Shangri-La International Hotel Management, Ltd. (SLIHM) Vs.
DGCI filed a complaint for Infringement & Damages, lower court’s
Developers Group of Companies, Inc. (DGCI)
NATURE:
petition for review on certiorari of the decision & resolution of the
Court of Appeals
FACTS:
petitioners (Shangri-La) assail to set & seek to set aside the
decision of the Court of Appeals & its resolution w/c affirmed w/
modification an earlier decision of the RTC of QC, an action for
infringement & damages threat commenced by respondent (DCGI)
against them.
core of this controversy: “Shangri-La” mark & “S” logo.
Respondent DGCI claims ownership of said mark & logo in the
Philippines.
Bureau of Patents, Trademarks & Technology Transfer (BPTTT)
issued DGCI a certificate of registration (may 31, 2983) and since
then, DGCI started using the “Shangri-La” & “S” in its restaurant
business.
on the other hand, Kuok family (owns & operates a chain of hotels
& hotel-related transactions since 1969) adopted the name
“Shangri-La” as part of corporate names of all companies under the
Kuok Grp. Of Companies as far back as 1962. Name “Shangri-La”
has been used in all their hotels & hotel-related establishments
worldwide.
And for centralization purposes= they use “Shangri-La” & “S” logo
in their hotels in places such as Singapore and Hong Kong. They
also incorporated it in the Phils. In the beginning of 1987 in Edsa
Shangri-La (Mandaluyong) & Makati Shangri-La (Makati)
Ramon Syhunliong as DGCI’s witness (businessman; named his
restaurant business “Shangri-la”)
judgment was in favor of the respondent (DGCI)
1. Kuok Group’s bulk use of the tradename was abroad,
not in the Phils (until 1987)
2. The Paris Convention must yield to a municipal law
ISSUES:
1. Whether certification against forum-shopping submitted on
the behalf of the petitioners is efficient (NOT RELEVANT TO
CONSTI TOPIC)
2. Whether the issue posed by petitioners are purely factual in
nature hence improper for resolution in the instant petition
for review on certiorati
DECISION:
the instant petition is GRANTED
RATIO:
The new Intellectual Property Code (IPC), R.A. No. 8293,
undoubtedly shows the firm resolve of the Philippines to observe &
follow the Paris Convention by incorporating the relevant portions of
the Convention such that persons who may question a mark (that
is, oppose registration, petition for the cancellation thereof, sue for
unfair competition) include persons whose internationally well-
known mark, whether or not registered, is identical with or
confusingly similar to or constitutes a translation of a mark that is
sought to be registered or is actually registered.
Paris Convention mandates that protection should be afforded to
internationally known marks as signatory to the Paris Convention
w/o regard as to whether the foreign corporation registered,
licensed or doing business in the Phils.
our municipal law on trademarks regarding the requirement of
actual use in the Phils must subordinate a international agreement
the fact that international law has been made part of the law of
the land does not any means imply the primacy of international law
over national law in the municipal sphere. Under the doctrine of
incorporation as applied in most countries, rules of international law
are given equal footage

petitioners’ separate personalities from their mother corporation

be an obstacle in the enforcement of their rights as part of Kuok Grp
of Companies

Same; Same; Registration without more, does not confer upon theregistrant an
absolute right to the registered mark.
·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.

Same; Same; As between actual use of a mark without registration,and registration

of the mark without actual use thereof, the former prevailsover the latter.
·Ownership of a mark or trade name may be acquired notnecessarily by registration
but by adoption and use in trade or commerce. As between actual use of a mark
without registration, and registration of the mark without actual use thereof, the
former prevails over the latter.For a rule widely accepted and firmly entrenched,
because it has comedown through the years, is that actual use in commerce or
business is apre-requisite to the acquisition of the right of ownership.
Same; Same; The present law on trademarks has dispensed with therequirement of
prior use at the time of registration.
·While the present lawon trademarks has dispensed with the requirement of prior
actual use atthe time of registration, the law in force at the time of registration must
beapplied, and thereunder it was held that as a condition precedent toregistration of
trademark, trade name or service mark, the same musthave been in actual use in the
Philippines before the filing of theapplication for registration. Trademark is a
creation of use and thereforeactual use is a pre-requisite to