PEARL & DEAN PHIL INC. VS. SHOEMART- Trademark, Copyright and Patents

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 or services of an enterprise and shall include a stamped or marked container of goods. The scope of a copyright is confined to literary and artistic works which are original intellectual creations in the literary and artistic domain. Patentable inventions 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.


Pearl and Dean is a corporation in the manufacture of advertising display units also known as light boxes, which were manufactured by Metro Industrial Services. A copyright Registration was obtained in 1981. These were marketed in the name of "Poster Ads". They also applied for a registration of trademark with the Bureau of Patents in 1983, but was only approved in 19988. In 1985, petitioner had  n agreement with respondent Shoemart Inc (SMI) to install these light boxes in their Makati and Cubao branch, Only the Makati branch was able to sigh the agreement. In 1986, the contract was rescinded unilaterally by SMI, and instead contracted with Metro Industrial Services. They installed these lightboxes in different SM city branches, including Cubao and Makati, with association with North Edsa Marketing Inc (NEMI), SMI's sister company. Petitioner requested SMI and NEMI to put down their installations of the light boxes, and payment of compensatory damages worth P20M. Claiming that respondents failed to comply, they filed a case for infringement of trademark and copyright, unfair competition and damages. RTC ruled in favor of petitioner, but CA reversed.


(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

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 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.