Unformatted text preview: Mercantile Law –
Intellectual
Property Law
Case Digest DEAN’S CIRCLE 2019 – UST FACULTY OF CIVIL LAW UNIVERSITY OF SANTO TOMAS
FACULTY OF CIVIL LAW
LIST OF CASES
Intellectual Property Law
I. Intellectual Property Code
A. Intellectual Property Rights in General
1. Differences between Copyrights, Trademarks and Patent Pearl & Dean (Philippines), Inc. vs. Shoemart, Inc., G.R. No. 148222, August 15, 2003
B. Patents
1. Patentable Inventions Jessie Ching vs. William Salinas, et. al., G.R. No. 161295, June 29, 2005
2. Ownership of a Patent
1. Right to a Patent Pearl & Dean (Philippines), Inc. vs. Shoemart, Inc., G.R. No. 148222, ibid E.I. DUPONT DE NEMOURS AND CO. v. DIRECTOR EMMA C. FRANCISCO, GR. No.
174379, August 31, 2016
3. Rights Conferred by a Patent Domiciano Aguas vs. Conrado De Leon, G.R. No. L-32160, January 30, 1982
Manzano vs. Court of Appeals, G.R. No. 113388, September 5, 1997
Precision Systems, Inc.,vs. Court of Appeals, G.R. No. 118708, February 2, 1998
Del Rosario vs. Court of Appeals, 255 SCRA 152 (1996)
Smith Kline Beckman Corporation vs. Court of Appeals, G.R. No. 126627, August 14,
2003 Philippine Pharmawealth, Inc.,vs. Pfizer, Inc., G.R. No. 167715, November 17, 2010
4. Patent Infringement
a. Tests in Patent Infringement
i. Literal Infringement Pascual Godines vs. Court of Appeals, G.R. No. 97343, September 13, 1993 ii. Doctrine of Equivalents 1 DEAN’S CIRCLE 2019 – UST FACULTY OF CIVIL LAW Pascual Godines vs. Court of Appeals, G.R. No. 97343, ibid Smith Kline Beckman Corporation vs. Court of Appeals, G.R. No. 126627, ibid
2. Defenses in Action for Infringement Rosario Maguan vs. Court of Appeals, G.R. L-45101, November 28, 1986
5. Licensing Prince vs. United Laboratories, Inc.,166 SCRA 133 (1988) C. Trademarks Pribhdas J. Mirpuri vs. Court of Appeals, G.R. No. 114508, November 19, 1999 INTELLECTUAL PROPERTY ASSOCIATION OF THE PHILIPPINES v. HON. PAQUITO
OCHOA, G .R. No. 204605, July 19, 2016
1. Acquisition of Ownership of Mark Elidad C. Kho, doing business under the name and style of KEC Cosmetics Laboratory
vs. Court of Appeals, et. al., G.R. No. 115758, March 19, 2002 Air Philippines Corporation v. Pennswell, Inc., 540 SCRA 215 (2007). E.Y. Industrial Sales vs. Shien Dar Electricity and Machinery Co. , G.R. No. 184850, 20
October 2010 Superior Commercial Enterprises, Inc. vs. Kunnan Enterprises Ltd. and Sports
Concept & Distributor, Inc., G.R. No. 169974, April 20, 2010 Birkenstock Orthopaedie Gmbh and Co. Kg vs. Philippine Shoe Expo Marketing
Corporation, G.R. No. 194307, November 20, 2013 Taiwan Kolin Corporation, LTD. vs. Kolin Electronics Co., Inc.,G.R. No. 209843, March
25, 2015 Emerald Garment Manufacturing Corporation v. H.D. Lee Company, Inc., G.R. No.
210693, June 7, 2017
2. Non-Registrable Marks Lyceum of the Philippines vs. Court of Appeals, 219 SCRA 610 (1993) Societe Des Produits, Nestle, S.A. v. Puregold Price Club, Inc., G.R. No. 217194,
September 6, 2017 Kensonic, Inc. v. Uni-Line Multi-Resources, Inc., (Phil.), G.R. Nos. 211820-21 &
211834-35, [June 6, 2018]
3. Prior Use of Mark as a Requirement Mattel, Inc. vs. Emma Francisco, et al., 560 SCRA 504 (2008)
4. Tests to Determine Confusing Similarity between Marks
a. Dominancy Test 2 DEAN’S CIRCLE 2019 – UST FACULTY OF CIVIL LAW Amigo Manufacturing, Inc. vs. Cluett Peabody Co., Inc., G.R. No. 139300, March 14,
2001
Societe Des Produits Nestle, S.A. vs. Court of Appeals and CFC Corporation, G.R.
No. 112012, April 4, 2001
McDonald’s Corporation vs. L.C. Big Mak Burger, Inc., G.R. No. 143993, August 18,
2004
McDonald’s Corporation vs. Macjoy Fastfood Corporation, G.R. No. 166115,
February 2, 2007
Prosource International, Inc. vs. Horphag Research Management SA, G.R. No.
180073, November 25, 2009
Berris Agricultural Co., Inc. vs. Norvy Abyadang, G.R. No. 183404, October 13,
2010
Dermaline, Inc. vs. Myra Phamaceuticals, Inc., G.R. No. 190065, August 1, 2010
Soceite Des Produits Nestle, S.A. vs. Dy, Jr., G.R. No. 172276, August 8, 2010
Sketchers USA vs. Inter Pacific Industrial Trading Corporation, GR No. 164321,
March 28, 2011
Mang Inasal Philippines, Inc. v. IFP Manufacturing Corporation, G.R. No. 221717,
June 19, 2017
Citigroup, Inc. v. Citystate Savings Bank, Inc., G.R. No. 205409, [June 13, 2018] b. Holistic Test Fruit of the Loom, Inc. vs. Court of Appeals, G.R. No. L-32747, November 29, 1984 Emerald Garment Manufacturing Corporation vs. Court of Appeals, G.R. No.
100098, December 29, 1995 Philip Morris, Inc. vs. Fortune Tobacco Corporation, G.R. No. 158589, June 27, 2006 Victorio Diaz vs. People of the Philippines, G.R. No. 180677, February 18, 2013 Seri Somboonsakdikul v. Orlane S.A., G.R. No. 188996, February 1, 2017 UFC PHILIPPINES, INC. v. FIESTA BARRIO MANUFACTURING CORPORATION, G.R.
No. 198889, January 20, 2016
c. Doctrine of unrelated goods Hickok Manufacturing, Co., Inc. vs. Court of Appeals, G.R. No. L-44707, August 31,
1982 Faberge, Inc. vs. Intermediate Appellate Court, G.R. No. 71189, November 4, 1992 Canon Kabushiki Kaisha vs. Court of Appeals, G.R. No. 120900, July 20, 2004 Mighty Corporation and La Campana Fabrica De Tabaco, Inc. vs. E. & J. Gallo Winery
and the Andresons Group, Inc., G.R. No. 154342, July 14, 2004
5. Well-Known Marks Pribhdas J. Mirpuri vs. Court of Appeals, G.R. No. 114508, ibid Mighty Corporation and La Campana Fabrica De Tabaco, Inc. vs. E. & J. Gallo Winery
and the Andresons Group, Inc., G.R. No. 154342, July 14, 2004 3 DEAN’S CIRCLE 2019 – UST FACULTY OF CIVIL LAW Sehwani, Inc. vs. In-N-Out Burger, Inc., G.R. No. 171053, October 15, 2007 Fredco Manufacturing Corporation vs. President and Fellows of Harvard College, GR
No. 185917, June 1, 2011
6. Rights Conferred by Registration Berris Agricultural Co., Inc. vs. Norvy Abyadang, G.R. No. 183404, ibid
7. Infringement and Remedies Conrad and Company, Inc. vs. Court of Appeals, 246 SCRA 691 (1995) Shangri-la International Hotel Management Ltd., et al. vs. Court of Appeals, 359 SCRA
273 (2001) Melbarose R. Sasot and Allandale R. Sasot vs. People of the Philippines, G.R. No.
143193, June 29, 2005 Levi Strauss & Co., Levi Strauss (Phils.) Inc. vs. Clinton Apparelle, Inc., G.R. No. 138900,
September 20, 2005 Tanduay Distillers, Inc.,vs. Ginebra San Miguel, Inc., G.R. No. 164324, August 14, 2009 W Land Holdings, Inc. v. Starwood Hotels And Resorts Worldwide, Inc., G.R. No.
222366, December 4, 2017 CATERPILLAR, INC., Petitioner, v. MANOLO P. SAMSON, G.R. No. 205972 and G.R. No.
164352, November 9, 2016
a. Trademark Infringement Del Monte Corporation and Philippine Packing Corporation vs. Court of Appeals,
G.R. No. L-78325, January 25, 1990 Asia Brewery, Inc., vs. Court of Appeals and San Miguel Corporation, G.R. No.
103543, July 5, 1993 Pearl & Dean (Philippines) Inc. vs. Shoemart, Inc., G.R. No. 148222, ibid William C. Yao, Sr., et. al. vs. People of the Philippines, G.R No. 168306, June 19,
2007 Ong vs. People of the Philippines, G.R. No. 169440, November 23, 2011 Republic Gas Corporation (REGASCO), et. al. vs. Petron Corporation, et. al., G.R. No.
194062, June 17, 2013 Century Chinese Medicine Co., et. al. vs. People of the Philippines, G.R. No. 188526,
November 11, 2013 ABS-CBN Publishing, Inc. v. Director of the Bureau of Trademarks, G.R. No. 217916,
[June 20, 2018] Citigroup, Inc. v. Citystate Savings Bank, Inc., G.R. No. 205409, June 13, 2018,
Leonen, J. L.C. BIG MAK BURGER, INC., v. MCDONALD'S CORPORATION, G.R. No. 233073,
FIRST DIVISION, February 14, 2018, TIJAM, J.
8. Unfair Competition Asia Brewery, Inc. vs. Court of Appeals and San Miguel Corporation, G.R. No. 103543,
ibid 4 DEAN’S CIRCLE 2019 – UST FACULTY OF CIVIL LAW McDonald’s Corporation vs. L.C. Big Mak Burger, Inc., G.R. No. 143993, ibid Sony Computer Entertainment, Inc. vs. Supergreen, Inc., 518 SCRA 750 (2007) Coca-Cola Bottlers Philippines, Inc.,(CCBPI), Naga Plant vs. Quintin Gomez, et, al., G.R.
No. 154491, November 14, 2008 Republic Gas Corporation (REGASCO), et. al. vs. Petron Corporation, et. al., G.R. No.
194062, ibid Shang Properties Realty Corporation (formerly the Shang Grand Tower Corporation)
and Shang Properties Inc., (formerly EDSA Properties Holdings, Inc.) vs. St Francis
Development Corporation, G.R. No. 190706, July 21, 2014 Roberto Co vs. Keng Huan Jerry Yeung and Emma Yeung, G.R. No. 212705, September
10, 2014 San Miguel Pure Foods Co., Inc. v. Foodsphere, Inc., G.R. Nos. 217781 & 217788, [June
20, 2018]
9. Trade Names or Business Names Converse Rubber Corporation vs. Universal Rubber Products, Inc., G.R. No. L-27906,
January 8, 1987 Coffee Partners vs. San Francisco Coffee and Roastery, Inc., G.R. No. 169504, March 3,
2010 Fredco Manufacturing Corporation vs. President and Fellows of Harvard College, GR
No. 185917, ibid Ecole De Cuisine Manille (Cordon Bleu of the Philippines), Inc. vs. Renaus Cointreau &
Cie and Le Cordon Bleu Int’l, B.V., G.R. No. 185830, June 5, 2013
D. Copyrights
1. Basic Principles, Sections 172.2, 175 and 181 Manly Sportwear Manufacturing, Inc. vs. Dadodette Enterprises and/or Hermes
Sports Center, G.R. No. 165306, September 20, 2005 Fernando Juan v. Roberto Juan, Gr No. 221372, August 23 2017
2. Copyrightable Works United Features vs. Munsingwear Creation, 179 SCRA 260 (1989)
3. Non-Copyrightable Works Francisco Joaquin, Jr. vs. Franklin Drilon, et. al., G.R. No. 108946, January 28, 1999 Pearl & Dean (Philippine), Inc. vs. Shoemart, Inc., G.R. No. 148222, ibid SISON OLAÑO v. LIM ENG CO, G.R. No. 195835, March 14, 2016
4. Rights of Copyright Owner Columbia Pictures, Inc. vs. Court of Appeals, 261 SCRA 144 (1996) 5 DEAN’S CIRCLE 2019 – UST FACULTY OF CIVIL LAW 5. Limitations on Copyright ABS-CBN Broadcasting Corporation vs. Philippine Multi-Media System, Inc., G.R. Nos.
175769-70, January 19, 2009 GMA Network Inc., vs. Central CATV Inc., G.R. No. 176694, July 18, 2014
a. Copyright Infringement Filipino Society of Composers, Authors and Publishers, Inc. vs. Benjamin Tan, G.R.
No. L-36402, March 16, 1987 Columbia Pictures, Inc., et. al. vs. Court of Appeals, G.R. No. 110318, August 28,
1996 Pacita Habana, et. al. vs. Felicidad Robles and Goodwill Trading Co., Inc., G.R. No.
131522, July 19, 1999 NBI-Microsoft Corporation vs. Judy Hwang, et. al., G.R. No. 147043, June 21, 2005 6 DEAN’S CIRCLE 2019 – UST FACULTY OF CIVIL LAW I. Intellectual Property Code
A. Intellectual Property Rights in General
1. Differences between Copyrights, Trademarks and Patent Pearl & Dean (Philippines), Inc. vs. Shoemart, Inc., G.R. No. 148222, August 15, 2003 PEARL & DEAN (PHIL.), INCORPORATED, PETITIONER, -VERSUS- SHOEMART, INCORPORATED,
AND NORTH EDSA MARKETING, INCORPORATED, RESPONDENTS. G.R. No. 148222, THIRD
DIVISION, August 15, 2003, CORONA, J.
Petitioner P & D’s alleged that SMI infringed on its copyright over the light boxes when SMI had the units
manufactured by Metro and EYD Rainbow Advertising for its own account. SMI denied the charges and
maintained that it independently developed its poster panels using commonly known techniques and
available technology, without notice of or reference to Pearl and Dean’s copyright.
The Supreme Court held that P & D secured its copyright under the classification class "O" work. This
being so, petitioner’s 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 of the law’s 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. 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."
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.
FACTS
Plaintiff-appellant Pearl and Dean (Phil.), Inc. is a corporation engaged in the manufacture of
advertising display units simply referred to as light boxes. These units utilize specially printed
posters sandwiched between plastic sheets and illuminated with back lights. Pearl and Dean was able
to secure a Certificate of Copyright Registration dated January 20, 1981 over these illuminated
display units. The advertising light boxes were marketed under the trademark "Poster Ads". The
application for registration of the trademark was filed with the Bureau of Patents, Trademarks and
Technology Transfer on June 20, 1983, but was approved only on September 12, 1988, per 7 DEAN’S CIRCLE 2019 – UST FACULTY OF CIVIL LAW Registration No. 41165. From 1981 to about 1988, Pearl and Dean employed the services of Metro
Industrial Services to manufacture its advertising displays.
Sometime in 1985, Pearl and Dean negotiated with defendant-appellant Shoemart, Inc. (SMI) for the
lease and installation of the light boxes in SM City North Edsa. Since SM City North Edsa was under
construction at that time, SMI offered as an alternative, SM Makati and SM Cubao, to which Pearl and
Dean agreed. However, SMI did not sign the contract for SM Cubao and rescinded the contract for SM
Makati due to non-performance of the terms thereof. Vergara protested the unilateral action of SMI,
saying it was without basis. In the same letter, he pushed for the signing of the contract for SM Cubao.
Two years later, Metro Industrial Services, the company formerly contracted by Pearl and Dean to
fabricate its display units, offered to construct light boxes for SMI’s chain of stores. SMI approved the
proposal and ten (10) light boxes were subsequently fabricated by Metro Industrial for SMI. After its
contract with Metro Industrial was terminated, SMI engaged the services of EYD Rainbow
Advertising Corporation to make the light boxes. Some 300 units were fabricated in 1991. These were
delivered on a staggered basis and installed at SM Megamall and SM City.
Sometime in 1989, Pearl and Dean, received reports that exact copies of its light boxes were installed
at SM City and in the fastfood section of SM Cubao. Upon investigation, Pearl and Dean found out that
aside from the two (2) reported SM branches, light boxes similar to those it manufactures were also
installed in two (2) other SM stores. It further discovered that defendant-appellant North Edsa
Marketing Inc. (NEMI), through its marketing arm, Prime Spots Marketing Services, was set up
primarily to sell advertising space in lighted display units located in SMI’s different branches. Pearl
and Dean noted that NEMI is a sister company of SMI.
Pearl and Dean sent a letter to both SMI and NEMI enjoining them to cease using the subject light
boxes and to remove the same from SMI’s establishments. It also demanded the discontinued use of
the trademark "Poster Ads," and the payment to Pearl and Dean of compensatory damages in the
amount of P20, 000,000.00.
Upon receipt of the demand letter, SMI suspended the leasing of 224 light boxes and NEMI took down
its advertisements for "Poster Ads" from the lighted display units in SMI’s stores. Claiming that both
SMI and NEMI failed to meet all its demands, Pearl and Dean filed this instant case for
infringement of trademark and copyright, unfair competition and damages.
SMI denied the charges and maintained that it independently developed its poster panels using
commonly known techniques and available technology, without notice of or reference to Pearl and
Dean’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. NEMI, for its part, denied having manufactured, installed or used any advertising display
units, nor having engaged in the business of advertising.
The RTC of Makati City decided in favor of P & D and found defendants SMI and NEMI jointly and
severally liable for infringement of copyright and was directed to pay for damages.
However, the Court of Appeals reversed the trial court and ruled that “since the light boxes cannot,
by any stretch of the imagination, be considered as either prints, pictorial illustrations, advertising 8 DEAN’S CIRCLE 2019 – UST FACULTY OF CIVIL LAW copies, labels, tags or box wraps, to be properly classified as a copyrightable class "O" work, we have
to agree with SMI when it posited that what was copyrighted were the technical drawings only, and
not the light boxes themselves”.
Dissatisfied with the above decision, petitioner P & D filed this instant petition.
ISSUES
1. Whether or not SMI and NEMI should be held liable for copyright infringement? (NO)
2. Whether or not there was patent infringement? (NO)
RULING
1. ON THE ISSUE OF COPYRIGHT INFRINGEMENT
Petitioner P & D’s complaint was that SMI infringed on its copyright over the light boxes when SMI
had the units manufactured by Metro and EYD Rainbow Advertising for its own account. Obviously,
petitioner’s position was premised on its belief that its copyright over the engineering drawings
extended ipso facto to the light boxes depicted or illustrated in said drawings. In ruling that there was
no copyright infringement, the Court of Appeals held that the copyright was limited to the drawings
alone and not to the light box itself. We agree with the appellate court.
Copyright, in the strict sense of the term, is purely a statutory right. Being a mere statutory grant, 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 terms and conditions specified in the statute. Accordingly, it
can cover only the works falling within the statutory enumeration or description.
P & D secured its copyright under the classification class "O" work. This being so, petitioner’s
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 of the law’s 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 copyr...
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