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.