SECOND DIVISION

[G.R. No. 190706. July 21, 2014.]

SHANG PROPERTIES REALTY CORPORATION (formerly THE SHANG

GRAND TOWER CORPORATION) and SHANG PROPERTIES, INC.
(formerly EDSA PROPERTIES HOLDINGS, INC.) , petitioners, vs . ST.
FRANCIS DEVELOPMENT CORPORATION , respondent.

DECISION

PERLAS-BERNABE , J : p

Assailed in this petition for review on certiorari 1 is the Decision 2 dated December
18, 2009 of the Court of Appeals (CA) in CA-G.R. SP No. 105425 which a rmed with
modi cation the Decision 3 dated September 3, 2008 of the Intellectual Property O ce
(IPO) Director-General. The CA: (a) a rmed the denial of the application for registration of
the mark "ST. FRANCIS TOWERS" led by petitioners Shang Properties Realty Corporation
and Shang Properties, Inc. (petitioners); (b ) found petitioners to have committed unfair
competition for using the marks "THE ST. FRANCIS TOWERS" and "THE ST. FRANCIS
SHANGRI-LA PLACE"; (c) ordered petitioners to cease and desist from using "ST.
FRANCIS" singly or as part of a composite mark; and (c) ordered petitioners to jointly and
severally pay respondent St. Francis Square Development Corporation (respondent) a ne
in the amount of P200,000.00.
The Facts
Respondent — a domestic corporation engaged in the real estate business and the
developer of the St. Francis Square Commercial Center, built sometime in 1992, located at
Ortigas Center, Mandaluyong City, Metro Manila (Ortigas Center) 4 — led separate
complaints against petitioners before the IPO-Bureau of Legal Affairs (BLA), namely: (a ) an
intellectual property violation case for unfair competition, false or fraudulent declaration,
and damages arising from petitioners' use and ling of applications for the registration of
the marks "THE ST. FRANCIS TOWERS" and "THE ST. FRANCIS SHANGRI-LA PLACE,"
docketed as IPV Case No. 10-2005-00030 (IPV Case ); and (b ) an inter partes case
opposing the petitioners' application for registration of the mark "THE ST. FRANCIS
TOWERS" for use relative to the latter's business, particularly the construction of
permanent buildings or structures for residential and o ce purposes, docketed as Inter
Partes Case No. 14-2006-00098 (St. Francis Towers IP Case ); and (c ) an inter partes
case opposing the petitioners' application for registration of the mark "THE ST. FRANCIS
SHANGRI-LA PLACE," docketed as IPC No. 14-2007-00218 (St. Francis Shangri-La IP
Case ). 5
In its complaints, respondent alleged that it has used the mark "ST. FRANCIS" to
identify its numerous property development projects located at Ortigas Center, such as
the aforementioned St. Francis Square Commercial Center, a shopping mall called the "St.
Francis Square," and a mixed-use realty project plan that includes the St. Francis Towers.
Respondent added that as a result of its continuous use of the mark "ST. FRANCIS" in its
real estate business, it has gained substantial goodwill with the public that consumers and
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 traders closely identify the said mark with its property development projects. Accordingly,
respondent claimed that petitioners could not have the mark "THE ST. FRANCIS TOWERS"
registered in their names, and that petitioners' use of the marks "THE ST. FRANCIS
TOWERS" and "THE ST. FRANCIS SHANGRI-LA PLACE" in their own real estate
development projects constitutes unfair competition as well as false or fraudulent
declaration. 6 CSIcTa

Petitioners denied committing unfair competition and false or fraudulent

declaration, maintaining that they could register the mark "THE ST. FRANCIS TOWERS" and
"THE ST. FRANCIS SHANGRI-LA PLACE" under their names. They contended that
respondent is barred from claiming ownership and exclusive use of the mark "ST.
FRANCIS" because the same is geographically descriptive of the goods or services for
which it is intended to be used. 7 This is because respondent's as well as petitioners' real
estate development projects are located along the streets bearing the name "St. Francis,"
particularly, St. Francis Avenue and St. Francis Street (now known as Bank Drive), 8 both
within the vicinity of the Ortigas Center.
The BLA Rulings
On December 19, 2006, the BLA rendered a Decision 9 in the IPV Case , and found
that petitioners committed acts of unfair competition against respondent by its use of the
mark "THE ST. FRANCIS TOWERS" but not with its use of the mark "THE ST. FRANCIS
SHANGRI-LA PLACE." It, however, refused to award damages in the latter's favor,
considering that there was no evidence presented to substantiate the amount of damages
it suffered due to the former's acts. The BLA found that "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 signi cance
when used in association with real estate. The BLA neither deemed "ST. FRANCIS" as a
geographically descriptive mark, opining that there is no speci c lifestyle, aura, quality or
characteristic that the real estate projects possess except for the fact that they are
located along St. Francis Avenue and St. Francis Street (now known as Bank Drive), Ortigas
Center. In this light, the BLA found that while respondent's use of the mark "ST. FRANCIS"
has not attained exclusivity considering that there are other real estate development
projects bearing the name "St. Francis" in other areas, 10 it must nevertheless be pointed
out that respondent has been known to be the only real estate rm to transact business
using such name within the Ortigas Center vicinity. Accordingly, the BLA considered
respondent to have gained goodwill and reputation for its mark, which therefore entitles it
to protection against the use by other persons, at least, to those doing business within the
Ortigas Center. 11
Meanwhile, on March 28, 2007, the BLA rendered a Decision 12 in the St. Francis
Towers IP Case , denying petitioners' application for registration of the mark "THE ST.
FRANCIS TOWERS". Excluding the word "TOWERS" in view of petitioners' disclaimer
thereof, the BLA ruled that petitioners cannot register the mark "THE ST. FRANCIS" since it
is confusingly similar to respondent's "ST. FRANCIS" marks which are registered with the
Department of Trade and Industry (DTI). It held that respondent had a better right over the
use of the mark "ST. FRANCIS" because of the latter's appropriation and continuous usage
thereof for a long period of time. 13
A little over a year after, or on March 31, 2008, the BLA then rendered a Decision 14
in the St. Francis Shangri-La IP Case , allowing petitioners' application for registration
of the mark "THE ST. FRANCIS SHANGRI-LA PLACE." It found that respondent cannot
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 preclude petitioners from using the mark "ST. FRANCIS" as the records show that the
former's use thereof had not been attended with exclusivity. More importantly, it found that
petitioners had adequately appended the word "Shangri-La" to its composite mark to
distinguish it from that of respondent, in which case, the former had removed any
likelihood of confusion that may arise from the contemporaneous use by both parties of
the mark "ST. FRANCIS".
Both parties appealed the decision in the IPV Case , while petitioners appealed the
decision in the St. Francis Towers IP Case . Due to the identity of the parties and issues
involved, the IPO Director-General ordered the consolidation of the separate appeals. 15
Records are, however, bereft of any showing that the decision in the St. Francis Shangri-
La IP Case was appealed by either party and, thus, is deemed to have lapsed into nality.
SITCEA

The IPO Director-General Ruling

In a Decision 16 dated September 3, 2008, then IPO Director-General Adrian S.
Cristobal, Jr. a rmed the rulings of the BLA that: ( a) petitioners cannot register the mark
"THE ST. FRANCIS TOWERS"; and ( b ) petitioners are not guilty of unfair competition in its
use of the mark "THE ST. FRANCIS SHANGRI-LA PLACE." However, the IPO Director-
General reversed the BLA's nding that petitioners committed unfair competition through
their use of the mark "THE ST. FRANCIS TOWERS," thus dismissing such charge. He found
that respondent could not be entitled to the exclusive use of the mark "ST. FRANCIS," even
at least to the locality where it conducts its business, because it is a geographically
descriptive mark, considering that it was petitioners' as well as respondent's intention to
use the mark "ST. FRANCIS" in order to identify, or at least associate, their real estate
development projects/businesses with the place or location where they are
situated/conducted, particularly, St. Francis Avenue and St. Francis Street (now known as
Bank Drive), Ortigas Center. He further opined that respondent's registration of the name
"ST. FRANCIS" with the DTI is irrelevant since what should be controlling are the trademark
registrations with the IPO itself. 17 Also, the IPO Director-General held that since the
parties are both engaged in the real estate business, it would be "hard to imagine that a
prospective buyer will be enticed to buy, rent or purchase [petitioners'] goods or services
believing that this is owned by [respondent] simply because of the name 'ST. FRANCIS'.
The prospective buyer would necessarily discuss things with the representatives of
[petitioners] and would readily know that this does not belong to [respondent]". 18
Disagreeing solely with the IPO Director-General's ruling on the issue of unfair
competition (the bone of contention in the IPV Case), respondent elevated the same to the
CA.
In contrast, records do not show that either party appealed the IPO Director-
General's ruling on the issue of the registrability of the mark "THE ST. FRANCIS TOWERS"
(the bone of contention in the St. Francis Towers IP Case). As such, said pronouncement is
also deemed to have lapsed into finality.
The CA Ruling
In a Decision 19 dated December 18, 2009, the CA found petitioners guilty of unfair
competition not only with respect to their use of the mark "THE ST. FRANCIS TOWERS" but
also of the mark "THE ST. FRANCIS SHANGRI-LA PLACE". Accordingly, it ordered
petitioners to cease and desist from using "ST. FRANCIS" singly or as part of a composite
mark, as well as to jointly and severally pay respondent a ne in the amount of
P200,000.00.
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 The CA did not adhere to the IPO Director-General's nding that the mark "ST.
FRANCIS" is geographically descriptive, and ruled that respondent — which has exclusively
and continuously used the mark "ST. FRANCIS" for more than a decade, and, hence, gained
substantial goodwill and reputation thereby — is very much entitled to be protected
against the indiscriminate usage by other companies of the trademark/name it has so
painstakingly tried to establish and maintain. 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. 20
Dissatisfied, petitioners filed the present petition.
The Issue Before the Court
With the decisions in both Inter Partes Cases having lapsed into nality, the sole
issue thus left for the Court's resolution is whether or not petitioners are guilty of unfair
competition in using the marks "THE ST. FRANCIS TOWERS" and "THE ST. FRANCIS
SHANGRI-LA PLACE".
The Court's Ruling
The petition is meritorious.
Section 168 of Republic Act No. 8293 , 21 otherwise known as the "Intellectual
Property Code of the Philippines" (IP Code), provides for the rules and regulations on
unfair competition.
To begin, Section 168.1 quali es who is entitled to protection against unfair
competition. It states that "[a] person who has identi ed in the mind of the public the
goods he manufactures or deals in, his business or services from those of others, whether
or not a registered mark is employed, has a property right in the goodwill of the said
goods, business or services so identi ed, which will be protected in the same manner as
other property rights". cHSTEA

Section 168.2 proceeds to the core of the provision, describing forthwith who may
be found guilty of and subject to an action of unfair competition — that is, " [a]ny person
who shall employ deception or any other means contrary to good faith by which
he shall pass off the goods manufactured by him or in which he deals, or his
business, or services for those of the one having established such goodwill, or
who shall commit any acts calculated to produce said result . . . ."
Without limiting its generality, Section 168.3 goes on to specify examples of acts
which are considered as constitutive of unfair competition, viz.:
168.3. In particular, and without in any way limiting the scope of protection
against unfair competition, the following shall be deemed guilty of unfair
competition:

(a) Any person who is selling his goods and gives them the
general appearance of goods of another manufacturer or dealer,
either as to the goods themselves or in the wrapping of the
packages in which they are contained, or the devices or words
thereon, or in any other feature of their appearance, which would
be likely to in uence purchasers to believe that the goods offered
are those of a manufacturer or dealer, other than the actual
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 manufacturer or dealer, or who otherwise clothes the goods with
such appearance as shall deceive the public and defraud another
of his legitimate trade, or any subsequent vendor of such goods or
any agent of any vendor engaged in selling such goods with a like
purpose;

(b) Any person who by any arti ce, or device, or who employs any
other means calculated to induce the false belief that such person
is offering the service of another who has identi ed such services
in the mind of the public; or
(c) Any person who shall make any false statement in the course
of trade or who shall commit any other act contrary to good faith
of a nature calculated to discredit the goods, business or services
of another.

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 161 24 shall apply mutatis mutandis."
The statutory attribution of the unfair competition concept is well-supplemented by
jurisprudential pronouncements. In the recent case of Republic Gas Corporation v. Petron
Corporation, 25 the Court has echoed the classic de nition of the term which is "'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. [In other words], the defendant gives his goods the general
appearance of the goods of his competitor with the intention of deceiving the public
that the goods are those of his competitor." 26 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, 27 determined through a judicious scrutiny of the
factual circumstances attendant to a particular case. 28 TAcCDI

Here, the Court nds 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. As deftly explained in the U.S. case of Great Southern Bank
v. First Southern Bank : 29 "[d]escriptive geographical terms are in the 'public
domain' in the sense that every seller should have the right to inform customers
of the geographical origin of his goods . A 'geographically descriptive term' is any
noun or adjective that designates geographical location and would tend to be regarded by
buyers as descriptive of the geographic location of origin of the goods or services. A
geographically descriptive term can indicate any geographic location on earth ,
such as continents, nations, regions, states, cities, streets and addresses, areas of cities,
rivers, and any other location referred to by a recognized name. In order to determine
whether or not the geographic term in question is descriptively used, the following
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 question is relevant: (1) Is the mark the name of the place or region from which the
goods actually come? If the answer is yes, then the geographic term is probably
used in a descriptive sense, and secondary meaning is required for protection ".
30

In Burke-Parsons-Bowlby Corporation v. Appalachian Log Homes, Inc. , 31 it was held

that secondary meaning is established when a descriptive mark no longer causes the
public to associate the goods with a particular place, but to associate the goods with a
particular source. In other words, it is not enough that a geographically-descriptive mark
partakes of the name of a place known generally to the public to be denied registration as
it is also necessary to show that the public would make a goods/place
association — that is, to believe that the goods for which the mark is sought to be
registered originate in that place. To hold such a belief, it is necessary, of course, that the
purchasers perceive the mark as a place name, from which the question of obscurity or
remoteness then comes to the fore. 32 The more a geographical area is obscure and
remote, it becomes less likely that the public shall have a goods/place association with
such area and thus, the mark may not be deemed as geographically descriptive. However,
where there is no genuine issue that the geographical signi cance of a term is its
primary signi cance and where the geographical place is neither obscure nor
r e m o t e , a public association of the goods with the place may ordinarily be
presumed from the fact that the applicant's own goods come from the
geographical place named in the mark . 33
Under Section 123.2 34 of the IP Code, speci c requirements have to be met in
order to conclude that a geographically-descriptive mark has acquired secondary meaning,
to wit: (a) the secondary meaning must have arisen as a result of substantial
commercial use of a mark in the Philippines ; (b ) such use must result in the
distinctiveness of the mark insofar as the goods or the products are concerned ;
and (c) proof of substantially exclusive and continuous commercial use in the
Philippines for ve (5) years before the date on which the claim of
distinctiveness is made . Unless secondary meaning has been established, a
geographically-descriptive mark, due to its general public domain classi cation, is
perceptibly disquali ed from trademark registration. Section 123.1 (j) of the IP Code
states this rule as follows:
SEC. 123. Registrability. —
123.1 A mark cannot be registered if it:

xxx xxx xxx

(j) Consists exclusively of signs or of indications that may serve in
trade to designate the kind, quality, quantity, intended purpose,
value, geographical origin , time or production of the goods or
rendering of the services, or other characteristics of the goods or
services; (Emphasis supplied) HcSETI

xxx xxx xxx

Cognizant of the foregoing, the Court disagrees with the CA that petitioners
committed unfair competition due to the mistaken notion that petitioner had established
goodwill for the mark "ST. FRANCIS" precisely because said circumstance, by and of itself,
does not equate to fraud under the parameters of Section 168 of the IP Code as above-
cited. In fact, the records are bereft of any showing that petitioners gave their
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 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. Accordingly, the element of fraud which is the core of unfair competition had
not been established.
Besides, respondent was not able to prove its compliance with the requirements
stated in Section 123.2 of the IP Code to be able to conclude that it acquired a secondary
meaning — and, thereby, an exclusive right — to the "ST. FRANCIS" mark, which is, as the
IPO Director-General correctly pointed out, geographically-descriptive of the location in
which its realty developments have been built, i.e., St. Francis Avenue and St. Francis Street
(now known as "Bank Drive"). Verily, records would reveal that while it is true that
respondent had been using the mark "ST. FRANCIS" since 1992, its use thereof has been
merely con ned to its realty projects within the Ortigas Center, as speci cally mentioned.
As its use of the mark is clearly limited to a certain locality, it cannot be said that there was
substantial commercial use of the same recognized all throughout the country. Neither is
there any showing of a mental recognition in buyers' and potential buyers' minds that
products connected with the mark "ST. FRANCIS" are associated with the same source 35
— that is, the enterprise of respondent. Thus, absent any showing that there exists a clear
goods/service-association between the realty projects located in the aforesaid area and
herein respondent as the developer thereof, the latter cannot be said to have acquired a
secondary meaning as to its use of the "ST. FRANCIS" mark.
In fact, even on the assumption that secondary meaning had been acquired, said
nding only accords respondents protectional quali cation under Section 168.1 of the IP
Code as above quoted. Again, this does not automatically trigger the concurrence of the
fraud element required under Section 168.2 of the IP Code, as exempli ed by the acts
mentioned in Section 168.3 of the same. Ultimately, as earlier stated, there can be no unfair
competition without this element. In this respect, considering too the notoriety of the
Shangri-La brand in the real estate industry which dilutes petitioners' propensity to merely
ride on respondent's goodwill, the more reasonable conclusion is that the former's use of
the marks "THE ST. FRANCIS TOWERS" and "THE ST. FRANCIS SHANGRI-LA PLACE" was
meant only to identify, or at least associate, their real estate project/s with its
geographical location. As aptly observed by the IPO Director-General: 36
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, o ces, and commercial spaces, such as restaurants, and other businesses.
For these kinds of foods 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 . (Emphasis and underscoring supplied)

Hence, for all the reasons above-discussed, the Court hereby grants the instant
petition, and, thus, exonerates petitioners from the charge of unfair competition in the IPV
Case. As the decisions in the Inter Partes Cases were not appealed, the registrability
issues resolved therein are hereby deemed to have attained nality and, therefore, are now
executory.
WHEREFORE , the petition is GRANTED . The Decision dated December 18, 2009 of
the Court of Appeals in CA-G.R. SP No. 105425 is hereby REVERSED and SET ASIDE .
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 Accordingly, the Decision dated September 3, 2008 of the Intellectual Property O ce-
Director General is REINSTATED . CHaDIT

SO ORDERED .
Carpio, Brion, Peralta * and Perez, JJ., concur.

Footnotes
* Designated Additional Member per Raffle dated July 16, 2014.
1. Rollo, pp. 3-33.
2. Id. at 68-95. Penned by Associate Justice Jane Aurora C. Lantion, with Associate Justices
Mario L. Guarina III and Mariflor P. Punzalan Castillo, concurring.
3. Id. at 98-114. Penned by IPO Director-General Adrian S. Cristobal, Jr.

4. Rollo, pp. 69-70.

5. Id. at 99; See also CA rollo, pp. 341-349.
6. See id. at 69-72 and 99-101.
7. See id. at 99-100.
8. See id. at 104.

9. CA rollo, pp. 244-266. Penned by Director Estrellita Beltran-Abelardo.

10. The following were stated as examples in the BLA's Decision dated December 19, 2006 in
the IPV Case: Emmaus II St. Francis Village Condominium located at Moonwalk
Subdivision, Parañaque City, St. Francis Village Phase I-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 City. (Id.at 262.)
11. See id. at 259-263.
12. Id. at 559-567.
13. Id. at 564-566.

14. Id. at 341-349.

15. Rollo, p. 78.
16. Id. at 98-114.
17. Id. at 103-106 and 111-112.
18. Id. at 112.

19. Id. at 68-95.

20. See id. at 91-93.
21. Entitled "AN ACT PRESCRIBING THE INTELLECTUAL PROPERTY CODE AND ESTABLISHING
THE INTELLECTUAL PROPERTY OFFICE, PROVIDING FOR ITS POWERS AND
FUNCTIONS, AND FOR OTHER PURPOSES".
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 22. SECTION 156. Actions, and Damages and Injunction for Infringement. —
156.1. The owner of a registered mark may recover damages from any person who
infringes his rights, and the measure of the damages suffered shall be either the
reasonable profit which the complaining party would have made, had the defendant not
infringed his rights, or the profit which the defendant actually made out of the
infringement, or in the event such measure of damages cannot be readily ascertained
with reasonable certainty, then the court may award as damages a reasonable
percentage based upon the amount of gross sales of the defendant or the value of the
services in connection with which the mark or trade name was used in the infringement
of the rights of the complaining party.
156.2. On application of the complainant, the court may impound during the pendency of
the action, sales invoices and other documents evidencing sales.
156.3. In cases where actual intent to mislead the public or to defraud the complainant is
shown, in the discretion of the court, the damages may be doubled.
156.4. The complainant, upon proper showing, may also be granted injunction.
23. SECTION 157. Power of Court to Order Infringing Material Destroyed. —
157.1. In any action arising under this Act, in which a violation of any right of the owner
of the registered mark is established, the court may order that goods found to be
infringing be, without compensation of any sort, disposed of outside the channels of
commerce in such a manner as to avoid any harm caused to the right holder, or
destroyed; and all labels, signs, prints, packages, wrappers, receptacles and
advertisements in the possession of the defendant, bearing the registered mark or trade
name or any reproduction, counterfeit, copy or colorable imitation thereof, all plates,
molds, matrices and other means of making the same, shall be delivered up and
destroyed.
157.2. In regard to counterfeit goods, the simple removal of the trademark affixed shall
not be sufficient other than in exceptional cases which shall be determined by the
Regulations, to permit the release of the goods into the channels of commerce.
24. SECTION 161. Authority to Determine Right to Registration. — In any action involving a
registered mark, the court may determine the right to registration, order the cancellation
of a registration, in whole or in part, and otherwise rectify the register with respect to the
registration of any party to the action in the exercise of this. Judgment and orders shall
be certified by the court to the Director, who shall make appropriate entry upon the
records of the Bureau, and shall be controlled thereby.
25. G.R. No. 194062, June 17, 2013, 698 SCRA 666.
26. Id. at 680-681.
27. Superior Commercial Enterprises, Inc. v. Kunnan Enterprises Ltd., G.R. No. 169974, April 20,
2010, 618 SCRA 531, 556.
28. See Levi Strauss (Phils.), Inc. v. Lim, 593 Phil. 435, 457 (2008). See also Co Tiong Sa v.
Director of Patents, 95 Phil. 1, 4 (1954).
29. 625 So.2d 463 (1993).
30. Id.; emphases and underscoring supplied; brackets and citations omitted.

31. 871 F.2d 590 (1989).

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 32. In re Societe Generale Des Eaux Minerales de Vittel, S.A., 824 F.2d 957, 3 USPQ2d 1450
(Fed. Cir. 1987). See also In re California Pizza Kitchen, Inc., 10 USPQ2d 1704 (TTAB
1988).
33. In re California Pizza Kitchen, Inc., id., citing In re Handler Fenton Westerns, Inc., 2l4 USPQ
848 (TTAB 1982).
34. 123.2 As regards signs or devices mentioned in paragraphs (j), (k), and (l), nothing shall
prevent the registration of any such sign or device which has become distinctive in
relation to the goods for which the registration is requested as a result of the use that
have been made of it in commerce in the Philippines. The Office may accept as prima
facie evidence that the mark has become distinctive, as used in connection with the
applicant's goods or services in commerce, proof of substantially exclusive and
continuous use thereof by the applicant in commerce in the Philippines for five (5)
years before the date on which the claim of distinctiveness is made. (Emphases and
underscoring supplied)
35. See Japan Telecom, Inc. v. Japan Telecom America, Inc., 287 F.3d 866 (2002); Self-
Realization Fellowship Church v. Ananda Church of Self-Realization, 59 F.3d 902, 35
USPQ2d 1342 (Fed Cir. 1995); Levi Strauss & Co. v. Blue Bell, Inc., 632 F.2d 817, 208
USPQ 713 (Fed Cir. 1980).
36. Rollo, p. 104.

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