Facts:
Plaintiff
P&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&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&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&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&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&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&D copyright. It further contends that
“poster ads” is a generic name that cannot be appropriated for a trademark and
that P&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&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&D’s exclusive right to use “poster ads” is limited to what
is written on its certificate of registration which is stationaries.
