Creser Precision Systems Inc. v CA and Floro International Co. GR NO. 118708, February 2, 1998

Facts: 

Respondent was granted by the Bureau of Patents, Trademarks and Technology Transfer (BPTTT) a Letter of patent for its aerial fuze on January 23, 1990. Sometime in 1993, respondent discovered that the petitioner submitted samples of its patented aerial fuze to the AFP for testing claiming to be his own. To protect its right, respondent sent letter of warning to petitioner on a possible court action should it proceed its testing by the AFP. In response the petitioner filed a complaint for injunction and damages arising from alleged infringement before the RTC asserting that it is the true and actual inventor of the aerial fuze which it developed on 1981 under the Self Reliance Defense Posture Program of the AFP. It has been supplying the military of the aerial fuze since then and that the fuze of the respondent is similar as that of the petitioner. Petitioner prayed for restraining order and injunction from marketing, manufacturing and profiting from the said invention by the respondent. The trial court ruled in favor of the petitioner citing the fact that it was the first to develop the aerial fuze since 1981 thsu it concludes that it is the petitioner’s aerial fuze that was copied by the respondent. Moreover, the claim of respondent is solely based on its letter of patent which validity is being questioned. On appeal, respondent argued that the petitioner has no cause of action since he has no right to assert there being no patent issued to his aerial fuze. The Court of Appeals reversed the decision of the trial court dismissing the complaint of the petitioner. It was the contention of the petitioner that it can file under Section 42 of the Patent Law an action for infringement not as a patentee but as an entity in possession of a right, title or interest to the patented invention. It theorizes that while the absence of a patent prevents one from lawfully suing another for infringement of said patent, such absence does not bar the true and actual inventor of the patented invention from suing another in the same nature as a civil action for infringement.

Pearl and Dean Inc. v Shoemart Inc. GR No. 148222, August 15, 2003

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.

Smith Kline Beckman Co. v Court of Appeals and Tryco Pharma GR No. 126627, August 14, 2003

Facts:

Petitioner Smith Kline Beckman Co., licensed to do business in the Philippines, filed on October 8, 1976 as assignee before the Bureau of Patents an application for patent on its invention called “Methods and Compositions for Producing Biphasic Parasiticide Activity Using Methyl 5 Propylthio-2-Benzimidazole Carbanate.” A Letters of Patent was issued to the petitioner on September 24, 1981 for a period of 17 years. The patent provides that the patented invention consists of Methyl 5 Propylthio-2-Benzimidazole Carbanate used as an active ingredient in treating gastrointestinal parasites and lung worms in animals. The respondent Tryco Pharma manufactures, distributes and sells veterinary product, one of which is the Impregon, a drug having Albendazole as its active ingredient effective against gastrointestinal worms in animals. Petitioner now sues the respondent for patent infringement and unfair competition before the RTC as it claims that their patent includes the substance Albendazole used by the respondent and they sold and used the drug Impregon without the petitioner’s authorization and committed unfair competition for selling as its own the drug that substantially functions to achieve the same result. Petitioner further contends that under the doctrine of equivalents in determining patent infringement, the active substance Albendazole used by the respondent is substantially the same as Methyl 5 Propylthio-2-Benzimidazole Carbanate covered by its patent with the same use of combating worm infestations in animals. It prodded the court to go beyond the literal words used in the Letter of Patent issued to them to consider that the words Methyl 5 Propylthio-2-Benzimidazole Carbanate and Albendazole are the same. Respondent avers that the Letter of Patents issued to petitioner does not cover Albendazole in that the word does not appear on it. Even if the patent were to include Albendazole it is unpatentable. They secured approval from the Bureau of Foods and Drugs to manufacture and market Impregon with the Albendazole as its active ingredients. The petitioner has no proof that they passed their veterinary products as that of the petitioner.