INTELLECTUAL PROPERTY CH1 CASES
application. CA believed that petitioner should be accorded some relief from the gross
GR 174379 August 31, 2016 J. Leonen
E.I. Dupont De Nemours and Co. (assignee of inventors David Carino, Jonas Duncia
and Pancras Wong) v. IPO Director Emma Francisco, Bureau of Patents Director
Efipanio Velasco, Therapharma, Inc.
FACTS
Petitioner is a Delaware- based corporation. In 1987, petitioner filed an application for
PH patent before Bureau of Patents.
Said application was for Angiotensin II Receptor Blocking Imidazole (losartan), an
invention related to the treatment of hypertension and congestive heart failure. The
product (under the brandnames Cozaar and Hyzaar) was produced and marketed by
Merck, Sharpe, and Dohme Corporation, licensee of petitioner.
Said application was handled by a Filipino lawyer, Atty. Nicanor Mapili.
In 2000, petitioner’s new counsel, Ortega, et al., sent the IPO a letter requesting that
an office action be issued on the petitioner’s patent application.
On January 30, 2002, IPO Patent Examiner sent an office action (Paper No. 2) stating
that there were no documents shown that the authority to prosecute the patent
application was transferred from Atty. Mapili to Ortega, et al. Hence, an official
revocation of Power of Attorney of Atty. Mapili and appointment of Ortega, et al. by
petitioner is required before further action can be undertaken on the patent application.
Also, it was noted by the Examiner that the application was deemed abandoned since
it took 13 years for petitioner to request for an office action.
On May 29, 2002, petitioner replied to Paper No. 2 by submitting a Power of Attorney
authorizing Ortega, et al. to handle its patent application.
Petitioner also filed petition for revival of its patent application.
In its petition, they argued that it was only in 1996 that they became aware of Atty.
Mapili’s death when its senior-level lawyer visited PH, and that it was only on January
30, 2002, that it received a notice of abandonment sent by IPO (Paper No. 2).
On April 18, 2002, Director of Patents denied the petition for revival for having been
filed out of time. It ruled that although it appears that Atty. Mapili was remiss in his
obligations as counsel for the petitioner, the abandoned application cannot be revived
because of the limitations provided in Rule 115 of Revised Rules of Practice.
Petitioner appealed to Director-General of IPO. On August 26, 2002, said appeal was
denied.
On November 21, 2003, petitioner appealed to CA.
On August 31, 2004, CA granted the appeal allowing the revival of the patent
negligence of its former counsel, Atty. Mapili.
IPO moved to reconsider. Meanwhile, Therapharma moved for leave to intervene
arguing that CA’s decision affected its “vested” rights to sell its own product.
Therapharma alleged that it was granted application by BFAD for a losartan product
“Lifezar,” a medication for hypertension, and that prior to its application, it made sure
that no patent application for similar products exists and that petitioner’s application
was considered abandoned by the Bureau of Patents.
In January 2006, CA granted the motion for leave to intervene of Therapharma.
Petitioner moved to reconsider. In August 2006, CA reversed its August 31, 2004
decision ruling that the public interest would be prejudiced by the revival of petitioner’s
patent application. CA held that petitioner and Atty. Mapili were inexcusably negligent.
CA also found that Therapharma had already invested P20M to develop its own
losartan product.
On October 19, 2006, petitioner filed the present case. Petitioner argues that it was not
negligent in the prosecution of its patent application since it was Atty. Mapili or his
heirs who failed to inform it of crucial developments with regard to its patent
application. It argues that as a client in a foreign country, it does not have immediate
supervision over its local counsel so it should not be bound by its counsel's negligence.
ISSUE/RULING
WON the patent application of petitioner should be revived – NO
Under Chapter VII, Section 1 ll(a) of the 1962 Revised Rules of Practice, a patent
application is deemed abandoned if the applicant fails to prosecute the application
within 4 months from the date of the mailing of the notice of the last action by the
Bureau of Patents, Trademarks, and Technology Transfer, and not from applicant's
actual notice.
Sec. 113 of 1962 Revised Rules of Practice, an abandoned patent application may
only be revived within 4 months from the date of abandonment, provided it is shown to
the satisfaction of the Director that the delay was unavoidable. An application not
revived within the specified period shall be deemed forfeited.
Sec. 113 has since been superseded by Section 133.4 of the Intellectual Property
Code, Rule 930 of the Rules and Regulations on Inventions, and Rule 929 of the
Revised Implementing Rules and Regulations for Patents, Utility Models and Industrial
Design. The period of four (4) months from the date of abandonment, however,
remains unchanged.
According to the records of the Bureau of Patents, Trademarks, and Technology
Transfer Chemical Examining Division, petitioner filed its patent application on July 10,
1987. It was assigned to an examiner on June 7, 1988. An Office Action was mailed to
Atty. Mapili, on July 19, 1988. Because petitioner failed to respond within the allowable
period, the application was deemed abandoned on September 20, 1988. Under Sec.
113, petitioner had until January 20, 1989 to file for a revival of the patent application.
Its Petition for Revival, however, was filed on May 29, 2002, 13 years after the date of
abandonment.
Even if the delay was unavoidable, or the failure to prosecute was due to fraud,
accident, mistake, or excusable negligence, or the petition was accompanied by a
complete proposed response, or all fees were paid, the same would still be denied
since these regulations only provide a 4-month period within which to file for the revival
of the application. The rules do not provide any exception that could extend this four
(4)-month period to 13 years. Petitioner’s patent application, therefore, should not be
revived since it was filed beyond the allowable period.
Even assuming that the 4-month period could be extended, petitioner was
inexcussably negligent in the prosecution of its patent application. Negligence is
inexcusable if its commission could have been avoided through ordinary diligence and
prudence. It is also settled that negligence of counsel binds the client as this "ensures
against the resulting uncertainty and tentativeness of proceedings if clients were
allowed to merely disown their counsels' conduct."
Petitioner's resident agent, Atty. Mapili, was undoubtedly negligent in failing to respond
to the Office Action sent by the Bureau of Patents, Trademarks, and Technology
Transfer on June 19, 1988. Because of his negligence, petitioner's patent application
was declared abandoned. He was again negligent when he failed to revive the
abandoned application within 4 months from the date of abandonment.
The 4-month period in Sec. 111 of the 1962 Revised Rules of Practice, however, is not
counted from actual notice of abandonment but from mailing of the notice. Since it
appears from the Intellectual Property Office's records that a notice of abandonment
was mailed to petitioner's resident agent on July 19, 1988, the time for taking action is
counted from this period. Petitioner's patent application cannot be revived simply
because the period for revival has already lapsed and no extension of this period is
provided for by the 1962 Revised Rules of Practice.
Moreover, Public interest will be prejudiced if, despite petitioner's inexcusable
negligence, its petition for revival is granted. Even without a pending patent application
and the absence of any exception to extend the period for revival, petitioner was
already threatening to pursue legal action against Therapharma if it continued to
develop and market its losartan product, Lifezar. Once petitioner is granted a patent for
its losartan products, Cozaar and Hyzaar, the loss of competition in the market for
losartan products may result in higher prices. For the protection of public interest,
petitioner’s patent application should be considered a forfeited patent application.
WHEREFORE, the Petition is DENIED. The Resolution dated January 31, 2006 and
the Amended Decision dated August 30, 2006 of the Court of Appeals are AFFIRMED.
SO ORDERED.

Petitioner tries to disown Atty. Mapili 's conduct by arguing that it was not informed of
the abandonment of its patent application or of Atty. Mapili's death. By its own
evidence, however, petitioner requested a status update from Atty. Mapili only on July
18, 1995, 8 years after the filing of its application. It alleged that it only found out about
Atty. Mapili 's death sometime in March 1996, as a result of its senior patent attorney's
visit to the Philippines. Although it was in petitioner's discretion as a foreign client to
put its complete trust and confidence on its local resident agent, there was a
correlative duty on its part to be diligent in keeping itself updated on the progress of its
patent applications. Its failure to be informed of the abandonment of its patent
application was caused by its own lack of prudence.

In Bernardo v. CA, "no prudent party will leave the fate of his case entirely to his
lawyer. It is the duty of a party-litigant to be in contact with his counsel from time to
time in order to be informed of the progress of his case." Even if Atty. Mapili's death
prevented petitioner from submitting a petition for revival on time, it was clearly
negligent when it subsequently failed to immediately apprise itself of the status of its
patent application.

Furthermore, contrary to the posturing of petitioner, Schuartz is applicable. Petitioner

attempts to distinguish itself from Schuartz by arguing that the petitioners in Schuartz
had actual notice of abandonment while petitioner here was only able to have actual
notice when it received Paper No. 2.
PEARL & DEAN PHIL INC. VS. SHOEMART- Trademark, Copyright and Patents
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.
prevent anyone from manufacturing or commercially using the same. Patent has a
three-fold purpose: a) to foster and reward invention; b) promotes disclosures of
invention and permit public to use the same upon expiration; c) stringent requirements
for patent protection to ensure in the public domain remain there for free use of the
public. Since petitioner was not able to go through such examination, it cannot exclude
others from manufacturing, or selling such lightboxes. No patent, no protection.
(3) The certificate of registration issued by the Director of Patents gives exclusive right
to use its own symbol only to the description specified in the certificate. It cannot
prevent others to use the same trademark with a different description.

FACTS: (4) "Poster Ads" is a general term that cannot be associated specifically to Pearl and
Dean, thus it cannot be considered to use such term to be unfair competition against
Pearl and Dean is a corporation in the manufacture of advertising display units also
the petitioner.
known as light boxes, which were manufactured by Metro Industrial Services. A
copyright Registration was obtained in 1981. These were marketed in the name of
"Poster Ads". They also applied for a registration of trademark with the Bureau of
Patents in 1983, but was only approved in 19988. In 1985, petitioner had n agreement
with respondent Shoemart Inc (SMI) to install these light boxes in their Makati and
Cubao branch, Only the Makati branch was able to sigh the agreement. In 1986, the
contract was rescinded unilaterally by SMI, and instead contracted with Metro
Industrial Services. They installed these lightboxes in different SM city branches,
including Cubao and Makati, with association with North Edsa Marketing Inc (NEMI),
SMI's sister company. Petitioner requested SMI and NEMI to put down their
installations of the light boxes, and payment of compensatory damages worth P20M.
Claiming that respondents failed to comply, they filed a case for infringement of
trademark and copyright, unfair competition and damages. RTC ruled in favor of
petitioner, but CA reversed.

ISSUES:

(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 is a statutory right, subject to the terms and conditions specified in the
statute. Therefore, it can only cover 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, and cannot legally
KHO vs. CA G.R. No. 115758 March 19, 2002 Intellectual Property Law, Trademark, copyright and patents are different intellectual property rights that cannot
Trademark, Copyright, Patent, Distinctions be interchanged with one another.

JUNE 2, 2019

FACTS:
Petitioner Elidad C. Kho filed a complaint for injunction and damages with a prayer for
the issuance of a writ of preliminary injunction against Summerville alleging that
petitioner is the registered owner of the copyrights Chin Chun Su and Oval Facial
Cream Container/Case; that she also has patent rights on Chin Chun Su after
purchasing the same from Quintin Cheng, the registered owner thereof; that
respondent Summerville advertised and sold petitioner’s cream products under the
brand name Chin Chun Su, in similar containers that petitioner uses, thereby
misleading the public, and resulting in the decline in the petitioner’s business sales and
income; and, that the respondents should be enjoined from allegedly infringing on the
copyrights and patents of the petitioner.
The respondents alleged that Summerville is the exclusive and authorized importer, re-
packer and distributor of Chin Chun Su products manufactured by Shun Yi Factory of
Taiwan.
The RTC ruled in favor of KEC.
After the denial of their motion for reconsideration, respondents filed a petition for
certiorari with the CA, praying for the nullification of the said writ of preliminary
injunction issued by the trial court. The CA rendered a Decision in favor of the
respondents.
In the meantime, the trial court went on to hear petitioner’s complaint for final injunction
and damages. The trial court rendered a Decision barring the petitioner from using the
trademark Chin Chun Su and upholding the right of the respondents to use the same,
but recognizing the copyright of the petitioner over the oval shaped container of the
beauty cream.
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 means the name or designation
identifying or distinguishing an enterprise.
Meanwhile, the scope of a copyright is confined to literary and artistic works which are
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.
Petitioner has no right to support her claim for the exclusive use of the subject trade
name and its container. The name and container of a beauty cream product are proper
subjects of a trademark inasmuch as the same falls squarely within its definition. In
order to be entitled to exclusively use the same in the sale of the beauty cream
product, the user must sufficiently prove that she registered or used it before anybody
else did. The petitioner’s copyright and patent registration of the name and container
would not guarantee her the right to the exclusive use of the same for the reason that
they are not appropriate subjects of the said intellectual rights.
Consequently, a preliminary injunction order cannot be issued for the reason that the
petitioner has not proven that she has a clear right over the said name and container to
the exclusion of others, not having proven that she has registered a trademark thereto
or used the same before anyone did

The petitioner appealed to the CA.

The CA denied the petitioner’s motions for reconsideration. Hence, this petition.

ISSUE:

Whether the copyright and patent over the name and container of a beauty cream
product would entitle the registrant to the use and ownership over the same to the
exclusion of others.

RULING:

We rule in favor of the respondents.

FERNANDO U. JUAN v. ROBERTO U. JUAN
[ GR No. 221732, Aug 23, 2017]
Facts:
Respondent Roberto U. Juan claimed that he began using the name and mark
"Lavandera Ko" in his laundry business on July 4, 1994. He then opened his laundry
store at No. 119 Alfaro St., Salcedo St., Makati City in 1995. Thereafter, on March 17,
1997, the National Library issued to him a certificate of copyright over said name and
mark. Over the years, the laundry business expanded with numerous franchise outlets
in Metro Manila and other provinces. Respondent Roberto then formed a corporation
to handle the said business, hence, Laundromatic Corporation (Laundromatic) was
incorporated in 1997, while "Lavandera Ko" was registered as a business name on
November 13, 1998 with the Department of Trade and Industry (DTI). Thereafter,
respondent Roberto discovered that his brother, petitioner Fernando was able to
register the name and mark "Lavandera Ko" with the Intellectual Property Office (IPO)
on October 18, 2001, the registration of which was filed on June 5, 1995. Respondent
Roberto also alleged that a certain Juliano Nacino (Juliano) had been writing the
franchisees of the former threatening them with criminal and civil cases if they did not
stop using the mark and name "Lavandera Ko." It was found out by respondent
Roberto that petitioner Fernando had been selling his own franchises.
Thus, respondent Roberto filed a petition for injunction, unfair competition,
infringement of copyright, cancellation of trademark and name with/and prayer for TRO
and Preliminary Injunction with the Regional Trial Court (RTC) and the case was
raffled off at Branch 149, Makati City. The RTC issued a writ of preliminary injunction
against petitioner Fernando in Order dated June 10, 2004. On July 21, 2008, due to
the death of respondent Roberto, the latter was substituted by his son, Christian Juan
(Christian). Pre-trial conference was concluded on July 13, 2010 and after the
presentation of evidence of both parties, the RTC rendered a Resolution dated
September 23, 2013, dismissing the petition and ruling that neither of the parties had a
right to the exclusive use or appropriation of the mark "Lavandera Ko" because the
same was the original mark and work of a certain Santiago S. Suarez (Santiago).
According to the RTC, the mark in question was created by Suarez in 1942 in his
musical composition called, "Lavandera Ko" and both parties of the present case failed
to prove that they were the originators of the same mark.
Petitioner appealed to CA but CA dismissed due to technical grounds.
Petitioner files Certiorari under Rule 45 with the SC.
Issue:
WHETHER OR NOT A MARK IS THE SAME AS A COPYRIGHT.
Held:
No. The Ruling of RTC is erroneous.
The law on trademarks, service marks and trade names are found under Part III of
Republic Act (R.A.) No. 8293, or the Intellectual Code of the Philippines, while Part IV
of the same law governs copyrights.
"Lavandera Ko," the mark in question in this case is being used as a trade name or
specifically, a service name since the business in which it pertains involves the
rendering of laundry services. Under Section 121.1 of R.A. No. 8293, "mark" is defined
as 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. As
such, the basic contention of the parties is, who has the better right to use "Lavandera
Ko" as a service name because Section 165.2[13] of the said law, guarantees the
protection of trade names and business names even prior to or without registration,
against any unlawful act committed by third parties. A cause of action arises when the
subsequent use of any third party of such trade name or business name would likely
mislead the public as such act is considered unlawful. Hence, the RTC erred in
denying the parties the proper determination as to who has the ultimate right to use the
said trade name by ruling that neither of them has the right or a cause of action since
"Lavandera Ko" is protected by a copyright.
By their very definitions, copyright and trade or service name are different. Copyright is
the right of literary property as recognized and sanctioned by positive law.[14] An
intangible, incorporeal right granted by statute to the author or originator of certain
literary or artistic productions, whereby he is invested, for a limited period, with the sole
and exclusive privilege of multiplying copies of the same and publishing and selling
them.[15] Trade name, on the other hand, is any designation which (a) is adopted and
used by person to denominate goods which he markets, or services which he renders,
or business which he conducts, or has come to be so used by other, and (b) through
its association with such goods, services or business, has acquired a special
significance as the name thereof, and (c) the use of which for the purpose stated in (a)
is prohibited neither by legislative enactment nor by otherwise defined public
policy.[16]
Section 172.1 of R.A. 8293 enumerates the following original intellectual creations in
the literary and artistic domain that are protected from the moment of their creation,
thus:
172.1 Literary and artistic works, hereinafter referred to as "works", are original
intellectual creations in the literary and artistic domain protected from the moment of
their creation and shall include in particular:
(a) Books, pamphlets, articles and other writings;
(b) Periodicals and newspapers;
(c) Lectures, sermons, addresses, dissertations prepared for oral delivery, whether or
not reduced in writing or other material form;
(d) Letters;
(e) Dramatic or dramatico-musical compositions; choreographic works or
entertainment in dumb shows;

(f) Musical compositions, with or without words;

(g) Works of drawing, painting, architecture, sculpture, engraving, lithography or other

works of art; models or designs for works of art;

(h) Original ornamental designs or models for articles of manufacture, whether or not
registrable as an industrial design, and other works of applied art;

(i) Illustrations, maps, plans, sketches, charts and three-dimensional works relative to
geography, topography, architecture or science;

(j) Drawings or plastic works of a scientific or technical character;

(k) Photographic works including works produced by a process analogous to

photography; lantern slides;

(l) Audiovisual works and cinematographic works and works produced by a process
analogous to cinematography or any process for making audio-visual recordings;

(m) Pictorial illustrations and advertisements;

(n) Computer programs; and

(o) Other literary, scholarly, scientific and artistic works.

As such, "Lavandera Ko," being a musical composition with words is protected under
the copyright law (Part IV, R.A. No. 8293) and not under the trademarks, service marks
and trade names law (Part III, R.A. No. 8293).

Considering, therefore, the above premise, this Court deems it proper to remand the
case to the RTC for its proper disposition since this Court cannot, based on the
records and some of the issues raised by both parties such as the cancellation of
petitioner's certificate of registration issued by the Intellectual Property Office, make a
factual determination as to who has the better right to use the trade/business/service
name, "Lavandera Ko."