes was installed by SMI.It further discovered that North Edsa Marketing Inc. (NEMI), sister company of SMI, was set upprimarily to sell advertising space in lighted display units located in SMI’s different branches.Petitioner sent letters to respondents asking them to cease using the light boxes and thediscontinued use of the trademark “Poster Ads”.Claiming that SMI and NEMI failed to meet its demand, petitioner filed a case foinfringement of trademark and copy right, unfair competition and damages. SMI maintained thatit independently developed its poster panels using commonly known techniques and availabletechnology without notice of or reference to P&D’s copyright. In addition, it said that registrationof “Poster Ads” obtained by petitioner was only for stationeries such as letterheads, envelopesand the like. “Poster Ads” is a generic term which cannot be appropriated as trademark, and, assuch, registration of such mark is invalid. It also stressed that P&D is not entitled to the reliefssought because the advertising display units contained no copyright notice as provided for bylaw.RTC found SMI and NEMI jointly and severally liable for infringement of copyright andtrademark. CA reversed saying that it agreed with SMI that what was copyrighted was thetechnical drawings only and not the light boxes. Light boxes cannot be considered as either prints, pictorial illustrations, advertising copies, labels, tags or box wraps, to be properlyclassified as copyrightable class “O” work. In addition, CA stressed that the protective mantle of the Trademark Law extends only to the goods used by the first user as specified in its certificateof registration. The registration of the trademark “Poster Ads” covers only stationeries such asletterheads, envelopes and calling cards and newsletter.Issue/s:Whether the owner of the registered trademark legally prevents others from using suchmark if it is mere abbreviation of a term descriptive of his goods, services or business?Held:Court agrees with CA that the certificate of registration issued by the Director of Patentscan confer the exclusive right to use its own symbol only to those goods specified in thecertificate, subject to any conditions and limitations specified in the certificate. One who hasadopted and used a trademark on his goods does not prevent the adoption and use of the sametrademark by others for products which are of a different description.
 
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Assuming arguendo that “Poster Ads” could validly qualify as a trademark, the failure of petitioner to secure a trademark registration for specific use on the light boxes meant that therecould not have been any trademark infringement since registration was an essential elementthereof.There is no evidence that petitioner’s use of “poster Ads” was distinctive or well-known.As noted by CA, petitioner’s expert witness himself had testified that “Poster Ads” was not toogeneric a name. SO it was difficult to identify it with any company. This fact also prevented theapplication of the doctrine of secondary meaning. “Poster Ads” was generic and incapable of being used as a trademark because it was used in the field of poster advertising the verybusiness engaged in by petitioner. Secondary meaning means that a word or phrase originallyincapable of exclusive appropriation with reference to an article in the market mightnevertheless have been used for so long and so exclusively by one producer with reference tohis article that , in the trade and to that branch of the purchasing public, the word or phrase hascome to mean that the article was his property.
 
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Shangri la International Hotel Management v. CAG.R. #144802Facts:On June 21, 1988, the Shangri-La International Hotel Management, Ltd., Shangri-LaProperties, Inc., Makati Shangri-La Hotel and Resort, Inc. and Kuok Philippine Properties, Inc.(hereinafter collectively referred as the “Shangri-La Group”), filed with the Bureau of Patents,Trademarks and Technology Transfer (BPTTT) a petition, docketed as Inter Partes Case No.3145, praying for the cancellation of the registration of the “Shangri-Lamark and “S”device/logo issued to the Developers Group of Companies, Inc., on the ground that the samewas illegally and fraudulently obtained and appropriated for the latter’s restaurant business. TheShangri-La Group alleged that it is the legal and beneficial owners of the subject mark and logo;that it has been using the said mark and logo for its corporate affairs and business since March1962 and caused the same to be specially designed for their international hotels in 1975, muchearlier than the alleged first use thereof by the Developers Group in 1982.Likewise, the Shangri-La Group filed with the BPTTT its own application for registration of the subject mark and logo. The Developers Group filed an opposition to the application, whichwas docketed as Inter Partes Case No. 3529.Almost three (3) years later, or on April 15, 1991, the Developers Group instituted acomplaint for infringement and damages with prayer for injunction.On January 8, 1992, the Shangri-La Group moved for the suspension of the proceedings inthe infringement case on account of the pendency of the administrative proceedings before theBPTTT. This was denied by the trial court in a Resolution issued on January 16, 1992.TheShangri-La Group filed a Motion for Reconsideration. Soon thereafter, it also filed a Motion toInhibit against Presiding Judge Felix M. de Guzman. On July 1, 1992, the trial court denied bothmotions.Issue/s:Whether despite the institution of an Inter Partes case for cancellation of a mark with theBPTTT (now the Bureau of Legal Affairs, Intellectual Property Office) by one party, the adverseparty can file a subsequent action for infringement with the regular courts of justice inconnection with the same registered mark?Held:Section 151.2 of Republic Act No. 8293, otherwise known as the Intellectual PropertyCode and Similarly, Rule 8, Section 7, of the Regulations on Inter Partes Proceeding as appliedin the case at bar, the earlier institution of an Inter Partes case by the Shangri-La Group for thecancellation of the “Shangri-La” mark and “S” device/logo with the BPTTT cannot effectively bar the subsequent filing of an infringement case by registrant Developers Group. The law and therules are explicit.The rationale is plain: Certificate of Registration No. 31904, upon which the infringementcase is based, remains valid and subsisting for as long as it has not been cancelled by theBureau or by an infringement court. As such, Developers Group’s Certificate of Registration inthe principal register continues as “prima facie evidence of the validity of the registration, theregistrant’s ownership of the mark or trade-name, and of the registrant’s exclusive right to usethe same in connection with the goods, business or services specified in the certificate. Sincethe certificate still subsists, Developers Group may thus file a corresponding infringement suitand recover damages from any person who infringes upon the former’s rights.Furthermore, the issue rose before the BPTTT is quite different from that raised in the trialcourt. The issue rose before the BPTTT was whether the mark registered by Developers Groupis subject to cancellation, as the Shangri-La Group claims prior ownership of the disputedmark. On the other hand, the issue rose before the trial court was whether the Shangri-La

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