Professional Documents
Culture Documents
Shangri-La v. DGCI
Shangri-La v. DGCI
, SHANGRI-LA
PROPERTIES, INC., MAKATI SHANGRI- LA HOTEL & RESORT, INC., AND
KUOK PHILIPPINES PROPERTIES, INC., Petitioners, vs. DEVELOPERS
GROUPOF COMPANIES, INC., Respondent.
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, and thereunder it was held that as a condition
precedent to registration of trademark, trade name or service mark, the same
must have been in actual use in the Philippines before the filing of the application
for registration.
FACTS:
SIHM started the use of the mark and the logo since 1969. As far back as
1962, it adopted the name "Shangri-La" as part of the corporate names of all
companies organized under the aegis of the Kuok Group of Companies (the Kuok
Group). The logo was first used by the Shangri-La Hotel Singapore when it
commissioned a Singaporean design artist, a certain Mr. William Lee, to
conceptualize and design the logo of the Shangri-La hotels. SIHM begins its hotel
business operations in the Philippines only on 1987. On the other hand, DGCI thru
its President and Chairman, Ramon Syhunliong reiterated the conception of the
mark and the logo as follows: The S-logo was one of two (2) designs given to him
in December 1982, scribbled on a piece of paper by a jeepney signboard artist
with an office somewhere in Balintawak. The unnamed artist supposedly produced
the two designs after about two or three days from the time he (Syhunliong) gave
the idea of the design he had in mind. He also said that he visited one of the
SIHM hotels as early as August 1982.
In this case, the RTC of Quezon City and the CA upheld the registration of
the DGCI before the Bureau of Patents, Trademarks and Technology Transfer
(BPTTT). It solely based its decision on the prior use and registration of the mark
and logo in the Philippines in contrast with the use of the SIHM which is
widespread but not in the Philippines not until 1987.
ISSUE:
Whether or not the prior use and registration should be the sole basis in
determining the proper recipient of a trademark.
RULING:
NO. Under the provisions of the former trademark law, R.A. No. 166, as
amended, which was in effect up to December 31, 1997, 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. Registration, without more, does not
confer upon the registrant an absolute right to the registered mark. The certificate
of registration is merely a prima facie proof that the registrant is the owner of the
registered mark or tradename. 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.