Shangri-La International Hotel Management, Ltd. (SLIHM) Vs. 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

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.

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