Case Digest: Developers Group of Companies, Inc. vs. Shangri-la International Hotel Management, Inc

Developers Group of Companies, Inc. vs. Shangri-la International Hotel Management, Inc. et. al. CA- G. R. CVNo. 53351

FACTS:

Petitioner was the owner of the “Shangri-La” and the “S” Logo since 1962 and is internationally well-known but is not doing business in the Philippines since early 1980s. Respondent, on the other hand, was the registered owner of the Shangri-la and S logo since 1983 and is using them since then. Petitioner prayed for the granting of its application for registration in the Philippines while respondent filed for infringement against petitioner.

RULING: 

Since IPC of 1988 (RA 8293) did not provide for retroactive application, the Court held that petitioner cannot claim protection under the Paris Convention and ruled that provisions under RA 166 should be applied. Thus, for not meeting the requirement of actual use of commerce in the Philippines(Sec 2, RA 166, requirement for registration), petitioner’s registration cannot be granted.

The Court also ruled that respondent also failed to meet the same requirement when it had the marks registered. Not only that, respondent could not even be deemed the owner of the mark since ownership under Sec 2-A of RA 166 require that the name or mark used must not be appropriated to another and it does not require actual use of a trademark within the Philippines in contradistinction to Sec2. Petitioner was proven to be the owner and originator of the marks even if petitioner failed to comply with Sec2 since it had been using said marks earlier and longer than respondent; such fact respondent knew. Petitioner could not, therefore, be guilty of infringement for a mark which originally came from it.

Categories: Case Digest: Developers Group of Companies, gr cv 53351, Inc, Inc. vs. Shangri-la International Hotel Management, INTELLECTUAL PROPERTY LAW, sHANGRI-LA