KHO vs CA 2002
Hence a PI Order
SUMMARY: P, doing business under the name of KEC Cosmetics Laboratory,
alleges that he is the registered owner of the copyrights Chin Chun Su and Oval
Facial Cream Container; and that he has patent rights on Chin Chun Su &
Device and Chin Chun Su for medicated cream after purchasing it from Cheng,
the registered owner. R sold Ps cream products under the brand name Chin
Chun Su in similar containers.
Rs defense: Summerville is the exclusive and authorized importer, re-packer
and distributor of Chin Chun Su products manufactured by a factory in Taiwan,
who authorized Summerville to register its TM Chin Chun Su Medicated Cream
with the Phil Patent Office.
P applied for the issuance of preliminary injunction order on the ground that she
is entitled to use the TM Chin Chun Su and the container based on her copyright
and patent over the same. It was granted by the TC but was reversed by the
CA.
SC ruled in favor of the Rs. One of the grounds for the issuance of a WPI is a
proof that the applicant is entitled to the relief demanded, and the whole or part
of such relief consists in restraining the commission or continuance of the act/s
complained of, either for a limited period. This is the reason why we have ruled
that it must be shown that the invasion of the right sought to be protected is
material and substantial, that the right of complainant is clear and
unmistakable , and, that there is an urgent and paramount necessity for the writ
to prevent serious damage. In the case at bar, SC ruled that it must first find
won it is appropriate to rule if the copyright and patent over the name and
container would entitle the registrant to the use and ownership over the same to
the exclusion of others.
SC ruled that TM, CR and patents are different rights that cannot be
interchanged with one another. A trademark is any visible sign capable of
distinguishing the goods (TM) or services (SM) of an enterprise and shall
include a stamped or marked container of goods. A trade name means the
name or designation identifying or distinguishing an enterprise. The scope of a
CR 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.
P has no right to support her claim for the exclusive use of the subject TN
and its container. The name and container of a beauty cream product are
proper subjects of a TM since it falls within its definition. To be entitled to
exclusively use the same, the user must prove that she registered or used
it before anybody else did. The Ps CR and patent registration would not
guarantee her the right to the exclusive use of the same for the reason that they
are not appropriate subjects of the said intellectual rights.
cannot be issued for the reason that the P has not proven that she has a clear
right over the said name and container to the exclusion of others, not having
proven that she registered a TM thereto or used the same before anyone did.
FACTS:
P filed a complaint for injunction and damages with a prayer for the
issuance of a writ of preliminary injunction against the Rs Summerville
General Merchandising and Company and And Tiam Chay
Petition alleges that:
o P, doing business under the name of KEC Cosmetics
Laboratory, is the registered owner of the copyrights Chin Chun
Su and Oval Facial Cream Container/Case
o P has patent rights on Chin Chun Su & Device and Chin Chun
Su for medicated cream after purchasing it from Cheng, the
registerd owner
o R sold Ps cream products under the brand name Chin Chun
Su, in similar containers that P uses, thereby misleading the
public and resulting in the decline in the Ps business sales
o R should be enjoined from infringing on the copyrights and
patents of the P
Rs defense:
o Summerville is the exclusive and authorized importer, re-packer
and distributor of Chin Chun Su products manufactured by
Shun Yi Factory of Taiwan
o The manufacturing company authorized Summerville to register
its trade name Chin Chun Su Medicated Cream with the Phil
Patent Office
o That KEC Cosmetics Laboratory of the P obtained the
copyrights through misrepresentation and falsification
o The authority of Quintin Cheng, assignee of the patent
registration cert, to distribute and market Chin Chun Su
products in the Phils had already been terminated by the
Taiwanese Manufacturing Company
TC ruled in favor of the P. Application of P, doing business under KEC
Cosmetic Laboratory, was granted.
MFR denied
CA ruled in favor of the Rs. The registration of the trademark or
brandname 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 duly protected
by the Trademark Law
 P filed a MFR and several motions to declare Rs in contempt of court for
stating that genuine Chin Chun SU products could be obtained only
from Summerville General Merchandising and CO
TC heard Ps complaint for final injunction and damages. TC barred P
from using the trademark Chin Chun Su and upheld Rs to use the same
but recognized the copyright of P over the oval shaped container of her
beauty cream.
CA denied Ps MFR
ISSUES: WON P has a claim for the exclusive use - NO
HELD:
P faults CA for not dismissing the petition on the ground of violation of SC. P
contends that CA violated Sec 6 Rule 9 of the Revised Internal Rules of the CA
when it failed to rule on her MFR within 90 days from the time it is submitted for
resolution (345 days).
SC ruled in favor of R. Rules of CivPro provides that one of the ground for the
issuance of a writ of prel injunction is a proof that the applicant is entitled to the
relief demanded, and the whole or part of such relief consists in restraining the
commission or continuance of the act/s complained of for a limited period. Thus
PI Order may only be granted when application for such shows facts entitling
the applicant to the relief demanded. This is the reason why we have ruled that
it must be shown that the invasion of the right sought to be protected is material
and substantial, that the right is clear and unmistakable, and that there is an
urgent necessity for the writ to prevent serious damage.
In this case, P applied for the issuance of the PI Order on the ground that she is
entitled to use the trademark on Chin Chun Su and its container based on her
copyright and patent over the same.
IMPT: Trademark, copyright and patents are different IP rights that cannot be
interchanged with one another.
Trademark any visible sign capable of distinguishing the good(trademark) or
services (service mark) of an enterprise and shall include a stamped or marked
container of goods.
Trade name the name or designation identifying or distinguishing an
enterprise
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 refer to any technical solution of a problem in any field
of human activity which is new, involes an inventive step and is industrially
applicable.
P has no right to support her claim for exclusive use. The name and container of
a product are proper subjects of a TM. To be entitled to exclusively use the
same, the user must prove that she registered or used it before anybody else
did. Ps CR and patent registration would not guarantee her the right to the
exclusive use for the reason that they are not appropriate subjects of the said
intellectual rights. Hence, a Preliminary Injunction Order cannot be issed since P
has not proven that she has a clear right over the name and container to the
exclusion of others, not having proven that she has registered a TM or used the
same before anyone did.