INTELLECTUAL PROPERTYPH ILIPPINES

-versus-

ST. FRANCIS SQUAREDEVELOPMENT CORP.,

Opposer

}}}}}}

THE SHANG GRAND TOWER }CORPORATION, }

Respondent-Applicant }x-------------------------------------------x

Inter Partes Case No. 14-2007-00218Opposition to:

Appl'n Serial No.. : 04-2005-003977Date Filed : 03 May 2005Trademark : "THE ST. FRANCIS

SHANGRI-LA PLACE"

Decision No. 2008- ,S-1-

DECISION

This is an opposition to the registration of the mark "THE ST. FRANCISSHANGRI-LA PLACE" bearing application No. 4-2005-003977 filed on May 03, 2005for goods and services falling under Classes 16, 24, 27, 35, 37 and 43 of theInternational Classification of goods which application was published for opposition inthe Trademark Electronic Gazette (E-gazette) of the Intellectual Property Philippinesand officially released for circulation on March 30, 2007.

The Opposer in the instant opposition is "St. Francis Square DevelopmentCorporation" formerly known as "ASS DEVELOPMENT CORPORATION" acorporation duly organized and existing under the laws of the Philippines with officeaddress at the 4th Floor, St. Francis Square, Bank Drive corner Dona Julia VargasAvenue, Mandaluyong City.

On the other hand , the Respondent-Applicant is "THE SHANG GRAND TOWERCORPORATION", a domestic corporation that was organized and existing underPhilippine law, with principal office located at the 5th Level , Shangri-La Plaza Mall ,EDSA corner Shaw Boulevard, Mandaluyong City.

The grounds relied upon by the Opposer are as follows:

"A. The trademark "THE ST. FRANCIS SHANGRI-LA PLACE" cannotbe used and registered by applicant in its name as the same wouldbe violative of Section 168 (Unfair Competition) of Republic Act No.8293 otherwise known as the Intellectual Property Code of thePhilippines.

"B. The trademark "THE ST. FRANCIS SHANGRILA-PLACE" cannotbe used or registered by applicant in its name as the same wouldbe violative of Section 162 (False and Fraudulent Declaration)o~Republic Act No. 8293. I 1&.

Republic of the Philippines >DINTELLECTUAL PROPERTY OFFICE

351 Sen . Gil Puyat Ave., Makati City 1200 Philippines • www.ipophi1.gov.phTelephone: +632-7525450 to 65 • Facsimile: +632-8904862 • email: mail@ipophi1.gov.ph

"C. The trademark 'THE ST. FRANCIS SHANGRI-LA PLACE" cannotbe used or registered by applicant in its name as the same wouldbe violative of Section 123 (Registrability) of Republic Act No. 8293.

"D. The trademark "THE ST. FRANCIS SHANGRI-LA PLACE" cannotbe used or registered by applicant in its name as the same wouldbe in direct violation of Rule 103 of the Rules and Regulations onTrademarks, Service Marks, Trade Names and Marked or StampedContainers.

"E. The trademark "THE ST. FRANCIS SHANGRI-LA PLACE" cannotbe used or registered by applicant in its name as the same wouldbe contrary to the provisions of Article 19-21 of the Civil Code .

Opposer submitted its documentary evidence consisting of the following:

1. Affidavit of its witness "Mr. Luke Roxas" .

2. Annexes "A" to "J" inclusive of sub-markings.

Exhibits "A" to"A-4"

Exhibits "B" to"B-15"

Provisional Receipt No. 12282 dated July 10,2001 to Friends at the Square; Provisional ReceiptNo. 11933 dated January 7, 2002 issued toFlowers by Sylvia; Provisional Receipt No. 1506dated March 7, 2003 issued to BPI Family Bank;Provisional Receipt No. 1408 dated 10 June 200to Ten Years After; Provisional Receipt No. 12451dated 27 September 2000 issued to Mario'sRestaurant, Ortigas.Contract of Lease between ASB DevelopmentCorporation and Red Kettle Company, Inc.;Contract of Lease between ASB DevelopmentCorporation and A La Carte Food Corporation;Contract of Lease between ASB DevelopmentCorporation and MTR Restaurant Group, Inc.;Contract of Lease between ASB DevelopmentCorporation and Seven Pro Ventures, Inc.;Agreement between ASB DevelopmentCorporation and Seven Pro Ventures, Inc.;Electrical Permit and Electrical Inspection Feeissued by the City of Mandaluyong to ASS RealtyCorp.,dated March 3, 1996; Mayors Permit No.008665 issued by the City of Mandaluyong to St.Francis Square Cornrn'I. dated 27 October 1994;~

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Exhibits "C" to"C-4"

Exhibit "0"

Exhibit liE"

Exhibits "F" to"F-1"

Exhibits "G"to "G-5"

Exhibits "H" to"H-1"

Mayor's Permit No. 00006464, issued by the Cityof Mandaluyong to St. Francis Square Comm'l..,dated 24 January 1995; Mayor's Permit No.000705 issued by the City of Mandaluyong to St.Francis Square Commercial dated 08 January1996; Mayor's Permit No. 002437 issued by theCity of Mandaluyong to St. Francis SquareComm'l., dated 15 January 1997; Mayor's PermitNo. 0004738 issued by the City of Mandaluyong toSt. Francis Square Comm'l., dated 19 January1998; Mayor's Permit No. 009241 issued by theCity of Mandaluyong to St. Francis SquareComm'l., dated 25 March 2002; Mayor's PermitNo. 007709 issued by the City of Mandaluyong toSt. Francis Square Comm'l., dated 20 January2005; Mayor's Permit No. 005878 issued by theCity of Mandaluyong to St. Francis SquareComm'l. , dated 20 January 2006; BarangayBusiness Location Permit issued by Barangay No.27 Wack-Wack, Mandaluyong , to St. FrancisSquare Commercial Center Association dated 08January 1996; Brochure of St. Francis SquareTowers by ASB Development Corp.Copy of TSN dated 16 December 2005 (coveringpace and oaoes 29,22 and 31).SEC Certificate of Filing of Amended Articles ofIncorporation of "The Shang Grand Tower"Corporation , Inc., dated 16 October 2003.SEC Certificate of Incorporation and by-laws ofthe "St. Francis Square" Commercia l CenterAssociation (Phase I), Inc., dated 01 July 1992.ASB Group of Companies Rehabilitation Plan,submitted to SEC.Department of Trade and Industry Business NameRegistration for the following "St. Francis Tower"dated 13 July 2005; liSt. Francis Square TwinTowers", dated 21 July 2005; "St. Francis SquarePlace" dated 21 July 2005; liSt. Francis SquarePlaza" dated 21 July 2005; "St. Francis SquareResidences" 21 July 2005 all under the name ofASB Development Corporation.Demand Letter address to the president of TheShang Grand Tower Corp., dated 12 November2005; Demand Letter address to the PresidentEDSA Plaza Holdings, Inc., dated 12 November~,

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I 2005.

:Exhibits "1_1" Affidavit of Yael Torres; Affidavit of Badette

to "1-4" Negado; Affidavit of Engineer Dennis lumboy;Affidavit of Rolando P. Domingo.

Exhibits "J" to Transcript of Stenographic Notes (TSN) dated"J-11" January 27, 2007 (covering page, pages 2, 3, 4,

19, 20, 21, 30, 31 , 38, 41 and 42).Exhibits "K" to Sample and pictures of brochure and billboards

"K-3" advertisement of "The St. Francis Shangri-laPlace"

Exhibit "l" Certified True Copy of Decision No. 2006-09dated December 19, 2006 issued by the Bureau oflegal Affairs for IPV No. 10-2005-00030, ASSDevelopment Corporat ion vs. The Grand ShangTower Corporation and EDSA PropertiesHoldings, Inc.

Exhibit "M" Certified True copy of Decision No. 2007-37 datedMarch 28, 2007 issued by the Bureau of legalAffairs for fPC No. 14-2006-00098, ASBDevelopment Corporat ion vs. The Grand ShangTower Corporation

On September 25, 2007, Respondent-Applicant filed its verified Answer denyingall the material allegations of the opposition and submitted the following in support of itstrademark application being opposed.

Exhibit "1"

Exhibit "2" to"2-C"

Exhibit "3" to"3-l"

Certified True Copy of Decision No. 2006-09dated December 19, 2006 issued by the Bureau oflegal Affairs Director Estrellita Beltran-Abelardo inIPV Case No. 10-2005-00030, entitled "ASBDevelopment Corporation , Complainant versusThe Grand Shang Tower Corporation and EDSAProperties Holdings, Inc., Respondents .Certified true copy of the affidavit of Eden C. Lim,executed on October 7,2006 which forms parts ofthe records of fPC No. 14-2006-00098 entitled"ASB Development Corporation versus The GrandShang Tower Corporation and EDSA PropertiesHoldings, Inc.Certified true copy of the transcript of stenographicnotes taken at the hearing held on December 16,2005 in IPC Case No. 10-2005-00030 entitled"ASS Development Corporat ion versus The GrandShang Tower Corporation and EDSA PropertiesHoldings, Inc., r;.

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The only issue to be resolved in this particular case is:

WHETHER OR NOT RESPONDENT-APPLICANT ISENTITLED TO THE REGISTRATION OF THE MARK "THE ST.FRANCIS SHANGRI-LA PLACE".

The applicable provisions of law is, Section 123 (d) of Republic Act No. 8293,which provides:

Sec. 123. Registrability - 123.1. A mark cannot be registered ifit:

(d) Is identical with a registered mark belonging to a differentproprietor or mark with an earlier filing or priority date, inrespect of:

(i) the same goods or services, or

(ii) closely related goods or services, or

(iii) if it nearly resembles such a mark as to belikely to deceive or cause confusion;

The Respondent-Applicant's mark consists of the words "THE ST. FRANCISSHANGRI-LA PLACE". In its manner of use, it is observed that the word "THE" isplaced above the word "ST. FRANCIS" written in small letters. Likewise, the words"Shangri-la Place" are written in small letters underneath the word "ST. FRANCIS".

On the other hand, the Opposer's marks are the following:

1. ST. FRANCIS TOWER - Registered with the Department of Trade andIndustry (DTI) on July 13, 2005 under Certificate of Registration No.00180458 (Annex "G-1").

2. ST. FRANCIS SQUARE TOWERS - Registered with the Departmentof Trade and Industry (DTI) on July 21, 2005 under Certificate ofRegistration No. 00187285 (Annex "G-2").

3. ST. FRANCIS SQUARE PLACE - Registered with the Department ofTrade and Industry (DTI) on July 21, 2005 under Certificate If;0

Registration No. 00187281 (Annex "G-3").

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4. ST. FRANCIS PLAZA - Registered with the Department of Trade andIndustry (DTI) on July 21, 2005 under Certificate of Registration No.00187272 dated July 21, 2005 (Annex "G-4").

5. ST. FRANCIS SQUARE RESIDENCES - Registered with theDepartment of Trade and Industry (DTI) on July 21, 2005 underCertificate of Registration No. 00187262 dated July 21, 2005 (Annex"G-5").

In the case at bar, the contending trademarks are composite because each ofthem is composed of more than one word or consisting of many components. Todetermine whether the two competing trademarks are identical or appears to beconfusingly similar to each other, it is necessary to consider their compositions.

Likewise , in the case of Societe Des Produits Nestle, S.A. et. AI. vs. Court ofAppeals, et. AI., 356 SCRA 207, the Supreme Court reiterated that:

"The likelihood of confusion is a relative concept , to bedetermined only according to the particular and sometimes peculiarcircumstances of each case. In trademark cases, even more thanin any other litigation, precedent must be studied in light of the factsof the particular case. The wisdom of the likelihood of confusiontest lies in its recognition that each trademark infringement casepresents its own unique set of facts. Indeed, the complexitiesattendant to an accurate assessment constituting the relevantfactual landscape be comprehensively examined."

In ascertaining whether one trademark is confusingly similar to or is a colorableimitation of another , two kinds of test have been developed.

1.) The dominancy test applied in the following cases:

a.

b.

c.

d.

e.

Asia Brewery, Inc., vs. Court of Appeals, 224 SCRA 437;

Co Tiong vs. Director of Patents, 95 Phil. 1;

Lim Hoa vs. Director of Patents, 100 Phil. 214;

American Wire & Cable Co., vs. Director of Patents, 31SCRA 544;

Philippine Nut Industry, Inc., vs. Standards Brands, Inc.,~

65 SeRA 575; , I#.

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f. Converse Rubber Corporation vs. Universal RubberProducts Inc., 147 SCRA 154;

2.) The holistic test developed in the following cases:

a. Del Monte Corporation vs. Court of Appeals, 181 SCRA410;

b. Mead Johnson & Co., vs. N.V.J. Van Dorp., Ltd., 7 SCRA771;

c. Bristol Myers Co., vs. Director of Patents, 17 SCRA 128;

d. Fruit of the Looms vs. Court of Appeals, 133 SCRA 405.

As its title implies, the test of dominancy focuses on the similarity of theprevalent, essential or dominant features of the competing trademarks which mightcause confusion or deception. On the other side of the spectrum, the holistic testmandates that the entirety of the marks in question must be considered in determiningconfusing similarity.

The Opposer's trademarks are all preceded by the words "ST. FRANCIS" whichare exactly the same/or identical words incorporated in the Respondent-Applicant'smark and prominently shown rather than "SHANGRI-LA PLACE".

A practical approach to the problem of similarity or dissimilarity is to go into thewhole of the two trademarks pictured in their manner of display. Inspection should beundertaken from the viewpoint of prospective buyer. The trademark complained shouldbe compared and contrasted with the purchaser's memory (not in juxtaposition) of thetrademark said to be infringed. (87 C.J.S. pp 288-291) Some such factors as sound;appearance; form, style shape, size or format; color, idea connoted by the mark; themeaning, spelling and pronunciation of the words used; and the setting in which thewords appear may be considered, (87 C.J.S. pp. 291-292) for indeed, trademarkinfringement is a form of unfair competition (Clark vs. Manila Candy Co., 36 Phil. 100,106; Co Tiong Sa vs. Director of Patents, 95 Phil. 1,4).

Confusion is likely between trademarks only if their over-all presentations in anyof the particulars of sound, appearance or meaning are such as would lead thepurchasing public into believing that the products to which the marks are appliedemanated from the same source.

It appears that the Opposer has identified itself with the words "ST. FRANCISSQUARE" in its commercial dealings as lessor of land in the area of S1. Francis Streetas early as 1994. However, records further show that the use of the Opposerorthe word "St. Francis" has not been attended with exclusivity. It cannot be

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denied that both parties are doing their real estate developments along thevicinity of "St. Francis Street'. This is the name of the place or location of thebusiness of the contending parties. Moreover, there are other real estate projectswhich have used the word "St. Francis". As stated in Decision No. 2006-09 dated19 December 2006 in Intellectual Property Violation (IPV) Case NO.1 0-2005-00030, forunfair competition, false and fraudulent declaration and damages (ASB DevelopmentCorporation, Complainant vs. The Shang Grand Tower Corporation and EDSAProperties Holding, Inc., Respondents in (Exhibit "1")) thereof, the Certificationissued by the Housing and Land Use Regulatory Board (HLURB) and these are"Emmaus II St. Francis Subdivision, Paranaque; St. Francis Village Phase 1-B/St.Francis Village Rolling Meadow Phase I and II located at San Bartolome, Novaliches,Quezon City and St. Francis Condominium, located at Xavier St., Greenhills, San Juan.However, no evidence were submitted to this Bureau as to when the real estate projectsfirst use the marks in commerce.

It is observed that although St. Francis in not a generic nor descriptive word,the fact remains that both Opposer and Respondent-Applicant's real estatedevelopments are located along the vicinity of St. Francis Street, also known asBank Drive, Ortigas Center, Mandaluyong City. Opposer's real estate projects"St. Francis Square Residences", &lSI. Francis Square Place", "St. Francis SquarePlaza" are located at Julia Vargas corner Bank Drive as seen from its Departmentof Trade and Industry (DTI) Certificate of Business Name Registrations, whileRespondent-Applicant's real estate properties "St. Francis Towers" and "St.Francis Shangri-la Place" are located on Internal Road corner St. Francis Street.

Finally, it is worthy to note that the Bureau of Legal Affairs in its Decision No.2006-09 dated 19 December 2006 in IPV Case No. 10-2005-00030 (ASB DevelopmentCorporation, Complainant vs. The Shang Grand Tower Corporation and EDSAProperties Holding, Inc., Respondents (Exhibit "1")) ruled that no confusing similaritymay arise from the contemporaneous use by both parties of the term "St. Francis" .

On page 22 of Decision No. 2006-09 dated 19 December 2006 this Bureau heldas follows:

"With regards, however, to Respondent's use of thecomposite mark "St. Francis Shangri-la Place", this Bureaufinds that Respondent has adequately appended the word"SHANGRI-LA" to distinguish its mark apart from that ofcomplainant. In which case, the respondents have removedthe likelihood of confusion that may arise from thecontemporaneous use by both parties of the term "ST.FRANCIS"."

The court in Ong Ai Gui vs. Director of the PhiliPPine~t:;

Patent Office, G.R. No. L-6238, March 28, 1955 ruled that- ' /1

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"If a trade-name consists of a descriptive word, no monopoly of theright to use the same can be acquired. This is but a corollary ofthe proposition that a descriptive word cannot be the subject of atrademark, G & C Merriam Co. vs. Saalfield (C.C.A.), 198 E. 369.Others may use the same or similar descriptive word in connectionwith their own wares , provided they take proper steps to preventthe public being deceived." - (Richmond Remedies Co., vs. Dr.Miles Medical Co., 16 E. (2d) 598)."

It bears stressing that the use or adoption of a commonterm in an arbitrary manner as a trademark is allowed but thenature of the use affords the owner restricted protection. Inreiteration.

"xxx Being a generic and common term, itsappropriation as a trademarks albeit in a fanciful mannerin that it bears no relation to the product it identifies,is valid. However, the degree of exclusivenessaccorded to each user is closely restricted"(Citing Sec. 203 Nims, Unfair and Trademarks , Vol. I.P.555, Phil. Refining Co. Inc. v. Ng Sam, GR. No. 1-26676,July 30, 1982) (Underscoring provided)

WHEREFORE, with all the foregoing , the Bureau of Legal Affairs finds and soholds that Respondent-Applicant's mark "THE ST. FRANCIS SHANGRI-LA PLACE" isnot confusingly similar to Opposer's mark. Accordingly, the Notice of Opposition filedby St. Francis Square Development Corporation is, as it is hereby, DENIED.Consequently, trademark application bearing Serial No. 4-2005-003977 filed by TheShang Grand Tower Corporation on May 03, 2005 for the registration of the mark"THE ST. FRANCIS SHANGRI-LA PLACE" is hereby GIVEN DUE COURSE.

Let the filewrapper of the trademark "THE ST. FRANCIS SHANGRI-LA PLACE"subject matter of this case together with a copy of this DECISION be forwarded to theBureau of Trademarks (BOT) for appropriate action.

SO ORDERED.

Makati Cit, 31 March 2008.

S//jojo/25-Feb-08

TRELLITA BELTRAN ABELARDOlrector, Bureau of legal Affairs

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