PEARL & DEAN PHIL INC. VS.

SHOEMART- Trademark,
Copyright and Patents

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 or services of an
enterprise and shall include a stamped or marked container of goods. The scope of a copyright is
confined to literary and artistic works which are original intellectual creations in the literary and artistic
domain. Patentable inventions 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.

FACTS:

Pearl and Dean is a corporation in the manufacture of advertising display units also known as light
boxes, which were manufactured by Metro Industrial Services. A copyright Registration was obtained
in 1981. These were marketed in the name of "Poster Ads". They also applied for a registration of
trademark with the Bureau of Patents in 1983, but was only approved in 19988. In 1985, petitioner
had n agreement with respondent Shoemart Inc (SMI) to install these light boxes in their Makati and
Cubao branch, Only the Makati branch was able to sigh the agreement. In 1986, the contract was
rescinded unilaterally by SMI, and instead contracted with Metro Industrial Services. They installed
these lightboxes in different SM city branches, including Cubao and Makati, with association with
North Edsa Marketing Inc (NEMI), SMI's sister company. Petitioner requested SMI and NEMI to put
down their installations of the light boxes, and payment of compensatory damages worth P20M.
Claiming that respondents failed to comply, they filed a case for infringement of trademark and
copyright, unfair competition and damages. RTC ruled in favor of petitioner, but CA reversed.

ISSUES:

(1) Whether there was a copyright infringement

(2) Whether there was a patent infringement
(3) Whether there was a trademark infringement
(4) Whether there was unfair competition

RULING: No to all.

(1) Copyright is a statutory right, subject to the terms and conditions specified in the statute.
Therefore, it can only cover the works falling within the statutory enumeration or description. Since
the copyright was classified under class "O" works, which includes "prints, pictorial illustrations,
advertising copies, labels, tags and box wraps," and does not include the light box itself. A lightbox,
even admitted by the president of petitioner company, was neither a literary nor an artistic work but
an engineering or marketing invention, thus not included under a copyright.

(2) Petitioner was not able to secure a patent for its lightboxes, and cannot legally prevent anyone
from manufacturing or commercially using the same. Patent has a three-fold purpose: a) to foster and
reward invention; b) promotes disclosures of invention and permit public to use the same upon
expiration; c) stringent requirements for patent protection to ensure in the public domain remain there
for free use of the public. Since petitioner was not able to go through such examination, it cannot
exclude others from manufacturing, or selling such lightboxes. No patent, no protection.

(3) The certificate of registration issued by the Director of Patents gives exclusive right to use its own
symbol only to the description specified in the certificate. It cannot prevent others to use the same
trademark with a different description.

(4) "Poster Ads" is a general term that cannot be associated specifically to Pearl and Dean, thus it
cannot be considered to use such term to be unfair competition against the petitioner.
The Patent Examiner rejected all of petitioners’ claims by reason of the pronouncement in
favour of Pfizer and Co. and that the Specification filed by petitioners were incomplete since it
appears that the Specification in petitioner’s US application did not completely appear in their local
application. Petitioners then submitted two complete copies of their Specification but was rejected in
1959 by the Chief Patent Examiner. Petitioners moved for reconsideration on the ground that their
application falls under the exception provided in Rule 47 of the Revised Rules of Practice in Patent
Cases since their submissions are not new matters but a mere “minor informalities.” Again, such was
rejected by the Chief Patent Examiner ruling that the Patent Law provides for a deadline for filing
which cannot be extended otherwise the latter shall be rendered useless.
Petitioner appealed to respondent Director of Patents who ruled that the application shall be
considered as an ordinary application for petitioner failed to file within the period to claim priority
right under the law since it was only in April 14, 1954 when petitioner completed its application.
Petitioner now avers that they are granted priority rights under convention and treaty but was
denied but respondent. Hence, the instant petition.

Issue: Whether or not petitioners are entitled to priority right in the application of patent under R.A.
165.

Held: No. Under Rule 47 and 48 of the Revised Rules of Practice in Patent cases, an application is
deemed complete when all the required parts to comply with the rules are submitted except that
minor informalities may be waived subject to subsequent correction, whenever required. The filing
date of the applicant is the date on which the complete application is received in the Patent Office.
The submission made by petitioner on March 5, 1954 was far from complete since its defect
was one of substance and not merely one of form. Their invention was not completely determinable
therefrom due to the incompleteness of the Specification. It was only the time petitioners submitted
the additional pages of Specifications and Claims to the Patent Office when the application was
deemed complete. In order to be entitled to the priority right under the Patent Law which provided
that the local application must be filed within 12 months from the date of the foreign application and
such application must be complete. The facts show that the application of petitioners was only
deemed completed in April 14, 1954 which was outside the one-year period from its application in
March 16, 1953.
Hence, petitioners are no longer entitled to the priority right in the application of patent under
the Patent Law.