Facts:

• The case involves the ownership and use of the "Shangri-La" mark and logo.
• The Shangri-La Group filed a petition with the Bureau of Patents, Trademarks and Technology Transfer (BPTTT) on June 21, 1988, to cancel the registration of the "Shangri-La" mark and "S" device/logo issued to the Developers Group of Companies, Inc.
• The Shangri-La Group claimed prior use of the mark and logo since March 1962, with a special design created for their international hotels in 1975.
• The Developers Group opposed the Shangri-La Group's application, leading to Inter Partes Case No. 3529.
• On April 15, 1991, the Developers Group filed a complaint for infringement and damages with a prayer for injunction against the Shangri-La Group in the Regional Trial Court (RTC) of Quezon City, Branch 99, docketed as Civil Case No. Q-91-8476.
• The Shangri-La Group sought to suspend the infringement proceedings due to the pending administrative case before the BPTTT, but the trial court denied their motion.
• The Shangri-La Group's subsequent motions for reconsideration and inhibition of the presiding judge were also denied, prompting them to file a petition for certiorari with the Court of Appeals, which was dismissed.
• The Developers Group filed an urgent motion to suspend proceedings in the BPTTT case, citing the pending infringement case in the RTC, which was denied by the BPTTT.
• Both parties filed petitions for review with the Supreme Court, leading to the consolidation of G.R. Nos. 111580 and 114802.

Issue:

• (Unlock)

Ruling:

1. Yes, the adverse party can file a subsequent action for infringement with the regular courts despite the institution of an Inter Partes case for cancellation of a mark with the BPTTT.
2. The infringement case should not be dismissed or suspended due to the pe...(Unlock)

Ratio:

• The Supreme Court ruled that the earlier institution of an Inter Partes case by the Shangri-La Group for the cancellation of the "Shangri-La" mark and "S" device/logo with the BPTTT cannot bar the subsequent filing of an infringement case by the Developers Group.
• According to Section 151.2 of Republic Act No. 8293 (the Intellectual Property Code) and Rule 8, Section 7 of the Regulations on Inter Partes Proceedings, the filing of a cancellation petition does not constitute a prejudicial question that must be resolved before an infringement action can be decided.
• The Certificate of Registration No. 31904, upon which the infringement case is based, remains valid and subsisting until it is canceled by the Bureau or an infringement court.
• The Developers Group's certificate continues to serve as prima facie evidence of the validity of the registration and the registrant's exclusive right to use the mark.
• The issues before the BPTTT and the trial court were d...continue reading