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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1986, the contract was rescinded unilaterally by SMI, and instead contracted with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.

ISSUES:
(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.