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    Shang Properties Realty Corp vs. St. Francis Development Corporation

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    Mae
    This case involves a dispute over trademarks between two real estate development companies - Shang Properties Realty Corp and St. Francis Development Corporation. St. Francis Development alleged that Shang Properties engaged in unfair competition through their use of similar marks. The court ultimately found that the mark "ST. FRANCIS" was geographically descriptive and thus not entitled to exclusive use unless a secondary meaning was established. As there was no evidence that Shang Properties intended to deceive customers or pass off their goods as those of St. Francis Development, the court concluded there was no unfair competition. The Court of Appeals decision finding unfair competition was overturned.

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    Shang Properties Realty Corp vs. St. Francis Development Corporation

    Uploaded by

    Mae
    119 views3 pages
    This case involves a dispute over trademarks between two real estate development companies - Shang Properties Realty Corp and St. Francis Development Corporation. St. Francis Development alleged that Shang Properties engaged in unfair competition through their use of similar marks. The court ultimately found that the mark "ST. FRANCIS" was geographically descriptive and thus not entitled to exclusive use unless a secondary meaning was established. As there was no evidence that Shang Properties intended to deceive customers or pass off their goods as those of St. Francis Development, the court concluded there was no unfair competition. The Court of Appeals decision finding unfair competition was overturned.

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    This case involves a dispute over trademarks between two real estate development companies - Shang Properties Realty Corp and St. Francis Development Corporation. St. Francis Development alleged that Shang Properties engaged in unfair competition through their use of similar marks. The court ultimately found that the mark "ST. FRANCIS" was geographically descriptive and thus not entitled to exclusive use unless a secondary meaning was established. As there was no evidence that Shang Properties intended to deceive customers or pass off their goods as those of St. Francis Development, the court concluded there was no unfair competition. The Court of Appeals decision finding unfair competition was overturned.

    Copyright:

    © All Rights Reserved
    Download as DOCX, PDF, TXT or read online from Scribd
    Download as docx, pdf, or txt
    119 views3 pages

    Shang Properties Realty Corp vs. St. Francis Development Corporation

    Uploaded by

    Mae
    This case involves a dispute over trademarks between two real estate development companies - Shang Properties Realty Corp and St. Francis Development Corporation. St. Francis Development alleged that Shang Properties engaged in unfair competition through their use of similar marks. The court ultimately found that the mark "ST. FRANCIS" was geographically descriptive and thus not entitled to exclusive use unless a secondary meaning was established. As there was no evidence that Shang Properties intended to deceive customers or pass off their goods as those of St. Francis Development, the court concluded there was no unfair competition. The Court of Appeals decision finding unfair competition was overturned.

    Copyright:

    © All Rights Reserved
    Download as DOCX, PDF, TXT or read online from Scribd
    Download as docx, pdf, or txt
    of 3

    Shang Properties Realty Corp vs. St.

    Francis Development Corporation


    GR 190706

    Facts:

    Respondents filed a complaint against petitioners for violation case for unfair competition
    and opposition of the application for registration of the ST. FRANCIS SHANGRI-LA and
    SHANGRI-LA PLACE. Respondent alleged that it has used the mark “ST. FRANCIS” to
    identify its numerous property development projects, that it has gained substantial
    goodwill with the public that consumers and traders closely identify the said mark with
    its property development projects. The use of the mark by petitioner constitutes unfair
    competition and fraudulent declaration. Petitioners denied committing unfair competition.
    Respondent is barred from claiming ownership and exclusive use because the same is
    geographically descriptive ofthe goods or services for which it is intended to be used as
    both parties are located within St. Francis St. in Ortigas.

    The BLA found petitioner to have committed an unfair competition towards the use of the
    ST FRANCIS TOWERS but not THE ST. FRANCIS SHANGRI-LA PLACE. Further, "ST.
    FRANCIS," being a name of a Catholic saint, may be considered as an arbitrary mark
    capable of registration when used in real estate development projects as the name has
    no direct connection or significance when used in association with real estate. The BLA
    neither deemed "ST. FRANCIS" as a geographically descriptive mark, opining that there
    is no specific lifestyle, aura, quality or characteristic that the real estate projects possess
    except for the fact that they are located along St. Francis St. On appeal before the
    Director-General of the Intellectual Property Office, the Director-General affirmed the BLA
    ruling though it disagreed that there is no unfair competition on the use of the mark ST.
    FRANCIS TOWERS.

    On appeal, the CA reversed the IPO Director-General ruling. Further, the CA stated that
    even on the assumption that "ST. FRANCIS" was indeed a geographically descriptive
    mark, adequate protection must still be given to respondent pursuant to the Doctrine of
    Secondary Meaning.

    Issue:

    Whether or not petitioners are guilty of unfair competition in using the marks "THE ST.
    FRANCIS TOWERS" and "THE ST. FRANCIS SHANGRI-LA PLACE."?
    Held:

    No. Section 168.1 qualifies who is entitled to protection against unfair competition.
    Section 168.2proceeds to the core of the provision, describing forthwith who may be
    found guilty of and subject to an action of unfair competition. Section 168.3 goes on to
    specify examples of acts which are considered as constitutive of unfair competition.
    Finally, Section 168.4 dwells on a matter of procedure by stating that the "[t]he remedies
    provided by Sections 156,22 157,23 and 16124 shall apply mutatis mutandis."

    The concept of unfair competition, the passing off (or palming off) or attempting to pass
    off upon the public of the goods or business of one person as the goods or business of
    another with the end and probable effect of deceiving the public.’ Passing off (or palming
    off) takes place where the defendant, by imitative devices on the general appearance of
    the goods, misleads prospective purchasers into buying his merchandise under the
    impression that they are buying that of his competitors.

    Here, the Court finds the element of fraud to be wanting; hence, there can be no unfair
    competition. The CA’scontrary conclusion was faultily premised on its impression that
    respondenthad the right to the exclusive use of the mark "ST. FRANCIS," for which the
    latter had purportedly established considerable goodwill. What the CA appears to have
    disregarded or been mistaken in its disquisition, however, is the geographicallydescriptive
    nature of the mark "ST. FRANCIS" which thus bars its exclusive appropriability, unless a
    secondary meaning is acquired.

    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." Based on the foregoing, it is therefore essential to prove the existence of fraud,
    or the intent to deceive, actual or probable, determined through a judicious scrutiny of
    the factual circumstances attendant to a particular case.

    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 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

    XXX

    …said circumstance, by and of itself, does not equateto fraud under the parameters of
    Section 168 of the IP Code as above-cited. In fact, the records are bereft of any showing
    thatpetitioners gave their goods/services the general appearance that it was respondent
    which was offering the same to the public. Neither did petitioners employ any means to
    induce the public towards a false belief that it was offering respondent’s goods/services.
    Nor did petitioners make any false statement or commit acts tending to discredit the
    goods/services offered by respondent.

    In the case at hand, the parties are business competitors engaged in real estate or
    property development, providing goods and services directly connected thereto. The
    "goods" or "products" or "services" are real estate and the goods and the services
    attached to it or directly related to it, like sale or lease of condominium units, offices,
    and commercial spaces, such as restaurants, and other businesses. For these kinds of
    goods or services there can be no description of its geographical origin as precise and
    accurate as that of the name of the place where they are situated.

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