ELIDAD C. KHO, doing business under the name and style of KEC COSMETICS LABORATORY v. HON.

COURT
OF APPEALS, SUMMERVILLE GENERAL MERCHANDISING and COMPANY, and ANG TIAM CHAY
March 19, 2002 | De Leon, Jr., J. | 2nd Division | Difference Between Copyright, Trademark, and Patent | RBA

DOCTRINE: 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 (trademark) or services (service mark) of an
enterprise and shall include a stamped or marked container of goods. In relation thereto, a trade name means the name or
designation identifying or distinguishing an enterprise. Meanwhile, the scope of a copyright is confined to literary and artistic
works which are original intellectual creations in the literary and artistic domain protected from the moment of their creation.
Patentable inventions, on the other hand, 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.

CASE SUMMARY: Kho had a copyright and patent over a beauty cream product and its container. She filed a complaint against
Summerville, seeking to restrain the latter from selling the products under the same name because this was an infringement of
her copyright and patent. The SC held that the copyright and patent registration of the name and container do not guarantee
her the right to the exclusive use of the same because they are not appropriate subjects of the said intellectual rights.

FACTS: Petition for review on certiorari of a decision of the Court of Appeals

1. Elidad C. Kho filed a complaint with the RTC-QC, Br. 90 for injunction and damages with a prayer for the issuance
of a WPI, against Summerville General Merchandising and Company (Summerville) and Ang Tiam Chay.
2. The complaint alleged the following:
a. Kho, doing business under the name and style of KEC Cosmetics Laboratory, is the registered owner of
the copyrights “Chin Chun Su” and “Oval Facial Cream Container/Case” as shown by 2 separate
Certificates of Copyright Registration;
b. She also has patent rights on “Chin Chun Su & Device” and “Chin Chun Su” for medicated cream, after
purchasing the same from Quentin Cheng, the registered owner thereof in the Supplemental Register of
the Philippine Patent Office;
c. Summerville advertised and sold Kho’s cream products under the brand name “Chin Chun Su”, in similar
containers that Kho uses, thereby misleading the public, and resulting in the decline of Kho’s sales and
income; and
d. Summerville should be enjoined from infringing on the copyrights and patents of Kho.
3. In defense, Summerville alleged the following:
a. It is the exclusive and authorized importer, repacker, and distributor of Chin Chun Su products
manufactured by Shun Yi Factory of Taiwan;
b. Said Taiwanese company authorized Summerville to register its trade name Chin Chun Su Medicated
Cream with the Philippine Patent Office and other government agencies;
c. KEC Cosmetics Laboratory obtained the copyrights through misrepresentation and falsification;
d. The authority of Quentin Cheng, assignee of the patent registration certificate, to distribute and market
Chin Chun Su products in the Philippines had already been terminated by the Taiwanese company.
4. The RTC granted the application for preliminary injunction. Summerville then filed a petition for certiorari with
the CA.
a. After Summerville filed its reply and Kho filed her comment, she moved to dismiss the petition because
Summerville did not state the docket number of the civil case in the caption of their petition, and they did
not include a certificate of non-forum shopping.
b. Summerville opposed and submitted the required certificate.
5. The CA ruled in favor Summerville, declaring the RTC order granting the WPI null and void. It ruled as follows:
a. The registration of the brand name Chin Chun Su by KEC with the supplemental register of the Bureau of
Patents, Trademarks, and Technology Transfer cannot be equated with registration in the principal
register, which is protected by the Trademark Law.
b. La Chemise Lacoste v. Fernandez:
i. Registration in the Supplemental Register serves as notice that the registrant is using or has
appropriated the trademark. At this point, the trademark cannot be on guard and there are
certain defects or obstacles which the user must overcome before he can claim legal ownership
of the mark. It would be deceptive for a party with nothing more than a registration in the
Supplemental Register to posture before the courts as if the registration is in the Principal
Register.
ii. Relinace on the last sentence of the Patent office action reading “registrant is presumed to be the
owner of the mark until after the registration is declared cancelled” is incorrect because the said
 presumption is merely rebuttable. One may be declared an unfair competitor even if his
competing trademark is registered.
6. Kho filed an MR with the CA, but in the meantime, the RTC continued to hear her complaint for final injunction
and damages. The RTC eventually ruled against her, barring her from using the trademark Chin Chun Su and
upholding Summerville’s right to use the same. It however recognized Kho’s copyright over the oval shaped
container of her beauty cream. No damages and costs were awarded, but the respective counsels were awarded
attorney’s fees of P75k each.

ISSUE: W/N the copyright and patent over the name and container of a beauty cream product entitles the registrant to the use
and ownership thereof, to the exclusion of others? – NO.

RULING:
 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 (trademark) or
services (service mark) of an enterprise and shall include a stamped or marked container of goods. In
relation thereto, a trade name means the name or designation identifying or distinguishing an enterprise.
Meanwhile, the scope of a copyright is confined to literary and artistic works which are original
intellectual creations in the literary and artistic domain protected from the moment of their creation.
Patentable inventions, on the other hand, 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.
 Kho has no right to support her claim for the exclusive use of the subject trade name and its container. These are
proper subjects of a trademark, because they fall squarely within its definition.
 In order to be entitled to exclusively use the same in the sale of the beauty cream, the user must sufficiently prove
that she registered or used it before anybody else did. The copyright and patent registration of the name and
container do not guarantee her the right to the exclusive use of the same because they are not appropriate
subjects of the said intellectual rights.
 Thus, a preliminary injunction order cannot be issued for the reason that Kho has not proven that she has a clear
right over the name on container to the exclusion of others, not having proven that she registered a trademark
thereto or used the same before anyone did.
o [CIVPRO Recall] a preliminary injunction order may be granted only when the application for the
issuance of the same shows facts entitling the applicant to the relief demanded. The invasion of the right
sought to be protected must material and substantial, that the right of complainant is clear and
unmistakable, and, there is an urgent and paramount necessity for the writ to prevent serious damage.

DISPOSITION: WHEREFORE, the petition is DENIED. The Decision and Resolution of the Court of Appeals dated May 24, 1993
and June 3, 1994, respectively, are hereby AFFIRMED. With costs against the petitioner. SO ORDERED.

NOTES – RULINGS ON PROCEDURAL MATTERS:

 The issuance of a final injunction renders any question on the preliminary injunctive order moot and academic
despite the fact that the decision granting a final injunction is pending appeal. Conversely, a decision denying the
applicant-plaintiff’s right to a final injunction, although appealed, renders moot and academic any objection to the
prior dissolution of a writ of preliminary injunction.
 Kho’s motion to dismiss before the CA, filed after Summerville’s reply is not allowed.
 “Substantial justice and equity require this Court not to revive a dissolved writ of injunction in favor of a party
without any legal right thereto merely on a technical infirmity. The granting of an injunctive writ based on a
technical ground rather than compliance with the requisites for the issuance of the same is contrary to the
primary objective of legal procedure which is to serve as a means to dispense justice to the deserving party.”