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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 & Dean (Phil.), Incorporated v. Shoemart, Incorporated

G.R. No. 148222, August 15, 2003

Pearl & Dean, Inc. (P&D) is a corporation engaged in the manufacture of advertising
display units called light boxes. The light boxes were derived from technical
drawings, which were registered with the National Library. P&D obtained a copyright
certificate for the drawings, which were classified under category "O" of the
Intellectual Property Decree (P.D. 49). The category pertains to "prints, pictorial
illustrations, advertising copies, labels, tags, and box wraps." The light boxes
were marketed under the trademark "Poster Ads" which was duly registered before the
Bureau of Patents, Trademarks and Technology Transfer (BPTTT).

P&D negotiated with Shoemart, Inc. (SM) for the lease and installation of its light
boxes in two mall branches. For some reason, SM rescinded its contract with P&D.
Later, SM contracted with several entities for the construction of light boxes for
its chain of stores.

In time, P&D discovered that SM installed light boxes in several of its stores; the
light boxes are similar to those that P&D manufactures. P&D also found out that SM
used the trademark "Poster Ads" in marketing its own version of the light boxes.
Eventually, P&D demanded SM to refrain from using the subject light boxes, to
remove them from its establishments and to refrain from using the trademark "Poster
Ads". Not satisfied with SM's response to its demands, P&D sued SM for infringement
of trademark and copyright, unfair competition and damages.

The trial court ruled in favor of P&D and found SM to have infringed P&D's
copyright and trademark "Poster Ads". On appeal, however, the Court of Appeals
reversed the trial court's ruling and declared that SM did not infringe P&D's

(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, in the strict sense of the term, is purely a statutory right. Being
a mere statutory grant, the rights are limited to what the statute confers. It may
be obtained and enjoyed only with respect to the subjects and by the persons, and
on terms and conditions specified in the statute. Accordingly, it can cover only
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, It therefore
acquired no patent rights which could have protected its invention, if in fact it
really was. And because it had no patent, petitioner could not legally prevent
anyone from manufacturing or commercially using the contraption. In�Creser
Precision Systems, Inc. vs. Court of Appeals, we held that �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. x
x x. To be able to effectively and legally preclude others from copying and
profiting from the invention, a patent is a primordial requirement. No patent, no
protection. No patent, no protection.

(3) The certificate of registration issued by the Director of Patents can confer
the exclusive right to use its own symbol only to those goods specified in the
certificate, subject to any conditions and limitations specific therein. One who
has adopted and used a trademark on his goods�does not prevent the adoption and use
of the same trademark by others for products which are of a different description.

(4) "Poster Ads" is a mere contraction of the term "poster advertising", which it
considered as generic owing to its use in the field of poster advertising. As such,
it is difficult to associate the trademark exclusively with P&D and hence it cannot
be considered to use such term to be unfair competition against the petitioner.