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    Shang Properties vs. St. Francis Development Corporation

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    Hencel Gumabay
    1) Shang Properties and St. Francis Development Corporation filed separate complaints before the IPO Bureau of Legal Affairs regarding trademark disputes. St. Francis alleged unfair competition and false declaration from Shang Properties' use of the marks "THE ST. FRANCIS TOWERS" and "THE ST. FRANCIS SHANGRI-LA PLACE". 2) The Court ruled that Shang Properties was not guilty of unfair competition. While St. Francis had used the mark "ST. FRANCIS" in its developments, the mark was geographically descriptive and had not acquired secondary meaning. A geographically descriptive mark alone does not establish unfair competition. 3) To prove unfair competition, one must show that the

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    Shang Properties vs. St. Francis Development Corporation

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    Hencel Gumabay
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    1) Shang Properties and St. Francis Development Corporation filed separate complaints before the IPO Bureau of Legal Affairs regarding trademark disputes. St. Francis alleged unfair competition and false declaration from Shang Properties' use of the marks "THE ST. FRANCIS TOWERS" and "THE ST. FRANCIS SHANGRI-LA PLACE". 2) The Court ruled that Shang Properties was not guilty of unfair competition. While St. Francis had used the mark "ST. FRANCIS" in its developments, the mark was geographically descriptive and had not acquired secondary meaning. A geographically descriptive mark alone does not establish unfair competition. 3) To prove unfair competition, one must show that the

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    Shang v St. Francis

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    1) Shang Properties and St. Francis Development Corporation filed separate complaints before the IPO Bureau of Legal Affairs regarding trademark disputes. St. Francis alleged unfair competition and false declaration from Shang Properties' use of the marks "THE ST. FRANCIS TOWERS" and "THE ST. FRANCIS SHANGRI-LA PLACE". 2) The Court ruled that Shang Properties was not guilty of unfair competition. While St. Francis had used the mark "ST. FRANCIS" in its developments, the mark was geographically descriptive and had not acquired secondary meaning. A geographically descriptive mark alone does not establish unfair competition. 3) To prove unfair competition, one must show that the

    Copyright:

    © All Rights Reserved
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    97 views3 pages

    Shang Properties vs. St. Francis Development Corporation

    Uploaded by

    Hencel Gumabay
    1) Shang Properties and St. Francis Development Corporation filed separate complaints before the IPO Bureau of Legal Affairs regarding trademark disputes. St. Francis alleged unfair competition and false declaration from Shang Properties' use of the marks "THE ST. FRANCIS TOWERS" and "THE ST. FRANCIS SHANGRI-LA PLACE". 2) The Court ruled that Shang Properties was not guilty of unfair competition. While St. Francis had used the mark "ST. FRANCIS" in its developments, the mark was geographically descriptive and had not acquired secondary meaning. A geographically descriptive mark alone does not establish unfair competition. 3) To prove unfair competition, one must show that the

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    SHANG PROPERTIES vs. ST.

    FRANCIS DEVELOPMENT CORPORATION


    G.R. No. 190706, 21 July 2014, Second Division, Perlas-Bernabe, J.

    Facts:
    Respondent a domestic corporation engaged in the real estate business and
    the developer of the St. Francis Square Commercial Center located at Ortigas
    Center, Mandaluyong. It filed separate complaints against petitioners before the
    IPO - Bureau of Legal Affairs (BLA), namely:
    (a) an intellectual property violation case for unfair competition, false or
    fraudulent declaration, and damages arising from petitioners' use and
    filing of applications for the registration of the marks "THE ST. FRANCIS
    TOWERS" and "THE ST. FRANCIS SHANGRI-LA PLACE," docketed as IPV
    Case No. 10-2005-00030 (IPV Case); and
    (b) an inter partes case opposing the petitioners' application for
    registration of the mark "THE ST. FRANCIS TOWERS" for use relative to
    the latter's business, particularly the construction of permanent
    buildings or structures for residential and office purposes, docketed as
    Inter Partes Case No. 14-2006-00098 (St. Francis Towers IP Case); and
    (c) an inter partes case opposing the petitioners' application for
    registration of the mark "THE ST. FRANCIS SHANGRI-LA PLACE,"
    docketed as IPC No. 14-2007-00218 (St. Francis Shangri-La IP Case).
    Respondent alleged that it had used the mark “ST. FRANCI” to identify its
    numerous property development projects located at Ortigas Center, such as the
    afore-mentioned St. Francis Square Commercial Center, and a mixed-use realty
    project plan that includes St. Francis Towers. Respondent added that because of its
    continuous us of the said mark, it has gained substantial goodwill with the public
    that consumers and traders closely identify the said mark with its property
    development projects, thus, petitioners could not have the mark "THE ST. FRANCIS
    TOWERS" registered in their names, and that petitioners’ use of the marks "THE ST.
    FRANCIS TOWERS" and "THE ST. FRANCIS SHANGRI-LA PLACE" in their own real
    estate development projects constitutes unfair competition as well as false or
    fraudulent declaration.
    Petitioners denied committing unfair competition and false or fraudulent
    declaration, maintaining that they could register the mark “THE ST FRANCIS
    TOWERS” and “THE ST. FRANCIS SHANGRI-LA PLACE” under their names. They
    claim that respondent cannot claim it exclusive use because the same is
    geographically descriptive of the goods or services for which it is intended to be
    used.

    Issue:
    Whether the petitioners are guilty of unfair competition in using the marks
    "THE ST. FRANCIS TOWERS" and "THE ST. FRANCIS SHANGRI-LA PLACE."

    Ruling:
    NO. The "true test" of unfair competition has thus been "whether the acts of
    the defendant have the intent of deceiving or are calculated to deceive the ordinary
    buyer making his purchases under the ordinary conditions of the particular trade
    to which the controversy relates."
    Here, the Court finds the element of fraud to be wanting; hence, there can
    be no unfair competition. The CA's contrary conclusion was faultily premised on its
    impression that respondent had the right to the exclusive use of the mark "ST.
    FRANCIS," for which the latter had purportedly established through considerable
    goodwill. What the CA appears to have disregarded or been mistaken in its
    disquisition, however, is the geographically-descriptive nature of the mark "ST.
    FRANCIS" which thus bars its exclusive appropriability, unless a secondary meaning
    is acquired.
    ‘Geographically descriptive term’ is any noun or adjective that designates
    geographical location and would tend to be regarded by buyers as descriptive of
    the geographic location of origin of the goods or services. Secondary meaning is
    established when a descriptive mark no longer causes the public to associate the
    goods with a particular place, but to associate the goods with a particular source.

    Under Section 123.2[34] of the IP Code, specific requirements have to be met


    in order to conclude that a geographically-descriptive mark has acquired secondary
    meaning, to wit: (a) the secondary meaning must have arisen as a result of
    substantial commercial use of a mark in the Philippines; (b) such use must result in
    the distinctiveness of the mark insofar as the goods or the products are concerned;
    and (c) proof of substantially exclusive and continuous commercial use in the
    Philippines for five (5) years before the date on which the claim of distinctiveness
    is made.
    In fact, even on the assumption that secondary meaning had been acquired,
    said finding only accords respondents protectional qualification under Section
    168.1 of the IP Code as above quoted. Again, this does not automatically trigger the
    concurrence of the fraud element required under Section 168.2 of the IP Code.
    Hence, for all the reasons above-discussed, the Court hereby grants the instant
    petition, and, thus, exonerates petitioners from the charge of unfair competition in
    the IPV Case.

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