Case Digest (G.R. No. 148222)
Facts:
Pearl Dean (Phil.), Inc. v. Shoemart, Inc., and North Edsa Marketing, Inc., G.R. No. 148222, August 15, 2003, Supreme Court Third Division, Corona, J., writing for the Court. Petitioner Pearl Dean (P D) sought review under Rule 45 of the Court of Appeals' May 22, 2001 decision (Seventeenth Division; CA G.R. 55303) that reversed the Regional Trial Court of Makati, Branch 133's October 31, 1996 judgment in Civil Case No. 92-516.P D manufactured illuminated advertising display units ("light boxes"), held a Certificate of Copyright Registration (No. PD-R-2558 dated January 20, 1981) classified as a class "O" work under P.D. No. 49, and later obtained registration of the mark "Poster Ads" (Reg. No. 41165, recorded September 12, 1988) limited to stationeries such as letterheads, envelopes and newsletters. P D contracted Metro Industrial Services (and later used other fabricators) to make its units and negotiated in 1985 to lease/install light boxes for several SM branches. Disputes arose after SMI rescinded one contract and later had Metro and EYD Rainbow fabricate similar light boxes for SMI and its sister company NEMI (which marketed advertising space in SMI stores).
In December 1991 P D demanded that SMI and NEMI cease use and remove the light boxes, stop using the trademark "Poster Ads," and pay compensatory damages of P20 million. SMI and NEMI denied infringement, argued independent development, asserted that "Poster Ads" was generic and that P D's mark registration covered only stationeries, and counterclaimed for cancellation of P D's registrations. The RTC found respondents jointly and severally liable for copyright and trademark infringement and unfair competition, awarded P D actual, moral and exemplary damages, attorney’s fees and costs, and ordered delivery/impounding/destruction of infringing materials and permanent injunctions.
The Court of Appeals reversed, holding that P D's copyright covered only the technical drawings (not the utilitarian light boxes) and that P D's trademark registration was limited to the goods specified in the certificate (stationeries), so respond...(Pro-only)
Issues:
- Does copyright in engineering or technical drawings of an advertising display unit ipso facto extend protection to the light box depicted in those drawings?
- If the drawings do not protect the light box, could P D have relied on patent protection instead—i.e., are respondents liable for patent infringement?
- Can the owner of a registered trademark prevent others from using the same mark when the registered mark is a mere abbreviation or generic term and t...(Pro-only)
Ruling:
- (Pro-only)
Ratio:
- (Pro-only)
Doctrine:
- (Pro-only)