Shangri-La International Hotel Management, Ltd. (SLIHM) Vs.
ISSUES:
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”)
DGCI filed a complaint for Infringement & Damages, lower court’s
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
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