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MIRPURI vs. CA G.R. No.

114508, November 19, 1999


Thursday,
January
29,
Labels: Case Digests, Commercial Law

2009

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by Coffeeholic

Writes

Facts: In 1970, Escobar filed an application with the Bureau of Patents for the registration of the
trademark Barbizon for use in horsiers and ladies undergarments (IPC No. 686). Private
respondentreported Barbizon Corporation, a corporation organized and doing business under the laws of
New York, USA, opposed the application. It was alleged that its trademark is confusingly similar with that
of Escobar and that the registration of the said trademark will cause damage to its business reputation and
goodwill. In 1974, the Director of Patents gave due course to the application. Escobar later assigned all
his rights and interest over the trademark to petitioner. In 1979, Escobar failed to file with the Bureau
the affidavit of use of the trademark required under the Philippine Trademark Law. Due to this failure, the
Bureau cancelled Escobars certificate of registration. In 1981, Escobar and petitioner separately filed
this application forregistration of the same trademark. (IPC 2049). Private respondent opposed again. This
time it alleged (1) that the said trademark was registered with the US Patent Office; (2) that it is entitled to
protection as well-known mark under Article 6 bis of the Paris Convention, EO 913 and the two
Memoranda of the Minister of Trade and Industry and (3) that its use on the same class of goods amounts
to a violation of the Trademark Law and Art. 189 of the RPC. Petitioner raised the defense of Res
Judicata.

Issue: One of the requisites of res judicata is identical causes of action. Do IPC No. 686 and IPC No.
2049
involve
the
same
cause
of
action?

Held: No. The issue of ownership of the trademark was not raised in IPC 686. IPC 2049 raised the issue
of ownership, the firstregistration and use of the trademark in the US and other countries, and the
international recognition of the trademark established by extensive use and advertisement of
respondents products for over 40 years here and abroad. These are different from the issues of
confessing similarity and damage in IPC 686. The issue of prior use may have been raised in IPC 686 but
this claim was limited to prior use in the Philippines only. Prior use in IPC 2049 stems from the
respondents claims originator of the word and symbol Barbizon, as the first and registered user of the
mark attached to its products which have been sold and advertised would arise for a considerable number
of years prior to petitioners first application. Indeed, these are substantial allegations that raised new
issues
and
necessarily
gave
respondents
a
new
cause
of
action.
Moreover, the cancellation of petitioners certificate registration for failure to file the affidavit of use arose

after IPC 686. This gave respondent another cause to oppose the second application.
It is also to be noted that the oppositions in the first and second cases are based on different laws.
Causes of action which are distinct and independent from each other, although out of the same contract,
transaction, or state of facts, may be sued on separately, recovery on one being no bar to subsequent
actions on others. The mere fact that the same relief is sought in the subsequent action will not render the
judgment in the prior action operating as res judicata, such as where the actions are based on different
statutes
Tanada vs Angara, 272 SCRA 18, May 2, 1997
Facts : This is a petition seeking to nullify the Philippine ratification of the World Trade Organization
(WTO) Agreement. Petitioners question the concurrence of herein respondents acting in their capacities
as
Senators
via
signing
the
said
agreement.
The WTO opens access to foreign markets, especially its major trading partners, through the reduction of
tariffs on its exports, particularly agricultural and industrial products. Thus, provides new opportunities for
the service sector cost and uncertainty associated with exporting and more investment in the country.
These are the predicted benefits as reflected in the agreement and as viewed by the signatory Senators, a
free
market
espoused
by
WTO.
Petitioners on the other hand viewed the WTO agreement as one that limits, restricts and impair Philippine
economic sovereignty and legislative power. That the Filipino First policy of the Constitution was taken for
granted
as
it
gives
foreign
trading
intervention.
Issue : Whether or not there has been a grave abuse of discretion amounting to lack or excess of
jurisdiction on the part of the Senate in giving its concurrence of the said WTO agreement.
Held: In its Declaration of Principles and state policies, the Constitution adopts the generally accepted
principles of international law as part of the law of the land, and adheres to the policy of peace, equality,
justice, freedom, cooperation and amity , with all nations. By the doctrine of incorporation, the country is
bound by generally accepted principles of international law, which are considered automatically part of our
own laws. Pacta sunt servanda international agreements must be performed in good faith. A treaty is not
a mere moral obligation but creates a legally binding obligation on the parties.
Through WTO the sovereignty of the state cannot in fact and reality be considered as absolute because it
is a regulation of commercial relations among nations. Such as when Philippines joined the United Nations
(UN) it consented to restrict its sovereignty right under the concept of sovereignty as autolimitation. What
Senate did was a valid exercise of authority. As to determine whether such exercise is wise, beneficial or

viable is outside the realm of judicial inquiry and review. The act of signing the said agreement is not a
legislative restriction as WTO allows withdrawal of membership should this be the political desire of a
member. Also, it should not be viewed as a limitation of economic sovereignty. WTO remains as the only
viable structure for multilateral trading and the veritable forum for the development of international trade
law. Its alternative is isolation, stagnation if not economic self-destruction. Thus, the people be allowed,
through
their
duly
elected
officers,
make
their
free
choice.
Petition is DISMISSED for lack of merit.
Pearl & Dean (Phil.), Incorporated v. Shoemart, Incorporated G.R. No. 148222, August 15, 2003
Facts: Pearl & Dean (P&D) is engaged in the manufacture of advertising display units referred to as light
boxes. These units utilize specially printed posters sandwiched between plastic sheets and illuminated
with backlights. It was able to secure registration over these illuminated display units. The advertising light
boxes were marketed under the trademark Poster Ads. In 1985, P&D negotiated with defendant
Shoemart, Inc. (SMI) for the lease and installation of the light boxes in SM North Edsa. However, since SM
North Edsa was under construction, SMI offered as alternative SM Makati and Cubao. During the signing
of the Contract, SMI only returned the Contract with SM Makati. Manager of petitioner reminded SMI that
their agreement includes SM Cubao. However, SMI did not bother to reply. Instead, respondent informed
petitioner that they are rescinding the contract for SM Makati due to non-performance. Two years later,
SMI engaged the services of EYD Rainbow Advertising to make the light boxes. These were delivered in a
staggered basis and installed at SM Megamall and SM City. In 1989, petitioner received reports that exact
copy of its light boxes was installed by SMI. It further discovered that North Edsa Marketing Inc. (NEMI),
sister company of SMI, was set up primarily to sell advertising space in lighted display units located in
SMIs different branches. Petitioner sent letters to respondents asking them to cease using the light boxes
and the discontinued use of the trademark Poster Ads. Claiming that SMI and NEMI failed to meet its
demand, petitioner filed a case for infringement of trademark and copy right, unfair competition and
damages. SMI maintained that it independently developed its poster panels using commonly known
techniques and available technology without notice of or reference to P&Ds copyright.
In addition, it said that registration of Poster Ads obtained by petitioner was only for stationeries such as
letterheads, envelopes and the like. Poster Ads is a generic term which cannot be appropriated as
trademark, and, as such, registration of such mark is invalid. It also stressed that P&D is not entitled to the
reliefs sought because the advertising display units contained no copyright notice as provided for by law.
RTC found SMI and NEMI jointly and severally liable for infringement of copyright and trademark. CA
reversed saying that it agreed with SMI that what was copyrighted was the technical drawings only and
not the light boxes. Light boxes cannot be considered as either prints, pictorial illustrations, advertising
copies, labels, tags or box wraps, to be properly classified as copyrightable class O work. In addition, CA
stressed that the protective mantle of the Trademark Law extends only to the goods used by the first user
as specified in its certificate of registration. The registration of the trademark Poster Ads covers only
stationeries such as letterheads, envelopes and calling cards and newsletter.

ISSUES:
(1) If the engineering or technical drawings of an advertising display unit are granted copyright protection
is the light box depicted in such drawings ipso facto also protected by such copyright?
(2) Should the light box be registered separately?
(3) Can the owner of the registered trademark legally prevent others from using such mark if it is mere
abbreviation of a term descriptive of his goods, services or business?
Held:
1.No. Copyright is purely statutory. As such, the rights are limited to what the statute confers. It may be
obtained and enjoyed only with respect to the subjects and by the persons, and on the terms and
conditions specified in the statute.
Accordingly, it can cover only the works falling within the statutory enumeration or description. Petitioner
secured copyright under classification class O work. Thus, copyright protection extended only to the
technical drawings and not to the light box itself because the latter was not at all in the category of prints,
pictorial illustrations, advertising copies, labels, tags and box wraps. What the law does not include, it
excludes, and for the good reason: the light box was not a literary or artistic piece which could be
copyrighted under the copyright law. And no less clearly, neither could the lack of statutory authority to
make the light box copyrightable be remedied by the simplistic act of entitling the copyright certificate
issued by the National Library as Advertising Display Units. It must be noted that 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.
2.Yes. Petitioner never secured a patent for the light boxes. It therefore acquired no patent rights which
could have protected its invention, if in fact it really was. And because it had no patent, petitioner could not
legally prevent anyone from manufacturing or commercially using the contraption. To be able to effectively
and legally preclude others from copying and profiting from the invention, a patent is a primordial
requirement. No patent, no protection. The ultimate goal of a patent system is to bring new designs and
technologies into the public through disclosure. Ideas, once, disclosed to the public without protection of a
valid patent, are subject to appropriation without significant restraint. The Patent Law has a three-fold
purpose: first, patent law seeks to foster and reward invention; second, it promotes disclosures of
inventions to stimulate further innovation and to permit the public to practice the invention once the patent
expires; third, the stringent requirements for patent protection seek to ensure that ideas in the public
domain remain there for the free use of the public. It is only after an exhaustive examination by the patent
office that patent is issued. Therefore, not having gone through the arduous examination for patents,
petitioner cannot exclude other s from the manufacture, sale or commercial use of the light boxes on the
sole basis of its copyright certificate over the technical drawings.
3.Court agrees with CA that the certificate of registration issued by the Director of Patents can confer the
exclusive right to use its own symbol only to those goods specified in the certificate, subject to any
conditions and limitations specified in the certificate. One who has adopted and used a trademark on his
goods does not prevent the adoption and use of the same trademark by others for products which are of a
different description. Assuming arguendo that Poster Ads could validly qualify as a trademark, the failure

of petitioner to secure a trademark registration for specific use on the light boxes meant that there could
not have been any trademark infringement since registration was an essential element thereof. There is
no evidence that petitioners use of poster Ads was distinctive or well-known. As noted by CA,
petitioners expert witness himself had testified that Poster Ads was not too generic a name. SO it was
difficult to identify it with any company. This fact also prevented the application of the doctrine of
secondary meaning. Poster Ads was generic and incapable of being used as a trademark because it was
used in the field of poster advertising the very business engaged in by petitioner. Secondary meaning
means that a word or phrase originally incapable of exclusive appropriation with reference to an article in
the market might nevertheless have been used for so long and so exclusively by one producer with
reference to his article that , in the trade and to that branch of the purchasing public, the word or phrase
has come to mean that the article was his property. PETITION WAS DENIED
Distinctions between and among the various fields of intellectual property:
The Supreme Court reiterated its earlier pronouncement in the recent case of Kho v. Court of
Appeals (G.R. No. 115758, March 19, 2002), where it ruled that copyrights, trademarks and patents are
"completely distinct and separate from one another, and the protection afforded by one cannot be
used interchangeably to cover items or works that exclusively pertain to the others." In said case,
the following distinctions were made:
"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 or artistic works which are original intellectual
creations in the literary or 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."

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