1.

G.R. No. L-28554 February 28, 1983

UNNO COMMERCIAL ENTERPRISES, INCORPORATED, petitioner,

vs.
GENERAL MILLING CORPORATION and TIBURCIO S. EVALLE, in his capacity as
Director of Patents, respondents.
FACTS : The Court affirms respondent Director of Patent's decision declaring respondent
General Milling Corporation as the prior user of the trademark "All Montana" on wheat flour in
the Philippines and ordering the cancellation of the certificate of registration for the same
trademark previously issued in favor of petitioner Unno Commercial Enterprises, Incorporated,
it appearing that Unno Commercial Enterprises, Inc. merely acted as exclusive distributor of
All Montana wheat flour in the Philippines. Only the owner of a trademark, trade name or
service mark may apply for its registration and an importer, broker, indentor or distributor
acquires no rights to the trademark of the goods he is dealing with in the absence of a valid
transfer or assignment of the trade mark.
On December 11, 1962, respondent General Milling Corporation filed an application for the
registration of the trademark "All Montana" to be used in the sale of wheat flour. In view of the
fact that the same trademark was previously, registered in favor of petitioner Unno
Commercial Enterprises, Inc.. Respondent General Milling Corporation, in its application for
registration, alleged that it started using the trademark "All Montana" on August 31, 1955 and
subsequently was licensed to use the same by Centennial Mills, Inc. by virtue of a deed of
assignment executed on September 20, 1962. On the other hand petitioner Unno Commercial
Enterprises, Inc. argued that the same trademark had been registered in its favor on March 8,
1962 asserting that it started using the trademark on June 30, 1956, as indentor or broker for
S.H. Huang Bros. & Co., a local firm.
The Director of Patents, after hearing, ruled in favor of respondent General Milling
Corporation. and rendered its decision as follows:
ISSUE : Whether or not director of patents can issue cancellation of the certification of
registration?
HELD : The Court finds without merit petitioner's argument that the Director of Patents could
not order the cancellation of' its certificate of registration in an interference proceeding and
that the question of whether or not a certificate of registration is to be cancelled should have
been brought in cancellation proceedings. Under Rule 178 of the Rules of the Patent Office in
Trademark Cases, 14 the Director of Patents is expressly authorized to order the cancellation

of a registered mark or trade name or name or other mark of ownership in an inter partes
case, such as the interference proceeding at bar.
The right to register trademark is based on ownership. 4 When the applicant is not the owner
of the trademark being applied for, he has no right to apply for the registration of the same. 5
Under the Trademark Law only the owner of the trademark, trade name or service mark used
to distinguish his goods, business or service from the goods, business or service of others is
entitled to register the same. 6
The term owner does not include the importer of the goods bearing the trademark, trade
name, service mark, or other mark of ownership, unless such importer is actually the owner
thereof in the country from which the goods are imported. A local importer, however, may
make application for the registration of a foreign trademark, trade name or service mark if he
is duly authorized by the actual owner of the name or other mark of ownership. 7
Thus, petitioner's contention that it is the owner of the mark "All Montana" because of its
certificate of registration issued by the Director of Patents, must fail, since ownership of a
trademark is not acquired by the mere fact of registration alone. 9 Registration merely creates
a prima facie presumption of the validity of the registration, of the registrant's ownership of the
trademark and of the exclusive right to the use thereof. 10 Registration does not perfect a
trademark right. 11 As conceded itself by petitioner, evidence may be presented to overcome
the presumption. Prior use by one will controvert a claim of legal appropriation, by subsequent
users. In the case at bar, the Director of Patents found that "ample evidence was presented in
the record that Centennial Mills, Inc. was the owner and prior user in the Philippines of the
trademark 'All Montana' through a local importer and broker. Use of a trademark by a mere
importer, indentor or exporter (the Senior Party herein) inures to the benefit of the foreign
manufacturer whose goods are Identified by the trademark. The Junior Party has hereby
established a continuous chain of title and, consequently, prior adoption and use" and ruled
that "based on the facts established, it is safe to conclude that the Junior Party has
satisfactorily discharged the burden of proving priority of adoption and use and is entitled to
registration." It is well-settled that we are precluded from making further inquiry, since the
findings of fact of the Director of Patents in the absence of any showing that there was grave
abuse of discretion is binding on us 12 and the findings of facts by the Director of Patents are
deemed conclusive in the Supreme Court provided that they are supported by substantial
evidence. 13 Petitioner has failed to show that the findings of fact of the Director of Patents are
not substantially supported by evidence nor that any grave abuse of discretion was
committed.
2.

Kabushi Kaisha Isetan vs. lAC GR 75420, 15 November 1991;

Second Division, Gutierrez Jr., (J)

Facts: Kabushi Kaisha Isetan is a Japanese corporation, and owner of the trademark Isetan
and the Young leave design. Isetann Department Store, on the other hand, is a domestic
corporation, and owner fo the trademark Isetann and flover design. In 1980, Kabushi
Kaisha Isetan field petitions for the cancellation of the supplemental registration of Isetann
with the Philippine Patent Office. It also filed for the cancellation Intellectual Property Law,
2004 ( 3 ) Digests (Berne Guerrero) of the mark Isetan from the corporate name of Isetann
Department Store with the SEC. Both the SEC and the Director of Patents, eventually, ruled
against Kabushi Kaisha Isetan. It appealed to the intermediate Appellate Court, which denied
the petition for being filed out of time.
Issue: Whether Kabushi Kaisha Isetan has the right to seek for the cancellation of the word
Isetan from the corporate name of Isetann Department Store.
Held: No. A Fundamental principle in Trademark Law is that the actual use in commerce in the
Philippines is a pre-requisite to the acquisition of ownership over a trademark or a tradename.
Kabushi Kaisha Isetan has never conducted any business in the Philippines. It has never
promoted its trademark or tradename in the Philippines. It has absolutely no business goodwill
in the Philippines. It is unknown to Filipinos except the very few who may have noticed it while
traveling abroad. It has never paid a single centavo of tax to the Philippine Government.
Under the law, it has no right to the remedy it seeks. Isetann Department Store is entitled to
use its trademark in the Philippines.
3. Philip Morris vs. Court of Appeals
[GRN 91332 July 16, 1993.]
MELO, J.:

Facts:
Petitioners Philip Morris, Inc., Benson and Hedges (Canada), Inc., and Fabriques of Tabac
Reunies, S.A., are ascribing whimsical exercise of the faculty conferred upon magistrates by
Section 6, Rule 58 of the Revised Rules of Court when respondent Court of Appeals lifted the
writ of preliminary injunction it earlier had issued against Fortune Tobacco Corporation, herein
private respondent, from manufacturing and selling "MARK" cigarettes in the local market.
Banking on the thesis that petitioners' respective symbols "MARK VII", 'MARK TEN", and
"MARK", also for cigarettes, must be protected against unauthorized appropriation,
Philip Morris, Incorporated is a corporation organized under the laws of the State of Virginia,
United States of America, and does business at 100 Park Avenue, New York, New York,
United States of America. The two other plaintiff foreign corporations, which are wholly-owned
subsidiaries of Philip Morris, Inc., are similarly not doing business in the Philippines but are
suing on an isolated transaction.

Plaintiffs-petitioners asserted that defendant Fortune Tobacco Corporation has no right to

manufacture and sell cigarettes bearing the allegedly identical or confusingly similar
trademark' Plaintiffs admit in the complaint that "xxx they are not doing business in the
Philippines and are suing on an isolated transaction xxx'. This simply means that they are not
engaged in the sale, manufacture, importation, expor[tation and advertisement of their
cigarette products in the Philippines.
Issue:
Whether or not there has been an invasion o plaintiffs' right of property to such trademark or
trade name.
Whether of not there is a violation of the International Agreement on protection of trademarks.
Held:
There is no proof whatsoever that any of plaintiffs products which they seek to protect from
any adverse effect of the trademark applied for by defendant, is in actual use and available for
commercial purposes anywhere in the Philippines.
To sustain a successful prosecution of their suit for infringement, petitioners, as foreign
corporations not engaged in local commerce, rely on Section 21-A of the Trademark Law
reading as follows:
SECTION 21-A. Any foreign corporation or juristic person to which a mark or trade-name has
been registered or assigned under this act may bring an action hereunder for infringement, for
unfair competition, or false designation of origin and false description, whether or not it has
been licensed to do business in the Philippines under Act Numbered Fourteen hundred and
fiftynine, as amended, otherwise known as the Corporation Law, at the time it brings
complaint: Provided, That the country of which the said foreign corporation or juristic person is
a citizen or in which it is domiciled, by treaty, convention or law, grants a similar privilege to
corporate or juristic persons of the Philippines. (As inserted by Sec. 7 of Republic Act No.
638.) to drive home the point that they are not precluded from initiating a cause of action in the
Philippines on account of the principal perception that another entity is pirating their symbol
without any lawful authority to do so.
A fundamental principle of Philippine Trademark Law is that actual use in commerce in the
Philippines is a pre-requisite to the acquisition of ownership over a trademark or a tradename.
Adoption alone of a trade, ark would not give exclusive right thereto. Such right grows out of
their actual use. Adoption is not use. One may make advertisements, issue circulars, give out
price lists on certain goods; but these alone would not give exclusive right of use. For
trademark is a creation of use.
The records show that the petitioner has never conducted business in the Philippines. It has
never promoted its tradename of trademark in the Philippines. It is unknown to Filipinos
except the very few who may have noticed it while travelling abroad. It has paid a single
centavo of tax to the Philippine government. Under the law, it has no right to the remedy it
seeks.

In other words, petitioners may have the capacity to sue for infringement irrespective of lack of
business activity in the Philippines on account of Section 21-A of the Trademark Law but the
question of whether they have an exclusive right over the'symbol as to justify issuance of the
controversial writ will depend on actual use of their trademarks in the Philippines in line with
Sections 2 and 2-A of the same law. It is thus incongruous on petitioners to claim that when a
foreign corporation not licensed to do business in the Philippines files a complaint for
infringement, the entity need not be actually using its trademark in commerce in the
Philippines.
In view of the explicit representation of petitioners in the complaint that they are not engaged
in business in the Philippines, it inevitably follows that no conceivable damage can be suffered
by them not to mention the foremost consideration heretofore discussed on the absence of
their "right" to be protected.
Following universal acquiescence and comity, our municipal law on trademarks regarding the
requirement of actual use in the Philippines must subordinate an international agreement
inasmuch as the apparent clash is being decided by a municipal tribunal (Mortensen vs.
Peters, Great Britain, High Court of Judiciary of Scotland, 1906, 8 Sessions 93; Paras,
International Law and World Organization, 1971 Ed., p. 20). Withal, the fact that international
law has been made part of the law of the land does not by 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 a standing equal, not
superior, to national legislative enactments (Salonga and Yap, Public International Law, Fourth
ed., 1974, p. 16).
4. PHILIP MORRIS, INC. VS. FORTUNE TOBACCO CORPORATION

2. Resolution dated May 30, 20032 denying petitioners motion for reconsideration.

FACTS OF THE CASE:

Petitioner Philip Morris, Inc., a corporation (State of Virginia, U.S.A), is the
registered owner of the trademark MARK VII for cigarettes. (per Certificate of
Registration No. 18723 issued on April 26, 1973 by the Philippine Patents Office
(PPO)

Similarly, petitioner Benson & Hedges (Canada), Inc., a subsidiary of Philip

Morris, Inc., is the registered owner of the trademark MARK TEN for cigarettes
(PPO Certificate of Registration No. 11147)

Fabriques de Tabac Reunies, S.A. (Swiss company), another subsidiary of Philip

Morris, Inc., is the assignee of the trademark LARK, (Trademark Certificate of
Registration No. 19053) (originally registered in 1964 by Ligget and Myers Tobacco
Company)

Respondent Fortune Tobacco Corporation, a company organized in the

Philippines, manufactures and sells cigarettes using the trademark MARK.

Petitioners, on the claim that an infringement of their respective trademarks had

been committed, filed, on August 18, 1982, a Complaint for Infringement of
Trademark and Damages against respondent Fortune Tobacco Corporation,
docketed as Civil Case No. 47374 of the Regional Trial Court of Pasig, Branch
166.

(Equal Standing of International Law and Municipal Law)

Penned by: GARCIA, J.:

The decision under review summarized what happened next, as follows:

o

Petition for review under Rule 45 of the Rules of Court, petitioners Philip Morris, Inc.,
Benson & Hedges (Canada) Inc., and Fabriques de Tabac Reunies, S.A. (now Philip Morris
Products S.A.) seek the reversal and setting aside of the following issuances of the
Court of Appeals (CA) in CA-G.R. CV No. 66619: PETITION DENIED

1.
Decision dated January 21, 20031 affirming an earlier decision of the Regional Trial
Court of Pasig City, Branch 166, in its Civil Case No. 47374

Dismissed the complaint for trademark infringement and damages thereat

commenced by the petitioners against respondent Fortune Tobacco Corporation;
and

Prayer for the issuance of a preliminary injunction, [petitioners] alleged that they
are foreign corporations not doing business in the Philippines and are suing on an
isolated transaction.
o

Countries in which they are domiciled grant to corporate or juristic persons

of the Philippines the privilege to bring action for infringement, without
need of a license to do business in those countries.

[Petitioners] likewise manifested [being registered owners of the trademark MARK

VII and MARK TEN
o

registered the trademarks in their respective countries of origin

by virtue of the long and extensive usage of the same, these

trademarks have already gained international fame and
acceptance

[respondent], without any previous consent from any of the

[petitioners], manufactured and sold cigarettes bearing the
identical and/or confusingly similar trademark MARK

Motion for reconsideration denied by the CA (Resolution of May 30, 2003)

ISSUES

have caused and is likely to cause confusion or mistake, or

would deceive purchasers and the public in general into buying
these products under the impression and mistaken belief that
they are buying [petitioners] products.

Philippines is a signatory, [petitioners] pointed out that upon the request of

an interested party, a country of the Union may prohibit the use of a
trademark which constitutes a reproduction, imitation, or translation of a
mark already belonging to a person entitled to the benefits of the said
Convention. In accordance with Section 21-A in relation to Section 23
of Republic Act 166, as amended, they are entitled to relief in the form of
damages [and] the issuance of a writ of preliminary injunction which
should be made permanent.

[Respondent] filed its Answer denying [petitioners] material allegations

and averred [among other things] that MARK is a common word, which cannot
particularly identify a product to be the product of the [petitioners]

After the termination of the trial on the merits trial court rendered its Decision dated
November 3, 1999 dismissing the complaint and counterclaim after making a
finding that the [respondent] did not commit trademark infringement against the
[petitioners].

Petitioners seek petition for review (Court of Appeals):

o

(1) whether or not petitioners, as Philippine registrants of

trademarks, are entitled to enforce trademark rights in this country;

(2) whether or not respondent has committed trademark infringement

against petitioners by its use of the mark MARK for its cigarettes, hence
liable for damages.

Invoked provisions of the Paris Convention for the Protection of

Industrial and Intellectual Property (Paris Convention)
o

affirmed the trial courts decision on the underlying issue of

respondents liability for infringement.

The issue of whether or not there was infringement of the

[petitioners] trademarks by the [respondent] was likewise answered in the
negative. It expounded that in order for a name, symbol or device to constitute a
trademark, it must, either by itself or by association, point distinctly to the origin or
ownership of the article to which it is applied and be of such nature as to permit an
exclusive appropriation by one person.
Maintaining to have the standing to sue in the local forum and that respondent
has committed trademark infringement, petitioners went on appeal to the CA.
(Appellate recourse docket CA-G.R. CV No. 66619)
o

CA decision on January 21, 2003 (while ruling for petitioners on the matter
of their legal capacity to sue in this country for trademark infringement)

Respondent: issue the propriety of the petition as it allegedly raises questions of

fact.

The petition is bereft of merit.

Petition raises both questions of fact and law

question of law exists when the doubt or difference arises as to what the
law is on a certain state of facts

question of fact when the doubt or difference arises as to the truth or

falsity of alleged facts

Court is not the proper venue to consider factual issues as it is

not a trier of facts

Unless the factual findings of the appellate court are mistaken,

absurd, speculative, conflicting, tainted with grave abuse of
discretion, or contrary to the findings culled by the court of
origin, we will not disturb them

Petitioners: contentions should be treated as purely legal since they are assailing
erroneous conclusions deduced from a set of undisputed facts

A trademark is any distinctive word, name, symbol, emblem, sign, or device, or

any combination thereof adopted and used by a manufacturer or merchant on his
goods to identify and distinguish them from those manufactured, sold, or dealt in by
others.
o

A trademark deserves protection.

PETITIONER:

such right to sue does not necessarily mean protection of their

registered marks in the absence of actual use in the Philippines.

Thus clarified, what petitioners now harp about is their entitlement to protection on the
strength of registration of their trademarks in the Philippines.
HELD/RATIO:

Petitioners assert that, as corporate nationals of member-countries of the

Paris Union, they can sue before Philippine courts for infringement of
trademarks, or for unfair competition, without need of obtaining registration or a
license to do business in the Philippines, and without necessity of actually
doing business in the Philippines.
o

Right and mechanism are accorded by

As we ruled in G.R. No. 91332,18 :

1. RECIPROCITY REQUIREMENT

Section 21-A of Republic Act (R.A.) No. 166 or the

Trademark Law, as amended
Article 2 of the Paris Convention for the Protection of
Industrial Property, aka Paris Convention.

Not doing business in the Philippines does not mean that cigarettes bearing their
trademarks are not available and sold locally. Citing Converse Rubber
Corporation v. Universal Rubber Products, Inc., such availability and sale may
be effected through the acts of importers and distributors.

Entitlement to protection even in the absence of actual use of trademarks in

the country
o

Philippines adherence to the Trade Related Aspects of Intellectual

Property Rights or the TRIPS Agreement

enactment of R.A. No. 8293, or the Intellectual Property Code (IP

Code)

fame of a trademark may be acquired through promotion or advertising

with no explicit requirement of actual use in local trade or commerce

Registration of a trademark gives the registrant (petitioners) advantages denied

non-registrants or ordinary users (respondent)
o

validity of the registration

ownership and the exclusive right to use the registered marks

they may not successfully sue on the basis alone of their respective
certificates of registration of trademarks.
o

Petitioners: still foreign corporations

condition to availment of the rights and privileges & their trademarks

in this country:

In Leviton Industries v. Salvador

o

Court: reciprocity requirement is a condition sine qua non to filing a suit

by a foreign corporation

Before discussing petitioners claimed entitlement to enforce trademark rights in the

Philippines, it must be emphasized that their standing to sue in Philippine
courts had been recognized, and rightly so, by the CA

On top of Philippine registration, their country grants

substantially similar rights and privileges to Filipino
citizens pursuant to Section 21-A20 of R.A. No. 166.

Unless alleged in the complaint, would justify dismissal

complainant is a national of a Paris Convention- adhering country,

its allegation that it is suing under said Section 21-A would suffice,
because the reciprocal agreement between the two countries is
embodied and supplied by the Paris Convention

being considered part of Philippine municipal laws, can be

taken judicial notice of in infringement suits.

importance of actual commercial use of a trademark in the Philippines

notwithstanding the Paris Convention:
o

2. REGISTRATION VERSUS ACTUAL USE!!

members of the Paris Union does not automatically entitle petitioners to the
protection of their trademarks in this country absent actual use of the marks
in local commerce and trade

Philippines adherence to the Paris Convention effectively obligates the country

to honor and enforce its provisions( as regards the protection of industrial
property of foreign nationals in this country)
o

However, any protection accorded has to be made subject to the

limitations of Philippine laws.

Hence, despite Article 2 of the Paris Convention which substantially

provides that:

(1) nationals of member-countries shall have in this country

rights specially provided by the Convention as are consistent
with Philippine laws, and enjoy the privileges that Philippine
laws now grant or may hereafter grant to its national

(2) while no domicile requirement in the country where

protection is claimed shall be required of persons entitled to the
benefits of the Union for the enjoyment of any industrial property
rights

foreign nationals must still observe and comply with the

conditions imposed by Philippine law on its nationals.

R.A. No. 166 (as amended, specifically Sections 228 and 2-A29), mandates actual
use of the marks and/or emblems in local commerce and trade before they
may be registered and ownership thereof acquired
o

the petitioners cannot, therefore, dispense with the element of

actual use.

Their being nationals of member-countries of the Paris Union does not

alter the legal situation.

In Emerald Garment Mfg. Corporation v. Court of Appeals, the Court reiterated its
rulings in Sterling Products International, Inc. v. Farbenfabriken Bayer
Aktiengesellschaft, Kabushi Kaisha Isetan v. Intermediate Appellate Court, and
Philip Morris v. Court of Appeals and Fortune Tobacco Corporation on the

The provisions of the 1965 Paris Convention relied upon by private

respondent and Sec. 21-A of the Trademark Law were sufficiently
expounded upon and qualified in the recent case of Philip Morris, Inc.,
et. al. vs. Court of Appeals:

Following universal acquiescence and comity, our municipal law

on trademarks regarding the requirements of actual use in the
Philippines must subordinate an international agreement
inasmuch as the apparent clash is being decided by a municipal
tribunal.

Withal, the fact that international law has been made part of the
law of the land does not by 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 a standing
equal, not superior, to national legislative enactments.

A foreign corporation) may have the capacity to sue for

infringement but whether they have an exclusive right over
their symbol as to justify issuance of the controversial writ will
depend on actual use of their trademarks in the Philippines
in line with Sections 2 and 2-A of the same law.

It is thus incongruous for petitioners to claim that when a

foreign corporation not licensed to do business in the
Philippines files a complaint for infringement, the entity need
not be actually using its trademark in commerce in the
Philippines.

Such a foreign corporation may have the personality to file

a suit for infringement but it may not necessarily be entitled
to protection due to absence of actual use of the emblem in
the local market.

Registration of trademark cannot be deemed conclusive as to the actual use of

such trademark in local commerce.
o

registration does not confer upon the registrant an absolute right to the
registered mark.

merely constitutes prima facie evidence that the registrant is the owner of
the registered mark.

Evidence of non-usage of the mark rebuts the presumption of

trademark ownership

We stress that registration in the Philippines of trademarks does not ipso facto
convey an absolute right or exclusive ownership thereof.
o

Shangri-La International Hotel Management, Ltd. v. Development

Group of Companies, Inc.

Trademark is a creation of use

Actual use is a pre-requisite to exclusive ownership

Registration is only an administrative confirmation of the

existence of the right of ownership of the mark

does not perfect such right; actual use thereof is the

perfecting ingredient.

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.

different factual milieu

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.

foreign owner of a Philippine trademark, albeit not licensed to do, and not
so engaged in, business in the Philippines, may actually earn reputation or
goodwill for its goods in the country.

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)

But unlike in the instant case, evidence of actual sales of Converse

rubber shoes, such as sales invoices, receipts and the testimony of
a legitimate trader, was presented in Converse.

Ramon Syhunliong as DGCIs witness (businessman; named his restaurant business

Shangri-la)

Petitioners reliance on Converse Rubber Corporation is quite misplaced

This Court also finds the IP Code and the TRIPS Agreement to be inapplicable
o

the infringement complaint filed in August 1982 and tried under the aegis
of R.A. No. 166, as amended.

The IP Code (January 1, 1998) no provision on retroactivity; TRIPS

Agreement (December 16, 1994)

registration of a trademark unaccompanied by actual use thereof in the

country accords the registrant only the standing to sue for infringement in
Philippine courts. Entitlement to protection of such trademark in the country
is entirely a different matter.
5. Shangri-La International Hotel Management, Ltd. (SLIHM) Vs. Developers Group of
Companies, Inc. (DGCI)

DGCI filed a complaint for Infringement & Damages, lower courts judgment was in favor of
the respondent (DGCI)
1 Kuok Groups bulk use of the tradename was abroad, not in the Phils (until
1987)
2 The Paris Convention must yield to a municipal law
ISSUES:
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.

- In the Petition, Shen Dar primarily argued that the issuance of the COR in favor of EYIS
violated the IP CODE having first filed an application for the mark. Shen Dar further alleged
that EYIS was a mere distributor of air compressors bearing the mark "VESPA" which it
imported from Shen Dar. Shen Dar also argued that it had prior and exclusive right to the use
and registration of the mark "VESPA" in the Philippines under the provisions of the Paris
Convention.
- EYIS and Yap denied the claim of Shen Dar to be the true owners of the mark "VESPA"
being the sole assembler and fabricator of air compressors since the early 1990s. They further
alleged that the air compressors that Shen Dar allegedly supplied them bore the mark "SD" for
Shen Dar and not "VESPA." Moreover, EYIS argued that Shen Dar, not being the owner of the
mark, could not seek protection from the provisions of the Paris
Convention or the IP Code.

our municipal law on trademarks regarding the requirement of actual use in the Phils must
subordinate a international agreement

- BLA: granted VESPA in favour of EY Industrial

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

ISSUE:

petitioners separate personalities from their mother corporation be an obstacle in the

enforcement of their rights as part of Kuok Grp of Companies
7. EY vs SHEN DAR/ CBR-KING

- IPO upheld BLO and cancelled registration of Shen Dar

1) Whether the IPO Director General can validly cancel Shen Dars Certificate of
Registration Shen Dar challenges the propriety of such cancellation on the ground that
there was no petition for cancellation as required under Sec. 151 of RA 8293.

YES. The action of the Director General is proper. It is well within his functions under the
code.

FACTS:

"SEC. 7. The Director General and Deputies Director General.

- From 1997 to 2004, EYIS imported air compressors from Shen Dar through sales contracts.
In the corresponding Bill of Ladings, the items were described merely as air

"x x x

compressors. There is no documentary evidence to show that such air compressors were
marked "VESPA."
- On June 9, 1997, Shen Dar filed Trademark Application with the IPO for the mark "VESPA,
Chinese Characters and Device" for use on air compressors and welding machines .
- On July 28, 1999, EYIS filed Trademark Application also for the mark "VESPA," for use on
air compressors.

"(b) Exercise exclusive appellate jurisdiction over all decisions rendered by the Director of
Legal Affairs, the Director of Patents, the Director of Trademarks, the Director of Copyright
and Other Related Rights, and the Director of the Documentation, Information and Technology
Transfer Bureau. the decisions of the Director General in the exercise of his appellate
jurisdiction in respect of the decisions of the Director of Patents, the Director of Trademarks
and the Director of Copyright and Other Related Rights shall be appealable to the Court of
Appeals in accordance with the Rules of Court; and those in respect of the decisions of the
Director of the Documentation, Information and Technology Transfer Bureau shall be
appealable to the Secretary of Trade and Industry;

- On January 18, 2004, the IPO issued in favor of EYIS a COR. Thereafter, on February
8,2007, Shen Dar was also issued a COR
- Shen Dar filed a Petition for Cancellation of EYIS COR with the BLA

Sec 10.3. The Director General may by Regulations establish the procedure to govern the
implementation of this Section. (section 10) Bureau of Legal Affairs

Office Order No. 79, Series of 2005, provides under its Sec. 5 that:
Section 5. Rules of Procedure to be followed in the conduct of hearing of Inter Partes
cases.The rules of procedure herein contained primarily apply in the conduct of hearing of
Inter Partes cases. The Rules of Court may be applied suppletorily. The Bureau shall not be
bound by strict technical rules of procedure and evidence but may adopt, in the absence of
any applicable
rule herein, such mode of proceedings which is consistent with the requirements of fair play
and conducive to the just, speedy and inexpensive disposition of cases, and which will give
the Bureau the greatest possibility to focus on the contentious issues before it. (Emphasis
supplied.)

The above rule reflects the oft-repeated legal principle that quasi-judicial and administrative
bodies are not bound by technical rules of procedure. Such principle, however, is tempered by
fundamental evidentiary rules, including due process. Thus, we ruled in Aya-ay, Sr. v. Arpaphil
Shipping Corp.:

The fact that no petition for cancellation was filed against the COR issued to Shen Dar
does not preclude the cancellation of Shen Dars COR. It must be emphasized that,
during the hearing for the cancellation of EYIS COR before the BLA, Shen Dar tried to
establish that it, not EYIS, was the true owner of the mark "VESPA" and, thus, entitled
to have it registered. Shen Dar had more than sufficient opportunity to present its
evidence and argue its case, and it did. It was given its day in court and its right to due
process was respected. The IPO Director Generals disregard of the procedure for the
cancellation of a registered mark was a valid exercise of his discretion.

8. BIRKENSTOCK ORTHOPAEDIE GMBH AND CO. KG (formerly BIRKENSTOCK

ORTHOPAEDIE GMBH), petitioner, vs. PHILIPPINE SHOE EXPO MARKETING
CORPORATION, respondent.
[G.R. No. 194307. November 20, 2013.]
Petitioners Claim:
Petitioner filed a petition for cancellation of Registration No. 56334 on the ground that
it is the lawful and rightful owner of the Birkenstockmarks.

It is true that administrative and quasi-judicial bodies like the NLRC are not bound by the
technical rules of procedure in the adjudication of cases. However, this procedural rule should
not be construed as a license to disregard certain fundamental evidentiary rules.

Respondents Claim:

This was later reiterated in Lepanto Consolidated Mining Company v. Dumapis:29 While it is
true that administrative or quasi-judicial bodies like the NLRC are not bound by the technical
rules of procedure in the adjudication of cases, this procedural rule should not be construed
as a license to disregard certain fundamental evidentiary rules. The evidence presented must
at least have a modicum of admissibility for it to have probative value. Not only must there be
some evidence to support a finding or conclusion, but the evidence must be substantial.

marks in the Philippines for more than 16 years through the mark "BIRKENSTOCK

In response, respondent claims, inter alia, that:

(a) Respondent, together with its predecessor-in-interest, has been using Birkenstock
AND DEVICE".
(b) The marks covered by the subject applications are identical to the one covered by
Registration
No. 56334 and thus, petitioner has no right to the registration of such marks.
(c) Respondent's predecessor-in-interest likewise obtained a Certificate of Copyright

Substantial evidence is more than a mere scintilla. It means such relevant evidence as a

Registration No. 0-11193 for the word "BIRKENSTOCK".

(d) While respondent and its predecessor-in-interest failed to file the 10th Year DAU,

reasonable mind might accept as adequate to support a conclusion. Thus, even though
technical

it continued the use of "BIRKENSTOCK AND DEVICE" in lawful commerce.

(e) to record its continued ownership and exclusive right to use the "BIRKENSTOCK"

rules of evidence are not strictly complied with before the LA and the NLRC, their decision
must

marks, it has filed TASN 4-2006-010273 as a "re-application" of its old registration,

be based on evidence that must, at the very least, be substantial.

Registration No. 56334.

Issue/s:

Whether or not the subject marks should be allowed registration in the name of

the registrant shall file in the Patent Office an affidavit showing that the mark or

petitioner?

trade-name is still in use

Courts ruling:

The aforementioned provision clearly reveals that failure to file the DAU within the
requisite period results in the automatic cancellation of registration of a trademark. In

Yes, It is well-settled that "the rules of procedure are mere tools aimed at facilitating

turn, such failure is tantamount to the abandonment or withdrawal of any right or

the attainment of justice, rather than its frustration. A strict and rigid application of the

interest the registrant has over his trademark.

rules must always be eschewed when it would subvert the primary objective of the
rules, that is, to enhance fair trials and expedite justice. Technicalities should never

Lastly, in the instant case, petitioner was able to establish that it is the owner of the

be used to defeat the substantive rights of the other party.

mark "BIRKENSTOCK." It submitted evidence relating to the origin and history of

"BIRKENSTOCK" and its use in commerce long before respondent was able to

In the case at bar, while petitioner submitted mere photocopies as documentary

register the same here in the Philippines. It has sufficiently proven that

evidence in the Consolidated Opposition Cases, it should be noted that the IPO had

"BIRKENSTOCK" was first adopted in Europe in 1774 by its inventor, Johann

already obtained the originals of such documentary evidence in the related

Cancellation Case earlier filed before it.

Birkenstock, a shoemaker, on his line of quality footwear and thereafter, numerous

generations of his kin continuously engaged in the manufacture and sale of shoes

In addition, Section 12 of Republic Act No. (RA) 166, requires the filing of a DAU on

and sandals bearing the mark "BIRKENSTOCK" until it became the entity now known

specified periods, to wit: That registrations under the provisions of this Act shall

as the petitioner.

be cancelled by the Director, unless within one year following the fifth, tenth
and fifteenth anniversaries of the date of issue of the certificate of registration,