Shangri-La vs Developers Group of

Companies
CA: favored DGCI.
a. kuok group does not have proof of
actual use in the commerce in the
Philippines.
b. Respondent, DGCI has the right to
FACTS:
the logo because of its prior use in the
Since 1969, the Kuok family owns and operates Philippines
hotels, it adopted the name Shangri-la as part of
Shangri-la moved for MR
the corporate name. To centralize the operations of
all Shangri-la, the board decided to hire a Issue
Singaporean artist to design the logo of Shangri-la
WON DGCI had the right over the registration of
hotels.
the mark and logo without prior actual commercial
use?
On the other hand, on 1983, the DGCI, respondent Held
filed an application for registration over the “S”
No, registration is not a mode of acquiring
logo.
ownership.
Section 2 of RA 166 sets out how ownership in
Shangri-la, upon learning of such application, filed trademark can be acquired:
a petition for cancellation of the registration of
one must be the owner thereof and must have
DGCI on the ground that it was fraudulently
actually used the mark in the commerce in
obtained.
Philippines for 2 months prior to the application
for registration
Arguments of Shangri-la:
a. Shangrila and its related companies had been On the other hand, section 2-a provides:
using the “S” logo since 1962. In this regard they
Actual use in commerce is also a test of
are protected by the Paris Convention for the
ownership….that the mark must not have been
Protection of Industrial Property.
appropriated by another.
b. DGCI had nor right to file because it did not have
prior actual commercial use.
By the provision of RA 166, one may be the owner
of the mark due to actual use thereof but not yet
Counter-argument of DGCI: have the right to register such ownership here due to
failure to use it within the Philippines for two
a. The first argument is a question of fact to be
months.
resolve by the RTC and CA.
b. The “S” logo used by Shangri-la is a mere
corporate name instead of using them as trademark Hence, Shangri-la has a better right over the “S”
or service mark logo.
RTC: in favor of DGCI
Petitioner appealed to the CA