ART.

520/522
CASE TITLE FACTS
SHANGRI-LA  DGCI filed on October 18, 1982 with the Bureau of
INTERNATIONA Patents, Trademarks and Technology Transfer
L HOTEL (BPTTT) an application for registration covering the
MANAGEMENT subject mark and logo.
AND KUOK o BPTTT issued in favor of DGCI the certificate
PHILIPPINES of registration
vs. o Since then, DGCI started using the mark and
DEVELOPERS logo in its restaurant business.
GROUP OF  Since 1969, the Kuok Group(KG) has used the name
COMPANIES in all hotels and hotel-related establishments around
the world which the Kuok Family owned.
Worldwide use of  EDSA and Makati Shangri-La were incorporated in
petitioner’s the Ph beginning 1987
"Shangri-La"  Shangri-La Hotel Singapore commissioned a
mark and "S" logo Singaporean artist, William Lee, to design the logo
versus o During the launching of Logo in 1975, Lee
respondent’s explained: "S" represents Aseanarchitectural
version na structures… legendary Shangri-la theme
pinagawa sa with mountains on top reflected on waters
jeepney below and connecting centre line as horizon
signboard artist  KG registered, mark logo in the patent offices in
different countries around the world.
 KG filed with BPTTT a petition (Inter Partes Case)
praying for the cancellation of the registration of
DGCI
o Ground: illegally and fraudulently obtained
o also filed Inter Partes Case praying for
registration in their own names.
 DGCI filed a complaint for Infringement and Damages
w/ RTC QC alleged that
o DGCI has, for the last 8 years, been the prior
exclusive user in the Philippines
o SLIHM in promoting their hotel then under
construction in the country, had been using
RULING
1. NO. Registration not sufficient to establish prior use
o R.A. 166 was in effect up to Dec 31, 1997, hence, the law in force at
the time of respondent's application for registration
o certificate of registration is a prima facie proof that the
registrant is the owner of the registered mark or trade name.
o Evidence of prior and continuous use by another can
overcome the presumptive ownership of the registrant
between actual use without registration, and registration
without actual use, the former prevails over the latter.
2. YES. DCGI registration void.
o Syhunliong, testified in TC: artist submitted his designs in Dec 1982.
o This was 2 ½ months after the filing of respondent's
trademark application on Oct 18, 1982 with the BPTTT.
o only in Dec 1982: DCGI’s restaurant opened for business.
o DCGI cannot now claim to SC that the certificate of registration itself
is proof that the 2-month prior use requirement was complied with
o at the time (Oct 18, 1982) DCGI filed its application for registration,
respondent was not using these in Ph commercially
3. YES. DCGI in bad faith
o CA found Syhunliong was a guest at petitioners' hotel before he
registered and surmised that he must have copied the idea there
o Yet CA tries to make it appear it could have been coincidental
o "Shangri-la" and S-logo, are not uncommon. "Shangri-la"
refers to a remote beautiful imaginary place or imaginary
mountain land as a utopia in Lost Horizon by James Hilton.
o The Lost Horizon was a popular novel written in 1976.
o CA was contradictory. SC agrees w/ petitioners:
o When copycat adopts word portion as his own, there may
still be some doubt that the adoption is intentional.
o But if he copies not only word but also exact font and he
copies also the logo portion, bad faith becomes certain
o One who has imitated the trademark of another cannot bring an
action for infringement against the true owner of the mark
 a mark and logo confusingly similar
o DGCI sought to prohibit KG from using in PH
 TC: Issued a Writ of Preliminary Injunction enjoining
KG from using mark and logo
 SC: nullified the writ and directed TC to proceed with
the main case and decide it
 While trial in progress, KG filed with the court a
motion to suspend proceedings on account of the
pendency before the BPTTT of Inter Partes Case
 Court ruled despite KG’s institution of Inter Partes,
DGCI can file a subsequent action for infringement
with regular
o but nonetheless ordered BPTTT to suspend
proceedings&to await outcome of main case.
 DCGI’s lone witness, Ramon Syhunliong, Pres. Of
DCGI Board of Directors, testified:
o The "S-logo" was 1 of 2 designs given to him
in Dec1982, scribbled on a piece of paper by
a jeepney signboard artist
o On Oct 15, 1982, or before artist created the
designs, DGCI was incorporated
 TC: DCGI registration valid.
 KG appealed to CA.
 CA: affirmed TC.
 KG filed MR. Denied by CA.
 KG: petition for review on certiorari
ISSUES:
1. whether a certificate of registration are sufficient to
establish prior actual use by the registrant
2. whether registration of DGCI is void
3. whether DCGI’s use of mark and logo was in bad faith
4. whether KG’s prior use entitles KG to use the mark
and logo in the Philippines
5. whether KG used name and logo as tradename
6. whether IPC(RA8293) or RA 166 is applicable
4. NO. KG not qualified under Sec 2 as a registrant
o TC and CA already established and admitted by DCGI’s president
himself that KG had prior widespread use abroad
o RA166 requires the actual use in the Philippines. 
o Sec 2: in order to register a trademark,
 one must be the owner
 must have actually used the mark in commerce in Ph
for 2 months prior to application for registration.
o Sec 2-A:
 actual use in commerce is also the test of ownership.
 mark must not have been appropriated by another.
 does not require actual within the Philippines.
o under RA166, one may be an owner due to actual use but not have the
right to register ownership here due to failure to use inPh for 2 months.
o While KG may not have qualified under Sec 2 as a registrant, neither
did DGCI, since it failed to fulfil the 2-month actual use requirement.
o DGCI was not even the owner of the mark. For it to be owner,
mark musn’t have been already appropriated by another
o At time of DGCI's registration, the mark was already being
used by KG, albeit abroad
5. NO. KG used name and logo as tradename and service mark
o DCGI argues: Since KG adopted mark and logo as a mere corporate
name then they are not trademarks.
o It is common, indeed likely, that the name of a corporation or
business is also a trade name, trademark or service mark.
o Sec 38 of RA166:
o "trade name" includes xxx names or titles lawfully adopted
and used by natural or juridical persons
6. RA 166 Applicable.
o KG wants IPC to apply: persons who may question a mark include
persons whose internationally well-known mark, whether or not
registered, is confusingly similar to that is sought to be registered
o while PH was already a signatory to Paris Convention, IPC only took
effect on Jan 1, 1988. Absent a retroactivity clause, RA166 applies.
o Besides, RA166 did not require party seeking relief to be owner
but “any person who believes that he is or will be damaged by the
registration of a mark or trade name."40
o PETITION GRANTED