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Pearl and Dean Vs SM

The Supreme Court ruled against Pearl & Dean (P&D) in its claims against Shoemart (SM) for infringement of intellectual property rights. The Court found that: 1) P&D's copyright on the technical drawings for its lightboxes did not extend to the lightboxes themselves, which were considered an engineering invention rather than a literary or artistic work. 2) P&D did not have a patent on its lightbox design since it did not obtain one, so it had no patent rights that SM could infringe. 3) P&D's trademark "Poster Ads" was considered generic and descriptive for poster advertising, so SM's use of the term for similar lightboxes

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Agnes Lintao
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50 views2 pages

Pearl and Dean Vs SM

The Supreme Court ruled against Pearl & Dean (P&D) in its claims against Shoemart (SM) for infringement of intellectual property rights. The Court found that: 1) P&D's copyright on the technical drawings for its lightboxes did not extend to the lightboxes themselves, which were considered an engineering invention rather than a literary or artistic work. 2) P&D did not have a patent on its lightbox design since it did not obtain one, so it had no patent rights that SM could infringe. 3) P&D's trademark "Poster Ads" was considered generic and descriptive for poster advertising, so SM's use of the term for similar lightboxes

Uploaded by

Agnes Lintao
Copyright
© © All Rights Reserved
We take content rights seriously. If you suspect this is your content, claim it here.
Available Formats
Download as DOCX, PDF, TXT or read online on Scribd
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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.

Pearl & Dean (Phil.), Incorporated v. Shoemart, Incorporated


G.R. No. 148222, August 15, 2003

Facts:
Pearl & Dean, Inc. (P&D) is a corporation engaged in the manufacture of
advertising display units called light boxes. The light boxes were derived from
technical drawings, which were registered with the National Library. P&D
obtained a copyright certificate for the drawings, which were classified under
category "O" of the Intellectual Property Decree (P.D. 49). The category pertains
to "prints, pictorial illustrations, advertising copies, labels, tags, and box
wraps." The light boxes were marketed under the trademark "Poster Ads" which
was duly registered before the Bureau of Patents, Trademarks and Technology
Transfer (BPTTT).

P&D negotiated with Shoemart, Inc. (SM) for the lease and installation of its
light boxes in two mall branches. For some reason, SM rescinded its contract
with P&D. Later, SM contracted with several entities for the construction of
light boxes for its chain of stores.

In time, P&D discovered that SM installed light boxes in several of its stores;
the light boxes are similar to those that P&D manufactures. P&D also found
out that SM used the trademark "Poster Ads" in marketing its own version of
the light boxes. Eventually, P&D demanded SM to refrain from using the
subject light boxes, to remove them from its establishments and to refrain from
using the trademark "Poster Ads". Not satisfied with SM's response to its
demands, P&D sued SM for infringement of trademark and copyright, unfair
competition and damages.

The trial court ruled in favor of P&D and found SM to have infringed P&D's
copyright and trademark "Poster Ads". On appeal, however, the Court of
Appeals reversed the trial court's ruling and declared that SM did not infringe
P&D's copyright.

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, 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. 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, It therefore
acquired no patent rights which could have protected its invention, if in fact it
really was. And because it had no patent, petitioner could not legally prevent
anyone from manufacturing or commercially using the contraption. In Creser
Precision Systems, Inc. vs. Court of Appeals, we held that “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. x x x. 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. No patent, no protection.

(3) The certificate of registration issued by the Director of Patents can confer
the exclusive right to use its own symbol only to those goods specified in the
certificate, subject to any conditions and limitations specific therein. 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.

(4) "Poster Ads" is a mere contraction of the term "poster advertising", which it
considered as generic owing to its use in the field of poster advertising. As
such, it is difficult to associate the trademark exclusively with P&D and hence
it cannot be considered to use such term to be unfair competition against the
petitioner.

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