Pearl & Dean Phil. Inc v. Shoemart, Inc.

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

Petitioner’s claim: 

Pearl and Dean (P&D) is a corporation engaged in the manufacture of advertising display units referred to as light boxes and these light boxes were marketed under the trademark Poster Ads. Pearl and Dean entered into a contract with Shoemart, Inc. for the lease and installation of the light boxes in SM North Edsa. After Pearl and Dean’s contract was rescinded, exact copies of its light boxes were installed in various SM malls, fabricated by Metro Industrial Services and later by EYD Rainbow Advertising Corporation for SMI. P&D filed a case for infringement of trademark and copyright, unfair competition and damages.

Respondents’ claim: 

Shoemart, Inc. (SMI) 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. It also stressed that Pearl and Dean is not entitled to the reliefs prayed for in its complaint since its advertising display units contained no copyright notice, in violation of Section 27 of P.D. 49. SMI alleged that Pearl and Dean had no cause of action against it and that the suit was purely intended to malign SMI’s good name.

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.

Disposition of the case: 

Petition is DENIED and the decision of the Court of Appeals is AFFIRMED in toto.

Dictum: 

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.