Professional Documents
Culture Documents
-Nature:
Petition for review under Rule 45 of the Rules of Court
o Petitioners
Shangri-La
International
Hotel
Management, Ltd. (SLIHM) assail to set aside Court of
Appeals (CA) decision on 15 May 2003 and resolution
on 15 September 2003
-Facts:
On 18 October 1982, Developers Group of Companies, Inc.
(DGCI) filed with the Bureau of Patents, Trademarks, and
Technology Transfer (BPTTT) for registration covering the
Shangri-La mark and S logo
On 31 May 1983, BPTTT issued in favor of DGCI, Registration
No. 31904
DGCI has used the S logo since then
But as far back as 1962, the Kuok Group of Companies has
adopted the name Shangri-La in all Shangri-La hotels and
hotel-related establishments worldwide (SLIHM)
In February 1975, William Lee, a Singaporean design artist
commissioned to design the logo of Shangri-La hotels,
launched the stylized S logo
SLIHM has used the name Shangri-La and the S logo
since then
Shangri-La Hotel and Resort, Inc. was incorporated in the RP
beginning 1987 when the Kuok Group put up two hotels in
Mandaluyong and Makati
On 21 June 1988, SLIHM filed with the BPTTT a petition,
praying for the cancellation of the Registration No. 31904
and for the registration of the mark and logo in their own
name
DGCI filed a complaint for Infringement and Damages with
the RTC of Quezon City against SLIHM because they have
been using the mark and the logo for the last eight years
SLIHM pointed to the Paris Convention for the
Protection of Industrial Property and further claimed
that they have used the mark and logo since 1975
On 8 March 1996, RTC ruled in favor of DGCI
Therefrom, SLIHM went on appeal to the CA, but the
affirmed the lower courts decision with the modification of
deleting the award of attorneys fees
o SLIHM moved a motion for reconsideration, but was
also denied
-Issue:
What constitutes trademark ownership?
-Decision:
Petition is granted and the assailed decision and resolution
of the CA is set aside
o SC ruled in favor of SLIHM
-Ratio
RA No. 166 (law in force at the time of DGCIs application)
o The root of ownership of a trademark is actual
use in commerce
o Section 2 of RA No. 166 requires that before a
trademark can be registered, it must have been
actually used in commerce and service for not less
than two months in the Philippines prior to the filing
of an application for its registration
Moreover, registration does not confer upon the registrant
an absolute right to the registered mark
o The certificate of registration is merely a prima facie
proof that the registrant is the owner of the
registered mark or trade name
o Evidence of prior and continuous use of the mark or
trade name by another can overcome the
presumptive ownership of the registrant and may
very well entitle the former to be declared owner in
an appropriate case
In other words, registration is not a mode of acquiring
ownership
o The actual use in commerce or business is a prerequisite to the acquisition of the right of ownership