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Prof. Joselito Guianan Chan's The Labor Code of the Philippines, Annotated Labor Standards & Social Legislation Volume I of a 3-Volume Series 2019 Edition (3rd Revised Edition)
 

 
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UNITED STATES SUPREME COURT JURISPRUDENCE
 

 
PHILIPPINE SUPREME COURT JURISPRUDENCE
 

   
June-2001 Jurisprudence                 

  • A.M. No. P-00-1446 June 6, 2001 - PATERNO R. PLANTILLA v. RODRIGO G. BALIWAG

  • A.M. No. P-91-642 June 6, 2001 - SOLEDAD LAURO v. EFREN LAURO

  • G.R. No. 92328 June 6, 2001 - DAP MINING ASSO. v. COURT OF APPEALS, ET AL.

  • G.R. No. 100579 June 6, 2001 - LEANDRO P. GARCIA v. COURT OF APPEALS, ET AL.

  • G.R. No. 113918 June 6, 2001 - MARCELINA G. TRINIDAD, ET AL. v. COURT OF APPEALS, ET AL.

  • G.R. No. 121272 June 6, 2001 - PEOPLE OF THE PHIL. v. REYDERICK LAGO

  • G.R. No. 122353 June 6, 2001 - EVANGELINE DANAO v. COURT OF APPEALS, ET AL.

  • G.R. No. 129534 & 141169 June 6, 2001 - PEOPLE OF THE PHIL. v. NESTOR MACANDOG, ET AL.

  • G.R. No. 138949 June 6, 2001 - UNION BANK OF THE PHIL. v. SEC

  • G.R. No. 138971 June 6, 2001 - PEZA v. RUMOLDO R FERNANDEZ

  • G.R. No. 139034 June 6, 2001 - DEVELOPMENT BANK OF THE PHIL. v. COURT OF APPEALS, ET AL.

  • G.R. No. 139323 June 6, 2001 - PEOPLE OF THE PHIL. v. CARLO ELLASOS, ET AL.

  • G.R. No. 140128 June 6, 2001 - ARNOLD P. MOLLANEDA v. LEONIDA C. UMACOB

  • G.R. No. 140277 June 6, 2001 - PEOPLE OF THE PHIL v. GUILLERMO BALDAGO, ET AL.

  • G.R. No. 141529 June 6, 2001 - FRANCISCO YAP, JR. v. COURT OF APPEALS, ET AL.

  • G.R. No. 142888 June 6, 2001 - EVELIO P. BARATA v. BENJAMIN ABALOS JR.

  • G.R. No. 143561 June 6, 2001 - JONATHAN D. CARIAGA v. COURT OF APPEALS, ET AL.

  • G.R. No. 110335 June 18, 2001 - IGNACIO GONZALES, ET AL. v. COURT OF APPEALS, ET AL.

  • A.M. No. RTJ-01-1615 June 19, 2001 - WINNIE BAJET v. PEDRO M. AREOLA

  • A.M. No. RTJ-01-1633 June 19, 2001 - ANTONIO and ELSA FORTUNA v. MA. NIMFA PENACO-SITACA, ET AL.

  • G.R. No. 99433 June 19, 2001 - PROJECT BUILDERS, ET AL. v. COURT OF APPEALS, ET AL.

  • G.R. No. 114944 June 19, 2001 - MANUEL C. ROXAS, ET AL. v. CONRADO M. VASQUEZ, ET AL.

  • G.R. No. 120701 June 19, 2001 - PEOPLE OF THE PHIL. v. JONATHAN CRISANTO

  • G.R. No. 123916 June 19, 2001 - PEOPLE OF THE PHIL. v. LYNTON ASUNCION

  • G.R. No. 130605 June 19, 2001 - PEOPLE OF THE PHIL. v. FELIX UGANAP, ET AL.

  • G.R. No. 132160 June 19, 2001 - PEOPLE OF THE PHIL. v. MARIO DE LEON, ET AL.

  • G.R. No. 132223 June 19, 2001 - BONIFACIA P. VANCIL v. HELEN G. BELMES

  • G.R. No. 134895 June 19, 2001 - STA. LUCIA REALTY and DEV’T., ET AL. v. LETICIA CABRIGAS, ET AL.

  • G.R. No. 137164 June 19, 2001 - PEOPLE OF THE PHIL. v. ALBERT NUBLA

  • G.R. No. 137752 June 19, 2001 - PEOPLE OF THE PHIL. v. ROBERT AYUNGON

  • G.R. Nos. 138298 & 138982 June 19, 2001 - RAOUL B. DEL MAR v. PAGCOR, ET AL.

  • G.R. No. 139313 June 19, 2001 - PEOPLE OF THE PHIL. v. FLORANTE LEAL

  • G.R. No. 140690 June 19, 2001 - PEOPLE OF THE PHIL. v. NAZAR U. CHAVEZ

  • G.R. No. 141441 June 19, 2001 - JOSE SUAN v. NLRC, ET AL.

  • A.M. No. 00-10-230-MTCC June 20, 2001 - RE: JULIAN C. OCAMPO III AND RENATO C. SAN JUAN

  • A.M. No. 00-11-521-RTC June 20, 2001 - RE: AWOL OF MS. LILIAN B. BANTOG

  • A.M. No. P-99-1346 June 20, 2001 - RESTITUTO L. CASTRO v. CARLOS BAGUE

  • A.M. No. RTJ-00-1606 June 20, 2001 - PATRIA MAQUIRAN v. LILIA G. LOPEZ

  • G.R. No. 84831 June 20, 2001 - PACENCIO ABEJARON v. FELIX NABASA, ET AL.

  • G.R. No. 109666 June 20, 2001 - ROGERIO R. OLAGUER, ET AL. v. EUFEMIO DOMINGO, ET AL.

  • G.R. No. 113564 June 20, 2001 - INOCENCIA YU DINO v. COURT OF APPEALS, ET AL.

  • G.R. No. 115851 June 20, 2001 - LA JOLLA v. COURT OF APPEALS, ET AL.

  • G.R. No. 127129 June 20, 2001 - PEOPLE OF THE PHIL. v. ROLANDO CABAYA, ET AL.

  • G.R. No. 128617 June 20, 2001 - PEOPLE OF THE PHIL. v. CESAR BACUS

  • G.R. Nos. 129292-93 June 20, 2001 - PEOPLE OF THE PHIL. v. ARLENGEN DEGALA

  • G.R. No. 130524 June 20, 2001 - PEOPLE OF THE PHIL. v. RUDY MADIA

  • G.R. No. 131036 June 20, 2001 - PEOPLE OF THE PHIL. v. DONATO DEL ROSARIO

  • G.R. Nos. 135976-80 June 20, 2001 - PEOPLE OF THE PHIL. v. CLAUDIO GALENO

  • G.R. No. 138629 June 20, 2001 - PEOPLE OF THE PHIL. v. RAMON CAMACHO

  • G.R. No. 139430 June 20, 2001 - EDI STAFF BUILDERS INTERNATIONAL v. FERMINA D. MAGSINO

  • G.R. Nos. 139445-46 June 20, 2001 - PEOPLE OF THE PHIL. v. RODRIGO GONZALES

  • G.R. No. 142304 June 20, 2001 - CITY OF MANILA v. OSCAR SERRANO, ET AL.

  • A.M. No. MTJ-01-1342 June 21, 2001 - BISHOP CRISOSTOMO A. YALUNG, ET AL. v. ENRIQUE M. PASCUA

  • G.R. No. 108558 June 21, 2001 - ANDREA TABUSO, ET AL. v. COURT OF APPEALS, ET AL.

  • G.R. No. 109197 June 21, 2001 - JAYME C. UY, ET AL. v. COURT OF APPEALS, ET AL.

  • G.R. Nos. 111580 & 114802 June 21, 2001 - SHANGRI-LA INTERNATIONAL HOTEL MNGT. LTD. ET AL. v. COURT OF APPEALS, ET AL.

  • G.R. Nos. 116200-02 June 21, 2001 - PEOPLE OF THE PHIL. v. ELEUTERIO TAN, ET AL.

  • G.R. No. 131131 June 21, 2001 - PEOPLE OF THE PHIL. v. ABELARDO SALONGA

  • G.R. No. 134138 June 21, 2001 - PEOPLE OF THE PHIL. v. EDMUNDO BRIONES AYTALIN

  • G.R. Nos. 135552-53 June 21, 2001 - PEOPLE OF THE PHIL. v. ABEL ABACIA, ET AL.

  • G.R. No. 139542 June 21, 2001 - PEOPLE OF THE PHIL. v. INOCENCIO GONZALEZ

  • G.R. No. 140206 June 21, 2001 - PEOPLE OF THE PHIL. v. RODOLFO MATYAONG

  • G.R. No. 142023 June 21, 2001 - SANNY B. GINETE v. SUNRISE MANNING AGENCY, ET AL.

  • G.R. No. 103068 June 22, 2001 - MEAT PACKING CORP. OF THE PHIL. v. SANDIGANBAYAN, ET AL.

  • A.M. No. MTJ-96-1110 June 25, 2001 - MANUEL N. MAMBA, ET AL. v. DOMINADOR L. GARCIA

  • G.R. No. 116710 June 25, 2001 - DANILO D. MENDOZA v. COURT OF APPEALS, ET AL.

  • G.R. No. 117857 June 25, 2001 - LUIS S. WONG v. COURT OF APPEALS, ET AL.

  • G.R. No. 128126 June 25, 2001 - PEOPLE OF THE PHIL. v. RAFAEL M. CATAPANG

  • G.R. No. 132051 June 25, 2001 - TALA REALTY SERVICES CORP. v. BANCO FILIPINO SAVINGS AND MORTGAGE BANK

  • G.R. No. 134068 June 25, 2001 - UNION BANK OF THE PHIL. v. COURT OF APPEALS, ET AL.

  • G.R. No. 136221 June 25, 2001 - EQUATORIAL REALTY DEVELOPMENT v. MAYFAIR THEATER

  • G.R. No. 136382 June 25, 2001 - PEOPLE OF THE PHIL. v. FIDEL ALBORIDA

  • G.R. Nos. 138439-41 June 25, 2001 - PEOPLE OF THE PHIL. v. MARIO PANGANIBAN

  • G.R. No. 141141 June 25, 2001 - PAGCOR v. CARLOS P. RILLORAZA

  • G.R. No. 141801 June 25, 2001 - SOLOMON ALVAREZ v. COURT OF APPEALS

  • G.R. No. 143428 June 25, 2001 - SANDOVAL SHIPYARDS, ET AL. v. PRISCO PEPITO, ET AL.

  • A.M. No. 99-11-423-RTC June 26, 2001 - RE: Report on the Judicial Audit Conducted in the Regional Trial Court

  • A.M. No. RTJ-99-1461 June 26, 2001 - RICARDO DELA CRUZ v. HERMINIA M. PASCUA

  • A.M. No. RTJ-99-1486 June 26, 2001 - OFFICE OF THE COURT ADMINISTRATOR v. ISMAEL SANCHEZ

  • G.R. Nos. 110547-50 & 114526-667 June 26, 2001 - JOSE SAYSON v. SANDIGANBAYAN ET AL.

  • G.R. No. 120859 June 26, 2001 - METROPOLITAN BANK AND TRUST COMPANY v. FRANCISCO Y. WONG

  • G.R. No. 123542 June 26, 2001 - PEOPLE OF THE PHIL. v. ROGELIO BULOS

  • G.R. Nos. 132848-49 June 26, 2001 - PHILROCK v. CONSTRUCTION INDUSTRY ARBITRATION COMMISSION, ET AL.

  • G.R. No. 133990 June 26, 2001 - PEOPLE OF THE PHIL. v. HECTOR MARIANO

  • G.R. No. 134764 June 26, 2001 - PEOPLE OF THE PHIL v. BENJAMIN FABIA

  • G.R. Nos. 139626-27 June 26, 2001 - PEOPLE OF THE PHIL. v. DOMINGO DELA CRUZ

  • G.R. No. 143204 June 26, 2001 - HYATT TAXI SERVICES INC. v. RUSTOM M. CATINOY

  • G.R. Nos. 147589 & 147613 June 26, 2001 - ANG BAGONG BAYANI-OFW LABOR PARTY, ET AL. v. COMELEC, ET AL.

  • G.R. No. 130661 June 27, 2001 - PEOPLE OF THE PHIL. v. DANILO I. TORRES, ET AL.

  • G.R. No. 135882 June 27, 2001 - LOURDES T. MARQUEZ v. ANIANO A. DESIERTO, ET AL.

  • G.R. No. 140001 June 27, 2001 - PEOPLE OF THE PHIL. v. EDUARDO BUENAFLOR

  • A.C. No. 3910 June 28, 2001 - JOSE S. DUCAT v. ARSENIO C. VILLALON, ET AL.

  • A.C. No. 4073 June 28, 2001 - ARACELI SIPIN-NABOR v. BENJAMIN BATERINA

  • A.M. No. P-01-1480 June 28, 2001.

    AMADO S. CAGUIOA v. CRISANTO FLORA

  • A.M. No. P-99-1343 June 28, 2001 - ORLANDO T. MENDOZA v. ROSBERT M. TUQUERO, ET AL.

  • A.M. No. RTJ-00-1576 June 28, 2001 - SIMPLICIO ALIB v. EMMA C. LABAYEN

  • G.R. No. 105364 June 28, 2001 - PHIL. VETERANS BANK EMPLOYEES UNION-N.U.B.E., ET AL. v. BENJAMIN VEGA, ET AL.

  • G.R. No. 110813 June 28, 2001 - PEOPLE OF THE PHIL. v. ERNESTO PARDUA, ET AL.

  • G.R. No. 110914 June 28, 2001 - ALFREDO CANUTO; JR., ET AL. v. NLRC, ET AL.

  • G.R. Nos. 112453-56 June 28, 2001 - PEOPLE OF THE PHIL. v. GERARDO LATUPAN

  • G.R. Nos. 112563 & 110647 June 28, 2001 - HEIRS OF KISHINCHAND HIRANAND DIALDAS v. COURT OF APPEALS, ET AL.

  • G.R. No. 120630 June 28, 2001 - PEOPLE OF THE PHIL. v. MARCELO PALERMO

  • G.R. No. 131954 June 28, 2001 - ASELA B. MONTECILLO, ET AL v. CIVIL SERVICE COMMISSION

  • G.R. Nos. 132026-27 June 28, 2001 - PEOPLE OF THE PHIL. v. MARIO ABENDAN, ET AL.

  • G.R. No. 132362 June 28, 2001 - PIO BARRETTO REALTY DEV’T. CORP. v. COURT OF APPEALS, ET AL.

  • G.R. No. 132837 June 28, 2001 - JO CINEMA CORP., ET AL. v. LOLITA C. ABELLANA, ET AL.

  • G.R. No. 133605 June 28, 2001 - PEOPLE OF THE PHIL. v. BENJAMIN BARRIAS

  • G.R. No. 135846 June 28, 2001 - PEOPLE OF THE PHIL v. NOEL ORTEGA

  • G.R. No. 138270 June 28, 2001 - SEA POWER SHIPPING ENTERPRISES INC. v. COURT OF APPEALS, ET AL.

  • G.R. No. 142314 June 28, 2001 - MC ENGINEERING, ET AL. v. NLRC, ET AL.

  • G.R. No. 143723 June 28, 2001 - LITONJUA GROUP OF CO.’s., ET AL. v. TERESITA VIGAN

  • G.R. No. 144113 June 28, 2001 - EDWEL MAANDAL v. PEOPLE OF THE PHIL

  • G.R. No. 144942 June 28, 2001 - COMMISSIONER OF INTERNAL REVENUE v. LA SUERTE CIGAR.

  • G.R. No. 146062 June 28, 2001 - SANTIAGO ESLABAN v. CLARITA VDA. DE ONORIO

  • A.M. No. 00 4-166-RTC June 29, 2001 - Re: Report on the Judicial Audit

  • A.M. No. 01-4-03-SC June 29, 2001 - HERNANDO PEREZ, ET AL. v. JOSEPH E. ESTRADA, ET AL.

  • A.M. No. P-00-1380 June 29, 2001 - GLORIA O. DINO v. FRANCISCO DUMUKMAT

  • G.R. No. 110480 June 29, 2001 - BANGKO SILANGAN DEVELOPMENT BANK v. COURT OF APPEALS, ET AL.

  • G.R. No. 111860 June 29, 2001 - PEOPLE OF THE PHIL. v. JESUS CLEDORO

  • G.R. No. 116092 June 29, 2001 - SUSANA VDA. DE COCHINGYAN, ET AL. v. COURT OF APPEALS, ET AL.

  • G.R. No. 118251 June 29, 2001 - METROPOLITAN BANK AND TRUST COMPANY v. REGINO T. VERIDIANO II, ET AL.

  • G.R. No. 121597 June 29, 2001 - PHIL. NATIONAL BANK v. COURT OF APPEALS, ET AL.

  • G.R. No. 125944 June 29, 2001 - DANILO SOLANGON, ET AL. v. JOSE AVELINO SALAZAR

  • G.R. No. 126396 June 29, 2001 - PEOPLE OF THE PHIL v. FELIXBERTO LAO-AS

  • G.R. No. 128705 June 29, 2001 - CONRADO AGUILAR v. COMMERCIAL SAVINGS BANK, ET AL.

  • G.R. No. 129782 June 29, 2001 - PEOPLE OF THE PHIL. v. BALWINDER SINGH, ET AL.

  • G.R. No. 131968 June 29, 2001 - ERNESTO PENGSON, ET AL v. MIGUEL OCAMPO, ET AL.

  • G.R. No. 132059 June 29, 2001 - PEOPLE OF THE PHIL. v. WENEFREDO DIMSON ASOY

  • G.R. No. 138598 June 29, 2001 - ASSET PRIVATIZATION TRUST v. SANDIGANBAYAN, ET AL.

  • G.R. No. 144542 June 29, 2001 - FRANCISCO DELA PEÑA, ET AL v. SANDIGANBAYAN, ET AL.

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    G.R. Nos. 111580 & 114802   June 21, 2001 - SHANGRI-LA INTERNATIONAL HOTEL MNGT. LTD. ET AL. v. COURT OF APPEALS, ET AL.

     
    PHILIPPINE SUPREME COURT DECISIONS

    FIRST DIVISION

    [G.R. No. 111580. June 21, 2001.]

    SHANGRI-LA INTERNATIONAL HOTEL MANAGEMENT LTD., SHANGRI-LA PROPERTIES, INC., MAKATI SHANGRI-LA HOTEL AND RESORT, INC. and KUOK PHILIPPINE PROPERTIES, INC., Petitioners, v. THE COURT OF APPEALS, HON. FELIX M. DE GUZMAN, as Judge, RTC of Quezon City, Branch 99 and DEVELOPERS GROUP OF COMPANIES, INC., Respondents.

    [G.R. No. 114802. June 21, 2001.]

    DEVELOPERS GROUP OF COMPANIES, INC., Petitioner, v. THE COURT OF APPEALS, HON. IGNACIO S. SAPALO, in his capacity as Director, Bureau of Patents, Trademarks and Technology Transfer, and SHANGRI-LA INTERNATIONAL HOTEL MANAGEMENT, LTD., Respondents.

    D E C I S I O N


    YNARES-SANTIAGO, J.:


    On June 21, 1988, the Shangri-La International Hotel Management, Ltd., Shangri-La Properties, Inc., Makati Shangri-La Hotel and Resort, Inc. and Kuok Philippine Properties, Inc. (hereinafter collectively referred as the "Shangri-La Group"), filed with the Bureau of Patents, Trademarks and Technology Transfer (BPTTT) a petition, docketed as Inter Partes Case No. 3145, praying for the cancellation of the registration of the "Shangri-La" mark and "S" device/logo issued to the Developers Group of Companies, Inc., on the ground that the same was illegally and fraudulently obtained and appropriated for the latter’s restaurant business. The Shangri-La Group alleged that it is the legal and beneficial owners of the subject mark and logo; that it has been using the said mark and logo for its corporate affairs and business since March 1962 and caused the same to be specially designed for their international hotels in 1975, much earlier than the alleged first use thereof by the Developers Group in 1982.chanrob1es virtua1 1aw 1ibrary

    Likewise, the Shangri-La Group filed with the BPTTT its own application for registration of the subject mark and logo. The Developers Group filed an opposition to the application, which was docketed as Inter Partes Case No. 3529.

    Almost three (3) years later, or on April 15, 1991, the Developers Group instituted with the Regional Trial Court of Quezon City, Branch 99, a complaint for infringement and damages with prayer for injunction, docketed as Civil Case No. Q-91-8476, against the Shangri-La Group.

    On January 8, 1992, the Shangri-La Group moved for the suspension of the proceedings in the infringement case on account of the pendency of the administrative proceedings before the BPTTT. 1 This was denied by the trial court in a Resolution issued on January 16, 1992. 2 The Shangri-La Group filed a Motion for Reconsideration. 3 Soon thereafter, it also filed a Motion to Inhibit against Presiding Judge Felix M. de Guzman. 4 On July 1, 1992, the trial court denied both motions. 5

    The Shangri-La Group filed a petition for certiorari before the Court of Appeals, docketed as CA-G.R. SP No. 29006. 6 On February 15, 1993, the Court of Appeals rendered its decision dismissing the petition for certiorari. 7 The Shangri-La Group filed a Motion for Reconsideration, which was denied on the ground that the same presented no new matter that warranted consideration. 8

    Hence, the instant petition, docketed as G.R. No. 111580, based on the following grounds:chanrob1es virtual 1aw library

    THE HONORABLE COURT OF APPEALS GRAVELY ABUSED ITS DISCRETION AND COMMITTED A REVERSIBLE ERROR IN NOT FINDING THAT:chanrob1es virtual 1aw library

    I. THE INFRINGEMENT CASE SHOULD BE DISMISSED OR AT LEAST SUSPENDED; AND

    II. THE HONORABLE PRESIDING JUDGE SHOULD INHIBIT HIMSELF FROM TRYING THE INFRINGEMENT CASE. 9

    Meanwhile, on October 28, 1991, the Developers Group filed in Inter Partes Case No. 3145 an Urgent Motion to Suspend Proceedings, invoking the pendency of the infringement case it filed before the Regional Trial Court of Quezon City. 10 On January 10, 1992, the BPTTT, through Director Ignacio S. Sapalo, issued an Order denying the Motion. 11 A Motion for Reconsideration was filed which was, however, denied in a Resolution dated February 11, 1992. 12

    From the denial by the BPTTT of its Urgent Motion to Suspend Proceedings and Motion for Reconsideration, the Developers Group filed with the Court of Appeals a petition for certiorari, mandamus and prohibition, docketed as CA-G.R. SP No. 27742. 13 On March 29, 1994, the Court of Appeals dismissed the petition for lack of merit. 14

    A petition for review was thereafter filed, docketed as G.R. No. 114802, raising the issue of:chanrob1es virtual 1aw library

    WHETHER OR NOT, GIVEN THE ESTABLISHED FACTS AND CIRCUMSTANCES ON RECORD AND THE LAW AND JURISPRUDENCE APPLICABLE TO THE MATTER, THE RESPONDENT COURT ERRED IN HOLDING THAT, INASMUCH AS BOTH THE CIVIL ACTION AND THE ADMINISTRATIVE PROCEEDINGS HERE INVOLVED MAY CO-EXIST AND THE LAW DOES NOT PROVIDE FOR ANY PREFERENCE BY ONE OVER THE OTHER, THE RESPONDENT DIRECTOR HAD JURISDICTION TO RULE AS HE DID AND HAD NOT INCURRED ANY GRAVE ABUSE OF DISCRETION CORRECTABLE BY THE EXTRAORDINARY REMEDIES OF CERTIORARI, PROHIBITION AND MANDAMUS. 15

    On February 2, 1998, G.R. Nos. 111580 and 114802 were ordered consolidated.chanrob1es virtua1 1aw 1ibrary

    The core issue is simply whether, despite the institution of an Inter Parks case for cancellation of a mark with the BPTTT (now the Bureau of Legal Affairs, Intellectual Property Office) by one party, the adverse party can file a subsequent action for infringement with the regular courts of justice in connection with the same registered mark.

    We rule in the affirmative.

    Section 151.2 of Republic Act No. 8293, otherwise known as the Intellectual Property Code, provides, as follows —

    SECTION 151.2. Notwithstanding the foregoing provisions, the court or the administrative agency vested with jurisdiction to hear and adjudicate any action to enforce the rights to a registered mark shall likewise exercise jurisdiction to determine whether the registration of said mark may be cancelled in accordance with this Act. The filing of a suit to enforce the registered mark with the proper court or agency shall exclude any other court or agency from assuming jurisdiction over a subsequently filed petition to cancel the same mark. On the other hand, the earlier filing of petition to cancel the mark with the Bureau of Legal Affairs shall not constitute a prejudicial question that must be resolved before an action to enforce the rights to same registered mark may be decided. (Emphasis provided)

    Similarly, Rule 8, Section 7, of the Regulations on Inter Partes Proceedings, provides to wit

    SECTION 7. Effect of filing of a suit before the Bureau or with the proper court. — The filing of a suit to enforce the registered mark with the proper court or Bureau shall exclude any other court or agency from assuming jurisdiction over a subsequently filed petition to cancel the same mark. On the other hand, the earlier filing of petition to cancel the mark with the Bureau shall not constitute a prejudicial question that must be resolved before an action to enforce the rights to same registered mark may be decided. (Emphasis provided)

    Hence, as applied in the case at bar, 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 effectively bar the subsequent filing of an infringement case by registrant Developers Group. The law and the rules are explicit.

    The rationale is plain: Certificate of Registration No. 31904, upon which the infringement case is based, remains valid and subsisting for as long as it has not been cancelled by the Bureau or by an infringement court. As such, Developers Group’s Certificate of Registration in the principal register continues as "prima facie evidence of the validity of the registration, the registrant’s ownership of the mark or trade-name, and of the registrant’s exclusive right to use the same in connection with the goods, business or services specified in the certificate." 16 Since the certificate still subsists, Developers Group may thus file a corresponding infringement suit and recover damages from any person who infringes upon the former’s rights. 17

    Furthermore, the issue raised before the BPTTT is quite different from that raised in the trial court. The issue raised before the BPTTT was whether the mark registered by Developers Group is subject to cancellation, as the Shangri-La Group claims prior ownership of the disputed mark. On the other hand, the issue raised before the trial court was whether the Shangri-La Group infringed upon the rights of Developers Group within the contemplation of Section 22 of Republic Act 166.

    The case of Conrad and Company, Inc. v. Court of Appeals 18 is in point. We held:chanrob1es virtua1 1aw 1ibrary

    We cannot see any error in the above disquisition. It might be mentioned that while an application for the administrative cancellation of a registered trademark on any of the grounds enumerated in Section 17 of Republic Act No. 166, as amended, otherwise known as the Trade-Mark Law, falls under the exclusive cognizance of BPTTT (Sec. 19, Trade-Mark Law), an action, however, for infringement or unfair competition, as well as the remedy of injunction and relief for damages, is explicitly and unquestionably within the competence and jurisdiction of ordinary courts.

    x       x       x


    Surely, an application with BPTTT for an administrative cancellation of a registered trade mark cannot per se have the effect of restraining or preventing the courts from the exercise of their lawfully conferred jurisdiction. A contrary rule would unduly expand the doctrine of primary jurisdiction which, simply expressed, would merely behoove regular courts, in controversies involving specialized disputes, to defer to the findings or resolutions of administrative tribunals on certain technical matters. This rule, evidently, did not escape the appellate court for it likewise decreed that for "good cause shown, the lower court, in its sound discretion, may suspend the action pending outcome of the cancellation proceedings" before the BPTTT.

    However, while the instant Petitions have been pending with this Court, the infringement court rendered a Decision, dated March 8, 1996, in Civil Case No. Q-91-8476, 19 the dispositive portion of which reads:chanrob1es virtual 1aw library

    WHEREFORE, judgment is hereby rendered in favor of plaintiff Developers Group of Companies, Inc. and against defendants Shangri-La International Hotel Management, Ltd., Shangri-La Properties, Inc., Makati Shangri-La Hotel and Resort, Inc., and Kuok Philippine Properties, Inc. —

    a) Upholding the validity of the registration of the service mark "Shangri-La" and "S-Logo" in the name of plaintiff;

    b) Declaring defendants’ use of said mark and logo as an infringement of plaintiff’s right thereto;

    c) Ordering defendants, their representatives, agents, licensees, assignees and other persons acting under their authority and with their permission, to permanently cease and desist from using and/or continuing to use said mark and logo, or any copy, reproduction or colorable imitation thereof, in the promotion, advertisement, rendition of their hotel and allied projects and services or in any other manner whatsoever;

    d) Ordering defendants to remove said mark and logo from any premises, objects, materials and paraphernalia used by them and/or destroy any and all prints, signs, advertisements or other materials bearing said mark and logo in their possession and/or under their control; and

    e) Ordering defendants, jointly and severally, to indemnify plaintiff in the amounts of P2,000,000.00 as actual and compensatory damages, P500,000.00 as attorney’s fees and expenses of litigation.

    Let a copy of this Decision be certified to the Director, Bureau of Patents, Trademarks and Technology Transfer, for his information and appropriate action in accordance with the provisions of Section 25, Republic Act No. 166.

    Costs against defendants.

    SO ORDERED. 20

    The said Decision is now on appeal with respondent Court of Appeals. 21chanrob1es virtua1 1aw 1ibrary

    Following both law and the jurisprudence enunciated in Conrad and Company, Inc. v. Court of Appeals, 22 the infringement case can and should proceed independently from the cancellation case with the Bureau so as to afford the owner of certificates of registration redress and injunctive writs. In the same light, so must the cancellation case with the BPTTT (now the Bureau of Legal Affairs, Intellectual Property Office) continue independently from the infringement case so as to determine whether a registered mark may ultimately be cancelled. However, the Regional Trial Court, in granting redress in favor of Developers Group, went further and upheld the validity and preference of the latter’s registration over that of the Shangri-La Group.

    There can be no denying that the infringement court may validly pass upon the right of registration. Section 161 of Republic Act No. 8293 provides to wit

    SECTION 161. Authority to Determine Right to Registration — In any action involving a registered mark the court may determine the right to registration, order the cancellation of the registration, in whole or in part, and otherwise rectify the register with respect to the registration of any party to the action in the exercise of this. Judgment and orders shall be certified by the court to the Director, who shall make appropriate entry upon the records of the Bureau, and shall be controlled thereby. (Sec. 25, R.A. No. 166a). (Emphasis provided)

    With the decision of the Regional Trial Court upholding the validity of the registration of the service mark "Shangri-La" and "S" logo in the name of Developers Group, the cancellation case filed with the Bureau hence becomes moot. To allow the Bureau to proceed with the cancellation case would lead to a possible result contradictory to that which the Regional Trial Court has rendered, albeit the same is still on appeal. Such a situation is certainly not in accord with the orderly administration of justice. In any event, the Court of Appeals has the competence and jurisdiction to resolve the merits of the said RTC decision.

    We are not unmindful of the fact that in G.R. No. 114802, the only issue submitted for resolution is the correctness of the Court of Appeals’ decision sustaining the BPTTT’s denial of the motion to suspend the proceedings before it. Yet, to provide a judicious resolution of the issues at hand, we find it apropos to order the suspension of the proceedings before the Bureau pending final determination of the infringement case, where the issue of the validity of the registration of the subject trademark and logo in the name of Developers Group was passed upon.

    WHEREFORE, in view of the foregoing, judgment is hereby rendered dismissing G.R. No. 111580 for being moot and academic, and ordering the Bureau of Legal Affairs, Intellectual Property Office, to suspend further proceedings in Inter Partes Case No. 3145, to await the final outcome of the appeal in Civil Case No. Q-91-8476.chanrob1es virtua1 1aw 1ibrary

    SO ORDERED.

    Davide, Jr. C.J., Puno and Pardo, JJ., concur.

    Kapunan, J., took no part.

    Endnotes:



    1. Rollo, G.R. No. 111580, pp. 59-64.

    2. Ibid., pp. 80-81.

    3. Id., pp. 82-88.

    4. Id., pp. 94-99.

    5. Id., pp. 118-119.

    6. Id., pp. 120-144.

    7. Id., pp. 37-49; penned by Associate Justice Alfredo Marigomen and concurred in by Associate Justices Santiago M. Kapunan and Cancio C. Garcia.

    8. Id., p. 51.

    9. Id., p. 17.

    10. Rollo, G.R. No. 114802, pp. 94-98.

    11. Ibid., pp. 99-103.

    12. Id., at p. 110.

    13. Id., pp. 111-130.

    14. Id., pp. 42-59; Associate Justice Cezar D. Francisco, ponente, Associate Justices Manuel C. Herrera and Buenaventura J. Guerrero, concurring.

    15. Id., p. 19.

    16. Republic Act No. 166, Section 20.

    17. Id., at Sections 22 and 23.

    18. G.R. No. 115115, 246 SCRA 691 [1995].

    19. See Manifestation and Motion to Dismiss, Annex "A", Rollo, G.R. No. 11150, pp. 359-366.

    20. Id., at pp. 365-366.

    21. Rollo, p. 320.

    22. Supra.

    G.R. Nos. 111580 & 114802   June 21, 2001 - SHANGRI-LA INTERNATIONAL HOTEL MNGT. LTD. ET AL. v. COURT OF APPEALS, ET AL.


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