Case Summary (G.R. No. 190706)
BLA Rulings in Unfair Competition and Inter Partes Cases
In the IPV Case, the BLA found petitioners liable for unfair competition in using “THE ST. FRANCIS TOWERS” but not “THE ST. FRANCIS SHANGRI-LA PLACE,” recognizing respondent’s goodwill in the Ortigas Center context. In the St. Francis Towers IP Case, the BLA denied registration of “THE ST. FRANCIS TOWERS” as confusingly similar to “ST. FRANCIS.” In the St. Francis Shangri-La IP Case, the BLA allowed registration of “THE ST. FRANCIS SHANGRI-LA PLACE,” finding no exclusive rights in “ST. FRANCIS” and adequate differentiation through “Shangri-La.”
IPO Director-General’s Decision
Affirming the BLA’s refusal to register “THE ST. FRANCIS TOWERS” and dismissal of unfair competition for “THE ST. FRANCIS SHANGRI-LA PLACE,” the IPO Director-General reversed the finding of unfair competition for “THE ST. FRANCIS TOWERS.” He ruled that “ST. FRANCIS” is geographically descriptive of the development location, barring exclusivity absent secondary meaning, and held that no deception or intent to mislead arose from petitioners’ use of the marks.
Court of Appeals Decision
The Court of Appeals rejected the geographic descriptiveness rationale, affirmed denial of registration for “ST. FRANCIS TOWERS,” and found petitioners guilty of unfair competition for both marks. It ordered petitioners to cease use of “ST. FRANCIS” (alone or in composite) and to pay a fine of ₱200,000, emphasizing respondent’s decade-long exclusive use and goodwill, and invoking the doctrine of secondary meaning even if the mark were geographically descriptive.
Issue Before the Supreme Court
Whether petitioners committed unfair competition under Section 168 of the Intellectual Property Code by using “THE ST. FRANCIS TOWERS” and “THE ST. FRANCIS SHANGRI-LA PLACE.”
Supreme Court’s Analysis on Unfair Competition
The Court reiterated that unfair competition requires intent to deceive or acts calculated to deceive ordinary buyers under ordinary trade conditions. It noted Section 168.2’s elements—deception or devices contrary to good faith—and Section 168.3’s illustrative acts. Actual fraud or probable deception must be shown through factual circumstances.
Geographical Descriptiveness and Secondary Meaning
The Court agreed with the IPO Director-General that “ST. FRANCIS” is a geographically descriptive term denoting the location of the developments. Under Section 123.1(j), descriptive geographical marks are in the public domain and ineligible for exclusive appropriation unless they acquire secondary meaning. Section 123.2 requires proof of substantial, continuous, and exclusive use for f
...continue readingCase Syllabus (G.R. No. 190706)
Facts of the Case
- St. Francis Development Corporation (“respondent”) is a Philippine real estate developer that built and operates the St. Francis Square Commercial Center (est. 1992) and related property projects in Ortigas Center, Mandaluyong City.
- Respondent has used the mark “ST. FRANCIS” continuously in connection with its real estate developments, including a shopping mall called “St. Francis Square” and planned St. Francis Towers.
- Petitioners Shang Properties Realty Corporation and Shang Properties, Inc. (“petitioners”) filed for registration of the marks “THE ST. FRANCIS TOWERS” and “THE ST. FRANCIS SHANGRI-LA PLACE” for their own real estate projects.
- Respondent alleged unfair competition, false or fraudulent declaration, and damages arising from petitioners’ use and registration attempts of these marks, arguing that the public associates “ST. FRANCIS” exclusively with respondent’s developments.
- Petitioners denied wrongdoing, contending that “ST. FRANCIS” is geographically descriptive (referring to St. Francis Avenue and St. Francis Street/Bank Drive in Ortigas Center) and thus not exclusively appropriable.
Procedural History
- Respondent filed three separate cases before the Intellectual Property Office (IPO) – Bureau of Legal Affairs (BLA):
• IPV Case No. 10-2005-00030 (unfair competition, false declaration, damages)
• Inter Partes Case No. 14-2006-00098 (opposition to registration of “THE ST. FRANCIS TOWERS”)
• IPC No. 14-2007-00218 (opposition to registration of “THE ST. FRANCIS SHANGRI-LA PLACE”) - The BLA rendered decisions between December 2006 and March 2008 addressing each complaint.
- The IPO Director-General consolidated and reviewed the appeals of the IPV Case and the St. Francis Towers IP Case, issuing a Decision on September 3, 2008.
- Respondent appealed the IPO Director-General’s ruling on unfair competition to the Court of Appeals (CA), which rendered its Decision on December 18, 2009.
- Petitioners then brought the case to the Supreme Court via petition for review on certiorari under Rule 45.
BLA Decisions
- In the