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 In 1986, the contract was rescinded unilaterally by SMI,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.


Smith Kline Beckman Co. v Court of Appeals and Tryco Pharma GR No. 126627, August 14, 2003

Facts:

Petitioner Smith Kline Beckman Co., licensed to do business in the Philippines, filed on October 8, 1976
as assignee before the Bureau of Patents an application for patent on its invention called “Methods and
Compositions for Producing Biphasic Parasiticide Activity Using Methyl 5 Propylthio-2-Benzimidazole
Carbanate.” A Letters of Patent was issued to the petitioner on September 24, 1981 for a period of 17
years. The patent provides that the patented invention consists of Methyl 5 Propylthio-2-Benzimidazole
Carbanate used as an active ingredient in treating gastrointestinal parasites and lung worms in animals.
The respondent Tryco Pharma manufactures, distributes and sells veterinary product, one of which is
the Impregon, a drug having Albendazole as its active ingredient effective against gastrointestinal worms
in animals. Petitioner now sues the respondent for patent infringement and unfair competition before
the RTC as it claims that their patent includes the substance Albendazole used by the respondent and
they sold and used the drug Impregon without the petitioner’s authorization and committed unfair
competition for selling as its own the drug that substantially functions to achieve the same result.
Petitioner further contends that under the doctrine of equivalents in determining patent infringement,
the active substance Albendazole used by the respondent is substantially the same as Methyl 5
Propylthio-2-Benzimidazole Carbanate covered by its patent with the same use of combating worm
infestations in animals. It prodded the court to go beyond the literal words used in the Letter of Patent
issued to them to consider that the words Methyl 5 Propylthio-2-Benzimidazole Carbanate and
Albendazole are the same. Respondent avers that the Letter of Patents issued to petitioner does not
cover Albendazole in that the word does not appear on it. Even if the patent were to include
Albendazole it is unpatentable. They secured approval from the Bureau of Foods and Drugs to
manufacture and market Impregon with the Albendazole as its active ingredients. The petitioner has no
proof that they passed their veterinary products as that of the petitioner.

Issue:

Whether or not respondent is guilty of patent infringement?

Ruling:

The Supreme Court held that it did not. When the language of the claim is clear and distinct, the
patentee is bound thereby and may not claim anything beyond them. The language of the Letter of
Patents issued to the petitioner failed to yield anything that it includes Albendazole. The doctrine of
equivalents does not apply in the case at bar because it requires that for infringement to take place, the
device should appropriate a prior invention by incorporating its innovative concept and although there
are some modifications and change they perform substantially the same results. The petitioner’s
evidence failed to adduce that substantial sameness on both the chemicals they used. While both
compounds produce the same effects of neutralizing parasites in animals, the identity of result does not
amount to infringement. The petitioner has the burden to show that it satisfies the function-means-and-
result-test required by the doctrine of equivalents. Nothing has been substantiated on how Albendazole
can weed the parasites out from animals which is similar to the manner used by the petitioner in using
their own patented chemical compound.