Shangri La

Before the Court is this Motion for Reconsideration filed by respondent Developers Group
of Companies, Inc. (DGCI) praying for the reversal of this Court's Decision[1] of March 31,
2006, the dispositive portion of which reads:

WHEREFORE, the instant petition is GRANTED. The assailed Decision and

Resolution of the Court of Appeals dated May 15, 2003 and September 15, 2003,
respectively, and the Decision of the Regional Trial Court of Quezon City dated March 8,
1996 are hereby SET ASIDE. Accordingly, the complaint for infringement in Civil Case No. Q91-8476 is ordered DISMISSED.

In its motion, respondent-movant DGCI raises the following grounds:

1.

The certification of non-forum shopping submitted by petitioners is insufficient;

2.
The word Shangri-La and S logo were adopted and used by the Kuok Group
as part of their corporate names and the names of their hotels;

3.
Petitioners' claim of legal and beneficial ownership of mark and logo is baseless
and unwarranted;

4.
Change of theory from owner to one who may be damaged as entitled to relief
is not allowable;

5.
Finding of registration in patent offices in different countries around the world
is inaccurate;

6.
DGCI's registration of the Shangri-La mark and the S logo is valid because
there was at least two months use thereof prior to application;

7.
Section 2-A of R.A. No. 166 requires the actual commercial use of trademarks in
the Philippines pursuant to the principle of territoriality applicable to trademarks. Hence,
petitioners' use of subject marks outside of Philippine territory did not confer on them any
ownership rights thereto under Philippine laws;

8.
The Regional Trial Court and the Court of Appeals' failure to find any bad faith
on the part of DGCI is conclusive on the Supreme Court;

9.
DGCI's use of the subject marks in the Philippines is entitled to protection
under the territoriality principle of trademarks.[2]

The bulk of the aforementioned grounds is a mere rehash of movants previous

arguments. While DGCI is correct in stating that a motion for reconsideration, by its very
nature, may tend to dwell on issues already resolved in the decision sought to be
reconsidered and that this should not be an obstacle for a reconsideration,[3] the hard
reality is that movant has failed to raise matters substantially plausible or compellingly
persuasive to warrant the desired course of action.

Considering that the grounds presently raised have been sufficiently considered, if not
squarely addressed, in the subject Decision, it behooves movant to convince the Court that
certain findings or conclusions in the Decision are contrary to law. As it is, however, the
instant motion does not raise any new or substantial legitimate ground or reason to justify
the reconsideration sought.

Movant DGCI would make capital on the alleged danger the subject Decision might
wreak upon Philippine trademark law, claiming that the decision in question would render
nugatory the protection intended by the trademark law to all Philippine trademark
registrants. This assertion is a baseless and sweeping statement. The interpretation of
Republic Act No. 166 in the Decision does not in any way diminish the protection afforded
to valid trademark registrations made under said law. It was glaringly obvious, however,
from the testimony of movants own witness that DGCIs registration of the subject mark
and logo was void due to the existence of bad faith and the absence of the requisite 2month prior use. Despite movant's melodramatic imputation of an abandonment of the
territoriality principle, the Decision actually upholds the principle but found that respondent
DGCI was not entitled to protection thereunder due to the double infirmity which attended
its registration of the subject mark and logo.

Anent DGCI's assertion of a change of theory on the part of the petitioners, suffice it to
say that the latter have never budged from seeking relief as rightful, legal and/or
beneficial owners of the mark and logo in dispute. The Decision ruled favorably on the
veracity of the petitioners' claim:

xxx It would be a great injustice to adjudge the petitioners guilty of infringing a mark
when they are actually the originator and creator thereof.

Nor can the petitioners' separate personalities from their mother corporation be an
obstacle in the enforcement of their rights as part of the Kuok Group of Companies and as
official repository, manager and operator of the subject mark and logo. Besides, R.A. No. 166
did not require the party seeking relief to be the owner of the mark but any person who
believes that he is or will be damaged by the registration of a mark or trade name.[4]
[ mphasis supplied]

Clearly, from the word Besides used in the context of the aforequoted paragraph, all
that the Decision says is that even if petitioners were not the owners, they would still have
a right of action under the law. There was never an attempt on their part at an eleventh-hour
change of theory, as movant DGCI wishes to portray.

WHEREFORE, the instant motion for reconsideration is DENIED for lack of merit.

SO ORDERED.

CANCIO C. GARCIA
Associate Justice
ARCE SONS AND COMPANY, petitioner, vs.
SELECTA BISCUIT COMPANY, INC., ET AL., respondents.
BAUTISTA ANGELO, J.:
Facts:
Ramon Arce, predecessor-in-interest of herein petitioner, started a milk business in 1933
using the name SELECTA as trade-name as well as trade-mark. He sold his milk products in
bottles covered with caps on which the words SELECTA FRESH MILK were inscribed. For
the span of more than 20 years, his business expanded and sold, in addition to his milk
product, ice cream, sandwiches and other food products. His products were packaged in a

special containers with the word SELECTA written in the packaging. Several new products
were eventually added to his line of products such as biscuits, bakery items, and assorted
cakes and pastries. The word SELECTA was even written on the signboards of his business
establishments and upon the vehicles that were used for the delivery of his products. Then
his business was acquired by petitioner Arce Sons and Co. which eventually put a first class
restaurant aside from the manufacture of the aforementioned food products.
Herein respondent on the other hand, was organized and registered as corporation
under the name and style of Selecta Biscuits Co., Inc. The name Selecta was chosen by the
Chinese organizers of the corporation as a translation of a Chinese word Ching Suan. Its
business started as a biscuit factory and its products such as biscuits and crackers were
specially wrapped in cellophane pouches and place inside a tin can. Such products of the
respondent were sold throughout the Philippines. The respondent filed a petition with the
Philippine Patent Office for the registration of the word SELECTA as trade-mark to be use in
its bakery products. The petition was referred to an examiner for evaluation who found out
that the trademark sought to be registered resembles the word SELECTA used by the
petitioner so that its use by the respondent will cause confusion as to the origin of their
respective goods. So the examiner recommended for the disapproval of the application.
However, Patent Office only ordered the publication of the application.
In due time, petitioner filed an opposition to the registration on the ground that the
mark SELECTA has been continuously used by it from the time of its organization and even
prior thereto by Ramon Arce, thus the said mark has already become identified with its
name and business. Petitioner also contend that the use of SELECTA by the respondents as
trademark constitutes as an unfair competition with its products thus resulting in confusion
in trade and that the product of the respondent might be mistaken by the public as its
products.
The Director of Patents rendered a decision dismissing petitioners opposition stating
that the registration of the trade-mark SELECTA in favour of the respondent will not cause
confusion or mistake nor will deceive the purchasers as to cause damage to petitioner.
Hence, this present petition for review.
Issue:
Whether or not the use of the trade-mark SELECTA by the respondent will result confusion
to the prejudice of Arce Sons and Co.
Held:
Yes. Trademark is a distinctive mark of authenticity through which the merchandise
of a particular producer or manufacturer may be distinguished from that of
others, and its sole function is to designate distinctively the origin of the products
to which it is attached. Verily, the word SELECTA has been chosen by petitioner and
has been inscribed on all its products to serve not only as a sign or symbol that may indicate
that they are manufactured and sold by it but as a mark of authenticity that may distinguish
them from the products sold and manufactured by other merchants or businessmen. The
word 'SELECTA', it is true, may be an ordinary or common word in the sense that may be
used or employed by any one in promoting his business or enterprise, but once adopted or
coined in connection with one's business as an emblem, sign or device to characterize its
products, or as a badge of authenticity, it may acquire a secondary meaning as to be
exclusively associated with its products and business. In this sense, its used by another may
lead to confusion in trade and cause damage to its business. And this is the situation of
petitioner when it used the word 'SELECTA' as a trade-mark. In this sense, the law gives its
protection and guarantees its used to the exclusion of all others. Thus, the Director of
Patent committed an error in dismissing the opposition of the petitioner and in holding that

the registration of the trademark SELECTA in favour of respondent will not cause damage
to petitioner.
Decision of the Director of Patent office is reversed.
DEL MONTE CORPORATION and PHILIPPINE PACKING CORPORATION vs. COURT OF APPEALS
and SUNSHINE SAUCE MANUFACTURING INDUSTRIES

G.R. No. L-78325 January 25, 1990

FACTS: Petitioner Del Monte Corporation (Del Monte), through its local distributor and
manufacturer, PhilPack filed an infringement of copyright complaint against respondent
Sunshine Sauce Manufacturing Industries (SSMI), also a maker of catsup and other kitchen
sauces. In its complaint, Del Monte alleged that SSMI are using bottles and logos identical to
the petitioner, to which is deceiving and misleading to the public.
In its answer, Sunshine alleged that it had ceased to use the Del Monte bottle and that its
logo was substantially different from the Del Monte logo and would not confuse the buying
public to the detriment of the petitioners.
The Regional Trial Court of Makati dismissed the complaint. It held that there were
substantial differences between the logos or trademarks of the parties nor on the continued
use of Del Monte bottles. The decision was affirmed in toto by the Court of Appeals.
ISSUE: Whether or not SSMI committed infringement against Del Monte in the use of its
logos and bottles.
HELD: Yes. In determining whether two trademarks are confusingly similar, the two
marks in their entirety as they appear in the respective labels must be considered
in relation to the goods to which they are attached; the discerning eye of the
observer must focus not only on the precognizant words but also on the other
features appearing on both labels. It has been correctly held that side-by-side
comparison is not the final test of similarity. In determining whether a trademark
has been infringed, we must consider the mark as a whole and not as dissected.
The Court is agreed that are indeed distinctions, but similarities holds a greater weight in
this case. The Sunshine label is a colorable imitation of the Del Monte trademark. What is
undeniable is the fact that when a manufacturer prepares to package his product, he has
before him a boundless choice of words, phrases, colors and symbols sufficient to distinguish
his product from the others. Sunshine chose, without a reasonable explanation, to use the
same colors and letters as those used by Del Monte though the field of its selection was so
broad, the inevitable conclusion is that it was done deliberately to deceive.
With regard to the bottle use, Sunshine despite the many choices available to it and
notwithstanding that the caution "Del Monte Corporation, Not to be Refilled" was embossed
on the bottle, still opted to use the petitioners' bottle to market a product which Philpack
also produces. This clearly shows the private respondent's bad faith and its intention to
capitalize on the latter's reputation and goodwill and pass off its own product as that of Del
Monte.

ASIA BREWERY, INC., petitioner,

vs.
THE HON. COURT OF APPEALS and SAN MIGUEL CORPORATION, respondents.
GRIO-AQUINO, J.:
Facts:
San Miguel Corporation (SMC) filed a complaint against Asia Brewery Inc. (ABI) for
infringement of trademark and unfair competition on account of the latters BEER PALE
PILSEN or BEER NA BEER product which has been competing with SMCs SAN MIGUEL
PALE PILSEN for a share of the local been market. A decision was rendered by the trial
judge dismissing SMCs complaint because ABI has not committed trademark infringement
or unfair competition against SMC for the reason that the trademarks of each product has no
significant similarity that would likely to cause confusion or mistake or to deceive purchasers
as to the source or origin of the beer in question. SMC appealed to the Court of Appeals
wherein the decision of the trial court was reversed. Hence, this present petition for
certiorari filed by ABI.
Issue:
Whether or not ABI infringes SMCs trademark: San Miguel Pale Pilsen with Rectangular
Hops and Malt Design, and thereby commits unfair competition against the latter.
Held:
No. There is absolutely no similarity in the dominant features of both trademarks.
Infringement is determined by the test of dominancy rather than by differences in
variations in the details of one trademark and of another. It has been consistently held that
the question of infringement of a trademark is to be determined by the test of dominancy.
Similarity in size, form and color, while relevant, is not conclusive. If the competing
trademark contains the main or essential or dominant features of another, and confusion
and deception is likely to result, infringement takes place. Duplication or imitation is not
necessary; nor it is necessary that the infringing label should suggest an effort to imitate.
The question at issue in cases of infringement of trademarks is whether the use of marks
involved would be likely to cause confusion or mistakes in the mind of the public or deceive
purchasers.
In the case at bar, the trial court perceptively observed that the word BEER does
not appear in SMCs trademark, just as the words SAN MIGUEL do not appear in the ABIs
trademark. Hence, there is absolutely no similarity in the dominant features of both
trademarks. Neither in sound, spelling or appearance can BEER PALE PILSEN be said to be
confusingly similar to SAN MIGUEL PALE PILSEN. No one who purchases BEER PALE PILSEN
can possibly be deceived that it is SAN MIGUEL PALE PILSEN. No evidence whatsoever was
presented by SMC proving otherwise.