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.
