PEARL & DEAN (PHIL.

), INCORPORATED, Petitioner,
vs.
SHOEMART, INCORPORATED, and NORTH EDSA MARKETING, INCORPORATED, Respondents
G.R. No. 148222 August 15, 2003

FACTS:
Pearl & Dean was able to acquire copyrights over the designs of the display units called “light boxes”. In
1988, their trademark application for “Poster Ads” was approved; they used the same trademark to
advertise their light boxes.

In 1985, Pearl & Dean negotiated with Shoemart, Inc. (SM) (respondent) so that the former may be
contracted to install light boxes in the ad spaces of SM. Eventually, SM rejected Pearl & Dean’s proposal.

Two years later, Pearl & Dean received a report that light boxes, exactly the same as theirs, were being
used by SM in their ad spaces. They demanded SM to stop using the light boxes and at the same time
asked for damages amounting to P20 M. SM refused to pay damages though they removed the light
boxes.

1.) it did not infringe on Pearl & Dean’s trademark because Pearl & Dean’s trademark is only applicable
to envelopes and stationeries and not to the type of ad spaces owned by SM.
2.) SM also averred that “Poster Ads” is a generic term hence it is not subject to trademark registration.
3.) SM also averred that the actual light boxes are not copyrightable. The RTC ruled in favor of Pearl &
Dean. But the Court of Appeals ruled in favor of SM.

ISSUE:

1. Whether or not SM Shoemart was liable for infringement.

No. The lightboxes cannot, by any stretch of the imagination, be considered as either prints, pictorial
illustrations, advertising copies, labels, tags or box wraps, to be properly classified as a copyrightable;
what was copyrighted were the technical drawings only, and not the lightboxes themselves. To be
copyrightable there should be republication of the architectural plan.

In other cases, it was held that there is no copyright infringement when one who, without being
authorized, uses a copyrighted architectural plan to construct a structure. This is because the copyright
does not extend to the structures themselves.

On the trademark infringement allegation, the words “Poster Ads” are a simple contraction of the
generic term poster advertising. In the absence of any convincing proof that “Poster Ads” has acquired a
secondary meaning in this jurisdiction, Pearl & Dean’s exclusive right to the use of “Poster Ads” is limited
to what is written in its certificate of registration, namely, stationeries.
 ELIDAD C. KHO, doing business under the name and style of KEC COSMETICS LABORATORY, petitioner,
vs.
HON. COURT OF APPEALS, SUMMERVILLE GENERAL MERCHANDISING and COMPANY, and ANG TIAM
CHAY, respondents
G.R. No. 115758 March 19, 2002

Elidad Kho is the owner of KEC Cosmetics Laboratory. She was also the holder of copyrights over Chin
Chun Su and its Oval Facial Cream Container/Case. That she bought the patent rights over the Chin Chun
Su & Device and Chin Chun Su for medicated cream from one Quintin Cheng, who was the assignee of
Shun Yi Factory – a Taiwanese factory actually manufacturing Chin Chun Su products.

Summerville in their defense alleged that they are the exclusive and authorized importer, re-packer and
distributor of Chin Chun Su products; that Shun Yi (assignor of Quintin Cheng) even authorized
Summerville to register its trade name Chin Chun Su Medicated Cream with the Philippine Patent Office;
that Quintin Cheng, from whom Kho acquired her patent rights, had been terminated (her services) by
Shun Yi.

Regional Trial Court in her decision granted the issuance of writ of preliminary injunction but the court
of appeals reversed the decision.

ISSUE: Whether or not Kho has the exclusive right to use the trade name and its container.

HELD:
NO. Trademark, copyright and patents are different intellectual property rights that cannot be
interchanged with one another.

In the case at bar, the petitioner applied for the issuance of a preliminary injunctive order on the ground
that she is entitled to the use of the trademark on Chin Chun Su and its container based on her copyright
and patent over the same.

The name and container of a beauty cream product are proper subjects of a trademark (not copyright-
like what she registered for) inasmuch as the same falls squarely within its definition.

In order to be entitled to exclusively use the same in the sale of the beauty cream product, the user
must sufficiently prove that she registered or used it before anybody else did.
WHEREFORE, the petition is DENIED
 Victorio P. Diaz
vs
People of the Philippines and Levi Strauss [Phils.], Inc.
G.R. No. 180677 February 18, 2003

Facts:
Levi Strauss Philippines, Inc. (Levi’s Philippines) is a licensee of Levi’s. After receiving information that
Diaz was selling counterfeit LEVI’S 501 jeans in his tailoring shops in Almanza and Talon, Las Piñas City,
Levi’s Philippines hired a private investigation group to verify the information. Surveillance and the
purchase of jeans from the tailoring shops of Diaz established that the jeans bought from the tailoring
shops of Diaz were counterfeit or imitations of LEVI’S 501. Armed with search warrants, NBI agents
searched the tailoring shops of Diaz and seized several fake LEVI’S 501 jeans from them. Levi’s
Philippines claimed that it did not authorize the making and selling of the seized jeans; that each of the
jeans were mere imitations of genuine LEVI’S 501 jeans by each of them bearing the registered
trademarks, like the accurate design, the tab, and the leather patch; and that the seized jeans could be
mistaken for original LEVI’S 501 jeans due to the placement of the accurate, tab, and two-horse leather
patch. On his part, Diaz admitted being the owner of the shops searched, but he denied any criminal
liability. Diaz stated that he did not manufacture Levi’s jeans, and that he used the label “LS Jeans
Tailoring” in the jeans that he made and sold; that the label “LS Jeans Tailoring” was registered with the
Intellectual Property Office; that his shops received clothes for sewing or repair; that his shops offered
made-to-order jeans, whose styles or designs were done in accordance with instructions of the
customers; that since the time his shops began operating in 1992, he had received no notice or warning
regarding his operations; that the jeans he produced were easily recognizable because the label “LS
Jeans Tailoring,” and the names of the customers were placed inside the pockets, and each of the jeans
had an “LSJT” red tab; that “LS” stood for “Latest Style;” and that the leather patch on his jeans had two
buffaloes, not two horses.

Issue:
Whether there exists a likelihood of confusion between the trademarks of Levi’s and Diaz.

Held:
The Court held, through the application of the holistic test, that there was no likelihood of confusion
between the trademarks involved. Accordingly, the jeans trademarks of Levi’s Philippines and Diaz must
be considered as a whole in determining the likelihood of confusion between them. The maong pants or
jeans made and sold by Levi’s Philippines, which included LEVI’S 501, were very popular in the
Philippines. The consuming public knew that the original LEVI’S 501 jeans were under a foreign brand
and quite expensive.Such jeans could be purchased only in malls or boutiques as ready-to-wear items,
and were not available in tailoring shops like those of Diaz’s as well as not acquired on a “made-to-
order” basis. Under the c ircumstances, the consuming public could easily discern if the jeans were
original or fake LEVI’S 501, or were manufactured by other brands of jeans. Diaz used the trademark “LS
JEANS TAILORING” for the jeans he produced and sold in histailoring shops. His trademark was visually
and aurally different from the trademark “LEVISTRAUSS & CO” appearing on the patch of original jeans
under the trademark LEVI’S 501.The word “LS” could not be confused as a derivative from “LEVI
STRAUSS” by virtue of the “LS” being connected to the word “TAILORING”, thereby openly suggesting
that the jeans bearing the trademark “LS JEANS TAILORING” came or were bought from the tailoring
shops of Diaz, not from the malls or boutiques selling original LEVI’S 501 jeans to the consuming public.
The prosecution also alleged that the accused copied the “two horse design” of the petitioner-private
complainant but the evidence will show that there was no such design in the seized jeans. Instead, what
is shown is “buffalo design.” Again, a horse and a buffalo are two different animals which an ordinary
customer can easily distinguish. The prosecution further alleged that the red tab was copied by the
accused. However, evidence will show that the red tab used by the private complainant indicates the
word “LEVI’S” while that of the accused indicates the letters “LSJT” which means LS JEANS TAILORING.
Again, even an ordinary customer can distinguish the word LEVI’S from the letters LSJT. In terms of
classes of customers and channels of trade, the jeans products of the private complainant and the
accused cater to different classes of customers and flow through the different channels of trade. The
customers of the private complainant are mall goers belonging to class A and B market group – while
that of the accused are those who belong to class D and E market who can only afford Php 300 for a pair
of made-to-order pants.