Elidad C. Kho vs.

Court of Appeals, Summerville General Merchandising Company

and Ang Tiam Chay (G.R. No. 115758, March 19, 2002, 379 SCRA 410)
FACTS:
Petitioners allegations are that they are doing business under the name and style
of KEC Cosmetics Laboratory, registered owner of Chin Chun Su and oval facial
cream container/case, and alleges that she also has patent rights on Chin Chun Su
and Device and Chin Chun Su Medicated Cream after purchasing the same from
Quintin Cheng, the registered owner thereof in the supplemental register of the
Philippine Patent Office and that Summerville advertised and sold petitioners 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 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 (1) Summerville
is the exclusive and authorized importer, re-packer and distributor of Chin Chun Su
products manufactured by Shun Yi factory of Taiwan, (2) that the said Taiwanese
manufacturing company authorized Summerville to register its trade name Chin
Chun Cu Medicated Cream with the Philippine Patent office and Other appropriate
governmental agencies; (3) that KEC Cosmetics Laboratory of the petitioner
obtained the copyrights through misrepresentation and falsification; and, (4) 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
terminated by the said Taiwanese manufacturing company.

ISSUE:
Whether or not Kho has the sole right using the package of Chin Chun Su products

RULING:
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 in as much 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 petitioners copyright and patent registration of the
name and container would not guarantee her the right to 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.

NOTE:
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 goods. In relation thereto, a trade
name means the name or designation identifying or distinguishing an enterprise.
Meanwhile, the scope of 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 industrial applicable.

Elidad Kho v Court of Appeals and Summerville General Merchandising G.R. No.
115758. March 19, 2002

Facts:

Petitioner is doing business under the name of KEC Cosmetics Laboratory and is the
registered owner of copyright Chin Chun Su and Oval Facial Cream Container with a
patent right on Chin Chun Su & Device and Chin Chun Su for medicated cream after
purchasing the same from Quintin Cheng, a registered owner in Supplemental
Register of the Philippine Patent Office. It alleges that respondent Summerville
advertised and sold the petitioners cream products under the brand name Chin
Chun Su using similar container that the petitioner used thereby misleading the
public and depriving the petitioner of business sales and income. It enjoins the
respondent from allegedly infringing its copyright and patent right over the same
product. In defense respondent claims to be the exclusive and authorized importer,
re-packer and distributor of the Chin Chun Su product manufactured by Shun Yi
Factory in Taiwan authorizing Summerville to register its trade name Chin Chun Su
Medicated Cream with the Philippine Patent Office. It also points out that the
assignee of the patent registration certification in the Philippines, Quintin Cheng,
has already been terminated by the said Taiwanese Manufacturing Company. Trial
court granted the injunction in favor of the petitioner. On appeal, respondent prays
for the nullification of the writ of preliminary injunction which was set aside by the
Court of Appeals on the account that the registration of the trademark Chin Chun Su
by KEC with the supplemental register of the Bureau of Patents, Trademarks and
Technology Transfer cannot be equated with registration in the principal register
duly protected by the Trademark law.

Issue:

Whether or not petitioners copyright and patent over the name Chin Chun Su and
its container entitle her to the use and ownership over the same to the exclusion of
others?

Ruling:

The Supreme Court points out that trademark, copyright and patents are different
intellectual property rights. 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. 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. To be
entitled for the exclusive use of the name and container of the cream product,
which are proper subjects of a trademark, the user has to sufficiently prove that she
registered or used it before anybody did. The petitioners patent and copyright
registration does not guarantee the right to exclusive use of the product because
they are not the proper subject of the said intellectual right (trademark). Hence the
preliminary injunction cannot be issued since the petitioner has not registered the
trademark of the product Chin Chin Su in their name.