Case Summary (G.R. No. 159938)
Background of the Case and Procedural Posture
The case involves a dispute over trademark infringement concerning the "Shangri-La" mark and logo. Petitioners, as part of the Kuok Group of Companies, claimed legal and beneficial ownership of the mark and logo, asserting DGCI’s registration and use infringed on their rights. The Supreme Court previously granted the petition by setting aside the decisions of the Court of Appeals and Regional Trial Court dismissing the infringement complaint. DGCI filed a Motion for Reconsideration to reverse the Supreme Court’s March 31, 2006 Decision.
Grounds for Motion for Reconsideration Raised by DGCI
DGCI contested the sufficiency of petitioners’ certification of non-forum shopping and maintained that the Shangri-La mark and logo were adopted and validly used by the Kuok Group, which includes them. DGCI argued their registration was valid based on alleged prior use exceeding two months before their application, invoking Section 2-A of RA 166, which requires actual commercial use within the Philippines under the territoriality principle for trademark protection. They further argued a change in the theory of relief by petitioners was impermissible, disputed the accuracy of patent office registrations cited by petitioners, and insisted the lower courts’ findings of no bad faith on their part should be conclusive.
Supreme Court’s Analysis on the Merits of the Motion
The Court emphasized that DGCI merely reasserted previous arguments already considered in the contested Decision without raising new, compelling, or substantially persuasive reasons to warrant reconsideration. The Court reiterated that while a motion for reconsideration may revisit resolved issues, it must present valid grounds demonstrating error in law or fact, which DGCI failed to do.
Regarding trademark protection, the Court affirmed that the Decision properly interpreted RA 166 and upheld the territoriality principle, meaning protection pertains only to actual commercial use within the Philippines. The Court found DGCI’s registration void due to bad faith and failure to prove prior use for the required period, as testified by DGCI’s own witness. Thus, the Decision did not diminish trademark protection but denied it to DGCI due to these specific infirmities.
Clarification on Petitioners’ Theory of Relief
DGCI alleged petitioners shifted their theory from ownership of the mark to a mere right to be protected as a party potentially damaged. The Supreme Court clarified that petitioners never abandoned their claim as rightful owners. The Court cited the provision in RA 166 allowing "any person
...continue readingCase Syllabus (G.R. No. 159938)
Case Background and Procedural History
- Petitioners, comprising Shangri-La International Hotel Management, Ltd., Shangri-La Properties, Inc., Makati Shangri-La Hotel & Resort, Inc., and Kuok Philippines Properties, Inc., filed a complaint for trademark infringement (Civil Case No. Q-91-8476) against respondent Developers Group of Companies, Inc. (DGCI).
- The Regional Trial Court of Quezon City rendered a decision on March 8, 1996, which was appealed to the Court of Appeals. The Court of Appeals issued a Decision dated May 15, 2003, and a Resolution dated September 15, 2003.
- The Supreme Court granted the petition filed by petitioners in its Decision dated March 31, 2006, setting aside the decisions of the lower courts and dismissing DGCI’s complaint for infringement.
- DGCI subsequently filed a Motion for Reconsideration before the Supreme Court seeking to reverse its decision.
Issues Raised in Respondent’s Motion for Reconsideration
- DGCI challenged the sufficiency of the petitioners’ certification of non-forum shopping.
- It contended that the words "Shangri-La" and the “Sa” logo were legitimately adopted and used by the Kuok Group as part of their corporate and hotel names.
- DGCI asserted that petitioners’ claim of legal and beneficial ownership of the trademark and logo was baseless and unwarranted.
- The respondent argued that petitioners impermissibly shifted their legal theory from rightful owners to persons who may be damaged and thus entitled to relief.
- DGCI claimed errors in the Supreme Court’s findings regarding international registrations of the mark.
- It maintained that its own registration of the "Shangri-La" mark and "Sa" logo was valid due to prior use of at least two months before application.
- DGCI emphasized Section 2-A of Republic Act No. 166, underscoring the requirement of actual commercial use of trademarks in the Philippin