Posted in Mercantile Law case digests

PEARL & DEAN (PHIL.), INC. vs SHOEMART, INC GR No. 148222 (August 15,2003)

FACTS:

          Pearl and Dean is a corporation engaged in the manufacture of advertising display units referred to as light boxes and these light boxes were marketed under the trademark Poster Ads. Pearl and Dean entered into a contract with Shoemart, Inc. for the lease and installation of the light boxes in SM North Edsa. However, due to construction constraints, Shoemart, Inc offered as an alternative SM Makati and SM Cubao.

          After Pearl and Dean’s contract was rescinded, exact copies of its light boxes were installed in various SM malls, fabricated by Metro Industrial Services and later by EYD Rainbow Advertising Corporation. Pearl and Dean sent a letter to Shoemart and its sister company, North Edsa Marketing to cease using the light boxes and to remove them from the malls, and demanded the discontinued used of the trademark “Poster Ads”.

          Unsatisfied with the compliance of its demands, Pearl and Dean sued Shoemart which was ruled by the trial court in their favor. On appeal, however, the Court of Appeals reversed the trial court’s decision.

ISSUE:

          Whether Pearl and Dean’s copyright registration for its light boxes and the trademark registration of “Poster Ads” preclude Shoemart and North Edsa Marketing from using the same.

HELD:

          No, Pearl and Dean secured its copyright under the classification class “o” work. This being so, its protection extended only to the technical drawings and not to the light box itself. Pearl and Dean cannot exclude others from the manufacture, sale and commercial use over the light boxes on the sole basis of its copyright, certificated over the technical drawings. It cannot be the intention of the law that the right of exclusivity would be granted for a longer time through the simplified procedure of copyright registration with the National Library, without the rigor of defending the patentability of its “invention” before the IPO and the public.

          On the other hand, there has been no evidence that Pearl and Dean’s use of “Poster Ads” was distinctive or well known. “Poster Ads” was too generic a name to identify it to a specific company or entity. “Poster Ads” was generic and incapable of being used as a trademark because it was used in the field of poster advertising, the very business engaged by Pearl and Dean. Furthermore, Pearl and Dean’s exclusive right to the use of “Poster Ads” is limited to what is written in its certificate of registration. Shoemart cannot be held liable for the infringement of the trademark.

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