CASE: PRIBHDAS J. MIRPURI, vs.

CA, DIRECTOR OF PATENTS and the BARBIZON CORPORATION

DOCTRINE: TRADEMARK

FACTS:

Lolita Escobar, the predecessor-in-interest of petitioner filed an application with the Bureau of
Patents for the registration of the trademark “Barbizon” for use in brassieres and ladies undergarments.
Escobar alleged that she had ben manufacturing and selling products under the firm “L&BM
Commercial” since March 3, 1970. Respondent Barbizon Corp. is organized and doing business under the
laws of New York, USA and opposed the application of Escobar for being confusingly similar to the
trademark BARBIZON they own. Respondent posited that it will be a violation of Section 4(d) of RA 166,
as amended. It was docketed as IPC No. 686.

Director of Patents gave due course to Escobar’s application and it became final on September
11, 1974. Escobar later assigned all her rights and interest over the trademark to petitioner Mirpuri who
was the exclusive distributor of Escobar’s Barbizon products. In 1979, Escobar failed to file with the
Bureau of Patent the Affidavit of Use of Trademark required under Sec. 12 of RA 166 (Ph Trademark
Law). Escobar’s cert. of registration got cancelled. Upon reapplication of Mirpuri, it was again opposed
by respondent Barbizon and it was docketed as IPC No. 2049. Respondent said that BARBIZON was used
as a trademark for various kinds of wearing apparel and that they secure a registration of the trademark
from US Patent Office. Furthermore, Ph Lingerie Corp has been manufacturing their goods and the
trademark have been used in many countries, including Ph for at least 40 years. Respondent said this is a
violation of Article 6bis of Paris Convention for protection of industrial property, 2 Memorandums of
Minister of Trade to the Director of Patents, EO 913, and Article 189 of the RPC.

DTI cancelled petitioner’s certificate of registration and declared the respondent the owner and
prior user of “Barbizon International”. Director of Patent rendered a decision declaring private
respondent's opposition barred by res judicata and giving due course to petitioner's application for
registration. CA reversed the Director of Patents finding that IPC No. 686 was not barred by judgment in
IPC No. 2049 and ordered that the case be remanded to the Bureau of Patents for further proceedings.

ISSUE:

1. Whether or not there is Res Judicata? NO

2. Whether or not the treaty affords protection to a foreign corporation against a Philippine
applicant for the registration of a similar trademark? YES

RULING: (review daw muna sa concepts before ruling haha)

RA 166 (Trademark Law)- Trademark is any word, name, symbol, emblem, sign or device or any
combination thereof adopted and used by a manufacturer or merchant to identify his goods and
distinguish them from those manufactured, sold or dealt in by others

RA 8293 (IPC of Ph)- Trademark is any visible sign capable of distinguishing goods.

Convention of Paris for the Protection of Industrial Property (Paris Convention)- multilateral treaty
 that seeks to protect industrial property consisting of patents, utility models, industrial designs,
trademarks, service marks, trade names and indications of source or appellations of origin, and at the
same time aims to repress unfair competition.

THE INTELLECTUAL PROPERTY CODE took effect on January 1, 1998 and by its express provision,
repealed the Trademark Law, the Patent Law, Articles 188 and 189 of the Revised Penal Code, the
Decree on Intellectual Property, and the Decree on Compulsory Reprinting of Foreign Textbooks. The
Code was enacted to strengthen the intellectual and industrial property system in the Philippines as
mandated by the country's accession to the Agreement Establishing the World Trade Organization
(WTO).

Function of Trademark: (1) they indicate origin or ownership of the articles to which they are
attached;
(2) they guarantee that those articles come up to a certain standard of quality; and (3) they advertise
the articles they symbolize

History: So it started as early as 5,000 BC as markings on the pottery,etc. In the Middle Ages, there
were many kinds of marks on variety of goods. It was in 18 th Century when IR gave rise to mass
production and distribution of consumer goods that the mark became an important instrumentality of
trade and commerce. By this time, trademarks did not merely identify the goods; they also indicated
the goods to be of satisfactory quality, and thereby stimulated further purchases by the consuming
public until it became a property right protected by law.

1. NO. The respondent was right in saying that the two cases did not have similar cause of action.

IPC No. 2049 raised the issue of ownership of the trademark, the first registration and use of the
trademark in US and other countries, and the international recognition and reputation of the trademark
established by extensive use and advertisement of private respondent's products for over forty years
here and abroad. These are different from the issues of confusing similarity and damage in IPC No. 686.
The issue of prior use may have been raised in IPC No. 686 but this claim was limited to prior use in the
Philippines only. Prior use in IPC No. 2049 stems from private respondent's claim as originator of the
word and symbol "Barbizon," as the first and registered user of the mark attached to its products which
have been sold and advertised worldwide for a considerable number of years prior to petitioner's first
application for registration of her trademark in the Philippines.

Indeed, these are substantial allegations that raised new issues and necessarily gave private
respondent a new cause of action. Res judicata does not apply to rights, claims or demands, although
growing out of the same subject matter, which constitute separate or distinct causes of action and
were not put in issue in the former action. The mere fact that the same relief is sought in the
subsequent action will not render the judgment in the prior action operative as res judicata, such as
where the two actions are based on different statutes.

2. YES. WTO is a common institutional framework for the conduct of trade relations among its
members and it ensures a single undertaking approach to the administration and operation of all
agreements and arrangements attached to the WTO agreement. Among the conventions of which
Ph is a signatory are: Berne Convention, Rome Convention, and Paris Convention. The State must
 reaffirm its commitment to the global community and take part in evolving a new international
economic order at the dawn of the new millennium.

Aticle 6bis, par. 1 of Paris Convention governs protection of well-known trademarks. Each
country of the Union bound itself to undertake to refuse or cancel the registration, and prohibit the use
of a trademark which is a reproduction, imitation or translation, or any essential part of which
trademark constitutes a reproduction, liable to create confusion, of a mark considered by the competent
authority of the country where protection is sought, to be well-known in the country as being already
the mark of a person entitled to the bene6ts of the Convention, and used for identical or similar goods.
It is a self-executing provision and does not require legislative enactment to give it effect in the member
country which could be applied directly by the tribunals of each member country by the mere
publication or proclamation of the convention after its ratification.

Villafuerte Memorandum was sent to the Director or Patents directing them to reject all
pending applications for PH registration of signature and other world-famous trademarks by applicants
other than its original owners, as a signatory to the Paris Convention. The Ph registrants of such
trademark should be asked to surrender their certificates of registration, if any. Ongpin Memorandum
was also sent to the Director of Patents wherein Minister of Trade and Industry did not enumerate well-
known trademarks but laid down guidelines for the Director of Patents to observe in determining
whether a trademark is entitled to protection as a well-known mark in the Philippines under Article 6bis
of the Paris Convention. Under the jurisprudence cited in the case, Minister of Trade and Industry is the
competent authority to determine where a trademark is well-known in this country.

DISPOSITIVE: IN VIEW WHEREOF, the petition is denied and the Decision and Resolution of the Court of
Appeals in CA-G.R. SP No. 28415 are affirmed.
CASE: PEARL & DEAN (PHIL.), INCORPORATED vs. SHOEMART, INCORPORATED, and NORTH EDSA
MARKETING, INCORPORATED

DOCTRINE: 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. 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. 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

FACTS:

Petitioner is a corporation engaged in the manufacturing of advertising display units (light

boxes). They were able to secure a certificate of Copyright Registration over the illuminated display units
and marketed them under the trademark “POSTER ADS”. They applied for registration of trademark in
Bureau of Patent, Trademarks, and Technology Transfer in 1981 but was granted in 1988. In 1985, they
negotiated with respondents for the lease and installation of light boxes in SM North EDSA. Since it was
still under construction, SM Makati and SM Cubao was rather offered. However, respondents only
signed the contract over SM Makati and when the petitioners informed them that it includes SM Cubao,
the respondents did not answer. More or less a year, respondents wanted to rescind the contract for
non-performance.

In 1989, petitioners received reports that exact copies of their light boxes were installed in SM
City and SM Cubao. They were also being advertised by North Edsa Marketing Inc, a sister company of
SM. In 1991, petitioner sent a demand letter to the respondents, telling them to cease using the light
boxes and remove them from the establishments. They were also demanded to discontinue the use of
trademark “POSTER ADS”. Petitioner, asserting that all of their demands were not met, filed a case for
infringement of trademark and copyright, unfair competition, and damages. Respondents said that they
independently developed the poster panels without reference to the copyright of petitioner. 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.

RTC ruled in favor of petitioners, ruling that respondents are jointly and severally liable for
infringement of copyright under Sec. 2 of PD 49, infringement of trademark under Sec 22 of RA 166.
Upon appeal, CA reversed the decision and ruled that: Since the light boxes cannot, by any stretch of the
imagination, be considered as either prints, pictorial illustrations, advertising copies, labels, tags or box
wraps, to be properly classified as a copyrightable class "O" work, we have to agree with SMI when it
posited that what was copyrighted were the technical drawings only, and not the light boxes
themselves. In the case of Muller v Tribirough¸ it was held that protection of the drawing does not
extend to the unauthorized duplication of the object drawn because copyright extends only to the
description or expression of the object and not to the object itself. Pearl and Dean's exclusive right to
the use of "Poster Ads" is limited to what is written in its certificate of registration, namely, stationeries.

ISSUE:

1. Whether or not there was copyright infringement? NO

2. Whether or not there was patent infringement? NO
 3. Whether or not there was trademark infringement? NO
4. Whether or not there was unfair competition? NO

RULING:

1. Petitioner’s application for a copyright certificate clearly stated that it was for class “O” work
under Section 2(o) of PD 49 which only covers prints, pictorial illustrations, advertising copied,
labels, tags, and box wraps. Although petitioner's copyright certificate was entitled "Advertising
Display Units", its claim of copyright infringement cannot be sustained. 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. Petitioner secured its copyright under class o work. This being so, petitioner's
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." What 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. During
the trial, the president of P & D himself admitted that the light box was neither a literary nor an
artistic work but an "engineering or marketing invention."

2. Petitioner never secured a patent for the light boxes. 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.
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. He has the right
to make use of and vend his 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. A patent is a primordial requirement. No patent, no protection.

Patent has a 3 fold purpose: it seeks to foster and reward invention, it promotes disclosures of
inventions to stimulate further innovation and to permit the public to practice the invention once
the patent expires, and the stringent requirements for patent protection seek to ensure that ideas in
the public domain remain there for the free use of the public. Therefore, not having gone through
the arduous examination for patents, the petitioner cannot exclude others from the manufacture,
sale or commercial use of the light boxes on the sole basis of its copyright certificate over the
technical drawings.

3. P & D was able to secure a trademark certificate for it, but one where the goods specified were
"stationeries such as letterheads, envelopes, calling cards and newsletters. 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. Assuming arguendo that "Poster Ads"
could validly qualify as a trademark, the failure of P & D to secure a trademark registration for
specific use on the light boxes meant that there could not have been any trademark infringement
since registration was an essential element thereof.

4. By the nature of things, there can be no unfair competition under the law on copyrights although it
is applicable to disputes over the use of trademarks. In this case, there was no evidence that P & D's
 use of "Poster Ads" was distinctive or well-known. "'Poster Ads' was too generic a name. The
director admitted that they cannot distinguish good and services carrying the trademark “Poster
Ads” as theirs so the secondary meaning would not apply. Secondary meaning is when people could
identify the trademark of your goods for over a long time.

DISPOSITIVE: WHEREFORE, the petition is hereby DENIED and the decision of the Court of Appeals dated
May 22, 2001 is AFFIRMED in toto.