PEARL & DEAN PHIL INC. VS.

SHOEMART- TRADEMARK, COPYRIGHT AND

PATENTS

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 In 1986, the contract was rescinded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.