006 PEARL & DEAN CORP v. SHOEMART, INC.

goods (trademark) or services (service mark) of an enterprise and shall

15 Aug 2003 | Corona | Copyright; statutory right; Different from TM and Patent include a stamped or marked container of goods. In relation thereto, a trade
PETITIONER: Pearl & Dean (Phil.), Inc. (P&D) name means the name or designation identifying or distinguishing an
RESPONDENTS: Shoemart, Inc. (SMI/SM) and North EDSA Marketing, Inc. enterprise.
(NEMI) b. The scope of a copyright is confined to literary and artistic works which
SUMMARY: P&D manufactures light boxes which utilize posters sandwiched are original intellectual creations in the literary and artistic domain
between plastic sheets and illuminated with back lights. P&D applied for a protected from the moment of their creation. 
copyright certificate which stated that the technical drawings of its c. Patentable inventions, on the other hand, refer to any technical solution of a
advertising display units was for a class "O" work under Sec 2 (O) of PD 49.1 problem in any field of human activity which is new, involves an inventive
P&D hired MIS to manufacture its light boxes. P&D wanted to lease and install its step and is industrially applicable.
light boxes in SM Makati and SM Cubao but only the contract for SM Makati was FACTS:
returned signed by SMI. P&D wrote SMI to remind it that their agreement for 1. P&D manufactures advertising display units (“light boxes”) which utilize
installation of light boxes was not only for its SM Makati branch, but also for SM specially printed posters sandwiched between plastic sheets and illuminated with
Cubao. SMI did not reply. SMI rescinded the contract due to non-performance of back lights.
the terms. MIS offered to construct light boxes for SMI and it fabricated 10 light 2. Jan 20, 1981: P&D secured a Certificate of Copyright Registration over these
boxes for SMI. SMI, further, engaged the services of EYD to make the light illuminated display units.
boxes, for which 300 units were fabricated. NEMI, a sister company of SMI, was 3. The advertising light boxes were marketed under the trademark "Poster Ads".
set up to sell advertising space in lighted display units located in SMI’s branches. 4. June 20, 1983: The application for registration of the trademark was filed with
P&D sent a letter to SMI and NEMI enjoining them to cease using the light boxes the Bureau of Patents, Trademarks and Technology Transfer (Bureau).
and to remove them from SMI’s establishments. It also demanded the 5. Sept 12, 1988: The application was approved, per Registration No. 41165.
discontinued use of the trademark "Poster Ads". SMI suspended the leasing of 224 6. 1981-1988: P&D employed the services of Metro Industrial Services (MIS) to
light boxes and NEMI took down its advertisements for "Poster Ads" from the manufacture its advertising displays.
lighted display units in SMI’s stores. Claiming that both SMI and NEMI failed to 7. 1985: P&D negotiated with SMI for the lease and installation of the light boxes
meet all its demands, P&D filed this case for infringement of trademark and in SM City North Edsa.
copyright, unfair competition and damages. Makati RTC decided in favor of 8. Since SM City North Edsa was under construction at that time, SMI offered as
P&D, declaring SMI and NEMI liable for infringement of trademark and an alternative, SM Makati and SM Cubao, to which P&D agreed.
copyright, and unfair competition. CA reversed the TC. The issue in this case is 9. Sept 11, 1985: P&D’s General Manager, Rodolfo Vergara, submitted for
WON the light box depicted by an engineering drawing is ipso facto granted signature the contracts covering SM Cubao and SM Makati to SMI’s
copyright protection if the engineering/technical drawings of the light box is Advertising Promotions and Publicity Division Manager, Ramonlito Abano.
protected by such copyright – NO. There was no copyright infringement 10. Only the contract for SM Makati, however, was returned signed.
because the copyright was limited to the drawings alone and not to the light box 11. Oct 4: Vergara wrote Abano inquiring about the other contract and reminding
itself. P&D secured its copyright under the classification class "O" work. This him that their agreement for installation of light boxes was not only for its SM
being so, P&D’s copyright protection extended only to the technical drawings and Makati branch, but also for SM Cubao. SMI did not reply.
not to the light box itself because the latter was not at all in the category of "prints, 12. Jan 14, 1986: SMI’s house counsel informed P&D via letter that it was
pictorial illustrations, advertising copies, labels, tags and box wraps." (doctrine) rescinding the contract for SM Makati due to non-performance of the terms
DOCTRINE 1: Copyright, in the strict sense of the term is purely a statutory thereof.
right. Being a mere statutory grant, the rights are limited to what the statute 13. Feb 17: Vergara’s reply protested SMI’s unilateral action, saying it was without
confers. It may be obtained and enjoyed only with respect to the subjects and by basis. In the same letter, he pushed for the signing of the contract for SM Cubao.
the persons, and on terms and conditions specified in the statute. Accordingly, it 14. 2y later: MIS, the company formerly contracted by P&D to fabricate its display
can cover only the works falling within the statutory enumeration or description. units, offered to construct light boxes for Shoemart’s chain of stores. SMI
2: Trademark, copyright and patents are different intellectual property rights that approved the proposal and 10 light boxes were subsequently fabricated by MIS
cannot be interchanged with one another.  for SMI. After its contract with MIS was terminated, SMI engaged the services
a. A trademark is any visible sign capable of distinguishing the of EYD Rainbow Advertising Corporation to make the light boxes. Some 300
units were fabricated in 1991.
1
SEC. 2. The rights granted by this Decree shall, from the moment of creation, subsist with 15. These were delivered on a staggered basis and installed at SM Megamall and
respect to any of the following works: SM City.
(O) Prints, pictorial illustrations, advertising copies, labels, tags, and box wraps
16. 1989: P&D, received reports that exact copies of its light boxes were installed at (1) pay P&D ₱16.6m actual damages for profits derived by SMI and NEMI as
SM City and in the fastfood section of SM Cubao. Upon investigation, P&D a result of infringement of plaintiff’s copyright from 1991-1992, ₱1m moral
found out that aside from the 2 reported SM branches, light boxes similar to damages, ₱1m exemplary damages, ₱1m attorney’s fees and costs of suit;
those it manufactures were also installed in 2 other SM stores. (2) deliver, for impounding in the National Library, all light boxes of SMI
17. NEMI, a sister company of SMI, through its marketing arm, Prime Spots which were fabricated by MIS and EYD;
Marketing Services, was set up primarily to sell advertising space in lighted (3) deliver to the National Library, all filler-posters using the trademark
display units located in SMI’s different branches. "Poster Ads", for destruction; and
18. Dec 11, 1991: In the light of its discoveries, P&D sent a letter to both SMI and (4) permanently refrain from infringing the copyright on plaintiff’s light
NEMI enjoining them to cease using the subject light boxes and to remove the boxes and its trademark "Poster Ads".
same from SMI’s establishments. It also demanded the discontinued use of the 24. CA reversed the TC; stating that it cannot find SMI liable for infringing P&D’s
trademark "Poster Ads," and the payment to P&D of P20m compensatory copyright over the technical drawings of the latter’s advertising display units.
damages a. The light boxes cannot be considered as either prints, pictorial illustrations,
19. Upon receipt of the demand letter, SMI suspended the leasing of 224 light boxes advertising copies, labels, tags or box wraps, to be properly classified as a
and NEMI took down its advertisements for "Poster Ads" from the lighted copyrightable class "O" work,
display units in SMI’s stores. b. What was copyrighted were the technical drawings only, and not the light
20. Claiming that both SMI and NEMI failed to meet all its demands, P&D filed this boxes themselves.
instant case for infringement of trademark and copyright, unfair competition and i. When a drawing is technical and depicts a utilitarian object, a copyright
damages. over the drawings like plaintiff-appellant’s will not extend to the actual
21. SMI: object.
a. maintained that it independently developed its poster panels using commonly ii. Baker vs. Selden:
known techniques and available technology, without notice of or reference to 1. Facts: Selden obtained a copyright protection for a book (Selden’s
P&D’s copyright. Condensed Ledger or Bookkeeping Simplified) which explained a
b. noted that the registration of the mark "Poster Ads" was only for stationeries new system of bookkeeping. Included as part of the book were blank
such as letterheads, envelopes, and the like. forms and illustrations consisting of ruled lines and headings,
c. maintained that the word "Poster Ads" is a generic term which cannot be specially designed for use in connection with the system explained in
appropriated as a trademark, and, as such, registration of such mark is the work. These forms showed the entire operation of a day or a week
invalid. It also stressed that P&D is not entitled to the reliefs prayed for in its or a month on a single page, or on 2 pages following each other.
complaint since its advertising display units contained no copyright notice, in Baker produced forms similar to the forms illustrated in Selden’s
violation of Sec 27 of P.D. 49. copyrighted books.
d. alleged that P&D had no cause of action against it and that the suit was 2. Ruling: Exclusivity to the actual forms is not extended by a copyright
purely intended to malign SMI’s good name. because to grant a monopoly in the underlying art when no
e. prays for the dismissal of the case, examination of its novelty has ever been made would be a surprise
f. counterclaimed for moral, actual and exemplary damages and for the and a fraud upon the public; that is the province of letters patent, not
cancellation of P&D’s Certification of Copyright Registration No. PD-R- of copyright. Its alleged original design would never pass the rigorous
2558 dated Jan 20, 1981 and Certificate of Trademark Registration No. 4165 examination of a patent application, plaintiff-appellant fought to foist
dated Sept 12, 1988. a fraudulent monopoly on the public by conveniently resorting to a
22. NEMI denied having manufactured, installed or used any advertising display copyright registration which merely employs a recordal system
units, nor having engaged in the business of advertising. It repleaded SMI’s without the benefit of an in-depth examination of novelty.
averments, admissions and denials and prayed for similar reliefs and iii. Muller vs. Triborough Bridge Authority:
counterclaims as SMI. 1. Facts: Muller obtained a copyright over an unpublished drawing
23. Makati RTC decided in favor of P&D. It: (Bridge Approach – the drawing showed a novel bridge approach to
a. found SMI and NEMI jointly and severally liable for infringement of unsnarl traffic congestion).
copyright, and infringement of trademark, and 2. The defendant constructed a bridge approach which was alleged to be
b. penalized them under Sec 28 of PD 49, as amended, and Secs 23 and 24 of an infringement of the new design illustrated in plaintiff’s drawings.
RA 166, as amended. In this case it was held that protection of the drawing does not extend
c. Directed SMI and NEMI to: to the unauthorized duplication of the object drawn because copyright
 extends only to the description or expression of the object and not to beyond us. But, having already done so, it must stand by the consequence of the
the object itself. It does not prevent one from using the drawings to registration which it had caused.
construct the object portrayed in the drawing. 32. The SC is constrained to adopt the view of defendants-appellants that the words
iv. Imperial Homes Corp. v. Lamont, and Scholtz Homes, Inc. v. Maddox: "Poster Ads" are a simple contraction of the generic term poster advertising. In
There is no copyright infringement when one who, without being the absence of any convincing proof that "Poster Ads" has acquired a secondary
authorized, uses a copyrighted architectural plan to construct a structure. meaning in this jurisdiction, we find that P&D’s exclusive right to the use of
This is because the copyright does not extend to the structures themselves. "Poster Ads" is limited to what is written in its certificate of registration,
v. Faberge, Incorporated vs. IAC: The protection under the Trademark Law namely, stationeries.
extends only to the goods used by the first user as specified in the 33. Defendants-appellants cannot thus be held liable for infringement of the
certificate of registration, following the clear mandate conveyed by Sec trademark "Poster Ads".
20 of RA166, as amended, otherwise known as the Trademark Law: Sec. 34. There being no finding of either copyright or trademark infringement on the part
20. Certification of registration prima facie evidence of validity.- A of SMI and NEMI, the monetary award granted by the lower court to P&D has
certificate of registration of a mark or trade-name shall be prima no leg to stand on.
facie evidence of the validity of the registration, the registrant’s WHEREFORE, the assailed decision is REVERSED and SET ASIDE, and another is
rendered DISMISSING the complaint and counterclaims in the above-entitled case for
ownership of the mark or trade-name, and of the registrant’s exclusive lack of merit.
right to use the same in connection with the goods, business or 35. Thus, this petition for certiorari under R45 where P&D assails the CA decision
services specified in the certificate, subject to any conditions and reversing RTC decision which declared SMI and NEMI liable for infringement
limitations stated therein." of trademark and copyright, and unfair competition.
25. Here, on June 20, 1983, P&D applied for the registration of the trademark 36. Dissatisfied with the above decision, P&D filed this petition for certiorari under
"Poster Ads" with the Bureau of Patents, Trademarks, and Technology Transfer. R45, raising the following errors for the SC’s consideration: CA erred in:
Said trademark was recorded in the Principal Register on Sept 12, 1988 under A. ruling that no copyright infringement was committed by SM and NEMI;
Registration No. 41165 covering the following products: stationeries such as B. ruling that no infringement of pearl & dean’s trademark "poster ads" was
letterheads, envelopes and calling cards and newsletters. committed by respondents SM and NEMI;
26. With this as factual backdrop, there is no legal basis to the finding of liability on C. dismissing the award of the tc, despite the latter’s finding, not disputed
the part of the defendants-appellants for their use of the words "Poster Ads", in by the honorable ca, that sm was guilty of bad faith in its negotiation of
the advertising display units in suit. advertising contracts with P&D.
27. Sec 20 of the Trademark Law is "an implicit permission to a manufacturer to D. not holding respondents SM and NEMI liable to P&D for actual, moral
venture into the production of goods and allow that producer to appropriate the & exemplary damages, attorney’s fees and costs of suit.
brand name of the senior registrant on goods other than those stated in the
certificate of registration." ISSUE: Given that the engineering/technical drawings of an advertising display unit
28. The restrictive meaning of Sec 20 is shown when the SC stated that: If the (light box) are granted copyright protection, is the light box depicted in such
certificate of registration were to be deemed as including goods not specified engineering drawings ipso facto also protected by such copyright? – NO. The
therein, then a situation may arise whereby an applicant may be tempted to copyright was limited to the drawings alone and not to the light box itself. A
register a trademark on any and all goods which his mind may conceive even if copyright can cover only the works falling within the statutory enumeration or
he had never intended to use the trademark for the said goods. description.
29. SC believes that such omnibus registration is not contemplated by our
Trademark Law. RULING: Petition DENIED. CA decision AFFIRMED in toto.
30. While we do not discount the striking similarity between P&D’s registered
trademark and defendants-appellants’ "Poster Ads" design, as well as the RATIO:
parallel use by which said words were used in the parties’ respective advertising 1. P&D’s complaint was that SMI infringed on its copyright over the light boxes
copies, we cannot find defendants-appellants liable for infringement of when SMI had the units manufactured by MIS and EYD for its own account.
trademark. P&D’s position was premised on its belief that its copyright over the
31. "Poster Ads" was registered by P&D for specific use in its stationeries, in engineering drawings extended ipso facto to the light boxes depicted or
contrast to defendants-appellants who used the same words in their advertising illustrated in said drawings.
display units. Why P&D limited the use of its trademark to stationeries is simply 2. There was no copyright infringement because the copyright was limited to the
drawings alone and not to the light box itself.
3. P&D’s application for a copyright certificate — as well as Copyright 16. Trademark, copyright and patents are different intellectual property rights that
Certificate No. PD-R2588 issued by the National Library on Jan 20, 1981 — cannot be interchanged with one another. 
clearly stated that it was for a class "O" work under Sec 2 (O) of PD 49 a. A trademark is any visible sign capable of distinguishing the
(The Intellectual Property Decree) which was the statute then prevailing. Said goods (trademark) or services (service mark) of an enterprise and shall
Sec 2 expressly enumerated the works subject to copyright: include a stamped or marked container of goods. In relation thereto, a trade
SEC. 2. The rights granted by this Decree shall, from the moment of creation, subsist name means the name or designation identifying or distinguishing an
with respect to any of the following works:
(O) Prints, pictorial illustrations, advertising copies, labels, tags, and box wraps; enterprise.
4. Although P&D’s copyright certificate was entitled "Advertising Display Units" b. The scope of a copyright is confined to literary and artistic works which
(which depicted the box-type electrical devices), its claim of copyright are original intellectual creations in the literary and artistic domain
infringement cannot be sustained. protected from the moment of their creation. 
5. Copyright is purely a statutory right. Being a mere statutory grant, the c. Patentable inventions, on the other hand, refer to any technical solution of
rights are limited to what the statute confers. It may be obtained and a problem in any field of human activity which is new, involves an
enjoyed only with respect to the subjects and by the persons, and on terms inventive step and is industrially applicable.
and conditions specified in the statute. Accordingly, it can cover only the On The Issue Of Patent Infringement
works falling within the statutory enumeration or description. 17. If, despite its manufacture and commercial use of the light boxes without license
6. P&D secured its copyright under the classification class "O" work. This being from P&D, SMI and NEMI cannot be held legally liable for infringement of
so, P&D’s copyright protection extended only to the technical drawings and not P&D’s copyright over its technical drawings of the said light boxes, should they
to the light box itself because the latter was not at all in the category of "prints, be liable instead for infringement of patent? NO.
pictorial illustrations, advertising copies, labels, tags and box wraps." 18. P&D never secured a patent for the light boxes. It therefore acquired no patent
7. Assuming arguendo that P&D owned a valid copyright, the same could have rights which could have protected its invention, if in fact it really was. And
referred only to the technical drawings within the category of "pictorial because it had no patent, P&D could not legally prevent anyone from
illustrations." It could not have possibly stretched out to include the underlying manufacturing or commercially using the contraption.
light box. 19. Creser Precision Systems, Inc. vs. CA: There can be no infringement of a patent
8. The strict application of the law’s enumeration in Sec 2 prevents the SC from until a patent has been issued, since whatever right one has to the invention
giving P&D even a little leeway, that is, even if its copyright certificate was covered by the patent arises alone from the grant of patent.
entitled "Advertising Display Units." 20. An inventor has no common law right to a monopoly of his invention. He has
9. What the law does not include, it excludes: The light box was not a literary or the right to make use of and vend his invention, but if he voluntarily discloses it,
artistic piece which could be copyrighted under the copyright law. such as by offering it for sale, the world is free to copy and use it with impunity.
10. Neither could the lack of statutory authority to make the light box copyrightable 21. A patent, however, gives the inventor the right to exclude all others.
be remedied by the simplistic act of entitling the copyright certificate issued by 22. As a patentee, he has the exclusive right of making, selling or using the
the National Library as "Advertising Display Units." invention.
11. If SMI and NEMI reprinted P&D’s technical drawings for sale to the public 23. On the assumption that P&D’s advertising units were patentable inventions,
without license from P&D, they would have been guilty of copyright P&D revealed them fully to the public by submitting the engineering drawings
infringement. But this was not the case. thereof to the National Library.
12. SMI’s and NEMI’s acts complained of by P&D were to have units similar or 24. To be able to effectively and legally preclude others from copying and profiting
identical to the light box illustrated in the technical drawings manufactured by from the invention, a patent is a primordial requirement.
MIS and EYD, for leasing out to different advertisers. Was this an infringement 25. No patent, no protection. The ultimate goal of a patent system is to bring new
of P&D’s copyright over the technical drawings? We do not think so. designs and technologies into the public domain through disclosure.
13. During the trial, the president of P&D himself admitted that the light box was 26. Ideas, once disclosed to the public without the protection of a valid patent, are
neither a literary not an artistic work but an "engineering or marketing subject to appropriation without significant restraint.
invention." 27. On one side of the coin is the public which will benefit from new ideas; on the
14. There appeared to be some confusion regarding what ought or ought not to be other are the inventors who must be protected.
the proper subjects of copyrights, patents and trademarks. 28. Bauer & Cie vs. O’Donnel: The act secured to the inventor the exclusive right to
15. Kho vs. CA: These 3 legal rights are completely distinct and separate from one make use, and vend the thing patented, and consequently to prevent others from
another, and the protection afforded by one cannot be used interchangeably to exercising like privileges without the consent of the patentee. It was passed for
cover items or works that exclusively pertain to the others: the purpose of encouraging useful invention and promoting new and useful
 inventions by the protection and stimulation given to inventive genius, and was invention before the IPO and the public — the petitioner would be protected for
intended to secure to the public, after the lapse of the exclusive privileges 50 years. This situation could not have been the intention of the law.
granted the benefit of such inventions and improvements. 41. Baker vs. Selden:
29. The law attempts to strike an ideal balance between the 2 interests: The patent a. US SC held that only the expression of an idea is protected by copyright,
system thus embodies a carefully crafted bargain for encouraging the creation not the idea itself. In that case, the plaintiff held the copyright of a book
and disclosure of new useful and non-obvious advances in technology and which expounded on a new accounting system he had developed. The
design, in return for the exclusive right to practice the invention for a number of publication illustrated blank forms of ledgers utilized in such a system. The
years. defendant reproduced forms similar to those illustrated in the plaintiff’s
30. The inventor may keep his invention secret and reap its fruits indefinitely. In copyrighted book. The US SC ruled that:
consideration of its disclosure and the consequent benefit to the community, the b. "There is no doubt that a work on the subject of book-keeping, though only
patent is granted. An exclusive enjoyment is guaranteed him for 17y, but upon explanatory of well known systems, may be the subject of a copyright; but,
the expiration of that period, the knowledge of the invention inures to the then, it is claimed only as a book. x x x. But there is a clear distinction
people, who are thus enabled to practice it and profit by its use. between the books, as such, and the art, which it is, intended to illustrate.
31. The patent law has a three-fold purpose: c. The mere statement of the proposition is so evident that it requires hardly
a. first, patent law seeks to foster and reward invention; any argument to support it.
b. second, it promotes disclosures of inventions to stimulate further d. The same distinction may be predicated of every other art as well as that of
innovation and to permit the public to practice the invention once the bookkeeping. A treatise on the composition and use of medicines, be they
patent expires; old or new; on the construction and use of ploughs or watches or churns; or
c. third, the stringent requirements for patent protection seek to ensure that on the mixture and application of colors for painting or dyeing; or on the
ideas in the public domain remain there for the free use of the public." mode of drawing lines to produce the effect of perspective, would be the
32. It is only after an exhaustive examination by the patent office that a patent is subject of copyright; but no one would contend that the copyright of the
issued. Such an in-depth investigation is required because "in rewarding a useful treatise would give the exclusive right to the art or manufacture described
invention, the rights and welfare of the community must be fairly dealt with and therein.
effectively guarded. e. The copyright of the book, if not pirated from other works, would be valid
33. To that end, the prerequisites to obtaining a patent are strictly observed and without regard to the novelty or want of novelty of its subject matter.
when a patent is issued, the limitations on its exercise are equally strictly f. The novelty of the art or thing described or explained has nothing to do
enforced. with the validity of the copyright. 
34. To begin with, a genuine invention or discovery must be demonstrated lest in the g. To give to the author of the book an exclusive property in the art
constant demand for new appliances, the heavy hand of tribute be laid on each described therein, when no examination of its novelty has ever been
slight technological advance in art." officially made, would be a surprise and a fraud upon the public. That
35. There is no such scrutiny in the case of copyrights nor any notice published is the province of letters patent, not of copyright. The claim to an
before its grant to the effect that a person is claiming the creation of a work. invention of discovery of an art or manufacture must be subjected to
36. The law confers the copyright from the moment of creation and the copyright the examination of the Patent Office before an exclusive right therein
certificate is issued upon registration with the National Library of a sworn ex- can be obtained; and a patent from the government can only secure it.
parte claim of creation. 42. The difference between the 2 things, letters patent and copyright, may be
37. Therefore, not having gone through the arduous examination for patents, the illustrated by reference to the subjects just enumerated.
petitioner cannot exclude others from the manufacture, sale or commercial use 43. Take the case of medicines. Certain mixtures are found to be of great value in
of the light boxes on the sole basis of its copyright certificate over the technical the healing art. 
drawings. 44. If the discoverer writes and publishes a book on the subject (as regular
38. Stated otherwise, what petitioner seeks is exclusivity without any opportunity physicians generally do), he gains no exclusive right to the manufacture and
for the patent office (IPO) to scrutinize the light box’s eligibility as a patentable sale of the medicine; he gives that to the public. If he desires to acquire such
invention. exclusive right, he must obtain a patent for the mixture as a new art,
39. The irony here is that, had petitioner secured a patent instead, its exclusivity manufacture or composition of matter. He may copyright his book, if he
would have been for 17y only. pleases; but that only secures to him the exclusive right of printing and
40. But through the simplified procedure of copyright-registration with the National publishing his book. So of all other inventions or discoveries.
Library — without undergoing the rigor of defending the patentability of its
45. The copyright of a book on perspective, no matter how many drawings and boxes meant that there could not have been any trademark infringement since
illustrations it may contain, gives no exclusive right to the modes of drawing registration was an essential element thereof.1âwphi1
described, though they may never have been known or used before. By On The Issue Of Unfair Competition
publishing the book without getting a patent for the art, the latter is given to the 56. If at all, the cause of action should have been for unfair competition, a situation
public. which was possible even if P&D had no registration. 26 However, while the
46. Now, whilst no one has a right to print or publish his book, or any material part petitioner’s complaint in the RTC also cited unfair competition, the TC did not
thereof, as a book intended to convey instruction in the art, any person may find private respondents liable therefor. Petitioner did not appeal this particular
practice and use the art itself which he has described and illustrated therein. The point; hence, it cannot now revive its claim of unfair competition.
use of the art is a totally different thing from a publication of the book 57. But even disregarding procedural issues, we nevertheless cannot hold
explaining it. The copyright of a book on bookkeeping cannot secure the respondents guilty of unfair competition.
exclusive right to make, sell and use account books prepared upon the plan set 58. By the nature of things, there can be no unfair competition under the law on
forth in such book. Whether the art might or might not have been patented, is a copyrights although it is applicable to disputes over the use of trademarks.
question, which is not before us. It was not patented, and is open and free to the 59. Even a name or phrase incapable of appropriation as a trademark or tradename
use of the public. And, of course, in using the art, the ruled lines and headings of may, by long and exclusive use by a business (such that the name or phrase
accounts must necessarily be used as incident to it. becomes associated with the business or product in the mind of the purchasing
47. The plausibility of the claim put forward by the complainant in this case arises public), be entitled to protection against unfair competition.
from a confusion of ideas produced by the peculiar nature of the art described in 60. In this case, there was no evidence that P&D’s use of "Poster Ads" was
the books, which have been made the subject of copyright. distinctive or well-known.
48. In describing the art, the illustrations and diagrams employed happened to 61. P&D’s expert witnesses himself had testified that " ‘Poster Ads’ was too generic
correspond more closely than usual with the actual work performed by the a name. So it was difficult to identify it with any company, honestly speaking."
operator who uses the art. 62. This crucial admission by its own expert witness that "Poster Ads" could not be
49. The description of the art in a book, though entitled to the benefit of associated with P&D showed that, in the mind of the public, the goods and
copyright, lays no foundation for an exclusive claim to the art itself. The services carrying the trademark "Poster Ads" could not be distinguished from
object of the one is explanation; the object of the other is use. The former the goods and services of other entities.
may be secured by copyright. The latter can only be secured, if it can be 63. This fact also prevented the application of the doctrine of secondary meaning.
secured at all, by letters patent. "Poster Ads" was generic and incapable of being used as a trademark because it
On The Issue Of Trademark Infringement was used in the field of poster advertising, the very business engaged in by
50. This issue concerns the use by respondents of the mark "Poster Ads" which P&D.
petitioner’s president said was a contraction of "poster advertising." 64. Secondary meaning means that a word or phrase originally incapable of
51. P&D was able to secure a trademark certificate for it, but one where the goods exclusive appropriation with reference to an article in the market (because it is
specified were "stationeries such as letterheads, envelopes, calling cards and geographically or otherwise descriptive) might nevertheless have been used for
newsletters. so long and so exclusively by one producer with reference to his article that, in
52. Petitioner admitted it did not commercially engage in or market these goods. the trade and to that branch of the purchasing public, the word or phrase has
53. On the contrary, it dealt in electrically operated backlit advertising units and the come to mean that the article was his property.
sale of advertising spaces thereon, which, however, were not at all specified in 65. The admission by P&D’s own expert witness that he himself could not associate
the trademark certificate. "Poster Ads" with P&D because it was "too generic" definitely precluded the
54. CA correctly cited Faberge Inc. vs. IAC: The certificate of registration issued by application of this exception.
the Director of Patents can confer (upon petitioner) the exclusive right to use its 66. CA was correct when it reversed the RTC of Makati City.
own symbol only to those goods specified in the certificate, subject to any
conditions and limitations specified in the certificate x x x. One who has adopted
and used a trademark on his goods does not prevent the adoption and use of the
same trademark by others for products which are of a different description."
Faberge, Inc. was correct and was in fact recently reiterated in Canon Kabushiki
Kaisha vs. CA.
55. 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