Facts:
Plaintiff
P and D is engaged in manufacturing advertising display units
called as light boxes. These are specialty printed posters with plastic sheets
and illuminated back lights that are mainly used as stationeries. They secure
copyright registration over these advertising light boxes and marketed using
the trademark “poster ads.” They applied for the registration of trademark
before the Bureau of Patents, Trademark and Technology Transfer which was
approved on September 12, 1988. P and D negotiated with the defendant
Shoemart for the lease and installation of the light boxes in SM City North
Edsa but was given an alternative to have them leased to SM Makati and SM Cubao
while the said branch was under construction. Only the contract with SM Makati
was returned with signature. In 1986 the counsel of Shoemart informed P and D that it is rescinding its contract for SM Makati due to
non-performance of the terms thereof. Two years later, the Metro Industrial
Services, the same company contracted by the plaintiff to fabricate their
display units offered to construct light boxes for the Shoemart chain of stores
wherein 10 light boxes were created for them. Upon the termination of contract
with Metro Industrial Service, SM hired EYD Rainbow Advertising Co. to make
light boxes. When P and D knew about the exact copies of its
light boxes installed at SM City branches in 1989, it investigated and found
out that North Edsa Marketing Inc (NEMI), sister company of SM was primarily
selling ad space in lighted display units. P and D sent letter to both NEMI and SM
enjoining them to cease from using the subject light boxes and remove them from
SM establishments. It also demanded to discontinue the use of its trademark
“poster ads” with compensatory damages of 20M. SM suspended the lease of light
boxes in its branches while NEMI took down its advertisement for poster ads. Claiming
both failed to meet its demand P and D filed a case for infringement
of trademark, copyright, unfair competition and damages.
SM denied the charges against
it and noted that the registration of mark “poster ads” is limited to
stationeries like letterhead and envelope. It further stresses that it
independently develop its own poster panels using techniques and available
technology without notice to P and D copyright. It further contends that “poster ads” is a
generic name that cannot be appropriated for a trademark and that P and D’s advertising display units contained no copyright
notice in violation of Section 27 of P.D. 49. NEMI likewise
repleaded the averments of SM and denied to have manufactured, installed or
advertised the display units. The RTC decided in favor of P and D but on
appeal the Court of Appeals reversed its decision. In its judgment its stand is
that the copyright of the plaintiff is limited to its technical drawings only
and not the light boxes itself. When a drawing is technical, the copyright over
the drawing does not extend to actual object. Thus the CA is constrained to
adopt the view of the respondents that the “poster ads” is a generic poster
term ads and in the absence of convincing proof that such wording acquired
secondary meaning, the P and D’s exclusive right to use “poster ads” is
limited to what is written on its certificate of registration which is
stationaries.
Issue:
Whether
or not there is patent infringement
Ruling:
It held that
the petitioner never secured patent for the light boxes. Without any acquired
rights to protect its invention it cannot legally prevent anyone from
manufacturing the same. 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. Inventors have no
common law right to monopoly of his work. He has the right to invent but once
he voluntarily discloses it the world is free to copy and use it. A patent
gives the inventor the exclusive right to make, sell, use and exclude others
from using his invention. Assuming the petitioner’s ad units were patentable,
he made them public by submitting its engineering drawings to the National
Library. To legally preclude others from copying and profiting from one’s
invention, patent is a primary requirement. The ultimate goal of a patent system is to bring new
designs and technologies into the public domain through disclosure. Ideas, once
disclosed to the public without the protection of a valid patent, are subject
to appropriation without significant restraint. Therefore, without any patent
secured to protect one’s work, there is no protection against its use by the
public. Petitioner mainly secured copyright in which its design is classified
as class “O” limited to box wraps, pictorial illustration, labels and tags.
Thus its copyright is covered only the works falling within this category.
Moreover, the term “poster ads” is generic and incapable to be used as
trademark thus the respondents are not held guilty of the charges against them.
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