I.

Format
A. Use the mouse/touchpads right click and go to Paragraph and set the settings as
follows: Single Spacing, and make sure Dont add space between paragraphs of
the same style is checked
B. Font: Cambria (Size 11)
C. Body text must be justified
D. See the illustration below. Click on each of the comment boxes at the right corner of the
screen.

PEARL & DEAN (PHIL.), INCORPORATED v. SHOEMART, INCORPORATED, and NORTH

EDSA MARKETING, INCORPORATED
G.R. No. 148222, August 15, 2003, CORONA, J.

Trademark, copyright and patents are different intellectual property rights that cannot be
interchanged with one another. Hence, an invention is a proper subject of patent and not
copyright.

Facts:

Pearl and Dean (Phil.), Inc. is a corporation engaged in the manufacture of advertising
display units simply referred to as light boxes. These units utilize specially printed posters
sandwiched between plastic sheets and illuminated with back lights. Pearl and Dean was able to
secure a Certificate of Copyright Registration over these illuminated display units. The
application for registration of the trademark was filed in 1983 but was approved only in 1988.
Sometime in 1985, Pearl and Dean negotiated with Shoemart, Inc. (SMI) for the lease and
installation of the light boxes in SM City North Edsa which was still under construction at that
time. However, the deal did not go anywhere. And later on, Pear and Dean received reports that
exact copies of its light boxes were installed at SMIs SM City branches. It further discovered that
North Edsa Marketing Inc. (NEMI) was set up primarily to sell advertising space in lighted display
units located in SMIs different branches.

In the light of its discoveries, Pearl and Dean filed a case for infringement of trademark
and copyright, unfair competition and damages.

Issue:

Whether or not SM and NEMI are guilty of infringement of trademark and copyright, unfair
competition.

Ruling:

No. During the trial, the president of Pearl and Dean himself admitted that the light box
was neither a literary not an artistic work but an engineering or marketing invention. Obviously,
there appeared to be some confusion regarding what ought or ought not to be the proper
subjects of copyrights, patents and trademarks. The three legal rights are completely distinct
and separate from one another, and the protection afforded by one cannot be used
interchangeably to cover items or works that exclusively pertain to the others: 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 of
goods. In relation thereto, a trade name means the name or designation identifying or
distinguishing an enterprise. Meanwhile, the scope of a 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 industrially applicable.

In this case, Pearl and Deans copyright over the designs was in the category of prints,
pictorial illustrations, advertising copies, labels, tags and box wraps. Hence, the copyright cannot
extend the light box itself.

II. Guidelines
1. DO NOT COPY PASTE
 Please lets not copy paste from the original text, especially the facts of the case. If the
case digest merely contains snippets, fragments or dissected parts, it would be hard
to make sense out of them as opposed to paraphrasing the relevant parts of the case. Read
and analyze the case, and from there, write a brief summary of the relevant facts corresponding
to the assigned issue, and then write the ruling.

Sometimes, in the Ruling portion, its okay to copy-paste relevant parts of the ratio
decidendi, but not if it would cause the digest to be too long. In connection with this, in many
cases the ponente makes use of the first-person view (i.e. We) in the decision. Make sure
never to use the first-person view.

2. DIGESTS MUST BE VERY BRIEF AND CONCISE

As much as possible, the digest must not exceed 1 1/2 page. You can only exceed the
maximum page if there are more than one issue.

With regard to the Facts of the case, we dont have to include all the details but
ONLY those that are necessary and relevant which would establish the premise for the
assigned issue. In other words, we should include only details that would enable the readers to
connect the facts with the issue and ruling.

3. CLARITY OF WRITING

Here, the importance of not copy-pasting should be reiterated. We cant write a brief,
concise and clear case digest by copy-pasting. If we just copy-paste parts of the facts and
attempt to make it short, it would be difficult to understand, and we might just as well copy the
whole full text of the case.

Make the sentences fluid by merging multiple sentences that can properly work as one
and by using transition words/phrases (i.e. so, also, then, thereafter, moreover, furthermore,
additionally, similarly, likewise, in the same fashion, apparently, not only... but also, etc.).

Use the active voice oftener than passive voice. (i.e. Pedro filed a complaint against Jose
for annulment of contract with the RTC. sounds better than A complaint for annulment of
contract against Jose was filed by Pedro with the RTC.)

4. DONT INCLUDE PROCEDURAL BACKGROUND ANYMORE

As a general rule, lets not include anymore the procedural background of the case (i.e.
RTC ruling, CA ruling, mode of appeal availed of, etc.), unless it is material or the very issue
in the case.

5. THE ISSUE SHOULD BE IN QUESTION FORM.

E.g.
Issue: Is the marriage void?

6. ALWAYS BEGIN THE RULING WITH EITHER YES OR NO

Also, dont repeat anymore the issue in the ruling. Example:

Issue: Whether or not the prosecutions evidence is sufficient to sustain a guilty verdict.
Ruling: Yes, the prosecutions evidence is sufficient to sustain a guilty verdict.
Instead, write immediately after the Yes or No the legal basis, followed by its
application to the facts and then the conclusion.

7. PARTIES AND OTHER PERSONS; NAMES

As far as practicable, refer to the parties by their names, not by petitioners or private
respondents. Use their full names (excluding middle initials) at their first mention, and
their surnames for the succeeding mentions. Although, in some cases, its more convenient
to just refer to certain parties by their first names after the mention of their full names,
especially in cases which involve family, relatives or parties with the same surnames.

Sometimes, we may refer to the parties by petitioners or respondents if it would make

the digest easier to understand.
 Lets not mention any more in the digest persons which may have been mentioned in the
case but are not really material and would only make the case digest longer than necessary. In
the same vein, dont write anymore the names of persons that may be a little bit important but
whose names are not really necessary in the case digest.

Use discretion for this rule. As a rule of thumb, use the means that would make the digest
shorter and clearer.

8. ABBREVIATIONS

Immediately abbreviate the following words, even at their first mention, that are
already commonly known by their abbreviations (list not exclusive, and mind the use of upper
and lower cases):

1. MeTC, MTC, and MCTC 5. CoA

2. RTC 6. CSC
3. CA (This refers to the Court of Appeals. 7. SEC
When referring to the Commission on 8. BIR
Appointments, its better to just spell it 9. DOJ, DepEd, CHEd, DOLE and certain
out.) executive departments
4. Comelec 10.Others (use discretion)
 11.

12. The following terms are also sometimes abbreviated as follows: Supreme Court (SC),
Sandiganbayan (SB), Ombudsman (OMB), etc. But they are not commonly known enough and not
consistently used, so to avoid confusion, do not use these abbreviations and just spell them out
throughout the case digest.

13. When referring to laws, be guided as follows:

a) RA/PD/BP/EO/Act/CA No. 1234 (Short title of the law)

14. Example: RA No. 10175 (Cybercrime Prevention Act of 2012)
- After first mention, we may then continue referring to it either by its
nomenclature designation (i.e. RA No. 10175) or by its short title,
which ever sounds better. For example, we oftener use BP No. 22
than Bouncing Checks Law.
- But for laws that are already well-known and well-
established, we need not mention their nomenclature
designation (i.e. Civil Code, Family Code, Revised Penal Code,
Labor Code, Corporation Code, etc.)
b) Use Sec. or Art. when using it as part of the law (i.e. Sec. 1 of the Corporation
Code) but spell it out when using it as a noun independent of the law, like when it
was already mentioned before in a previous sentence, and were just referring to it
again.

15. 9. NUMERICS

a) For 1-9, spell the number out. (i.e. There are seven accused; The boy is nine
years old.)
b) For 10 onwards, use the numerical symbol. (i.e. He owns 16 shares of stocks of
Corporation X.)
c) A and B above do not apply to the following:
i. Money (i.e. We still refer to P5 as such and not five pesos, unless we want to
refer to the coin, in which case its five-peso coin)
ii. Address (i.e. #3, Espaa Blvd., Sampaloc, Manila)
iii. Numbers used as proper nouns
iv. Other cases where the number is not used to describe numerical value.
d) B does not apply if the sentence begins with a number.

16.Note: These technical rules (especially 6-8) are designed for uniformity. At first, they may
seem useless, but it gives the readers a sense of connection and familiarity to the reading
material that will help them read the digests continuously with ease. It would be hard to
read sets of digests if every digest had its own format.

17.