ELIDAD KHO V CA

FACTS: On December 20, 1991, petitioner Elidad C. Kho filed a complaint for
injunction and damages with a prayer for the issuance of a writ of preliminary
injunction, docketed as Civil Case No. Q-91-10926, against the respondents
Summerville General Merchandising and Company (Summerville, for brevity)
and Ang Tiam Chay.

The petitioner’s complaint alleges that petitioner, 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 Certificates of
Copyright Registration No. 0-1358 and No. 0-3678; that she also has patent
rights on Chin Chun Su & Device and Chin Chun Su for medicated cream after
purchasing the same from Quintin Cheng, the registered owner thereof in the
Supplemental Register of the Philippine Patent Office on February 7, 1980 under
Registration Certificate No. 4529; that respondent Summerville advertised and
sold petitioner’s cream products under the brand name Chin Chun Su, in similar
containers that petitioner uses, thereby misleading the public, and resulting in
the decline in the petitioner’s business sales and income; and, that the
respondents should be enjoined from allegedly infringing on the copyrights and
patents of the petitioner.

The respondents, on the other hand, alleged as their defense that Summerville is
the exclusive and authorized importer, re-packer and distributor of Chin Chun Su
products manufactured by Shun Yi Factory of Taiwan; that the said Taiwanese
manufacturing company authorized Summerville to register its trade name Chin
Chun Su Medicated Cream with the Philippine Patent Office and other
appropriate governmental agencies; that KEC Cosmetics Laboratory of the
petitioner obtained the copyrights through misrepresentation and falsification;
and, that the authority of Quintin Cheng, assignee of the patent registration
certificate, to distribute and market Chin Chun Su products in the Philippines
had already been terminated by the said Taiwanese Manufacturing Company.

After due hearing on the application for preliminary injunction, the trial court
granted the same in an Order dated February 10, 1992. Motion for
reconsideration, denied.

On April 24, 1992, the respondents filed a petition for certiorari with the Court of
Appeals, docketed as CA-G.R. SP No. 27803, praying for the nullification of the
said writ of preliminary injunction issued by the trial court. After the respondents
filed their reply and almost a month after petitioner submitted her comment, or
on August 14 1992, the latter moved to dismiss the petition for violation of
Supreme Court Circular No. 28-91, a circular prohibiting forum shopping.
According to the petitioner, the respondents did not state the docket number of
the civil case in the caption of their petition and, more significantly, they did not
include therein a certificate of non-forum shopping. The respondents opposed
the petition and submitted to the appellate court a certificate of non-forum
shopping for their petition.

On May 24, 1993, the appellate court rendered a Decision in CA-G.R. SP No.
27803 ruling in favor of the respondents.

The petitioner filed a motion for reconsideration. This she followed with several
motions to declare respondents in contempt of court for publishing
advertisements notifying the public of the promulgation of the assailed decision
of the appellate court and stating that genuine Chin Chun Su products could be
obtained only from Summerville General Merchandising and Co.

In the meantime, the trial court went on to hear petitioner’s complaint for final
injunction and damages. On October 22, 1993, the trial court rendered a
Decision[7] barring the petitioner from using the trademark Chin Chun Su and
upholding the right of the respondents to use the same, but recognizing the
copyright of the petitioner over the oval shaped container of her beauty cream.
The trial court did not award damages and costs to any of the parties but to their
respective counsels were awarded Seventy-Five Thousand Pesos (P75,000.00)
each as attorney’s fees. The petitioner duly appealed the said decision to the
Court of Appeals.

On June 3, 1994, the Court of Appeals promulgated a Resolution[8] denying the

petitioner’s motions for reconsideration and for contempt of court in CA-G.R. SP
No. 27803.

The petitioner faults the appellate court for not dismissing the petition on the
ground of violation of Supreme Court Circular No. 28-91. Also, the petitioner
contends that the appellate court violated Section 6, Rule 9 of the Revised
Internal Rules of the Court of Appeals when it failed to rule on her motion for
reconsideration within ninety (90) days from the time it is submitted for
resolution. The appellate court ruled only after the lapse of three hundred fifty-
four (354) days, or on June 3, 1994. In delaying the resolution thereof, the
appellate court denied the petitioner’s right to seek the timely appellate relief.
Finally, petitioner describes as arbitrary the denial of her motions for contempt
of court against the respondents.
ISSUE: [1] Would the copyright and patent over the name and container of a
beauty cream product entitle the registrant to the use and ownership over the
same to the exclusion of others?
[2] Should an injunctive writ (plus damages) issue?

HELD: We rule in favor of the respondents. 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.

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.[12] In
relation thereto, a trade name means the name or designation identifying or
distinguishing an enterprise.[13] 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.[14] 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.[15]

Petitioner has no right to support her claim for the exclusive use of the subject
trade name and its container. The name and container of a beauty cream product
are proper subjects of a trademark 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. The petitioner’s copyright and patent registration of
the name and container 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. Consequently, a preliminary injunction order cannot
be issued for the reason that the petitioner 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 has registered a trademark thereto or used the same before
anyone did.

FINAL INJUNCTION AND DAMAGES: We cannot likewise overlook the

decision of the trial court in the case for final injunction and damages. The
dispositive portion of said decision held that the petitioner does not have
trademark rights on the name and container of the beauty cream product. The
said decision on the merits of the trial court rendered the issuance of the writ of a
preliminary injunction moot and academic notwithstanding the fact that the
same has been appealed in the Court of Appeals.

[10] Section 4, Rule 58, Revised Rules of Civil Procedure.

[11] Sy v. Court of Appeals, 313 SCRA 328 (1999).
[12] Section 121.1, Republic Act No. 8293.
[13] Section 121.3, Republic Act. No. 8293.
[14] Section 172, Republic Act No. 8293.
[15] Section 21, Republic Act No. 8293.
[16] 278 SCRA 498, 506 quoting Solid Homes, Inc. v. LA Vista, G.R. No. 71150
dated April 20, 1988 (unpublished).
[17] De Roma v. Court of Appeals, 152 SCRA 205, 209 (1987).

MANZANO V CA

FACTS:
Petitioner Manzano filed with Philippine Patent Office an action for the cancellation of Letters Patent for a
gas burner registered in the name of private respondent Madolaria who subsequently assigned the same
to private respondent United Foundry. Petitioner alleged that the utility model covered by the letters
patent was not inventive, new, or useful, the specification did not comply with the requirements of R.A.
No. 165, that respondent was not the original, true, and actual inventor nor did she derive her rights from
the same, and that respondent was guilty of fraud or misrepresentation in applying for the letters patent.

Petitioner also alleged that the utility model in question had already been in use and on sale (petitioner
herself being a distributor/seller of the said gas burners) in the Philippines for more than one year before
the respondent filed for the application. Petitioner presented two undated brochures of two different Gas
companies (Manila Gas Corp. & Esso Gasul) which allegedly depicts an identical gas burner as the one
covered in respondent’s letters patent. Respondent presented her husband as lone witness to testify that
respondent, thru complaints of customers, devised a way to solve the defects in the gas burners, and
respondent’s innovation is now the subject of the letters patent.

The Director of Patents denied the petition for cancellation, which was affirmed by the CA, on the ground
that petitioner was not able to convincingly establish that the patented utility model was not novel.
Petitioner failed to overcome her burden and overturn the presumption of legality of the issuance of letters
patent and that respondent withheld material facts with intent to deceive which, if disclosed, would have
resulted in the refusal by the PPO to issue the letters patent. Hence, this appeal.

ISSUE: WON the CA erred in upholding the decision of the Director of Patents.

RULING: NO. In issuing Letters Patent to respondent Madolaria for an LPG Burner, the PPO found her
invention novel and patentable. The issuance of such patent creates a presumption which yields only to
clear and cogent evidence that the patentee was the original and first inventor. The burden of proving
want of novelty is on him who avers it and the burden is a heavy one which is met only by clear and
satisfactory proof which overcomes every reasonable doubt.

As found by the Director of Patents, the standard of evidence sufficient to overcome the presumption of
legality of the issuance of letters patent to respondent Madolaria was not legally met by petitioner in her
action for the cancellation of the patent. The findings and conclusions of the Director of Patent were
reiterated and affirmed by the Court of Appeals. The rule is settled that the findings of fact of the Director
of Patents, especially when affirmed by the Court of Appeals, are conclusive on this Court when
supported by substantial evidence.
The validity of the patent issued by the PPO in favor of private respondent and the question over the
inventiveness, novelty and usefulness of the improved model of the LPG burner are matters which are
better determined by the PPO. The technical staff of the Philippine Patent Office composed of experts in
their field has by the issuance of the patent in question accepted private respondents model of gas burner
as a discovery. There is a presumption that the Office has correctly determined the patentability of the
model and such action must not be interfered with in the absence of competent evidence to the contrary.

PEARL AND DEAN V SHOEMART

FACTS:

Pearl and Dean (Phil.), Inc. (PDI) is engaged in the manufacture of

advertising display units simply referred to as light boxes. PDI was able
to secure a Certificate of Copyright Registration, the advertising light
boxes were marketed under the trademark “Poster Ads”.

In 1985, PDI negotiated with defendant-appellant Shoemart, Inc. (SMI)

for the lease and installation of the light boxes in certain SM Makati and
SM Cubao. PDI submitted for signature the contracts covering both
stores, but only the contract for SM Makati, however, was returned
signed. Eventually, SMI’s informed PDI that it was rescinding the
contract for SM Makati due to non-performance of the terms thereof.

Years later, PDI found out that exact copies of its light boxes were
installed at different SM stores. It was further discovered that SMI’s
sister company North Edsa Marketing Inc. (NEMI), sells advertising
space in lighted display units located in SMI’s different branches.

PDI sent a letter to both SMI and NEMI enjoining them to cease using the
subject light boxes, remove the same from SMI’s establishments and to
discontinue the use of the trademark “Poster Ads,” as well as the
payment of compensatory damages.
 Claiming that both SMI and NEMI failed to meet all its demands, PDI filed
this instant case for infringement of trademark and copyright, 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 PDI’s copyright. SMI noted that the registration of the
mark “Poster Ads” was only for stationeries such as letterheads,
envelopes, and the like. Besides, according to SMI, the word “Poster Ads”
is a generic term which cannot be appropriated as a trademark, and, as
such, registration of such mark is invalid. On this basis, SMI, aside from
praying for the dismissal of the case, also counterclaimed for moral,
actual and exemplary damages and for the cancellation of PDI’s
Certification of Copyright Registration, and Certificate of Trademark
Registration.

The RTC of Makati City decided in favour of PDI, finding SMI and NEMI
jointly and severally liable for infringement of copyright and
infringement of trademark

On appeal, however, the Court of Appeals reversed the trial court.

ISSUES:

1. Whether the the light box depicted in such engineering drawings

ipso facto also protected by such copyright.
2. Whether there was a patent infringement.
3. Whether the owner of a registered trademark legally prevent
others from using such trademark if it is a mere abbreviation of a term
descriptive of his goods, services or business?

RULING:

ON THE ISSUE OF COPYRIGHT INFRINGEMENT

The Court of Appeals correctly held that the copyright was limited to the
drawings alone and not to the light box itself.

Although petitioner’s copyright certificate was entitled “Advertising

Display Units” (which depicted the box-type electrical devices), its claim
of copyright infringement cannot be sustained.

Copyright, in the strict sense of the term, is purely a statutory

right. Accordingly, it can cover only the works falling within the statutory
enumeration or description.

Even as we find that P & D indeed owned a valid copyright, the same
could have referred only to the technical drawings within the category of
“pictorial illustrations.” It could not have possibly stretched out to
include the underlying light box. The light box was not a literary or
artistic piece which could be copyrighted under the copyright law.

The Court reiterated the ruling in the case of Kho vs. Court of Appeals,
differentiating patents, copyrights and trademarks, namely:

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.

ON THE ISSUE OF PATENT INFRINGEMENT

Petitioner never secured a patent for the light boxes. It therefore
acquired no patent rights which and 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.

ON THE ISSUE OF TRADEMARK INFRINGEMENT

On the issue of trademark infringement, the petitioner’s president said

“Poster Ads” was a contraction of “poster advertising.” P & D was able to
secure a trademark certificate for it, but one where the goods specified
were “stationeries such as letterheads, envelopes, calling cards and
newsletters.”Petitioner admitted it did not commercially engage in or
market these goods. On the contrary, it dealt in electrically operated
backlit advertising units which, however, were not at all specified in the
trademark certificate.

Assuming arguendo that “Poster Ads” could validly qualify as a

trademark, the failure of P & D 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.

ON THE ISSUE OF UNFAIR COMPETITION

There was no evidence that P & D’s use of “Poster Ads” was distinctive or
well-known. As noted by the Court of Appeals, petitioner’s expert
witnesses himself had testified that ” ‘Poster Ads’ was too generic a
name. So it was difficult to identify it with any company, honestly
speaking.”This crucial admission that “Poster Ads” could not be
associated with P & D showed that, in the mind of the public, the goods
and services carrying the trademark “Poster Ads” could not be
distinguished from the goods and services of other entities.
“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.

The petition is DENIED

AIR PHILS CORP V PENNSWELL

FACTS:

Petitioner is a domestic corporation engaged in the business of air transportation services. Respondent
Pennswell Inc was organized to engage in the business of manufacturing and selling industrial chemicals,
solvents and special lubricants.

Respondent delivered and sold to petitioner sundry goods in trade. Under the contracts, petitioner’s
obligation amounted to P 449,864.98 until the amount would be fully paid. For failure to pay comply with
its obligations unders said contract.

Respondent then filed a complaint against the petitioner. Petitioner then filed an ANSWER alleging that
the respondent defrauded the former for its previous sale of four items. Said items were misrepresented
by respondent as belonging to a new line, but were in truth and in fact, identical with products petitioner
had previously purchased from respondent.

During the pendency of the trial, petitioner filed a Motion to Compel respondent to give a detailed list of
the ingredients and chemical components of the following products, to wit: (a) Contact Grease and
Connector Grease; (b) Thixohtropic Grease and Di-Electric Strength Protective Coating; and (c) Dry
Lubricant and Anti-Seize Compound.

RTC: Granted the motion then reversed its prior decision. Ruled infavor of the respondent
CA: Affirmed

ISSUE:
WON the court of appeals ruled was correct when it upheld the ruling of the trial court that the chemical
components or ingredients of respondent’s products are trade secrets or industrial secret that are not
subject to compulsory disclosure.

RULING:
Yes. A trade secret is defined as a plan or process, tool, mechanism or compound known only to its
owner and those of his employees to whom it is necessary to confide it.
The chemical composition, formulation, and ingredients of respondent’s special lubricants are trade
secrets within the contemplation of the law. Jurisprudence has consistently acknowledged that the private
character of trade secrets-there is a privilege not to disclose one’s trade secret.

JUAN V JUAN

Roberto Juan claimed he bagan using using the mark “Lavandera Ko” in 1994. National Library issued a
certificate of copyright to him in 1997 and registered as business name under DTI in 1998. He found out
that his brother Fernando was able to register the same name in the Intellectual Property Office and a
guy named Juliano Nacino was threatening him with civil and criminal cases if he does not stop using the
tradename. He filed a petition for injunction, unfair competition and copyright infringement. RTC
dismissed the petition and ruled that neither of the parties has rights because the name was originally a
song sung by Santiago Suarez in 1942. It was elevated to the CA via notice of appeal which was
dismissed for failing to provide a statement of facts.

ISSUES:

WON mark is the same as copyright?

WON Fernando Juan is the owner of the of the mark?

RULING:

The above ruling of the RTC is erroneous as it confused trade or business name with
copyright.

By their very definitions, copyright and trade or service name are different. Copyright is
the right of literary property as recognized and sanctioned by positive law. 14 An
intangible, incorporeal right granted by statute to the author or originator of certain
literary or artistic productions, whereby he is invested, for a limited period, with the
sole and exclusive privilege of multiplying copies of the same and publishing and selling
them.15 Trade name, on the other hand, is any designation which (a) is adopted and
used by person to denominate goods which he markets, or services which he renders,
or business which he conducts, or has come to be so used by other, and (b) through its
association with such goods, services or business, has acquired a special significance as
the name thereof, and (c) the use of which for the purpose stated in (a) is prohibited
neither by legislative enactment nor by otherwise defined public policy.

172.1 Literary and artistic works, hereinafter referred to as "works", are original
intellectual creations in the literary and artistic domain protected from the moment of
their creation and shall include in particular:

(a) Books, pamphlets, articles and other writings;

(b) Periodicals and newspapers;
(c) Lectures, sermons, addresses, dissertations prepared for oral delivery, whether or
not reduced in writing or other material form;
(d) Letters;
(e) Dramatic or dramatico-musical compositions; choreographic works or entertainment
in dumb shows;
(f) Musical compositions, with or without words;
(g) Works of drawing, painting, architecture, sculpture, engraving, lithography or other
works of art; models or designs for works of art;
(h) Original ornamental designs or models for articles of manufacture, whether or not
registrable as an industrial design, and other works of applied art;
(i) Illustrations, maps, plans, sketches, charts and three-dimensional works relative to
geography, topography, architecture or science;
(j) Drawings or plastic works of a scientific or technical character;
(k) Photographic works including works produced by a process analogous to
photography; lantern slides;
(l) Audiovisual works and cinematographic works and works produced by a process
analogous to cinematography or any process for making audio-visual recordings;
(m) Pictorial illustrations and advertisements;
(n) Computer programs; and
(o) Other literary, scholarly, scientific and artistic works.

Case was remanded back to the RTC.