In the case of Shangri-La International Hotel Management et al (SLIHM), v Developers Group of Companies, Inc (DGCI) issued on March 31 2006, involving the trade marks Shangri-La and the S logo, the Supreme Court reversed the decisions of the Court of Appeals and the Regional Trial Court which found SLIHM guilty of trade mark infringement, and ruled in favour of SLIHM.
DGCI claimed ownership of the trade marks based on prior use on its restaurant business within the Philippines since 1982, and on the basis of that use was granted a certificate of trade mark registration on May 31 1983, by the Bureau of Patents, Trade Marks and Technology Transfer (now the Intellectual Property Office). SLIHM started using the mark in the Philippines only in 1987 when it put up two hotels, the EDSA Shangri-La Hotel and Resort Inc and the Makati Shangri-La Hotel and Resort, Inc. However, use of the trade marks went as far back as 1962 when the Kuok family, owners of SLIHM, adopted the name Shangri-La in all of their hotels and hotel-related establishments around the world. DGCI's lone witness admitted in court that he travelled around Asia prior to 1982 and knew the Shangri-La Hotel in Hong Kong and even stayed in that hotel.
Clearly from the facts it is shown that DGCI has prior use of the marks in the Philippines for which it was granted registration. However, the Supreme Court found it ludicrous to believe that DGCI would come up with the exact same lettering for the word Shangri-La and the exact same logo to boot. In an unprecedented move which differed from its earlier decisions, the Supreme Court ruled in favor of SLIHM and held that: (1) priority is of no avail to the bad faith plaintiff: good faith is required in order to ensure that a second user may not merely take advantage of the goodwill established by the true owner, (2) DGCI not only failed to fulfil the two-month actual use requirement prior to filing, but was not even the owner of the marks, since the marks were already used by someone else, and (3) use of the mark to confer ownership need not be limited to use within the Philippines.
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Editha Hechanova |
