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Shangri-La V Developers Case Digest

Respondent DGCI applied for and was granted registration of the 'Shangri-La' mark and 'S' logo for its restaurant business. Petitioner Shangri-La, an international hotel chain owned by the Kuok family, moved to cancel the registration as the mark was illegally obtained and appropriated by respondents. The Supreme Court ruled that under the former trademark law in effect at the time of registration, actual use of the mark in commerce for at least two months in the Philippines was required for registration. Neither petitioner nor respondent met this requirement. Respondent also did not own the mark as it was already being used by petitioner abroad.

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1K views1 page

Shangri-La V Developers Case Digest

Respondent DGCI applied for and was granted registration of the 'Shangri-La' mark and 'S' logo for its restaurant business. Petitioner Shangri-La, an international hotel chain owned by the Kuok family, moved to cancel the registration as the mark was illegally obtained and appropriated by respondents. The Supreme Court ruled that under the former trademark law in effect at the time of registration, actual use of the mark in commerce for at least two months in the Philippines was required for registration. Neither petitioner nor respondent met this requirement. Respondent also did not own the mark as it was already being used by petitioner abroad.

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kent kintanar
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© © All Rights Reserved
We take content rights seriously. If you suspect this is your content, claim it here.
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Posted on June 9, 2016 by jaicdn

Shangri-la International Hotel Management


v. Developers Group of Companies (G.R.
No. 159938)
Facts:

Respondent DGCI applied for and was granted registration of the ‘Shangri-La’ mark and ‘S’
logo in its restaurant business. Petitioner Shangri-La, chain of hotels and establishments owned
by the Kuok family worldwide, moved to cancel the registration of the mark on the ground that it
was illegally and fraudulently obtained and appropriated by respondents. Petitioner also moved
to register the mark and logo in its own name. Later, respondent DGCI filed before the trial court
a complaint for infringement against petitioner alleging that DGCI had been the prior exclusive
user and the registered owner in the Philippines of said mark and logo. Petitioner Shangri-La
argued that respondent had no right to apply for the registration because it did not have prior
actual commercial use thereof. The trial court found for respondent. CA affirmed.

Issue:

Whether or not respondent’s prior use of the mark is a requirement for its registration.

Ruling: YES.

While the present law on trademarks has dispensed with the requirement of prior actual use at the
time of registration, the law in force at the time of registration must be applied. Under the
provisions of the former trademark law, R.A. No. 166, as amended, hence, the law in force at the
time of respondent’s application for registration of trademark, the root of ownership of a
trademark is actual use in commerce. Section 2 of said law 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. Trademark is a
creation of use and therefore actual use is a pre-requisite to exclusive ownership and its
registration with the Philippine Patent Office is a mere administrative confirmation of the
existence of such right.

While the petitioners may not have qualified under Section 2 of R.A. No. 166 as a registrant,
neither did respondent DGCI, since the latter also failed to fulfill the 2-month actual use
requirement. What is worse, DGCI was not even the owner of the mark. For it to have been the
owner, the mark must not have been already appropriated (i.e., used) by someone else. At the
time of respondent DGCI’s registration of the mark, the same was already being used by the
petitioners, albeit abroad, of which DGCI’s president was fully aware.

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