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[G.R. No. 111580.
SHANGRI-LA INTERNATIONAL HOTEL MGMT. LTD. vs. CA
SPECIAL FIRST DIVISION
Gentlemen:
Quoted hereunder for your information, is a resolution of this
Court dated
G.R. No. 111580 (Shangri-La International Hotel Management Ltd., Shangri-La Properties, Inc., Makati Shangri-La Hotel and Resort, Inc., and Kouk Philippine Properties, Inc. v. The Court of Appeals, Hon. Felix M. De Guzman as Judge, Regional Trial Court of Quezon City, Branch 99 and Developers Group of Companies, Inc.) and G.R. No. 114802 (Developers Group of Companies, Inc. vs. 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.)
Petitioners in G.R. No. 111580 and private respondents in G.R. No. 114802 (hereinafter collectively referred to as the "Shangri-La Group") filed the instant Motion for Reconsideration of the June 21, 2001 Decision of the Court which dismissed the petition in G.R. No. 111580 for being moot and academic and ordered the suspension of the proceedings in Inter Partes Case No. 3 145, to await the final outcome of the appeal in Civil Case No. Q-91-8476.
The Shangri-La Group contends that the Court erred in applying
Republic Act No. 8293, otherwise known as the Intellectual Property Code,
specifically Section 151.2 thereof,
[1]
cralaw
and Section 7, Rule 8 of the Regulations on Inter Panes. Proceedings
[2]
cralaw
promulgated pursuant to R.A. No. 8293, because the said Republic Act which took
effect on
The Motion for Reconsideration is without merit. The applicability of R.A. No. 8293 and the Regulations on Inter Partes Proceedings to cases pending when R.A. No. 8293 took effect is clear from the provisions of Section 1 of the Final Provisions of the Rules and Regulations of the Inter Partes Proceedings, which expressly provides that [said] Rules and Regulations shall apply to all inter partes cases pending with the Bureau of Patents, Trademarks and Technology Transfer [BPTTT] upon the effectivity of the of the [Intellectual Property] Code on January 1, 1998, including interference proceedings declared prior to the effectivity of these regulations and all inter partes cases filed with the Office on and after the effectivity of the IP Code." Moreover, even said provision, the rule under the old Trade Mark Law (Republic Act No. 166) was that "an application for 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." [3] cralaw Indeed, Section 151.2 of R.A. No. 8293 and Section 7 Rule 8 of the Regulations of Inter Partes Proceedings are but codifications of settled jurisprudence construing Republic Act No. 166.Thus, the pertinent portion of Section151.2 of R.A. No. 8293 provides - "[t]he 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 a 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."
Then, too, the suspension of the proceedings in Inter Partes Case No. 3145 before the BPTTT for the cancellation of the registration of the Mark "Shangri-La" and the "S" logo in the name of Developers Group of Companies, Inc., to await the final outcome of the case for infringement of such mark and logo filed by the latter against Shangri-La Group in Civil Case No. Q-91-8476, is the most practical and equitable solution to avoid a possible rendition by the Bureau of a ruling contradictory to the trial court's decision upholding the validity of the registration of the subsequent mark and logo in favor of the Developers Group of Companies, Inc.At any rate, the Court of Appeals, before which the said decision is pending, has the competence and jurisdiction to determine the right to registration and to order, if necessary, the cancellation of said registration pursuant to Section 25 R.A. No. 166, now Section 161 of R.A. No. 8293. [4] cralaw
IN VIEW OF ALL THE FOREGOING, the instant motion for reconsideration is DENIED with FINALITY.
Very truly yours,
(Sgd.)VIRGINIA ANCHETA-SORIANO
Clerk of Court
Endnotes:
[1] cralaw 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
[2] cralaw 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.
[3] cralaw Conrad and Company, Inc. v. Court of Appeals, 316 Phil. 850, 861 (1995).
[4] cralaw SEC. 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 other 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).
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