Trademark Territoriality: Protecting Your Brand in the Philippines

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This case underscores the importance of establishing trademark rights within the Philippines to protect your brand. The principle of territoriality dictates that trademark rights are generally limited to the countries where the mark is registered and used. However, registration obtained in bad faith and without prior use can be deemed invalid, even if it precedes another’s registration.

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G.R. NO. 159938, January 22, 2007

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INTRODUCTION

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Imagine investing significant resources in building a brand, only to find someone else using a similar mark in a different country. This scenario highlights the complex interplay of trademark laws across different jurisdictions. This case explores the principle of trademark territoriality within the Philippine context, examining how prior use, bad faith, and international recognition factor into determining trademark rights. The dispute between Shangri-La and Developers Group of Companies, Inc. (DGCI) provides valuable insights into securing and defending your brand in the Philippines.

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The core issue revolves around whether DGCI validly registered the “Shangri-La” mark and “S” logo in the Philippines, given the prior international recognition and use of the mark by the Shangri-La group. The Supreme Court ultimately addressed the validity of DGCI’s registration, considering the principles of territoriality, prior use, and good faith.

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LEGAL CONTEXT

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Trademark law in the Philippines is primarily governed by Republic Act No. 8293, also known as the Intellectual Property Code of the Philippines. However, the original complaint was filed when Republic Act No. 166, an earlier trademark law, was in effect. A crucial aspect of trademark law is the principle of territoriality, which dictates that trademark rights are generally confined to the geographical boundaries of the country where the mark is registered and used.

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Section 2 of RA 166 stated who is entitled to register a trademark:

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“Any person, corporation, partnership or association domiciled in the Philippines or doing business here, or the country of which he or it is a citizen or in which he or it is domiciled grants to citizens and residents of the Philippines the same rights as it grants to its own citizens, who lawfully produces or deals in merchandise of any kind or who engages in any lawful business, or his successors, legal representatives or assigns, may obtain registration of his trade-mark, trade-name, or service mark by complying with the requirements of this Act.”