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    Pearl and Dean Inc. v. Shoemart Inc.

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    Aiza Ordoño
    1. The court found no copyright infringement because P&D's copyright only extended to the technical drawings of the light boxes, not the boxes themselves, as the boxes did not fall under the classification of copyrightable works. 2. There was also no patent infringement because P&D never secured a patent for the light boxes, so it had no exclusive rights over the design. 3. On trademark infringement, the court found no violation because P&D's trademark registration for "Poster Ads" was limited to stationery, not light boxes, and there was no evidence the term acquired secondary meaning to be associated with P&D. 4. Finally, there was no unfair competition because for this

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    Pearl and Dean Inc. v. Shoemart Inc.

    Uploaded by

    Aiza Ordoño
    141 views3 pages
    1. The court found no copyright infringement because P&D's copyright only extended to the technical drawings of the light boxes, not the boxes themselves, as the boxes did not fall under the classification of copyrightable works. 2. There was also no patent infringement because P&D never secured a patent for the light boxes, so it had no exclusive rights over the design. 3. On trademark infringement, the court found no violation because P&D's trademark registration for "Poster Ads" was limited to stationery, not light boxes, and there was no evidence the term acquired secondary meaning to be associated with P&D. 4. Finally, there was no unfair competition because for this

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    1. The court found no copyright infringement because P&D's copyright only extended to the technical drawings of the light boxes, not the boxes themselves, as the boxes did not fall under the classification of copyrightable works. 2. There was also no patent infringement because P&D never secured a patent for the light boxes, so it had no exclusive rights over the design. 3. On trademark infringement, the court found no violation because P&D's trademark registration for "Poster Ads" was limited to stationery, not light boxes, and there was no evidence the term acquired secondary meaning to be associated with P&D. 4. Finally, there was no unfair competition because for this

    Copyright:

    © All Rights Reserved
    Download as DOCX, PDF, TXT or read online from Scribd
    Download as docx, pdf, or txt
    141 views3 pages

    Pearl and Dean Inc. v. Shoemart Inc.

    Uploaded by

    Aiza Ordoño
    1. The court found no copyright infringement because P&D's copyright only extended to the technical drawings of the light boxes, not the boxes themselves, as the boxes did not fall under the classification of copyrightable works. 2. There was also no patent infringement because P&D never secured a patent for the light boxes, so it had no exclusive rights over the design. 3. On trademark infringement, the court found no violation because P&D's trademark registration for "Poster Ads" was limited to stationery, not light boxes, and there was no evidence the term acquired secondary meaning to be associated with P&D. 4. Finally, there was no unfair competition because for this

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    © All Rights Reserved
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    of 3

    PEARL AND DEAN INC. v. SHOEMART INC.

    GR No. 148222; August 15, 2003


    FACTS:
    P & D is engaged in manufacturing advertising display units called as light boxes.
    These are specialty printed posters with plastic sheets and illuminated back lights
    that are mainly used as stationeries. They secure copyright registration over
    these advertising light boxes and marketed using the trademark poster ads.
    They applied for the registration of trademark before the Bureau of Patents,
    Trademark and Technology Transfer which was approved on September 12, 1988.
    P & D negotiated with the defendant Shoemart for the lease and installation of
    the light boxes in SM City North Edsa but was given an alternative to have them
    leased to SM Makati and SM Cubao while the said branch was under construction.
    Only the contract with SM Makati was returned with signature. In 1986 the
    counsel of Shoemart informed P & D that it is rescinding its contract for SM Makati
    due to non-performance of the terms thereof. P & D contested the unilateral
    revocation of the contract.
    Two years later, the Metro Industrial Services, the same company contracted by
    the plaintiff to fabricate their display units offered to construct light boxes for the
    Shoemart chain of stores wherein 10 light boxes were created for them. Upon the
    termination of contract with Metro Industrial Service, SM hired EYD Rainbow
    Advertising Co. to make light boxes. When P & D knew about the exact copies of
    its light boxes installed at SM City branches in 1989, it investigated and found out
    that North Edsa Marketing Inc (NEMI), sister company of SM was primarily selling
    ad space in lighted display units. P & D sent letter to both NEMI and SM enjoining
    them to cease from using the subject light boxes and remove them from SM
    establishments. It also demanded to discontinue the use of its trademark poster
    ads with compensatory damages of 20M. SM suspended the lease of light boxes
    in its branches while NEMI took down its advertisement for poster ads. Claiming
    both failed to meet its demand P & D filed a case for infringement of trademark,
    copyright, unfair competition and damages.
    SM denied the charges against it and noted that the registration of mark poster
    ads is limited to stationeries like letterhead and envelope. It further stresses that
    it independently develop its own poster panels using techniques and available
    technology without notice to P & D copyright. It further contends that poster
    ads is a generic name that cannot be appropriated for a trademark and that P &
    Ds advertising display units contained no copyright notice in violation of Section
    27 of P.D. 49. NEMI likewise repleaded the averments of SM and denied to have
    manufactured, installed or advertised the display units. The RTC decided in favor
    of P & D but on appeal the Court of Appeals reversed its decision. In its judgment
    its stand is that the copyright of the plaintiff is limited to its technical drawings
    only and not the light boxes itself. When a drawing is technical, the copyright over
    the drawing does not extend to actual object. Thus the CA is constrained to adopt
    the view of the respondents that the poster ads is a generic poster term ads
    and in the absence of convincing proof that such wording acquired secondary
    meaning, the P & Ds exclusive right to use poster ads is limited to what is
    written on its certificate of registration which is stationaries.
    ISSUE:
    Whether or not there an infringement of patents, copyrights, trademarks and
    whether there is unfair competition.
    HELD:

    1. ON THE ISSUE OF COPYRIGHT INFRINGEMENT


    P & D secured its copyright under the classification class "O" work. This being
    so, petitioners 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." Stated otherwise, 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 strict application 9 of the laws
    enumeration in Section 2 prevents us from giving petitioner even a little
    leeway, that is, even if its copyright certificate was entitled "Advertising
    Display Units." 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.
    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.
    2. ON THE ISSUE OF PATENT INFRINGEMENT
    Petitioner never secured patent for the light boxes. Without any acquired rights
    to protect its invention it cannot legally prevent anyone from manufacturing
    the same. There can be no infringement of a patent until a patent has been
    issued, since whatever right one has to the invention covered by the patent
    arises alone from the grant of patent. Inventors have no common law right to
    monopoly of his work. He has the right to invent but once he voluntarily
    discloses it the world is free to copy and use it. A patent gives the inventor the
    exclusive right to make, sell, use and exclude others from using his invention.
    3. ON THE ISSUE OF TRADEMARK INFRINGEMENT
    This issue concerns the use by respondents of the mark "Poster Ads" which
    petitioners president said 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 and the sale of advertising spaces thereon, 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.
    4. ON THE ISSUE OF UNFAIR COMPETITION
    By the nature of things, there can be no unfair competition under the law on
    copyrights although it is applicable to disputes over the use of trademarks.
    Even a name or phrase incapable of appropriation as a trademark or
    tradename may, by long and exclusive use by a business (such that the name
    or phrase becomes associated with the business or product in the mind of the
    purchasing public), be entitled to protection against unfair competition. In this

    case, there was no evidence that P & Ds use of "Poster Ads" was distinctive or
    well-known.

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