142
SUPREME COURT REPORTS ANNOTATED
Sasot vs. People
MELBAROSE SASOT of Allandale Sportslines, Inc., did then
and there willfully, unlawfully and feloniously manufacture
and sell various garment products bearing the appearance of
NBA names, symbols and trademarks, inducing the public
to believe that the goods offered by them are those of NBA
to the damage and prejudice of the NBA Properties, Inc., the
trademark owner of the NBA.
CONTRARY TO LAW.7
Before arraignment, petitioners filed a Motion to Quash the
Information on the following grounds:
apt to state at this point that the prosecutor enjoys the legal
presumption of regularity in the performance of his duties
and functions, which in turn gives his report the presumption
of accuracy.29
Moreover, records show that there are other supporting
documents from which the prosecutor based his
recommendation, to wit:
(1) The NBI Report dated June 4, 1997, containing an account
of the investigation conducted from April 30, 1997 to May 9,
1997, and the subsequent search and seizure of several
items from petitioners establishment;30
(2) The letter dated May 8, 1997 from the law firm of Ortega,
Del Castillo, Bacorro, Odulio, Calma & Carbonell to the NBI,
seeking assistance in stopping the illegal manufacture,
distribution and sale
_______________
24 People vs. Cayosa, G.R. No. L-24689, December 26, 1969,
30 SCRA 806.
25 People vs. Historillo, G.R. No. 130408, June 16, 2000, 33
SCRA 615.
26 Records, p. 85.
27 Id., p. 33.
28 Id., p. 96.
29 People vs. Court of Appeals, G.R. No. 126005, January 21,
1999, 301 SCRA 475.
30 Records, pp. 6-9.
148
148
SUPREME COURT REPORTS ANNOTATED
Sasot vs. People
of fake products bearing the NBA trademark, and in
prosecuting the proprietors of aforesaid factory;31 and
(3) The Joint Affidavit executed by Rechie D. Malicse and
Dalisay P. Bal-ot of the Pinkerton Consulting Services (Phils.)
Inc., which was certified to by Prosecution Attorney Gutierrez,
attesting to their findings that petitioners were found to be
manufacturing, printing, selling, and distributing counterfeit
NBA garment products.32
Consequently, if the information is valid on its face, and there
is no showing of manifest error, grave abuse of discretion and
21
Taada vs. Angara
Same; Same; Separation of Powers; Due Process.The
reasons for denying a cause of action to an alleged
infringement of broad constitutional principles are sourced
from basic considerations of due process and the lack of
judicial authority to wade into the uncharted ocean of social
and economic policy making.
Same; Same; Trade Liberalization; Filipino First Policy; While
the Constitution indeed mandates a bias in favor of Filipino
goods, services, labor and enterprises, at the same time, it
recognizes the need for business exchange with the rest of
the world on the bases of equality and reciprocity and limits
protection of Filipino enterprises only against foreign
competition and trade practices that are unfairthe
Constitution did not intend to pursue an isolationist policy.
All told, while the Constitution indeed mandates a bias in
favor of Filipino goods, services, labor and enterprises, at the
same time, it recognizes the need for business exchange with
the rest of the world on the bases of equality and reciprocity
and limits protection of Filipino enterprises only against
foreign competition and trade practices that are unfair. In
other words, the Constitution did not intend to pursue an
isolationist policy. It did not shut out foreign investments,
goods and services in the development of the Philippine
economy. While the Constitution does not encourage the
unlimited entry of foreign goods, services and investments
into the country, it does not prohibit them either. In fact, it
allows an exchange on the basis of equality and reciprocity,
frowning only on foreign competition that is unfair.
Same; Same; Same; Same; World Trade Organization (WTO);
General Agreement on Tariffs and Trade (GATT); There is
hardly any basis for the statement that under the WTO, local
industries and enterprises will all be wiped out and that
Filipinos will be deprived of control of the economy, for, quite
to the contrary, the weaker situations of developing nations
like the Philippines have been taken into account.Moreover,
GATT itself has provided built-in protection from unfair
foreign competition and trade practices including antidumping measures, countervailing measures and safeguards
against import surges. Where local business are jeopardized
by unfair foreign competition, the Philippines can avail of
28
SUPREME COURT REPORTS ANNOTATED
Taada vs. Angara
a vision of the future, the Philippines now straddles the
crossroads of an international strategy for economic
prosperity and stability in the new millennium. Let the
people, through their duly authorized elected officers , make
their free choice.
SPECIAL CIVIL ACTION in the Supreme Court. Certiorari.
Senate
Through Senate President Edgardo Angara
Manila
Ladies and Gentlemen:
I have the honor to forward herewith an authenticated copy
of the Uruguay Round Final Act signed by Department of
Trade and Industry Secretary Rizalino S. Navarro for the
Philippines on 15 April 1994 in Marrakesh, Morocco.
The Uruguay Round Final Act aims to liberalize and expand
world trade and strengthen the interrelationship between
trade and economic policies affecting growth and
development.
The Final Act will improve Philippine access to foreign
markets, especially its major trading partners through the
reduction of tariffs on its exports particularly agricultural and
industrial products. These concessions may be availed of by
the Philippines, only if it is a member of the World Trade
Organization. By GATT estimates, the Philippines can acquire
additional export revenues from $2.2 to $2.7 Billion annually
under Uruguay Round. This will be on top of the normal
increase in exports that the Philippines may experience.
The Final Act will also open up new opportunities for the
services sector in such areas as the movement of personnel,
(e.g., professional services and construction services), crossborder supply (e.g., computer-related services), consumption
abroad (e.g., tourism, convention services, etc.) and
commercial presence.
The clarified and improved rules and disciplines on antidumping and countervailing measures will also benefit
Philippine exporters by reducing the costs and uncertainty
associated with exporting while at the same time providing a
means for domestic industries to safeguard themselves
against unfair imports.
Likewise, the provision of adequate protection for intellectual
property rights is expected to attract more inves tments into
the country and to make it less vulnerable to unilateral
actions by its trading partners (e.g., Sec. 301 of the United
States Omnibus Trade Law).
38
38
(1), two (2) and three (3) of that Agreement which are
integral parts thereof.
On the other hand, the Final Act signed by Secretary Navarro
embodies not only the WTO Agreement (and its integral
annexes aforementioned) but also (1) the Ministerial
Declarations and Decisions and (2) the Understanding on
Commitments in Financial Services. In his Memorandum
______________
oon, Canada, Central African Republic, Chili, Colombia, Costa
Rica, Cote dIvoire, Cuba, Cyprus, Czech Republic, Denmark,
Djibouti, Dominica, Dominican Republic, Ecuador, Egypt, El
Salvador, European Community, Fiji, Finland, France, Gabon,
Germany, Ghana, Greece, Grenada, Guatemala, Guinea,
Guinea Bissau, Guyana, Haiti, Honduras, Hongkong, Hungary,
Iceland, India, Indonesia, Ireland, Israel, Italy, Jamaica, Japan,
Kenya, Korea, Kuwait, Lesotho, Liechtenstein, Luxembourg,
Macau, Madagascar, Malawi, Malaysia, Maldives, Mali, Malta,
Mauritania, Mauritius, Mexico, Morocco, Mozambique,
Myanmar, Namibia, Netherlandsfor the Kingdom in Europe
and for the Netherlands Antilles, New Zealand, Nicaragua,
Nigeria, Norway, Pakistan, Papua New Guinea, Paraguay,
Peru, Philippines, Poland, Portugal, Qatar, Romania, Rwanda,
Saint Kitts and Nevis , Saint Lucia, Saint Vincent & the
Grenadines, Senegal, Si erra Leone, Si ngapore, Sl ovak
Republ ic, Sl oveni a, Solomon Islands, South Africa, Spain, Sri
Lanka, Surinam, Swaziland, Sweden, Switzerland, Tanzania,
Thailand, Togo, Trinidad and Tobago, Tunisia, Turkey, Uganda,
United Arab Emirates, United Kingdom, United States,
Uruguay, Venezuela, Zambia and Zimbabwe. See Annex A,
Bautista Paper, infra.
43
VOL. 272, MAY 2, 1997
43
Taada vs. Angara
dated May 13, 1996,8 the Solicitor General describes these
two latter documents as follows:
The Ministerial Decisions and Declarations are twenty-five
declarations and decisions on a wide range of matters, such
as measures in favor of least developed countries,
notification procedures, relationship of WTO with the
48
VOL. 272, MAY 2, 1997
47
Taada vs. Angara
(1) DOES THE PETITION PRESENT A JUSTICIABLE
CONTROVERSY? OTHERWISE STATED, DOES THE PETITION
INVOLVE A POLITI CAL QUESTION OVER WHICH THIS COURT
HAS NO JURISDICTION?
(2) DO THE PROVI SI ONS OF THE WTO AGREEM ENT AND ITS
THREE ANNEXES CONTRAVENE SEC. 19, ARTICLE II, AND
SECS. 10 AND 12, ARTICLE XII, OF THE PHILIPPINE
CONSTITUTION?
(3) DO THE PROVISIONS OF SAID AGREEMENT AND ITS
ANNEXES LIMIT, RESTRICT, OR IMPAIR THE EXERCISE OF
LEGISLATIVE POWER BY CONGRESS?
(4) DO SAID PROVISIONS UNDULY IMPAIR OR INTERFERE WITH
THE EXERCISE OF JUDICIAL POWER BY THIS COURT IN
PROMULGATING RULES ON EVIDENCE?
(5) WAS THE CONCURRENCE OF THE SENATE IN THE WTO
AGREEMENT AND ITS ANNEXES SUFFICIENT AND/OR VALID,
CONSIDERING THAT I T DID NOT INCLUDE THE FI NAL ACT,
MINISTERIAL DECLARATIONS AND DECISIONS, AND THE
UNDERSTANDING ON COMMITMENTS IN FINANCIAL
SERVICES?
The First Issue: Does the Court
Have Jurisdiction Over the Controversy?
In seeking to nullify an act of the Philippine Senate on the
ground that it contravenes the Constitution, the petition no
doubt raises a justiciable controversy. Where an action of the
legislative branch is seriously alleged to have infringed the
Constitution, it becomes not only the right but in fact the
duty of the judiciary to settle the dispute. The question thus
posed is judicial rather than political. The duty (to adjudicate)
remains to assure that the supremacy of the Constitution is
upheld.12 Once a controversy as to the application or
interpretation of a constitutional provision is raised before
this
_______________
12 Aquino, Jr. vs. Ponce Enrile, 59 SCRA 183, 196, September
17, 1974, cited in Bondoc vs. Pineda, 201 SCRA 792, 795,
September 26, 1991.
48
SUPREME COURT REPORTS ANNOTATED
Taada vs. Angara
Court (as in the instant case), it becomes a legal issue which
the Court is bound by constitutional mandate to decide.13
The jurisdiction of this Court to adjudicate the matters14
raised in the petition is clearly set out in the 1987
Constitution,15 as follow s:
Judicial power includes the duty of the courts of justice to
settle actual controversies involving rights which are legally
demandable and enforceable, and to determine whether or
not there has been a grave abuse of discretion amounting to
lack or excess of jurisdiction on the part of any branch or
instrumentality of the government.
The foregoing text emphasizes the judicial departments duty
and power to strike down grave abuse of discretion on the
part of any branch or instrumentality of government
including Congress. It is an innovation in our political law.16
As explained by former Chief Justice Roberto Concepcion,17
the judiciary is the final arbiter on the question of whether
or not a branch of government or any of its officials has acted
without jurisdiction or in excess of jurisdiction or so
capriciously as to constitute an abuse of discretion
amounting to excess of jurisdiction. This is not only a judicial
pow er but a duty to pass judgment on matters of this
nature.
As this Court has repeatedly and firmly emphasized in many
cases,18 it w ill not shirk, digress from or abandon its sacred
duty and authority to uphold the Constitution in matters that
involve grave abuse of discretion brought before it in
________________
13 Guingona, Jr. vs. Gonzales, 219 SCRA 326, 337, March 1,
1993.
14 See Tanada and Macapagal vs. Cuenco, et al., 103 Phil.
1051 for a discussion on the scope of political question.
15 Section 1, Article VIII, (par. 2).
16 In a privilege speech on May 17, 1993, entitled Supreme
CourtPotential Tyrant? Senator Arturo Tolentino concedes
_______________
60
SUPREME COURT REPORTS ANNOTATED
Taada vs. Angara
nomic agenda more decisively than outside the Organization.
This is not merely a matter of practical alliances but a
negotiating strategy rooted in law. Thus, the basic principles
underlying the WTO Agreement recognize the need of
developing countries like the Philippines to share in the
growth in international trade commensurate with the needs
of their economic development. These basic principles are
found in the preamble34 of the WTO Agreements as follows:
The Parties to this Agreement,
Recognizing that their relations in the field of trade and
economic endeavour should be conducted with a view to
raising standards of living, ensuring full employment and a
large and steadily growing volume of real income and
effective demand, and expanding the production of and trade
in goods and services, while allowing for the optimal use of
the worlds resources in accordance with the objective of
sustainable development, seeking both to protect and
preserve the environment and to enhance the means for
doing so in a manner consistent with their respective needs
and concerns at different levels of economic development,
Recognizing further that there is need for positive efforts
designed to ensure that developing countries, and especially
the least developed among them, secure a share in the
growth in international trade commensurate with the needs
of their economic developm ent,
Being des irous of contributing to these objectives by
entering into reciprocal and mutually advantageous
arrangements directed to the substantial reduction of tariffs
and other barriers to trade and to the elimination of
discriminatory treatment in international trade relations,
Resolved, therefore, to develop an integrated, more viable
and durable multilateral trading system encompassing the
General Agreement on Tariffs and Trade, the results of pas t
trade liberalization efforts, and all of the results of the
Uruguay Round of Multilateral Trade Negotiations,
Determined to preserve the basic principles and to further
the objectives underlying this multilateral trading system, x x
x. (italics supplied.)
for the statement that under the WTO , local industries and
enterprises will all be w iped out and that Filipinos w ill be
deprived of control of the economy. Quite the contrary, the
weaker situations of developing nations like the Philippines
have been taken into account; thus, there would be no basis
to
62
62
SUPREME COURT REPORTS ANNOTATED
Taada vs. Angara
say that in joining the WTO, the respondents have gravely
abused their discretion. True, they have made a bold decision
to steer the ship of state into the yet uncharted sea of
economic liberalization. But such decision cannot be set
aside on the ground of grave abuse of discretion, simply
because we disagree with it or simply because we believe
only in other economic policies. As earlier stated, the Court in
taking jurisdiction of this case will not pass upon the
advantages and disadvantages of trade liberalization as an
economic policy. It will only perform its constitutional duty of
determining whether the Senate committed grave abuse of
discretion.
Constitution Does Not
Rule Out Foreign Competition
Furthermore, the constitutional policy of a self-reliant and
independent national economy35 does not necessarily rule
out the entry of foreign investments, goods and services. It
contemplates neither economic seclusion nor mendicancy
in the international community. As explained by
Constitutional Comm issioner Bernardo Villegas, sponsor of
this constitutional policy:
Economic self-reliance is a primary objective of a developing
country that is keenly aware of overdependence on external
assistance for even its most basic needs. It does not mean
autarky or economic seclusion; rather, it means avoiding
mendicancy in the international community. Independence
refers to the freedom from undue foreign control of the
national economy, especially in such strategic industries as
in the development of natural resources and public
utilities.36
64
SUPREME COURT REPORTS ANNOTATED
Taada vs. Angara
and the answers thereto are not subject to judicial
pronouncements based on grave abuse of discretion.
Constitution Designed to Meet
Future Events and Contingencies
No doubt, the WTO Agreement was not yet in existence when
the Constitution w as drafted and ratified in 1987. That does
not mean however that the Charter is necessarily flawed in
the sense that its framers might not have anticipated the
advent of a borderless world of business. By the same token,
the United Nations was not yet in existence when the 1935
Constitution became effective. Did that necessarily mean
that the then Constitution might not have contemplated a
diminution of the absoluteness of sovereignty when the
Philippines signed the UN Charter, thereby effectively
surrendering part of its control over its foreign relations to
the decisions of various UN organs like the Security Council?
It is not difficult to answer this question. Constitutions are
designed to meet not only the vagaries of contemporary
events. They should be interpreted to cover even future and
unknown circumstances. It is to the credit of its drafters that
a Constitution can withstand the assaults of bigots and
infidels but at the same time bend with the refreshing winds
of change necessitated by unfolding events. As one eminent
political law writer and respected jurist38 explains:
The Constitution must be quintessential rather than
superficial, the root and not the blossom, the base and
Limit Sovereignty
Thus, when the Philippines joined the United Nations as one
of its 51 charter members, it consented to restrict its
sovereign rights under the concept of sovereignty as
autolimitation.47a Under Article 2 of the UN Charter, (a)ll
members shall give the United Nations every assistance in
any action it takes in accordance w ith the present Charter,
and shall refrain from giving assistance to any state against
which the United Nations is taking preventive or enforcement
action. Such assistance includes payment of its
corresponding share not merely in administrative expenses
but also in expenditures for the peace-keeping operations of
the organization. In its advisory opinion of July 20, 1961, the
International Court of Justice held that money used by the
United Nations Emergency Force in the Middle East and in the
Congo were
______________
46 Salonga, op cit., p. 287.
47 Quoted in Paras and Paras, Jr., International Law and World
Politics, 1994 Ed., p. 178.
47a Reagan vs. Commission of I nternal Revenue, 30 SCRA
968, 973, December 27, 1969.
68
68
SUPREME COURT REPORTS ANNOTATED
Taada vs. Angara
expenses of the United Nations under Article 17, paragraph
2, of the UN Charter. Hence, all its m embers must bear their
corresponding share in such expenses. In this sense, the
Philippine Congress is restricted in its power to appropriate. It
is compelled to appropriate funds whether it agrees with
such peace-keeping expenses or not. So too, under Article
105 of the said Charter, the UN and its representatives enjoy
diplomatic privileges and immunities, thereby limiting again
the exercise of sovereignty of members within their own
territory. Another example: although sovereign equality and
domestic jurisdiction of all members are set forth as
underlying principles in the UN Charter, such provisos are
however subject to enforcement measures decided by the
Security Council for the maintenance of international peace
73
VOL. 272, MAY 2, 1997
73
Taada vs. Angara
Moreover, it should be noted that the requirement of Article
34 to provide a disputable presumption applies only if (1) the
product obtained by the patented process is NEW or (2) there
is a substantial likelihood that the identical product w as
made by the process and the process owner has not been
able through reasonable effort to determine the process
used. Where either of these two provisos does not obtain,
members shall be free to determine the appropriate method
of implementing the provisions of TRIPS within their own
internal systems and processes.
By and large, the arguments adduced in connection with our
disposition of the third issuederogation of legislative power
will apply to this fourth issue also. Suffice it to say that the
reciprocity clause more than justifies such intrusion, if any
actually exists. Besides, Article 34 does not contain an
unreasonable burden, consistent as it is with due process and
the concept of adversarial dispute settlement inherent in our
judicial system.
So too, since the Philippines is a signatory to most
international conventions on patents, trademarks and
copyrights, the adjustment in legislation and rules of
procedure will not be substantial.52
Fifth Issue: Concurrence Only in the WTO Agreement and
Not in Other Documents Contained in the Final Act
Petitioners allege that the Senate concurrence in the WTO
Agreement and its annexesbut not in the other documents
referred to in the Final Act, namely the Ministerial Declaration
and Decisions and the Understanding on Commitments in
Financial Servicesis defective and insufficient and thus
constitutes abuse of discretion. They submit that such
concurrence in the WTO Agreement alone is flawed because
it is in effect a rejection of the Final Act, which in turn was the
document signed by Secretary Navarro, in representation of
the Republic upon authority of the President. They contend
that the second letter of the President to the Senate53 which
________________
410
SUPREME COURT REPORTS ANNOTATED
Kho vs. Court of Appeals
G.R. No. 115758. March 19, 2002.*
ELIDAD C. KHO, doing business under the name and style of
KEC COSMETICS LABORATORY, petitioner, vs. HON. COURT OF
APPEALS, SUMMERVILLE GENERAL MERCHANDISING and
COMPANY, and ANG TIAM CHAY, respondents.
Actions; Injunctions; A preliminary injunction order may be
granted only when the application for the issuance of the
same shows facts entitling the applicant to the relief
demanded.Pursuant to Section 1, Rule 58 of the Revised
Rules of Civil Procedure, one of the grounds for the issuance
of a writ of preliminary injunction is a proof that the applicant
is entitled to the relief demanded, and the whole or part of
such relief consists in restraining the commission or
continuance of the act or acts complained of, either for a
limited period or perpetually. Thus, a preliminary injunction
order may be granted only when the application for the
issuance of the same shows facts entitling the applicant to
the relief demanded. This is the reason why we have ruled
that it must be shown that the invasion of the right sought to
be protected is material and substantial, that the right of
complainant is clear and unmistakable, and, that there is an
urgent and paramount necessity for the writ to prevent
serious damage.
Intellectual Property Law; Trademarks and Trade Names;
Copyrights; Patents; Words and Phrases; Trademark,
Copyright, and Patent, Explained and Distinguished;
Trademark, copyright and patents are different intellectual
property rights that cannot be interchanged with one
another.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 (trademark) or services (service
mark) of an enterprise and shall include a stamped or
marked container of goods. In relation thereto, a trade name
______________
414
SUPREME COURT REPORTS ANNOTATED
Kho vs. Court of Appeals
similar containers that petitioner uses, thereby misleading
the public, and resulting in the decline in the petitioners
business sales and income; and, that the respondents should
be enjoined from allegedly infringing on the copyrights and
patents of the petitioner.
The respondents, on the other hand, alleged as their defense
that Summerville is the exclusive and authorized importer,
repacker and distributor of Chin Chun Su products
manufactured by Shun Yi Factory of Taiwan; that the said
Taiwanese manufacturing company authorized Summerville
to register its trade name Chin Chun Su Medicated Cream
with the Philippine Patent Office and other appropriate
governmental agencies; that KEC Cosmetics Laboratory of
the petitioner obtained the copyrights through
misrepresentation and falsification; and, that the authority of
Quintin Cheng, assignee of the patent registration certificate,
to distribute and market Chin Chun Su products in the
Philippines had already been terminated by the said
Taiwanese Manufacturing Company.
After due hearing on the application for preliminary
injunction, the trial court granted the same in an Order dated
February 10, 1992, the dispositive portion of which reads:
ACCORDINGLY, the application of plaintiff Elidad C. Kho, doing
business under the style of KEC Cosmetic Laboratory, for
preliminary injunction, is hereby granted. Consequentially,
plaintiff is required to file with the Court a bond executed to
defendants in the amount of five hundred thousand pesos
(P500,000.00) to the effect that plaintiff will pay to
defendants all damages which defendants may sustain by
reason of the injunction if the Court should finally decide that
plaintiff is not entitled thereto.
SO ORDERED.3
The respondents moved for reconsideration but their motion
for reconsideration was denied by the trial court in an Order
dated March 19, 1992.4
On April 24, 1992, the respondents filed a petition for
certiorari with the Court of Appeals, docketed as CA-G.R. SP
No. 27803,
420
SUPREME COURT REPORTS ANNOTATED
Kho vs. Court of Appeals
Appeals. This is supported by our ruling in La Vista
Association, Inc. v. Court of Appeals,16 to wit:
Considering that preliminary injunction is a provisional
remedy which may be granted at any time after the
commencement of the action and before judgment when it is
established that the plaintiff is entitled to the relief
demanded and only when his complaint shows facts entitling
such reliefs x x x and it appearing that the trial court had
232
SUPREME COURT REPORTS ANNOTATED
Pearl & Dean (Phil.), Incorporated vs. Shoemart, Incorporated
Same; Same; Same; The three legal rights are completely
distinct and separate from one another and the protection
afforded by one cannot be used interchangeably to cover
items or works that exclusively pertain to the others.During
the trial, the president of P & D himself admitted that the
light box was neither a literary not an artistic work but an
engineering or marketing invention. Obviously, there
appeared to be some confusion regarding what ought or
ought not to be the proper subjects of copyrights, patents
and trademarks. In the leading case of Kho vs. Court of
Appeals, we ruled that these three legal rights are completely
distinct and separate from one another, and the protection
afforded by one cannot be used interchangeably to cover
items or works that exclusively pertain to the others.
Same; Same; 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.For some reason or another,
petitioner never secured a patent for the light boxes. 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
9 Ibid.
10 TSN, February 3, 1993, pp. 11-13.
11 G.R. No. 115758, March 19, 2002, 379 SCRA 410.
243
VOL. 409, AUGUST 15, 2003
243
Pearl & Dean (Phil.), Incorporated vs. Shoemart, Incorporated
original intellectual creations in the literary and artistic
domain protected from the moment of their creation.
Patentable inventions, on the other hand, 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.
On the Issue of Patent Infringement
This brings us to the next point: if, despite its manufacture
and commercial use of the light boxes without license from
petitioner, private respondents cannot be held legally liable
for infringement of P & Ds copyright over its technical
drawings of the said light boxes, should they be liable instead
for infringement of patent? We do not think so either.
For some reason or another, petitioner never secured a
patent for the light boxes. 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,12 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 (A)n
inventor has no common law right to a monopoly of his
invention. He has the right to make use of and vend his
invention, but if he voluntarily discloses it, such as by
offering it for sale, the world is free to copy and use it with
impunity. A patent, however, gives the inventor the right to
exclude all others. As a patentee, he has the exclusive right
of making, selling or using the invention.13 On the
assumption that petitioners advertising units were
patentable inventions, petitioner revealed them fully to the
public by submitting the engineering drawings thereof to the
National Library.
247
VOL. 409, AUGUST 15, 2003
247
Pearl & Dean (Phil.), Incorporated vs. Shoemart, Incorporated
xxx
Now, whilst no one has a right to print or publish his book, or
any material part thereof, as a book intended to convey
instruction in the art, any person may practice and use the
art itself which he has described and illustrated therein. The
use of the art is a totally different thing from a publication of
the book explaining it. The copyright of a book on
bookkeeping cannot secure the exclusive right to make, sell
and use account books prepared upon the plan set forth in
such book. Whether the art might or might not have been
patented, is a question, which is not before us. It was not
patented, and is open and free to the use of the public. And,
of course, in using the art, the ruled lines and headings of
accounts must necessarily be used as incident to it.
The plausibility of the claim put forward by the complainant
in this case arises from a confusion of ideas produced by the
peculiar nature of the art described in the books, which have
been made the subject of copyright. In describing the art, the
illustrations and diagrams employed happened to correspond
more closely than usual with the actual work performed by
the operator who uses the art. x x x The description of the art
in a book, though entitled to the benefit of copyright, lays no
foundation for an exclusive claim to the art itself. The object
of the one is explanation; the object of the other is use. The
former may be secured by copyright. The latter can only be
secured, if it can be secured at all, by letters patent. (italics
supplied)
On the Issue of Trademark Infringement
This issue concerns the use by respondents of the mark
Poster Ads which petitioners president said was a
contraction of poster advertising. P & D was able to secure
a trademark certificate for it, but one where the goods
specified were stationeries such as letterheads, envelopes,
calling cards and newsletters.22 Petitioner admitted it did
not commercially engage in or market these goods. On the
contrary, it dealt in electrically operated backlit advertising
units and the sale of advertising spaces thereon, which,