Developers Group of Cos., Inc. v. Court of Appeals
[GR 104583, Mar. 8, 1993]

“Developers bases what it calls its clear legal right to the service mark and logo on the Certificate of Registration issued by the Bureau of Patents which it says can be interpreted broadly enough to cover not only restaurant services but also the hotel business, in which Shangri-La is engaged. Specifically, it invokes Section 20 of Republic Act No. 166, provided as follows: SEC. 20.Certificate of Registration prima facie evidence of validity. — A certificate of registration of a mark or trade-name shall be prima facie evidence of the validity of the registration, the registrant's ownership of the mark or trade-name, and of the registrant's exclusive right to use the same in connection with the goods, business or services specified in the certificate, subject to any conditions and limitations stated therein.”

“On the other hand, Shangri-La claims that it had instituted Inter Partes Case No. 3145 for Cancellation of Registration against Developers, on the ground of fraud, and applied for registration of the service mark and logo in its name in Inter Partes Case No. 3529, to protect its claimed rights to the said name and emblem. These cases were already pending in 1988 before the Bureau of Patents when the complaint for infringement was filed by Developers in the Regional Trial Court of Quezon City three years later.”

“The conflicting claims of the parties to the subject service mark and logo give us the impression that the right claimed by the plaintiff as its basis for asking for injunctive relief as far from clear. The prima facie validity of its registration has been put into serious question by the above-stated cases filed by Shangri-La in the Bureau of Patents three years ahead of the complaint. While it is not required that Developer's claimed right be conclusively established at this stage, it is nevertheless necessary to show, at least tentatively, that it exists and is not vitiated by any substantial challenge or contradiction, such as has been made by the private respondent. In our view, the petitioner has failed to comply with this requirement.”