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1.

General Principles

Kho v. CA
G.R. No. 115758 (19 March 2002)

Facts:

 Kho, doing business under the name and style KEC Cosmetics Laboratory, alleges
that she is the registered owner of copyright and patent registration of the Chin Chun
Su and Oval Facial Cream container and medicated cream. Hence, Kho filed a
complaint to enjoin respondent Summerville Company from advertising and selling
cream products under the same brand name, Chin Chun Su, as it misleads the public
and damages Kho’s business.
 The trial court granted Kho’s application for preliminary injunction. This was reversed
by the CA because 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, which is duly protected
by the Trademark Law.

Issue:

W/N Kho is entitled to the exclusive use of the trademark Chin Chun Su based on
her copyright and patent registration over the product - NO.

1. 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 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.
a. Kho 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. Kho’s copyright and patent registration of
the name and container would not guarantee her right to the exclusive use of
the same for the reason that they are not appropriate subjects of the said
intellectual rights.
b. 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.

WHEREFORE, the petition is DENIED. The Decision and Resolution of the Court of Appeals
are hereby AFFIRMED.
Distelleria Washington v. CA
G.R. No. 120961 (17 October 1996)

Facts:

 The initiatory suit for manual delivery was instituted by La Tondeña Distillers, Inc.
(LTDI), against Distilleria Washington. LTDI, under a claim of ownership, sought to
seize from Distilleria Washington 18,157 empty 350 c.c. white flint bottles bearing
the blown-in marks of “La Tondeña Inc.” and “Ginebra San Miguel.” These bottles
were being used by Washington for its own “Gin Seven” products without the consent
of LTDI.
 LTDI asserted that, being the owner and registrant of the bottles, it was entitled to
the protection so extended by R.A. No. 623, notwithstanding its sale of the Ginebra
San Miguel gin product contained in said bottles. Washington countered that R.A. No.
623, should not apply to gin, an alcoholic beverage which is unlike that of “soda
water, mineral or aerated water, ciders, milks, cream, or other lawful beverages”
mentioned in the law, and that, in any case, ownership of the bottles should be held
lawfully transferred to the buyers upon the sale of the gin and containers at a single
price.
 The trial court dismissed the complaint and ordered the return to Washington of the
18,157 empty bottles seized by virtue of a previous order of the trial court or in the
event of failure to return said empty bottles, LTDI is ordered to indemnify Washington
in the amount of P18,157.00 representing the value of the bottles.
 CA reversed and held that LTDI, being the owner, is authorized to retain in its
possession the 18,157 bottles registered in its name.

Issue:

W/N ownership of the empty bottles was transferred to Washington - NO.

1. R.A. No. 623 extends trademark protection in the use of containers duly registered
with the Philippine Patent Office. Under such law, the mere use of registered bottles
or containers without the written consent of the manufacturer is prohibited, the only
exceptions being when they are used as containers for ‘sisi,’ ‘bagoong,’ ‘patis’ and
similar native products.
a. Republic Act No. 623 which governs the registration of marked bottles and
containers merely requires that the bottles, in order to be eligible for
registration, must be stamped or marked with the names of the
manufacturers or the names of their principals or products, or other marks of
ownership. No drawings or labels are required but, instead, two photographs
of the container, duly signed by the applicant, showing clearly and legibly the
names and other marks of ownership sought to be registered and a bottle
showing the name or other mark or ownership, irremovably stamped or
marked, shall be submitted.
b. The claim that hard liquor is not included under the term "other lawful
beverages" as provided in Section 1 of Republic Act No. 623 is without merit.
The title of the law itself, which reads "An Act to Regulate the Use of Duly
Stamped or Marked Bottles, Boxes, Casks, Kegs, Barrels and Other Similar
Containers" clearly shows the legislative intent to give protection to all
marked bottles and containers of all lawful beverages regardless of the nature
of their contents. The words "other lawful beverages" is used in its general
sense, referring to all beverages not prohibited by law. Hard liquor, although
regulated, is not prohibited by law.
2. LTDI has the right to the bottles. The case, however, goes beyond just seeking to
have such use stopped but it so takes on even the ownership issue as well.
Washington is not here being charged with a violation of Section 2 of R.A. No. 623 or
of the Trademark Law. The instant suit is one for replevin (manual delivery) where
the claimant must be able to show convincingly that he is either the owner or clearly
entitled to the possession of the object sought to be recovered.
a. A trademark refers to a word, name, symbol, emblem, sign or device or any
combination thereof adopted and used by a merchant to identify, and
distinguish from others, his goods of commerce. It is basically an intellectual
creation that is susceptible to ownership and, consistently therewith, gives
rise to its own elements of jus posidendi, jus utendi, jus fruendi, jus
disponendi, and jus abutendi, along with the applicable jus lex, comprising
that ownership.
b. The incorporeal right, however, is distinct from the property in the material
object subject to it. Ownership in one does not necessarily vest ownership in
the other. Thus, the transfer or assignment of the intellectual property will not
necessarily constitute a conveyance of the thing it covers, nor would a
conveyance of the latter imply the transfer or assignment of the intellectual
right.
c. Ownership of the containers does pass on to the consumer albeit subject to
the statutory limitations on the use of the registered containers and to the
trademark rights of the registrant. The statement in Section 5 of R.A. 623 that
the “sale of beverage contained in the said containers shall not include the
sale of the containers unless specifically so provided” is not a rule of
proscription.
d. While it may be unwarranted then for LTDI to simply seize the empty
containers, this Court finds it to be legally absurd, however, to still allow
Washington to recover the possession thereof. R.A. 623 has additionally
expressed a prima facie presumption of illegal use by a possessor whenever
such use or possession is without the written permission of the registered
manufacturer, a provision that is neither arbitrary nor without appropriate
rationale. The Court sees no other logical purpose for Washington’s insistence
to keep the bottles, except for such continued use. The practical and feasible
alternative is to merely require the payment of just compensation to
Washington for the bottles seized from it by LTDI.

WHEREFORE, the decision of the appellate court is MODIFIED by ordering LTDI to pay
Washington just compensation for the seized bottles. Instead, however, of remanding the
case to the Court of Appeals to receive evidence on, and thereafter resolve, the assessment
thereof, this Court accepts and accordingly adopts the quantification of P18,157.00 made by
the trial court.

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