Documentos de Académico
Documentos de Profesional
Documentos de Cultura
172835
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distribute and market Chin Chun Su products in the Philippines had already
terminated by the said Taiwanese manufacturing company.
ISSUE:
Whether or not Kho has the sole right using the package of Chin Chun Su products.
RULING:
Petitioner has no right to support her claim for the exclusive use of the subject trade
name and its container. The name and container of a beauty cream product are
proper subjects of a trademark in as much as the same falls squarely within its
definition. In order to be entitled to exclusively use the same in the sale of
the beauty cream product, the user must sufficiently prove that she
registered or used it before anybody else did. The petitioners copyright
and patent registration of the name and container would not guarantee
her the right to exclusive use of the same for the reason that they are not
appropriate subjects of the said intellectual rights. Consequently, a
preliminary injunction order cannot be issued for the reason that the petitioner has
not proven that she has a clear right over the said name and container to the
exclusion of others, not having proven that she has registered a trademark thereto
or used the same before anyone did.
NOTE:
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 goods. In relation thereto,
a trade name means the name or designation identifying or distinguishing an
enterprise. Meanwhile, the scope of 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 industrial applicable.
Pearl and Dean Inc. v Shoemart Inc. GR No. 148222, August 15, 2003
Facts:
Plaintiff P and 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 and
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 and D that it is rescinding its contract for SM Makati due to
non-performance of the terms thereof. Two years later, the Metro Industrial Services,
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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 and
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 and 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 posterads. Claiming both failed to meet its demand P and 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 and D copyright. It further contends that poster
ads is a generic name that cannot be appropriated for a trademark and that P and
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 and 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 and Ds exclusive right to use poster ads is limited to what is written on its
certificate of registration which is stationaries.
ISSUES:
(1)
(2)
(3)
(4)
Whether
Whether
Whether
Whether
there
there
there
there
was
was
was
was
a copyright infringement
a patent infringement
a trademark infringement
unfair competition
RULING: No to all.
(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
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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.
The primary purpose of the patent system is not the reward of the individual
but the advancement of the arts and sciences.
The function of a patent is to add to the sum of useful knowledge and one of
the purposes of the patent system is to encourage dissemination of
information concerning discoveries and inventions.
This is a matter which is properly within the competence of the Patent Office
the official action of which has the presumption of correctness and may not
be interfered with in the absence of new evidence carrying thorough
conviction that the Office has erred.
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Facts:
Petitioner Manzano filed with the Philippine Patent Office on 19 February 1982
an action for the cancellation of a Letters Patent for a gas burner registered in
the name of respondent Madolaria who subsequently assigned the letters
patent to UNITED FOUNDRY.
(a) the utility model covered by the letters patent, in this case, an LPG
gas burner, was not inventive, new or useful;
(b) the specification of the letters patent did not comply with the
requirements of Sec. 14, RA No. 165, as amended;
(c) respondent was not the original, true and actual inventor nor did
she derive her rights from the original, true and actual inventor of the
utility model covered by the letters patent; and,
(e) the utility model covered by the letters patent had been known or
used and produced and on sale by others in the Philippines for more
than 1 year before she filed her application for letters patent on 9
December 1979;
was
secured
by
means
of
fraud
or
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Issue: Whether there is sufficient basis to cancel the subject Letters of Patent.
Held: NO.
If a device or process has been known or used by others prior to its invention
or discovery by the applicant, an application for a patent therefor should be
denied; and if the application has been granted, the court, in a judicial
proceeding in which the validity of the patent is drawn in question, will hold it
void and ineffective.
It has been repeatedly held that an invention must possess the essential
elements of novelty, originality and precedence, and for the patentee
to be entitled to the protection the invention must be new to the world.
The burden of proving want of novelty is on him who avers it and the burden
is a heavy one which is met only by clear and satisfactory proof which
overcomes every reasonable doubt.
Hence, a utility model shall not be considered "new" if before the application
for a patent it has been publicly known or publicly used in this country or
has been described in a printed publication or publications circulated within
the country, or if it is substantially similar to any other utility model so
known, used or described within the country.
Thus the Director of Patents explained his reasons for the denial of the
petition to cancel private respondent's patent
o
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For anticipation to occur, the prior art must show that each element is
found either expressly or described or under principles of inherency in
a single prior art reference or that the claimed invention was probably
known in a single prior art device or practice.
The dates when they were distributed to the public were not
indicated and, therefore, they are useless prior art references.
(NOTE)
It must likewise be pointed out that Ong Bun Tua testified on the
brochures allegedly of Manila Gas and of Esso Gasul and on the alleged
fact that Manila Gas Corporation was importing from the United States
"Ransome" burners.
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The engraver Enrique Aquino knew that the moulds he was engraving for
plaintiff were the latter's very own, which possess the new features and
characteristics covered by plaintiff's parent.
Aquino & Sons eventually engraved for Aguas, the same moulds as that of De
Leon covered by the patent and for which it charged Aguas double the rate it
charged plaintiff De Leon, contain the very same characteristic features of
plaintiff's mould and that Aguas used these moulds in the manufacture
of his tiles which he actually put out for sale to the public.
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turns out tiles 4 x 4 inches in size, defendant Aguas' mould is made to fit a 41/4 x 4-1/4 inch tile.
On April 14, 1962, Conrado G. de Leon filed in the CFI a complaint for
infringement of patent against Domiciano A. Aguas and F. H. Aquino
and Sons.
Alleging that being the original first and sole inventor of certain new and
useful IMPROVEMENTS in the process of making mosaic pre-cast
tiles, he lawfully filed and prosecuted an application for Philippine patent,
and having complied in all respects with the statute and the rules of the
Philippine Patent Office, Patent No. 658 was lawfully granted and issued to
him.
Aguas infringed Letters of Patent No. 658 by making, using and selling tiles
embodying said patent invention.
The contention of the petitioner Aguas that the letters patent of de Leon was
actually a patent for the old and non-patentable process of making mosaic
pre-cast tiles is devoid of merit.
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The Claims and Specifications of Patent No. 658 show that although some of
the steps or parts of the old process of tile making were described therein,
there were novel and inventive features mentioned in the process.
Some of the novel features of the private respondent's improvements are the
following:
o
the fact that the tiles can be mass produced in commercial quantities
and can be conveniently stock-piled, handled and packed without any
intolerable incidence of breakages.
The tiles produced from de Leon's process are suitable for construction and
ornamentation, which previously had not been achieved by tiles made out of
the old process of tile making.
De Leon's invention has therefore brought about a new and useful kind of tile.
The old type of tiles were usually intended for floors although there
is nothing to prevent one from using them for walling purposes.
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He has improved the old method of making tiles and pre-cast articles
which were not satisfactory because of an intolerable number of
breakages, especially if deep engravings are made on the tile.
The petitioner also claims that changing the design from embossed to
engraved tiles is neither new nor inventive because the Machuca Tile Factory
and the Pomona Tile Manufacturing Company have been manufacturing
decorative wall tiles that are embossed as well as engraved; that these tiles
have also depth, lip width, easement and field of designs; and that the
private respondent had copied some designs of Pomona.
o
The Machuca tiles are different from that of the private respondent.
Cement tiles are made with the use of water, while in ceramics
fire is used.
As regards the allegation of the petitioner that the private respondent copied
some designs of Pomona, suffice it to say that what is in issue here is the
process involved in tile making and not the design.
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Angel Vargas, the plaintiff herein, brought this action to restrain the
appellants and the other defendant entity, Cham Samco & Sons, their agents
and mandatories, from continuing the manufacture and sale of plows
similar to his plow described in his patent No. 1,507,530 issued by
the United States Patent Office on September 2, 1924.
Plaintiff is the registered owner and possessor of United States Patent No.
1,507,530 on certain plow improvements, issued by the United States Patent
Office on September 2, 1924.
The plaintiff is now and has been engaged, since the issuance of his patent,
in the manufacture and sale of plows of the kind, type and design covered by
the aforementioned patent, said plows being of different sizes and numbered
in accordance therewith from 1 to 5.
Held: NO.
The evidence shows that Exhibit F is the kind of plows the plaintiff, Angel
Vargas, manufactures, for which Patent No. 1,507,530, was issued in his
favor.
Exhibits B, B-1 and B-2 are samples of the plows which the herein appellants,
Coo Pao and Petronila Chua, have been manufacturing since 1918, and
Exhibit 3-Chua represents the plow for which, on March 12, 1912, the plaintiff
obtained a patent from the United States Patent Office, which was declared
null and void by the Supreme Court in the case of Vargas vs. F. M.
Yap Tico & Co.
The only difference noted by us is the suppression of the bolt and the
three holes on the metal strap attached to the handle bar. (NOTE)
These holes and bolt with its nut were suppressed in Exhibit F in which
the beam is movable as in the original plow.
Not only is there no fundamental difference between the two plows but
no improvement whatever has been made on the latest model, for the
same working and movement of the beam existed in the
original model with the advantage, perhaps, that its
graduation could be carried through with more certainty by the
use of the bolt which as has already been stated, was
adjustable and movable..
As to the fact, upon which much emphasis was laid, that deeper furrows
can be made with the new model, we have seen that the same
results can be had with the old implement.
In view of the foregoing, we are firmly convinced that the appellee is not
entitled to the protection he seeks for the simple reason that his plow,
Exhibit F, does not constitute an invention in the legal sense, and
because, according to the evidence, the same type of plows had
been manufactured in this country and had been in use in many
parts of the Philippine Archipelago, especially in the Province of
Iloilo, long before he obtained his last patent.
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In the above mentioned case of Vargas vs. F. M. Yaptico & Co., we said:
With all due respects, therefore, for the critical and expert examination
of the invention by the United States Patent Office, the question of the
validity of the patent is one for judicial determination, and since a
patent has been submitted, the exact question is whether the
defendant has assumed the burden of proof as to anyone of his
defenses.
Under the English Statute of Monopolies and under the United States
Patent Act of February 21, 1793, later amended to be as herein quoted,
it was always the rule, as stated by Lord Coke, Justice Story and other
authorities, that to entitle a man to a patent, the invention must
be new to the world.
As said by the United States Supreme Court, "it has been repeatedly
held by this court that a single instance of public use of the
invention by a patentee of more than two years before the
date of his application for his patent will be fatal to the
validity of the patent when issued."
that the plow upon which the appellee's contention is based, does not
constitute an invention and, consequently, the privilege invoked by him is
untenable and the patent acquired by him should be declared ineffective.
that petitioner is the first, true and actual inventor of an aerial fuze
denominated as "Fuze, PDR 77 CB4" which it developed as early as
December 1981 under the Self-Reliance Defense Posture
Program (SRDP) of the AFP.
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Petitioners Contention:
It can file, under Section 42 of the Patent Law (R.A. 165), an action for
infringement not as a patentee but as an entity in possession of a right,
title or interest in and to the patented invention.
It advances the theory that while the absence of a patent may prevent one
from lawfully suing another for infringement of said patent, such absence
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does not bar the first true and actual inventor of the patented
invention from suing another who was granted a patent in a suit for
declaratory or injunctive relief recognized under American patent
laws.
This remedy may be likened to a civil action for infringement under Section
42 of the Philippine Patent Law.
Under the aforequoted law, only the patentee or his successors-ininterest may file an action for infringement.
The phrase "anyone possessing any right, title or interest in and to the
patented invention" upon which petitioner maintains its present suit, refers
only to the patentee's successors-in-interest, assignees or grantees
since actions for infringement of patent may be brought in the name
of the person or persons interested, whether as patentee,
assignees, or as grantees, of the exclusive right.
In short, a person or entity who has not been granted letters patent over an
invention and has not acquired any light or title thereto either as assignee or
as licensee, has no cause of action for infringement because the right to
maintain an infringement suit depends on the existence of the patent.
While petitioner claims to be the first inventor of the aerial fuze, still it has no
right of property over the same upon which it can maintain a suit unless it
obtains a patent therefor.
He has the right to make, use and vend his own invention, but if he
voluntarily discloses it, such as by offering it for sale, the world is
free to copy and use it with impunity.
A patent, however, gives the inventor the right to exclude all others. As a
patentee, he has the exclusive right of making, using or selling the invention.
The reason for this is that the said remedy is available only to the
patent holder or his successors-in-interest.
Thus, anyone who has no patent over an invention but claims to have
a right or interest thereto cannot file an action for declaratory
judgment or injunctive suit which is not recognized in this jurisdiction.
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