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.
G.R. No. 115758
March 19, 2002

FACTS:
On December 20, 1991, petitioner Elidad C. Kho filed a complaint for injunction and damages with a
prayer for the issuance of a writ of preliminary injunction, docketed as Civil Case No. Q-91-10926,
against the respondents Summerville General Merchandising and Company (Summerville, for
brevity) and Ang Tiam Chay.

The petitioner's complaint alleges that petitioner, doing business under the name and style of KEC
Cosmetics Laboratory, is the registered owner of the copyrights Chin Chun Su and Oval Facial
Cream Container/Case, as shown by Certificates of Copyright Registration No. 0-1358 and No. 0-
3678; that she also has patent rights on Chin Chun Su & Device and Chin Chun Su for medicated
cream after purchasing the same from Quintin Cheng, the registered owner thereof in the
Supplemental Register of the Philippine Patent Office on February 7, 1980 under Registration
Certificate No. 4529; 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, on the other hand, alleged as their defense that Summerville is the exclusive and
authorized importer, re-packer 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.

The application for preliminary injunction was granted by the trial court. The respondents moved for
reconsideration but their motion for reconsideration was denied by the trial court. On April 24, 1992,
the respondents filed a petition for certiorari with the Court of Appeals praying for the nullification of
the said writ of preliminary injunction issued by the trial court. After the respondents filed their reply
and after petitioner submitted her comment, the latter moved to dismiss the petition for violation of
Supreme Court Circular No. 28-91, a circular prohibiting forum shopping. According to the petitioner,
the respondents did not state the docket number of the civil case in the caption of their petition and,
more significantly, they did not include therein a certificate of non-forum shopping. The respondents
opposed the petition and submitted to the appellate court a certificate of non-forum shopping for their
petition.

The appellate court rendered ruling in favor of the private respondent. In granting the petition, the
appellate court ruled that the registration of the trademark or brandname "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.
The petitioner filed a motion for reconsideration. This she followed with several motions to declare
respondents in contempt of court for publishing advertisements notifying the public of the
promulgation of the assailed decision of the appellate court and stating that genuine Chin Chun
Su products could be obtained only from Summerville General Merchandising and Co.

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 her beauty cream.

On June 3, 1994, the Court of Appeals promulgated a Resolution denying the petitioner's motions for
reconsideration and for contempt of court. Hence, this petition.

ISSUE:
W/N the copyright and patent of the Petitioner 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.

HELD:
In the case at bar, the petitioner applied for the issuance of a preliminary injunctive order on the
ground that she is entitled to the use of the trademark on Chin Chun Su and its container based on
her copyright and patent over the same. We first find it appropriate to rule on 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.

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.

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.

We cannot likewise overlook the decision of the trial court in the case for final injunction and
damages. The dispositive portion of said decision held that the petitioner does not have trademark
rights on the name and container of the beauty cream product. The said decision on the merits of the
trial court rendered the issuance of the writ of a preliminary injunction moot and academic
notwithstanding the fact that the same has been appealed in the Court of Appeals.