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G.R. NO. 156041 February 21, 2007

PEST MANAGEMENT ASSOCIATION OF THE PHILIPPINES (PMAP), represented by itsPresident, MANUEL J. CHAVEZ, Petitioner,vs.FERTILIZER AND PESTICIDE AUTHORITY (FPA), SECRETARY OF THE DEPARTMENT OF

AGRICULTURE, FPA OFFICER- IN-CHARGE CESAR M. DRILON, AND FPA DEPUTYDIRECTOR DARIO C. SALUBARSE,Respondents.

D E C I S I O N

AUSTRIA-MARTINEZ, J.:

This resolves the Petition for Review on Certiorariseeking to set aside the Decision1of the RegionalTrial Court of Quezon City, Branch 90 (RTC) dated November 5, 2002.

The case commenced upon petitioners filing of a Petition For Declaratory Relief With Prayer ForIssuance Of A Writ Of Preliminary Injunction And/Or Temporary Restraining Order with the RTC on

January 4, 2002. Petitioner, a non-stock corporation duly organized and existing under the laws ofthe Philippines, is an association of pesticide handlers duly licensed by respondent Fertilizer andPesticide Authority (FPA). It questioned the validity of Section 3.12 of the 1987 Pesticide RegulatoryPolicies and Implementing Guidelines, which provides thus:

3.12 Protection of Proprietary Data

Data submitted to support the first full or conditional registration of a pesticide activeingredient in the Philippines will be granted proprietary protection for a period of seven yearsfrom the date of such registration.During this period subsequent registrants may rely onthese data only with third party authorization or otherwise must submit their own data.Afterthis period, all data may be freely cited in support of registration by any applicant, provided

convincing proof is submitted that the product being registered is identical or substantially similar toany current registered pesticide, or differs only in ways that would not significantly increase the riskof unreasonable adverse effects.

Pesticides granted provisional registration under P.D. 1144 will be considered first registered in1977, the date of the Decree.

Pesticide products in which data is still under protection shall be referred to as proprietary pesticides,and all others as commodity pesticides. (Emphasis supplied)

Petitioner argued that the specific provision on the protection of the proprietary data in FPAsPesticide Regulatory Policies and Implementing Guidelines is unlawful for going counter to theobjectives of Presidential Decree No. 1144 (P.D. No. 1144); for exceeding the limits of delegatedauthority; and for encroaching on the exclusive jurisdiction of the Intellectual Property Office.

On November 5, 2002, the RTC dismissed the petition for declaratory relief for lack of merit. TheRTC held that "the FPA did not exceed the limits of its delegated authority in issuing the aforecitedSection 3.12 of the Guidelines granting protection to proprietary data x x x because the issuance ofthe aforecited Section was a valid exercise of its power to regulate, control and develop the pesticideindustry under P.D. 1144"2and the assailed provision does "not encroach on one of the functions ofthe Intellectual Properly Office (IPO)."3
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Dissatisfied with the RTC Decision, petitioner resorted to filing this petition for review on certiorariwhere the following issues are raised:

I

WHETHER OR NOT RESPONDENT FPA HAS ACTED BEYOND THE SCOPE OF ITS

DELEGATED POWER WHEN IT GRANTED A SEVEN-YEAR PROPRIETARY PROTECTION TODATA SUBMITTED TO SUPPORT THE FIRST FULL OR CONDITIONAL REGISTRATION OF APESTICIDE INGREDIENT IN THE PHILIPPINES;

II

WHETHER OR NOT RESPONDENT FPA IS ENCROACHING ON THE EXCLUSIVEJURISDICTION OF THE INTELLECTUAL PROPERTY OFFICE (IPO) WHEN IT INCLUDED IN ITSPESTICIDE REGULATORY POLICIES AND IMPLEMENTING GUIDELINES THE SUBJECTSEVEN-YEAR PROPRIETARY DATA PROTECTION;

III

WHETHER OR NOT SAID PROPRIETARY DATA PROTECTION IS AN UNLAWFUL RESTRAINTOF FREE TRADE;

IV

WHETHER OR NOT SAID PROPRIETARY DATA PROTECTION RUNS COUNTER TO THEOBJECTIVES OF P.D. NO. 1144;

V

WHETHER OR NOT THE REGIONAL TRIAL COURT OF QUEZON CITY, BRANCH 90,

COMMITTED A REVERSIBLE ERROR WHEN IT UPHELD THE VALIDITY OF SECTION 3.12 OFTHE PESTICIDE REGULATORY POLICIES AND IMPLEMENTING GUIDELINES ISSUED BYRESPONDENT FPA.

Respondents, on the other hand, maintain that the provision on the protection of proprietary data inthe FPA's Pesticide Regulatory Policies and Implementing Guidelines is valid and legal as it doesnot violate the objectives of P.D. No. 1144; the proprietary data are a substantial asset which mustbe protected; the protection for a limited number of years does not constitute unlawful restraint offree trade; and such provision does not encroach upon the jurisdiction of the Intellectual PropertyOffice.

Respondents expound that since under P.D. No. 1144, the FPA is mandated to regulate, control and

develop the pesticide industry, it was necessary to provide for such protection of proprietary data,otherwise, pesticide handlers will proliferate to the the detriment of the industry and the public sincethe inherent toxicity of pesticides are hazardous and are potential environmental contaminants.

They also pointed out that the protection under the assailed Pesticide Regulatory Policies andImplementing Guidelines is warranted, considering that the development of proprietary data involvesan investment of many years and large sums of money, thus, the data generated by an applicant insupport of his application for registration are owned and proprietary to him. Moreover, since the


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protection accorded to the proprietary data is limited in time, then such protection is reasonable anddoes not constitute unlawful restraint of trade.

Lastly, respondents emphasize that the provision on protection of proprietary data does not usurpthe functions of the Intellectual Property Office (IPO) since a patent and data protection are twodifferent matters. A patent prohibits all unlicensed making, using and selling of a particular product,

while data protection accorded by the FPA merely prevents copying or unauthorized use of anapplicant's data, but any other party may independently generate and use his own data. It is furtherargued that under Republic Act No. 8293 (R.A. No. 8293), the grant of power to the IPO toadminister and implement State policies on intellectual property is not exclusionary as the IPO iseven allowed to coordinate with other government agencies to formulate and implement plans andpolicies to strengthen the protection of intellectual property rights.

The petition is devoid of merit.

The law being implemented by the assailed Pesticide Regulatory Policies and ImplementingGuidelines is P.D. No. 1144, entitled Creating the Fertilizer and Pesticide Authority and Abolishingthe Fertilizer Industry Authority. As stated in the Preamble of said decree, "there is an urgent need to

create a technically-oriented government authority equipped with the required expertise to regulate,control and develop both the fertilizer and the pesticide industries." (Underscoring supplied) Thedecree further provided as follows:

Section 6. Powers and Functions. The FPA shall have jurisdiction, over all existing handlers ofpesticides, fertilizers and other agricultural chemical inputs. The FPA shall have the following powersand functions:

I. Common to Fertilizers, Pesticides and other Agricultural Chemicals

x x x

4. To promulgate rules and regulations for the registration and licensing of handlers of theseproducts, collect fees pertaining thereto, as well as the renewal, suspension, revocation, orcancellation of such registration or licenses and such other rules and regulations as may benecessary to implement this Decree;

x x x

Section 7. Power to Issue Rules and Regulations to Implement Decree.The FPA is herebyauthorized to issue or promulgate rules and regulations to implement, and carry out the purposesand provisions of this Decree.

Did the FPA go beyond its delegated power and undermine the objectives of P.D. No. 1144 byissuing regulations that provide for protection of proprietary data? The answer is in the negative.

Under P.D. No. 1144, the FPA is given the broad power to issue rules and regulations to implementand carry out the purposes and provisions of said decree, i.e., to regulate, control and develop thepesticide industry. In furtherance of such ends, the FPA sees the protection of proprietary data asone way of fulfilling its mandate. In Republic v. Sandiganbayan,4the Court emphasized that:

x x x [t]he interpretation of an administrative government agency, which is tasked toimplement a statute is generally accorded great respect and ordinarily controls the
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construction of the courts.The reason behind this rule was explained in Nestle Philippines, Inc.vs. Court of Appealsin this wise:

The rationale for this rule relates not only to the emergence of the multifarious needs of a modern ormodernizing society and the establishment of diverse administrative agencies for addressing andsatisfying those needs; it also relates to the accumulation of experience and growth of specialized

capabilities by the administrative agency charged with implementing a particular statute. In AsturiasSugar Central, Inc. vs. Commissioner of Customs, the Court stressed that executive officials arepresumed to have familiarized themselves with all the considerations pertinent to themeaning and purpose of the law, and to have formed an independent, conscientious andcompetent expert opinion thereon. The courts give much weight to the government agencyofficials charged with the implementation of the law, their competence, expertness,experience and informed judgment, and the fact that they frequently are the drafters of thelaw they interpret."

x x x.5[Emphasis supplied]

Verily, in this case, the Court acknowledges the experience and expertise of FPA officials who are

best qualified to formulate ways and means of ensuring the quality and quantity of pesticides andhandlers thereof that should enter the Philippine market, such as giving limited protection toproprietary data submitted by applicants for registration. The Court ascribes great value and will notdisturb the FPA's determination that one way of attaining the purposes of its charter is by grantingsuch protection, specially where there is nothing on record which shows that said administrativeagency went beyond its delegated powers.

Moreover, petitioner has not succeeded in convincing the Court that the provision in question haslegal infirmities.1awphi1.net

There is no encroachment upon the powers of the IPO granted under R.A. No. 8293, otherwiseknown as the Intellectual Property Code of the Philippines. Section 5 thereof enumerates thefunctions of the IPO. Nowhere in said provision does it state nor can it be inferred that the law

intended the IPO to have the exclusive authority to protect or promote intellectual property rights inthe Philippines. On the contrary, paragraph (g) of said Section even provides that the IPO shall"[c]oordinate with other government agencies and the private sector efforts to formulate andimplement plans and policies to strengthen the protection of intellectual property rights in thecountry." Clearly, R.A. No. 8293 recognizes that efforts to fully protect intellectual property rightscannot be undertaken by the IPO alone. Other agencies dealing with intellectual property rights are,therefore, not precluded from issuing policies, guidelines and regulations to give protection to suchrights.

There is also no evidence whatsoever to support petitioner's allegation that the grant of protection toproprietary data would result in restraining free trade. Petitioner did not adduce any reliable data toprove its bare allegation that the protection of proprietary data would unduly restrict trade on

pesticides. Furthermore, as held inAssociation of Philippine Coconut Desiccators v. PhilippineCoconut Authority,6despite the fact that "our present Constitution enshrines free enterprise as apolicy, it nonetheless reserves to the government the power to intervene whenever necessary topromote the general welfare." There can be no question that the unregulated use or proliferation ofpesticides would be hazardous to our environment. Thus, in the aforecited case, the Court declaredthat "free enterprise does not call for removal of protective regulations."7More recently, in CoconutOil Refiners Association, Inc. v. Torres,8the Court held that "[t]he mere fact that incentives andprivileges are granted to certain enterprises to the exclusion of others does not render the issuance
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unconstitutional for espousing unfair competition." It must be clearly explained and proven bycompetent evidence just exactly how such protective regulation would result in the restraint of trade.

In sum, the assailed provision in the 1987 Pesticide Regulatory Policies and ImplementingGuidelines granting protection to proprietary data is well within the authority of the FPA to issue soas to carry out its purpose of controlling, regulating and developing the pesticide industry.

WHEREFORE, the petition is DENIED. The Decision of the Regional Trial Court of Quezon City,Branch 90, in SP. Civil Case No. Q-01-42790 is AFFIRMED.

SO ORDERED.

G.R. No. 115758 March 19, 2002

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.

DE LEON, JR., J .:

Before us is a petition for review on certiorariof the Decision1dated May 24, 1993 of the Court ofAppeals setting aside and declaring as null and void the Orders2dated February 10, 1992 and March19, 1992 of the Regional Trial Court, Branch 90, of Quezon City granting the issuance of a writ ofpreliminary injunction.

The facts of the case are as follows:

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, forbrevity) and Ang Tiam Chay.

The petitioner's complaint alleges that petitioner, doing business under the name and style of KECCosmetics Laboratory, is the registered owner of the copyrights Chin Chun Su and Oval FacialCream 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 & Deviceand Chin Chun Sufor medicatedcream after purchasing the same from Quintin Cheng, the registered owner thereof in theSupplemental Register of the Philippine Patent Office on February 7, 1980 under RegistrationCertificate No. 4529; that respondent Summerville advertised and sold petitioner's cream productsunder the brand name Chin Chun Su, in similar containers that petitioner uses, thereby misleadingthe public, and resulting in the decline in the petitioner's business sales and income; and, that therespondents should be enjoined from allegedly infringing on the copyrights and patents of thepetitioner.

The respondents, on the other hand, alleged as their defense that Summerville is the exclusive andauthorized importer, re-packer and distributor of Chin Chun Suproducts manufactured by Shun YiFactory of Taiwan; that the said Taiwanese manufacturing company authorized Summerville toregister its trade name Chin Chun Su Medicated Creamwith the Philippine Patent Office and otherappropriate governmental agencies; that KEC Cosmetics Laboratory of the petitioner obtained the


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copyrights through misrepresentation and falsification; and, that the authority of Quintin Cheng,assignee of the patent registration certificate, to distribute and market Chin Chun Suproducts in thePhilippines had already been terminated by the said Taiwanese Manufacturing Company.

After due hearing on the application for preliminary injunction, the trial court granted the same in anOrder dated February 10, 1992, the dispositive portion of which reads:

ACCORDINGLY, the application of plaintiff Elidad C. Kho, doing business under the style ofKEC Cosmetic Laboratory, for preliminary injunction, is hereby granted. Consequentially,plaintiff is required to file with the Court a bond executed to defendants in the amount of fivehundred thousand pesos (P500,000.00) to the effect that plaintiff will pay to defendants alldamages which defendants may sustain by reason of the injunction if the Court should finallydecide that plaintiff is not entitled thereto.

SO ORDERED.3

The respondents moved for reconsideration but their motion for reconsideration was denied by thetrial court in an Order dated March 19, 1992.4

On April 24, 1992, the respondents filed a petition for certiorariwith the Court of Appeals, docketedas CA-G.R. SP No. 27803, praying for the nullification of the said writ of preliminary injunction issuedby the trial court. After the respondents filed their reply and almost a month after petitioner submittedher comment, or on August 14 1992, the latter moved to dismiss the petition for violation of SupremeCourt Circular No. 28-91, a circular prohibiting forum shopping. According to the petitioner, therespondents 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 respondentsopposed the petition and submitted to the appellate court a certificate of non-forum shopping for theirpetition.

On May 24, 1993, the appellate court rendered a Decision in CA-G.R. SP No. 27803 ruling in favorof the respondents, the dispositive portion of which reads:

WHEREFORE, the petition is hereby given due course and the orders of respondent courtdated February 10, 1992 and March 19, 1992 granting the writ of preliminary injunction anddenying petitioners' motion for reconsideration are hereby set aside and declared null andvoid. Respondent court is directed to forthwith proceed with the trial of Civil Case No. Q-91-10926 and resolve the issue raised by the parties on the merits.

SO ORDERED.5

In granting the petition, the appellate court ruled that:

The registration of the trademark or brandname "Chin Chun Su" by KEC with thesupplemental register of the Bureau of Patents, Trademarks and Technology Transfercannot be equated with registration in the principal register, which is duly protected by theTrademark Law.1wphi1.nt

xxx xxx xxx

As ratiocinated in La Chemise Lacoste, S.S. vs. Fernandez, 129 SCRA 373, 393:


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"Registration in the Supplemental Register, therefore, serves as notice that theregistrant is using or has appropriated the trademark. By the very fact that thetrademark cannot as yet be on guard and there are certain defects, some obstacleswhich the use must still overcome before he can claim legal ownership of the mark orask the courts to vindicate his claims of an exclusive right to the use of the same. Itwould be deceptive for a party with nothing more than a registration in the

Supplemental Register to posture before courts of justice as if the registration is inthe Principal Register.

The reliance of the private respondent on the last sentence of the Patent office actionon application Serial No. 30954 that 'registrants is presumed to be the owner of themark until after the registration is declared cancelled' is, therefore, misplaced andgrounded on shaky foundation. The supposed presumption not only runs counter tothe precept embodied in Rule 124 of the Revised Rules of Practice before thePhilippine Patent Office in Trademark Cases but considering all the facts ventilatedbefore us in the four interrelated petitions involving the petitioner and the respondent,it is devoid of factual basis. As even in cases where presumption and precept mayfactually be reconciled, we have held that the presumption is rebuttable, notconclusive, (People v. Lim Hoa, G.R. No. L-10612, May 30, 1958, Unreported). Onemay be declared an unfair competitor even if his competing trademark is registered(Parke, Davis & Co. v. Kiu Foo & Co., et al., 60 Phil 928; La Yebana Co. v. chuaSeco & Co., 14 Phil 534)."6

The petitioner filed a motion for reconsideration. This she followed with several motions to declarerespondents in contempt of court for publishing advertisements notifying the public of thepromulgation of the assailed decision of the appellate court and stating that genuine Chin Chun Suproducts 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 anddamages. On October 22, 1993, the trial court rendered a Decision7barring the petitioner from usingthe 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. Thetrial court did not award damages and costs to any of the parties but to their respective counselswere awarded Seventy-Five Thousand Pesos (P75,000.00) each as attorney's fees. The petitionerduly appealed the said decision to the Court of Appeals.

On June 3, 1994, the Court of Appeals promulgated a Resolution 8denying the petitioner's motionsfor reconsideration and for contempt of court in CA-G.R. SP No. 27803.

Hence, this petition anchored on the following assignment of errors:

I

RESPONDENT HONORABLE COURT OF APPEALS COMMITTED GRAVE ABUSE OFDISCRETION AMOUNTING TO LACK OF JURISDICTION IN FAILING TO RULE ONPETITIONER'S MOTION TO DISMISS.

II

RESPONDENT HONORABLE COURT OF APPEALS COMMITTED GRAVE ABUSE OFDISCRETION AMOUNTING TO LACK OF JURISDICTION IN REFUSING TO PROMPTLYRESOLVE PETITIONER'S MOTION FOR RECONSIDERATION.


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III

IN DELAYING THE RESOLUTION OF PETITIONER'S MOTION FOR RECONSIDERATION,THE HONORABLE COURT OF APPEALS DENIED PETITIONER'S RIGHT TO SEEKTIMELY APPELLATE RELIEF AND VIOLATED PETITIONER'S RIGHT TO DUE PROCESS.

IV

RESPONDENT HONORABLE COURT OF APPEALS COMMITTED GRAVE ABUSE OFDISCRETION AMOUNTING TO LACK OF JURISDICTION IN FAILING TO CITE THEPRIVATE RESPONDENTS IN CONTEMPT.9

The petitioner faults the appellate court for not dismissing the petition on the ground of violation ofSupreme Court Circular No. 28-91. Also, the petitioner contends that the appellate court violatedSection 6, Rule 9 of the Revised Internal Rules of the Court of Appeals when it failed to rule on hermotion for reconsideration within ninety (90) days from the time it is submitted for resolution. Theappellate court ruled only after the lapse of three hundred fifty-four (354) days, or on June 3, 1994.In delaying the resolution thereof, the appellate court denied the petitioner's right to seek the timely

appellate relief. Finally, petitioner describes as arbitrary the denial of her motions for contempt ofcourt against the respondents.

We rule in favor of the respondents.

Pursuant to Section 1, Rule 58 of the Revised Rules of Civil Procedure, one of the grounds for theissuance of a writ of preliminary injunction is a proof that the applicant is entitled to the reliefdemanded, and the whole or part of such relief consists in restraining the commission orcontinuance of the act or acts complained of, either for a limited period or perpetually. Thus, apreliminary injunction order may be granted only when the application for the issuance of the sameshows facts entitling the applicant to the relief demanded.10This is the reason why we have ruledthat it must be shown that the invasion of the right sought to be protected is material and substantial,that the right of complainant is clear and unmistakable, and, that there is an urgent and paramountnecessity for the writ to prevent serious damage.11

In the case at bar, the petitioner applied for the issuance of a preliminary injunctive order on theground that she is entitled to the use of the trademark on Chin Chun Suand its container based onher copyright and patent over the same. We first find it appropriate to rule on whether the copyrightand patent over the name and container of a beauty cream product would entitle the registrant to theuse and ownership over the same to the exclusion of others.

Trademark, copyright and patents are different intellectual property rights that cannot beinterchanged 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 markedcontainer of goods.12In relation thereto, a trade name means the name or designation identifying or

distinguishing an enterprise.13Meanwhile, the scope of a copyright is confined to literary and artisticworks which are original intellectual creations in the literary and artistic domain protected from themoment of their creation.14Patentable inventions, on the other hand, refer to any technical solutionof a problem in any field of human activity which is new, involves an inventive step and is industriallyapplicable.15

Petitioner has no right to support her claim for the exclusive use of the subject trade name and itscontainer. The name and container of a beauty cream product are proper subjects of a trademarkinasmuch as the same falls squarely within its definition. In order to be entitled to exclusively use the


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same in the sale of the beauty cream product, the user must sufficiently prove that she registered orused it before anybody else did. The petitioner's copyright and patent registration of the name andcontainer would not guarantee her the right to the exclusive use of the same for the reason that theyare not appropriate subjects of the said intellectual rights. Consequently, a preliminary injunctionorder cannot be issued for the reason that the petitioner has not proven that she has a clear rightover 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 anddamages. The dispositive portion of said decision held that the petitioner does not have trademarkrights on the name and container of the beauty cream product. The said decision on the merits of thetrial court rendered the issuance of the writ of a preliminary injunction moot and academicnotwithstanding the fact that the same has been appealed in the Court of Appeals. This is supportedby our ruling in La Vista Asso ciat ion, Inc. v. Court of Ap peals16, to wit:

Considering that preliminary injunction is a provisional remedy which may be granted at anytime after the commencement of the action and before judgment when it is established thatthe plaintiff is entitled to the relief demanded and only when his complaint shows factsentitling such reliefs xxx and it appearing that the trial court had already granted the issuanceof a final injunction in favor of petitioner in its decision rendered after trial on the merits xxxthe Court resolved to Dismiss the instant petition having been rendered moot and academic.

An injunction issued by the trial court after it has already made a clear pronouncement as tothe plaintiff's right thereto, that is, after the same issue has been decided on the merits, thetrial court having appreciated the evidence presented, is proper, notwithstanding the fact thatthe decision rendered is not yet finalxxx. Being an ancillary remedy, the proceedings forpreliminary injunction cannot stand separately or proceed independently of the decisionrendered on the merit of the main case for injunction. The merit of the main case havingbeen already determined in favor of the applicant, the preliminary determination of its non-existence ceases to have any force and effect. (italics supplied)

La Vistacategorically pronounced that the issuance of a final injunction renders any question on the

preliminary injunctive order moot and academic despite the fact that the decision granting a finalinjunction is pending appeal. Conversely, a decision denying the applicant-plaintiff's right to a finalinjunction, although appealed, renders moot and academic any objection to the prior dissolution of awrit of preliminary injunction.

The petitioner argues that the appellate court erred in not dismissing the petition for certiorari fornon-compliance with the rule on forum shopping. We disagree. First, the petitioner improperly raisedthe technical objection of non-compliance with Supreme Court Circular No. 28-91 by filing a motionto dismiss the petition for certiorari filed in the appellate court. This is prohibited by Section 6, Rule66 of the Revised Rules of Civil Procedure which provides that "(I)n petitions for certioraribefore theSupreme Court and the Court of Appeals, the provisions of Section 2, Rule 56, shall be observed.Before giving due course thereto, the court may require the respondents to file their comment to, andnot a motion to dismiss, the petition xxx (italics supplied)". Secondly, the issue was raised one monthafter petitioner had filed her answer/comment and after private respondent had replied thereto.Under Section 1, Rule 16 of the Revised Rules of Civil Procedure, a motion to dismiss shall be filedwithin the time for but before filing the answer to the complaint or pleading asserting a claim. Shetherefore could no longer submit a motion to dismiss nor raise defenses and objections not includedin the answer/comment she had earlier tendered. Thirdly, substantial justice and equity require thisCourt not to revive a dissolved writ of injunction in favor of a party without any legal right theretomerely on a technical infirmity. The granting of an injunctive writ based on a technical ground ratherthan compliance with the requisites for the issuance of the same is contrary to the primary objectiveof legal procedure which is to serve as a means to dispense justice to the deserving party.


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The petitioner likewise contends that the appellate court unduly delayed the resolution of her motionfor reconsideration. But we find that petitioner contributed to this delay when she filed successivecontentious motions in the same proceeding, the last of which was on October 27, 1993,necessitating counter-manifestations from private respondents with the last one being filed onNovember 9, 1993. Nonetheless, it is well-settled that non-observance of the period for decidingcases or their incidents does not render such judgments ineffective or void. 17With respect to the

purported damages she suffered due to the alleged delay in resolving her motion for reconsideration,we find that the said issue has likewise been rendered moot and academic by our ruling that she hasno right over the trademark and, consequently, to the issuance of a writ of preliminary injunction. 1wphi1.nt

Finally, we rule that the Court of Appeals correctly denied the petitioner's several motions forcontempt of court. There is nothing contemptuous about the advertisements complained of which, asregards the proceedings in CA-G.R. SP No. 27803 merely announced in plain and straightforwardlanguage the promulgation of the assailed Decision of the appellate court. Moreover, pursuant toSection 4 of Rule 39 of the Revised Rules of Civil Procedure, the said decision nullifying theinjunctive writ was immediately executory.

WHEREFORE, the petition is DENIED. The Decision and Resolution of the Court of Appeals datedMay 24, 1993 and June 3, 1994, respectively, are hereby AFFIRMED. With costs against thepetitioner.

SO ORDERED.

G.R. No. 161295 June 29, 2005

JESSIE G. CHING,petitioner,vs.WILLIAM M. SALINAS, SR., WILLIAM M. SALINAS, JR., JOSEPHINE L. SALINAS, JENNIFER Y.SALINAS, ALONTO SOLAIMAN SALLE, JOHN ERIC I. SALINAS, NOEL M. YABUT (Board ofDirectors and Officers of WILAWARE PRODUCT CORPORATION),respondents.

D E C I S I O N

CALLEJO, SR., J.:

This petition for review on certiorariassails the Decision1and Resolution2of the Court of Appeals(CA) in CA-G.R. SP No. 70411 affirming the January 3, 2002 and February 14, 2002 Orders3of theRegional Trial Court (RTC) of Manila, Branch 1, which quashed and set aside Search Warrant Nos.01-2401 and 01-2402 granted in favor of petitioner Jessie G. Ching.

Jessie G. Ching is the owner and general manager of Jeshicris Manufacturing Co., the maker andmanufacturer of a Utility Model, described as "Leaf Spring Eye Bushing for Automobile" made up ofplastic.

On September 4, 2001, Ching and Joseph Yu were issued by the National Library Certificates ofCopyright Registration and Deposit of the said work described therein as "Leaf Spring Eye Bushingfor Automobile."4

On September 20, 2001, Ching requested the National Bureau of Investigation (NBI) forpolice/investigative assistance for the apprehension and prosecution of illegal manufacturers,producers and/or distributors of the works.5
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After due investigation, the NBI filed applications for search warrants in the RTC of Manila againstWilliam Salinas, Sr. and the officers and members of the Board of Directors of Wilaware ProductCorporation. It was alleged that the respondents therein reproduced and distributed the said modelspenalized under Sections 177.1 and 177.3 of Republic Act (R.A.) No. 8293. The applications soughtthe seizure of the following:

a.) Undetermined quantity of Leaf spring eye bushing for automobile that are made up ofplastic polypropylene;

b.) Undetermined quantity of Leaf spring eye bushing for automobile that are made up ofpolyvinyl chloride plastic;

c.) Undetermined quantity of Vehicle bearing cushion that is made up of polyvinyl chlorideplastic;

d.) Undetermined quantity of Dies and jigs, patterns and flasks used in themanufacture/fabrication of items a to d;

e.) Evidences of sale which include delivery receipts, invoices and official receipts.6

The RTC granted the application and issued Search Warrant Nos. 01-2401 and 01-2402 for theseizure of the aforecited articles.7In the inventory submitted by the NBI agent, it appears that thefollowing articles/items were seized based on the search warrants:

Leaf Spring eye bushing

a) Plastic Polypropylene

- C190 27 }

- C240 rear 40 }

- C240 front 41 } BAG 1

b) Polyvinyl Chloride Plastic

- C190 13 }

c) Vehicle bearing cushion

- center bearing cushion 11 }

Budder for C190 mold 8 }

Diesel Mold

a) Mold for spring eye bushing rear 1 set

b) Mold for spring eye bushing front 1 set
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c) Mold for spring eye bushing for C190 1 set

d) Mold for C240 rear 1 piece of the set

e) Mold for spring eye bushing for L300 2 sets

f) Mold for leaf spring eye bushing C190 with metal 1 set

g) Mold for vehicle bearing cushion 1 set8

The respondents filed a motion to quash the search warrants on the following grounds:

2. The copyright registrations were issued in violation of the Intellectual Property Code on the groundthat:

a) the subject matter of the registrations are not artistic or literary;

b) the subject matter of the registrations are spare parts of automobiles meaningthere (sic)are original parts that they are designed to replace. Hence, they are not original.9

The respondents averred that the works covered by the certificates issued by the National Libraryare not artistic in nature; they are considered automotive spare parts and pertain to technology. Theyaver that the models are not original, and as such are the proper subject of a patent, not copyright.10

In opposing the motion, the petitioner averred that the court which issued the search warrants wasnot the proper forum in which to articulate the issue of the validity of the copyrights issued to him.Citing the ruling of the Court in Malaloan v. Court of Appeals,11the petitioner stated that a searchwarrant is merely a judicial process designed by the Rules of Court in anticipation of a criminal case.Until his copyright was nullified in a proper proceeding, he enjoys rights of a registered owner/holderthereof.

On January 3, 2002, the trial court issued an Order12granting the motion, and quashed the searchwarrant on its finding that there was no probable cause for its issuance. The court ruled that the workcovered by the certificates issued to the petitioner pertained to solutions to technical problems, notliterary and artistic as provided in Article 172 of the Intellectual Property Code.

His motion for reconsideration of the order having been denied by the trial courts Order of February14, 2002, the petitioner filed a petition for certiorariin the CA, contending that the RTC had no

jurisdiction to delve into and resolve the validity of the copyright certificates issued to him by theNational Library. He insisted that his works are covered by Sections 172.1 and 172.2 of theIntellectual Property Code. The petitioner averred that the copyright certificates areprima facieevidence of its validity, citing the ruling of the United States Court of Appeals in Wildlife Express

Corporation v. Carol Wright Sales, Inc.13

The petitioner asserted that the respondents failed toadduce evidence to support their motion to quash the search warrants. The petitioner noted thatrespondent William Salinas, Jr. was not being honest, as he was able to secure a similar copyrightregistration of a similar product from the National Library on January 14, 2002.

On September 26, 2003, the CA rendered judgment dismissing the petition on its finding that theRTC did not commit any grave abuse of its discretion in issuing the assailed order, to wit:
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It is settled that preliminarily, there must be a finding that a specific offense must have beencommitted to justify the issuance of a search warrant. In a number of cases decided by the SupremeCourt, the same is explicitly provided, thus:

"The probable cause must be in connection with one specific offense, and the judge must, beforeissuing the warrant, personally examine in the form of searching questions and answers, in writing

and under oath, the complainant and any witness he may produce, on facts personally known tothem and attach to the record their sworn statements together with any affidavit submitted.

"In the determination of probable cause, the court must necessarily resolve whether or not anoffense exists to justify the issuance or quashal of the search warrant."

In the instant case, the petitioner is praying for the reinstatement of the search warrants issued, butsubsequently quashed, for the offense of Violation of Class Designation of Copyrightable Worksunder Section 177.1 in relation to Section 177.3 of Republic Act 8293, when the objects subject ofthe same, are patently not copyrightable.

It is worthy to state that the works protected under the Law on Copyright are: literary or artistic works

(Sec. 172) and derivative works (Sec. 173). The Leaf Spring Eye Bushing and Vehicle BearingCushion fall on neither classification. Accordingly, if, in the first place, the item subject of the petitionis not entitled to be protected by the law on copyright, how can there be any violation?14

The petitioners motion for reconsideration of the said decision suffered the same fate. The petitionerforthwith filed the present petition for review on certiorari, contending that the revocation of hiscopyright certificates should be raised in a direct action and not in a search warrant proceeding.

The petitioner posits that even assuming ex argumentithat the trial court may resolve the validity ofhis copyright in a proceeding to quash a search warrant for allegedly infringing items, the RTCcommitted a grave abuse of its discretion when it declared that his works are not copyrightable in thefirst place. He claims that R.A. No. 8293, otherwise known as the Intellectual Property Code of thePhilippines, which took effect on January 1, 1998, provides in no uncertain terms that copyrightprotection automatically attaches to a work by the sole fact of its creation, irrespective of its mode orform of expression, as well as of its content, quality or purpose.15The law gives a non-inclusivedefinition of "work" as referring to original intellectual creations in the literary and artistic domainprotected from the moment of their creation; and includes original ornamental designs or models forarticles of manufacture, whether or not registrable as an industrial design and other works of appliedart under Section 172.1(h) of R.A. No. 8293. lawphil.net

As such, the petitioner insists, notwithstanding the classification of the works as either literary and/orartistic, the said law, likewise, encompasses works which may have a bearing on the utility aspect towhich the petitioners utility designs were classified. Moreover, according to the petitioner, what theCopyright Law protects is the authors intellectual creation, regardless of whether it is one withutilitarian functions or incorporated in a useful article produced on an industrial scale.

The petitioner also maintains that the law does not provide that the intended use or use in industry ofan article eligible for patent bars or invalidates its registration under the Law on Copyright. The testof protection for the aesthetic is not beauty and utility, but art for the copyright and invention oforiginal and ornamental design for design patents.16In like manner, the fact that his utility designs ormodels for articles of manufacture have been expressed in the field of automotive parts, or based onsomething already in the public domain does not automatically remove them from the protection ofthe Law on Copyright.17
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The petitioner faults the CA for ignoring Section 218 of R.A. No. 8293 which gives the samepresumption to an affidavit executed by an author who claims copyright ownership of his work.

The petitioner adds that a finding of probable cause to justify the issuance of a search warrantmeans merely a reasonable suspicion of the commission of the offense. It is not equivalent toabsolute certainty or a finding of actual and positive cause.18He assists that the determination of

probable cause does not concern the issue of whether or not the alleged work is copyrightable. Hemaintains that to justify a finding of probable cause in the issuance of a search warrant, it is enoughthat there exists a reasonable suspicion of the commission of the offense.

The petitioner contends that he has in his favor the benefit of the presumption that his copyright isvalid; hence, the burden of overturning this presumption is on the alleged infringers, the respondentsherein. But this burden cannot be carried in a hearing on a proceeding to quash the search warrants,as the issue therein is whether there was probable cause for the issuance of the search warrant. Thepetitioner concludes that the issue of probable cause should be resolved without invalidating hiscopyright.

In their comment on the petition, the respondents aver that the work of the petitioner is essentially a

technical solution to the problem of wear and tear in automobiles, the substitution of materials, i.e.,from rubber to plastic matter of polyvinyl chloride, an oil resistant soft texture plastic material strongenough to endure pressure brought about by the vibration of the counter bearing and thus bringsbushings. Such work, the respondents assert, is the subject of copyright under Section 172.1 of R.A.No. 8293. The respondents posit that a technical solution in any field of human activity which isnovel may be the subject of a patent, and not of a copyright. They insist that the certificates issuedby the National Library are only certifications that, at a point in time, a certain work was deposited inthe said office. Furthermore, the registration of copyrights does not provide for automatic protection.Citing Section 218.2(b) of R.A. No. 8293, the respondents aver that no copyright is said to exist if aparty categorically questions its existence and legality. Moreover, under Section 2, Rule 7 of theImplementing Rules of R.A. No. 8293, the registration and deposit of work is not conclusive as tocopyright outlay or the time of copyright or the right of the copyright owner. The respondentsmaintain that a copyright exists only when the work is covered by the protection of R.A. No. 8293.

The petition has no merit.

The RTC had jurisdiction to delve into and resolve the issue whether the petitioners utility modelsare copyrightable and, if so, whether he is the owner of a copyright over the said models. It bearsstressing that upon the filing of the application for search warrant, the RTC was duty-bound todetermine whether probable cause existed, in accordance with Section 4, Rule 126 of the Rules ofCriminal Procedure:

SEC. 4. Requisite for issuing search warrant.A search warrant shall not issue but upon probablecause in connection with one specific offense to be determined personally by the judge afterexamination under oath or affirmation of the complainant and the witnesses he may produce, and,

particularly, describing the place to be searched and the things to be seized.

InSolid Triangle Sales Corporation v. The Sheriff of RTC QC, Br. 93,19the Court held that in thedetermination of probable cause, the court must necessarily resolve whether or not an offense existsto justify the issuance of a search warrant or the quashal of one already issued by the court. Indeed,probable cause is deemed to exist only where facts and circumstances exist which could lead areasonably cautious and prudent man to believe that an offense has been committed or is beingcommitted. Besides, in Section 3, Rule 126 of the Rules of Criminal Procedure, a search warrantmay be issued for the search and seizure of personal property (a) subject of the offense; (b) stolen
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or embezzled and other proceeds or fruits of the offense; or (c) used or intended to be used as themeans of committing an offense.

The RTC is mandated under the Constitution and Rules of Criminal Procedure to determineprobable cause. The court cannot abdicate its constitutional obligation by refusing to determinewhether an offense has been committed.20The absence of probable cause will cause the outright

nullification of the search warrant.21

For the RTC to determine whether the crime for infringement under R.A. No. 8293 as alleged in anapplication is committed, the petitioner-applicant was burdened to prove that (a) respondents JessieChing and Joseph Yu were the owners of copyrighted material; and (b) the copyrighted material wasbeing copied and distributed by the respondents. Thus, the ownership of a valid copyright isessential.22

Ownership of copyrighted material is shown by proof of originality and copyrightability. By originalityis meant that the material was not copied, and evidences at least minimal creativity; that it wasindependently created by the author and that it possesses at least same minimal degree ofcreativity.23Copying is shown by proof of access to copyrighted material and substantial similarity

between the two works.

24

The applicant must thus demonstrate the existence and the validity of hiscopyright because in the absence of copyright protection, even original creation may be freelycopied.25

By requesting the NBI to investigate and, if feasible, file an application for a search warrant forinfringement under R.A. No. 8293 against the respondents, the petitioner thereby authorized theRTC (in resolving the application), to delve into and determine the validity of the copyright which heclaimed he had over the utility models. The petitioner cannot seek relief from the RTC based on hisclaim that he was the copyright owner over the utility models and, at the same time, repudiate thecourts jurisdiction to ascertain the validity of his claim without running afoul to the doctrine ofestoppel.

To discharge his burden, the applicant may present the certificate of registration covering the work

or, in its absence, other evidence.26A copyright certificate providesprima facieevidence of originalitywhich is one element of copyright validity. It constitutesprima facieevidence of both validity andownership27and the validity of the facts stated in the certificate.28The presumption of validity to acertificate of copyright registration merely orders the burden of proof. The applicant should notordinarily be forced, in the first instance, to prove all the multiple facts that underline the validity ofthe copyright unless the respondent, effectively challenging them, shifts the burden of doing so tothe applicant.29Indeed, Section 218.2 of R.A. No. 8293 provides:

218.2. In an action under this Chapter:

(a) Copyright shall be presumed to subsist in the work or other subject matter to which theaction relates if the defendant does not put in issue the question whether copyright subsists

in the work or other subject matter; and

(b) Where the subsistence of the copyright is established, the plaintiff shall be presumed tobe the owner of the copyright if he claims to be the owner of the copyright and the defendantdoes not put in issue the question of his ownership.

A certificate of registration creates no rebuttable presumption of copyright validity where otherevidence in the record casts doubt on the question. In such a case, validity will not be presumed.30
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To discharge his burden of probable cause for the issuance of a search warrant for violation of R.A.No. 8293, the petitioner-applicant submitted to the RTC Certificate of Copyright Registration Nos.2001-197 and 2001-204 dated September 3, 2001 and September 4, 2001, respectively, issued bythe National Library covering work identified as Leaf Spring Eye Bushing for Automobile and VehicleBearing Cushion both classified under Section 172.1(h) of R.A. No. 8293, to wit:

SEC. 172. Literary and Artistic Works.172.1. Literary and artistic works, hereinafter referred to as"works," are original intellectual creations in the literary and artistic domain protected from themoment of their creation and shall include in particular:

...

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

Related to the provision is Section 171.10, which provides that a "work of applied art" is an artisticcreation with utilitarian functions or incorporated in a useful article, whether made by hand orproduced on an industrial scale.

But, as gleaned from the specifications appended to the application for a copyright certificate filed bythe petitioner, the said Leaf Spring Eye Bushing for Automobile is merely a utility model described ascomprising a generally cylindrical body having a co-axial bore that is centrally located and providedwith a perpendicular flange on one of its ends and a cylindrical metal jacket surrounding theperipheral walls of said body, with the bushing made of plastic that is either polyvinyl chloride orpolypropylene.31Likewise, the Vehicle Bearing Cushion is illustrated as a bearing cushioncomprising a generally semi-circular body having a central hole to secure a conventional bearingand a plurality of ridges provided therefore, with said cushion bearing being made of the sameplastic materials.32Plainly, these are not literary or artistic works. They are not intellectual creationsin the literary and artistic domain, or works of applied art. They are certainly not ornamental designsor one having decorative quality or value.

It bears stressing that the focus of copyright is the usefulness of the artistic design, and not itsmarketability. The central inquiry is whether the article is a work of art.33Works for applied art includeall original pictorials, graphics, and sculptural works that are intended to be or have been embodiedin useful article regardless of factors such as mass production, commercial exploitation, and thepotential availability of design patent protection.34

As gleaned from the description of the models and their objectives, these articles are useful articleswhich are defined as one having an intrinsic utilitarian function that is not merely to portray theappearance of the article or to convey information. Indeed, while works of applied art, originalintellectual, literary and artistic works are copyrightable, useful articles and works of industrial designare not.35A useful article may be copyrightable only if and only to the extent that such designincorporates pictorial, graphic, or sculptural features that can be identified separately from, and are

capable of existing independently of the utilitarian aspects of the article.

We agree with the contention of the petitioner (citing Section 171.10 of R.A. No. 8293), that theauthors intellectual creation, regardless of whether it is a creation with utilitarian functions orincorporated in a useful article produced on an industrial scale, is protected by copyright law.However, the law refers to a "work of applied art which is an artistic creation." It bears stressing thatthere is no copyright protection for works of applied art or industrial design which have aesthetic orartistic features that cannot be identified separately from the utilitarian aspects of the article.36
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Functional components of useful articles, no matter how artistically designed, have generally beendenied copyright protection unless they are separable from the useful article.37

In this case, the petitioners models are not works of applied art, nor artistic works. They are utilitymodels, useful articles, albeit with no artistic design or value. Thus, the petitioner described the utilitymodel as follows:

LEAF SPRING EYE BUSHING FOR AUTOMOBILE

Known bushings inserted to leaf-spring eye to hold leaf-springs of automobile are made of hardrubber. These rubber bushings after a time, upon subjecting them to so much or intermittentpressure would eventually wore (sic) out that would cause the wobbling of the leaf spring.

The primary object of this utility model, therefore, is to provide a leaf-spring eye bushing forautomobile that is made up of plastic.

Another object of this utility model is to provide a leaf-spring eye bushing for automobiles made ofpolyvinyl chloride, an oil resistant soft texture plastic or polypropylene, a hard plastic, yet both

causes cushion to the leaf spring, yet strong enough to endure pressure brought about by the upand down movement of said leaf spring.

Yet, an object of this utility model is to provide a leaf-spring eye bushing for automobiles that has amuch longer life span than the rubber bushings.

Still an object of this utility model is to provide a leaf-spring eye bushing for automobiles that has avery simple construction and can be made using simple and ordinary molding equipment.

A further object of this utility model is to provide a leaf-spring eye bushing for automobile that issupplied with a metal jacket to reinforce the plastic eye bushing when in engaged with the steelmaterial of the leaf spring.

These and other objects and advantages will come to view and be understood upon a reading of thedetailed description when taken in conjunction with the accompanying drawings.

Figure 1 is an exploded perspective of a leaf-spring eye bushing according to the present utilitymodel;

Figure 2 is a sectional view taken along line 2-2 of Fig. 1;

Figure 3 is a longitudinal sectional view of another embodiment of this utility model;

Figure 4 is a perspective view of a third embodiment; and

Figure 5 is a sectional view thereof.

Referring now to the several views of the drawings wherein like reference numerals designatedsame parts throughout, there is shown a utility model for a leaf-spring eye bushing for automobilegenerally designated as reference numeral 10.

Said leaf-spring eye bushing 10 comprises a generally cylindrical body 11 having a co-axial bore 12centrally provided thereof.
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As shown in Figs. 1 and 2, said leaf-spring eye bushing 10 is provided with a perpendicular flange13 on one of its ends and a cylindrical metal jacket 14 surrounding the peripheral walls 15 of saidbody 11. When said leaf-spring bushing 10 is installed, the metal jacket 14 acts with the leaf-springeye (not shown), which is also made of steel or cast steel. In effect, the bushing 10 will not bedirectly in contact with steel, but rather the metal jacket, making the life of the bushing 10 longer thanthose without the metal jacket.

In Figure 2, the bushing 10 as shown is made of plastic, preferably polyvinyl chloride, an oil resistantsoft texture plastic or a hard polypropylene plastic, both are capable to endure the pressure appliedthereto, and, in effect, would lengthen the life and replacement therefor.

Figure 3, on the other hand, shows the walls 16 of the co-axial bore 12 of said bushing 10 isinsertably provided with a steel tube 17 to reinforce the inner portion thereof. This steel tube 17accommodates or engages with the leaf-spring bolt (not shown) connecting the leaf spring and theautomobiles chassis.

Figures 4 and 5 show another embodiment wherein the leaf eye bushing 10 is elongated andcylindrical as to its construction. Said another embodiment is also made of polypropylene or

polyvinyl chloride plastic material. The steel tube 17 and metal jacket 14 may also be applied to thisembodiment as an option thereof.38

VEHICLE BEARING CUSHION

Known bearing cushions inserted to bearing housings for vehicle propeller shafts are made of hardrubber. These rubber bushings after a time, upon subjecting them to so much or intermittentpressure would eventually be worn out that would cause the wobbling of the center bearing.

The primary object of this utility model therefore is to provide a vehicle-bearing cushion that is madeup of plastic.

Another object of this utility model is to provide a vehicle bearing cushion made of polyvinyl chloride,an oil resistant soft texture plastic material which causes cushion to the propellers center bearing,yet strong enough to endure pressure brought about by the vibration of the center bearing.

Yet, an object of this utility model is to provide a vehicle-bearing cushion that has a much longer lifespan than rubber bushings.

Still an object of this utility model is to provide a vehicle bearing cushion that has a very simpleconstruction and can be made using simple and ordinary molding equipment.

These and other objects and advantages will come to view and be understood upon a reading of thedetailed description when taken in conjunction with the accompanying drawings.

Figure 1 is a perspective view of the present utility model for a vehicle-bearing cushion; and

Figure 2 is a sectional view thereof.

Referring now to the several views of the drawing, wherein like reference numeral designate sameparts throughout, there is shown a utility model for a vehicle-bearing cushion generally designatedas reference numeral 10.
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Said bearing cushion 10 comprises of a generally semi-circular body 11, having central hole 12 tohouse a conventional bearing (not shown). As shown in Figure 1, said body 11 is provided with aplurality of ridges 13 which serves reinforcing means thereof.

The subject bearing cushion 10 is made of polyvinyl chloride, a soft texture oil and chemical resistantplastic material which is strong, durable and capable of enduring severe pressure from the center

bearing brought about by the rotating movement of the propeller shaft of the vehicle.39

A utility model is a technical solution to a problem in any field of human activity which is new andindustrially applicable. It may be, or may relate to, a product, or process, or an improvement of anyof the aforesaid.40Essentially, a utility model refers to an invention in the mechanical field. This is thereason why its object is sometimes described as a device or useful object.41A utility model variesfrom an invention, for which a patent for invention is, likewise, available, on at least three aspects:first, the requisite of "inventive step"42in a patent for invention is not required; second, the maximumterm of protection is only seven years43compared to a patent which is twenty years,44both reckonedfrom the date of the application; and third, the provisions on utility model dispense with itssubstantive examination45and prefer for a less complicated system.

Being plain automotive spare parts that must conform to the original structural design of thecomponents they seek to replace, the Leaf Spring Eye Bushing and Vehicle Bearing Cushion are notornamental. They lack the decorative quality or value that must characterize authentic works ofapplied art. They are not even artistic creations with incidental utilitarian functions or worksincorporated in a useful article. In actuality, the personal properties described in the search warrantsare mechanical works, the principal function of which is utility sansany aesthetic embellishment.

Neither are we to regard the Leaf Spring Eye Bushing and Vehicle Bearing Cushion as included inthe catch-all phrase "other literary, scholarly, scientific and artistic works" in Section 172.1(a) of R.A.No. 8293. Applying the principle of ejusdem generiswhich states that "where a statute describesthings of a particular class or kind accompanied by words of a generic character, the generic wordwill usually be limited to things of a similar nature with those particularly enumerated, unless there besomething in the context of the state which would repel such inference,"46the Leaf Spring Eye

Bushing and Vehicle Bearing Cushion are not copyrightable, being not of the same kind and natureas the works enumerated in Section 172 of R.A. No. 8293.

No copyright granted by law can be said to arise in favor of the petitioner despite the issuance of thecertificates of copyright registration and the deposit of the Leaf Spring Eye Bushing and VehicleBearing Cushion. Indeed, inJoaquin, Jr. v. Drilon47andPearl & Dean (Phil.), Incorporated v.Shoemart, Incorporated,48the Court ruled that:

Copyright, in the strict sense of the term, is purely a statutory right. It is a new or independent rightgranted by the statute, and not simply a pre-existing right regulated by it. Being a statutory grant, therights are only such as the statute confers, and may be obtained and enjoyed only with respect tothe subjects and by the persons, and on terms and conditions specified in the statute. Accordingly, it

can cover only the works falling within the statutory enumeration or description.

That the works of the petitioner may be the proper subject of a patent does not entitle him to theissuance of a search warrant for violation of copyright laws. InKho v. Court of Appeals49and Pearl &Dean (Phil.), Incorporated v. Shoemart, Incorporated,50the Court ruled that "these copyright andpatent rights are completely distinct and separate from one another, and the protection afforded byone cannot be used interchangeably to cover items or works that exclusivelypertain to the others."The Court expounded further, thus:
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Trademark, copyright and patents are different intellectual property rights that cannot beinterchanged 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 markedcontainer of goods. In relation thereto, a trade name means the name or designation identifying ordistinguishing an enterprise. Meanwhile, the scope of a copyright is confined to literary and artisticworks 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 ofa problem in any field of human activity which is new, involves an inventive step and is industriallyapplicable.

The petitioner cannot find solace in the ruling of the United States Supreme Court in Mazer v. Stein51to buttress his petition. In that case, the artifacts involved in that case were statuettes of dancingmale and female figures made of semi-vitreous china. The controversy therein centered on the factthat although copyrighted as "works of art," the statuettes were intended for use and used as basesfor table lamps, with electric wiring, sockets and lampshades attached. The issue raised waswhether the statuettes were copyright protected in the United States, considering that the copyrightapplicant intended primarily to use them as lamp bases to be made and sold in quantity, and carriedsuch intentions into effect. At that time, the Copyright Office interpreted the 1909 Copyright Act tocover works of artistic craftsmanship insofar as their form, but not the utilitarian aspects, wereconcerned. After reviewing the history and intent of the US Congress on its copyright legislation andthe interpretation of the copyright office, the US Supreme Court declared that the statuettes wereheld copyrightable works of art or models or designs for works of art. The High Court ruled that:

"Works of art (Class G)(a)In General.This class includes works of artistic craftsmanship, in sofar as their form but not their mechanical or utilitarian aspects are concerned, such as artistic

jewelry, enamels, glassware, and tapestries, as well as all works belonging to the fine arts, such aspaintings, drawings and sculpture. "

So we have a contemporaneous and long-continued construction of the statutes by the agencycharged to administer them that would allow the registration of such a statuette as is in questionhere.52

The High Court went on to state that "[t]he dichotomy of protection for the aesthetic is not beauty andutility but art for the copyright and the invention of original and ornamental design for designpatents." Significantly, the copyright office promulgated a rule to implement Mazer to wit:

[I]f "the sole intrinsic function of an article is its utility, the fact that the work is unique andattractively shaped will not qualify it as a work of art."

In this case, the bushing and cushion are not works of art. They are, as the petitioner himselfadmitted, utility models which may be the subject of a patent.

IN LIGHT OF ALL THE FOREGOING, the instant petition is hereby DENIED for lack of merit. The

assailed Decision and Resolution of the Court of Appeals in CA-G.R. SP No. 70411 are AFFIRMED.Search Warrant Nos. 01-2401 and 01-2402 issued on October 15, 2001 are ANNULLED AND SET

ASIDE. Costs against the petitioner.

SO ORDERED.

G.R. No. 172835 December 13, 2007
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AIR PHILIPPINES CORPORATION,Petitioner,vs.PENNSWELL, INC.Respondent.

D E C I S I O N

CHICO-NAZARIO, J.:

Petitioner Air Philippines Corporation seeks, via the instant Petition for Review under Rule 45 of theRules of Court, the nullification of the 16 February 2006 Decision1and the 25 May 2006 Resolution2of the Court of Appeals in CA-G.R. SP No. 86329, which affirmed the Order3dated 30 June 2004 ofthe Regional Trial Court (RTC), Makati City, Branch 64, in Civil Case No. 00-561.

Petitioner Air Philippines Corporation is a domestic corporation engaged in the business of airtransportation services. On the other hand, respondent Pennswell, Inc. was organized to engage inthe business of manufacturing and selling industrial chemicals, solvents, and special lubricants.

On various dates, respondent delivered and sold to petitioner sundry goods in trade, covered by

Sales Invoices No. 8846,4

9105,5

8962,6

and 8963,7

which correspond to Purchase Orders No. 6433,6684, 6634 and 6633, respectively. Under the contracts, petitioners total outstanding obligationamounted to P449,864.98 with interest at 14% per annum until the amount would be fully paid. Forfailure of the petitioner to comply with its obligation under said contracts, respondent filed aComplaint8for a Sum of Money on 28 April 2000 with the RTC.

In its Answer,9petitioner contended that its refusal to pay was not without valid and justifiablereasons. In particular, petitioner alleged that it was defrauded in the amount of P592,000.00 byrespondent for its previous sale of four items, covered by Purchase Order No. 6626. Said items weremisrepresented by respondent as belonging to a new line, but were in truth and in fact, identical withproducts petitioner had previously purchased from respondent. Petitioner asserted that it wasdeceived by respondent which merely altered the names and labels of such goods. Petitionerspecifically identified the items in question, as follows:

Label/Description Item No. Amount P.O. Date

1. a. Anti-Friction Fluidb. Excellent Rust Corrosion(fake)

MPL-800MPL-008

153,941.40155,496.00

57145888

05/20/9906/20/99

2. a. Contact Greaseb. Connector Grease (fake)

COG #2CG

115,236.00230,519.52

55406327

04/26/9908/05/99

3. a. Trixohtropic Greaseb. Di-Electric StrengthProtective Coating (fake)

EPCEPC#2

81,876.9681,876.96

45825446

01/29/9904/21/99

4. a. Dry Lubricantb. Anti-Seize Compound(fake)

ASC-EPASC-EP

2000

87,346.52124,108.10

57124763 &5890

05/20/9902/16/99 &06/24/99
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