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Pearl & Dean (Phil.), Inc. v. Shoemart, Inc.

North Edsa Marketing, Inc.
G.R. No. 148222, August 15, 2003
Corona, J.

Pearl & Dean (P & D) had their light boxes designs copyrighted. P & D let
their design be used by a third party to construct the light boxes for SMI. However,
for an unknown reason, SMI rescinded the contract with P & D. Worst thing
happened when after two years P & D learned that SMI were using light boxes of
same design manufactured by same third party the former contracted to construct
said light boxes for the latter. This prompted petitioner to file and action against

Does copyright on the drawings extends to the actual light boxes?

Being a mere statutory grant, the rights are limited to what the statute
confers. It can only cover the works falling under the statutory enumeration or
description. A copyright would only cover the drawings or technical designs but
will not extend to the actual product. The actual product should be covered by a
patent to be protected.
A patent infringement to be sustained necessarily entails that a patent is
secured and has been issued. No right to the invention arises alone from the
issuance of a patent.
First Division
[G. R. No. 113388. September 05, 1997]



The petitioner filed an action for the cancellation of Letter of Patent
covering a gas burner registered in the name of respondent Melecia Madolaria who
subsequently assigned the letter of patent to United Foundry. Petitioner alleged that
the private respondent was not the original, true and actual inventor nor did she
derive her rights from the original, true and actual inventor of the utility model
covered by the letter of patent; further alleged that the utility model covered by
the subject letter of patent had been known or used by others in the Philippines for
more than one (1) year before she filed her application for letter of patent on
Dec.1979. For failure to present substitute proof of her allegations, the lower court
and Court of Appeals denied the action for cancellation. Hence, the present

Whether or not the respondent court wrongfully denied the cancellation of
letter of patent under the private respondent.

No. The issuance of such patent creates a presumption which yields only to
clear and cogent evidence that the patentee was the original and first inventor. The
burden of proving want of novelty is on him who avers it and the burden is a heavy
one which is met only by clear and satisfactory proof which overcomes every
reasonable doubt. Clearly enough, the petitioner failed to present clear and
satisfactory proof to overcome every reasonable doubt to afford the cancellation of
the patent to the private respondent.
Third division

[G.R. No. 179127, December 24, 2008]




Petitioner Sehwani, Inc. alleged that responden lack the legal capacity to sue
because it was not doing business in the Philippines and that it has no cause of
action because its mark is not registered or use in the Philippines. They claimed
that as the registered owner of the IN-N-OUT mark, it enjoys the presumption
that the same was validly acquired and that it has the exclusive right to use the
mark. Moreover, petitioners argued that other than the bare allegation of fraud in
the registration of the mark, respondent failed to show the existence of any of the
grounds for cancellation thereof under the IP Code.

Respondents contended that petitioners committed a violation of intellectual

property rights when they refused to accede to the demand in desisting from
claiming ownership of the mark IN-N-OUT and to voluntarily cancelling its
Trademark Registration. They argued that they have been the owner of the
tradename IN-N-OUT and the trademarks IN-N-OUT. IN-N-OUT Burger &
Arrow Design and IN-N-OUT Burger Logo. Which are used in its business
since 1948 up to the present. These tradename and trademarks were registered in
the United States as well as in other parts of the world.

Whether or not respondent has the legal capacity to sue for the protection of
its trademarks albeit it is not doing business in the Philippines.

Yes. Section 160 in relation to section 3 of R.A. No. 8293, provides for the
Right of Foreign Corporation to sue in Trademark or Service Mark Enforcement
Action. In addition, Articles 6 and 8 of The Paris Convention, wherein both the
United States and the Philippines are signatories state that A tradename shall be
protected in all countries of the Union without the obligation of filing or
registration whether or not it forms part of a trademark.
Article 6 which governs the protection of well-known trademarks, is a self-
executing provision and does not require legislative enactment to give it effect in
the member country. The question of whether or not respondents trademarks are
considered well-known is factual in nature. Considering the factual findings of
the BLA-IPO, the SC is inclined to favor the declaration of the mark IN-N-OUT
as an internationally well-known mark on the basis of registrations in various
countries around the world and the comprehensive advertisements therein. The
fact that respondents marks are neither registered nor used in the Philippines is of
no moment.