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Pearl & Dean (Phil.), Incorporated v. Shoemart, Incorporated G.R. No. 148222, !"!

#t 1$, 2%%& 'act#( Pearl & Dean (P&D) is engaged in the manufacture of advertising display units referred to as light boxes. These units utilize specially printed posters sandwiched between plastic sheets and illuminated with bac lights. !t was able to secure registration over these illuminated display units. The advertising light boxes were mar eted under the trademar "Poster #ds$. !n %&'() P&D negotiated with defendant *hoemart) !nc. (*+!) for the lease and installation of the light boxes in *+ ,orth -dsa. .owever) since *+ ,orth -dsa was under construction) *+! offered as alternative *+ +a ati and /ubao. During the signing of the /ontract) *+! only returned the /ontract with *+ +a ati. +anager of petitioner reminded *+! that their agreement includes *+ /ubao. .owever) *+! did not bother to reply. !nstead) respondent informed petitioner that they are rescinding the contract for *+ +a ati due to non0performance. Two years later) *+! engaged the services of -1D 2ainbow #dvertising to ma e the light boxes. These were delivered in a staggered basis and installed at *+ +egamall and *+ /ity. !n %&'&) petitioner received reports that exact copy of its light boxes was installed by *+!. !t further discovered that ,orth -dsa +ar eting !nc. (,-+!)) sister company of *+!) was set up primarily to sell advertising space in lighted display units located in *+!3s different branches. Petitioner sent letters to respondents as ing them to cease using the light boxes and the discontinued use of the trademar "Poster #ds$. /laiming that *+! and ,-+! failed to meet its demand) petitioner filed a case for infringement of trademar and copy right) unfair competition and damages. *+! maintained that it independently developed its poster panels using commonly nown techni4ues and available technology without notice of or reference to P&D3s copyright. !n addition) it said that registration of "Poster #ds$ obtained by petitioner was only for stationeries such as letterheads) envelopes and the li e. "Poster #ds$ is a generic term which cannot be appropriated as trademar ) and) as such) registration of such mar is invalid. !t also stressed that P&D is not entitled to the reliefs sought because the advertising display units contained no copyright notice as provided for by law. 2T/ found *+! and ,-+! 5ointly and severally liable for infringement of copyright and trademar . /# reversed saying that it agreed with *+! that what was copyrighted was the technical drawings only and not the light boxes. 6ight boxes cannot be considered as either prints) pictorial illustrations) advertising copies) labels) tags or box wraps) to be properly classified as copyrightable class "7$ wor . !n addition) /# stressed that the protective mantle of the Trademar 6aw extends only to the goods used by the first user as specified in its certificate of registration. The registration of the trademar "Poster #ds$ covers only stationeries such as letterheads) envelopes and calling cards and newsletter. ISS)*S( (%) !f the engineering or technical drawings of an advertising display unit are granted copyright protection is the light box depicted in such drawings ipso facto also protected by such copyright8 (9) *hould the light box be registered separately8 (:) /an the owner of the registered trademar legally prevent others from using such mar if it is mere abbreviation of a term descriptive of his goods) services or business8 .eld; %. ,o. /opyright is purely statutory. #s such) the rights are limited to what the statute confers. !t may be obtained and en5oyed only with respect to the sub5ects and by the persons) and on the terms and conditions specified in the statute. #ccordingly) it can cover only the wor s falling within the statutory enumeration or description. Petitioner secured copyright under classification class "7$ wor . Thus) 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. <hat 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. #nd no less clearly) neither could the lac of statutory authority to ma e the light box copyrightable be remedied by the simplistic act of entitling the copyright certificate issued by the ,ational 6ibrary as "#dvertising Display =nits$. !t must be noted that copyright is confined to literary and artistic wor s which are original intellectual creations in the literary and artistic domain protected from the moment of their creation. 1es. Petitioner never secured a patent for the light boxes. !t therefore ac4uired no patent rights which could have protected its invention) if in fact it really was. #nd because it had no patent) petitioner could not legally prevent anyone from manufacturing or commercially using the contraption. To be able to effectively and legally preclude others from copying and profiting from the invention) a patent is a primordial re4uirement. ,o patent) no protection. The ultimate goal of a patent system is to bring new designs and technologies into the public through disclosure. !deas) once) disclosed to the public without protection of a valid patent) are sub5ect to appropriation without significant restraint. The Patent 6aw has a three0fold purpose; first) patent law see s to foster and reward invention> second) it promotes disclosures of inventions to stimulate further innovation and to permit the public to practice the invention once the patent expires> third) the stringent re4uirements for patent protection see to ensure that ideas in the public domain remain there for the free use of the public. !t is only after an exhaustive examination by the patent office that patent is issued. Therefore) not having gone through the arduous examination for patents) petitioner cannot exclude other s from the manufacture) sale or commercial use of the light boxes on the sole basis of its copyright certificate over the technical drawings. /ourt agrees with /# that 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) sub5ect to any conditions and limitations specified in the certificate. 7ne who has adopted and used a trademar on his goods does not prevent the adoption and use of the same trademar by others for products which are of a different description. #ssuming arguendo that "Poster #ds$ could validly 4ualify as a trademar ) the failure of petitioner to secure a trademar registration for specific use on the light boxes meant that there could not have been any trademar infringement since registration was an essential element thereof. There is no evidence that petitioner3s use of "poster #ds$ was distinctive or well0 nown. #s noted by /#) petitioner3s expert witness himself had testified that "Poster #ds$ was not too generic a name. *7 it was difficult to identify it with any company. This fact also prevented the application of the doctrine of secondary meaning. "Poster #ds$ was generic and incapable of being used as a trademar because it was used in the field of poster advertising the very business engaged in by petitioner. *econdary meaning means that a word or phrase originally incapable of exclusive appropriation with reference to an article in the mar et might nevertheless have been used for so long and so exclusively by one producer with reference to his article that ) in the trade and to that branch of the purchasing public) the word or phrase has come to mean that the article was his property. P-T!T!7, <#* D-,!-D.

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