On December 7 2009, the Court of Appeals reversed the decision of the Regional Trial Court of Makati dated July 15 1998, finding Philippine Airlines (PAL), the country's national airline, guilty of infringing the patented shell designs of Sabine Koschinger, with award of nominal damages and attorney's fees of P70,000 (about $1,500). Koschinger was the owner of two industrial design patents (4271 and 4273) filed with the Intellectual Property Office (IPPhil) on May 31 1988 and issued on January 24 1989. She claimed that for its first class flight accommodations, PAL used table linen and placemats depicting her designs without her authority. From January to April 1988, PAL purchased its linens and placemats with Koschinger's shell design through the Philippine Trading International Corporation (PITC), but in May 1988 PAL stopped ordering from PITC and sourced it elsewhere.
PAL's main defence is that the patents of Koschinger are invalid for not being new and patentable. Under Section 55 of Republic Act no 165, the prevailing law at that time, for an industrial design to be protected, it must be a new and original creation. Under the same law, to be considered new or patentable, the industrial design must not have been in public use or sale in the Philippines or any foreign country more than six months before the application for a patent.
These rules have been essentially carried over to the current law which is RA 8293 or the IP Code. For the six months prior use bar, the Regional Trial Court reckoned the starting point as the date of delivery of the infringing linens and placemats to PAL, hence, not considered as prior art. The Court of Appeal, however, did not agree with the Trial Court for the following reasons: (a) Koschinger herself admitted that her company Linens International Inc. (LII) has been using the patented design since 1987; (b) the fact that LII is a corporation necessarily implies that the disputed patented design was already available for sale from 1987; (c) PAL claimed that it bought placemats and linens with said shell designs as early as June 1987 from the PITC, way before the May 31 1988 application date of Koschinger.
The Court of Appeal held that Koschinger's design had definitely been in public use in the Philippines for more than six months before its application date, and thus, pursuant to Section 9, it shall not be considered new or capable of being patented. Because the design is not new, the Court of Appeal reversed the decision of the Trial Court and dismissed the complaint of Koschinger. In the absence of infringement, there is no basis for the award of nominal damages or attorney's fees.
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| Editha R Hechanova |
Hechanova Bugay & Vilchez
GF Chemphil Building Antonio Arnaiz Ave
Makati City 1223
Philippines
Tel: +63 2 888 4293
Fax: +63 2 888 4290
editharh@info.com.ph