The Supreme Court rules against one of the original incorporators of Gloria Maris who registered the trademark in his name instead of under the company
MANILA, Philippines – Never mind if its logo symbolizes threatened species, the Gloria Maris Shark’s Fin Restaurant still wants it.
After a nearly 20-year trademark dispute, the Supreme Court (SC) ruled in favor of Gloria Maris over Pacifico Lim, one of five original incorporators of the fine dining Chinese restaurant who had the trademark registered in his name instead of under the company.
In a unanimous decision promulgated on May 20 but released only on Wednesday, October 9, the High Court’s 3rd Division said Lim “registered the Gloria Maris trademark in bad faith.”
Lim, an engineer, was one of the original incorporators of Gloria Maris when it took over an ordinary Chinese restaurant in the Cultural Center of the Philippines complex in Pasay City 31 years ago and had it registered with the Securities and Exchange Commission in 1994.
Lim hired an interior designer, Joey Rodriguez, who presented him with logo designs. Lim then approved the image of a shark’s fin on an irregularly shaped plate, “with various marks/short lines surrounding it.”
Gloria Maris’ four other directors — Pedro Manalo, Lorenzo Dy, Edmundo Tan, and Dominador Menguito — then entrusted to Lim the registration of the trademark with the Intellectual Property Office of the Philippines (IPOPHL).
However, despite the company being incorporated in 1994, Lim registered the trademark only in 2005 or over 10 years later. Not only that, he also franchised the concept to several companies.
By then, Gloria Maris had been using the trademark already in its restaurants, which had expanded to other areas such as in Greenhills in San Juan City, where a sizeable Chinese-Filipino community resides, and where it became famous for serving quality Chinese food.
Gloria Maris then sought to cancel Lim’s registration, first before the Bureau of Legal Affairs of the IPOPHL. Lim won before the bureau, but this was reversed by the Office of the Director General (ODG) of the IPOPHL.
“The ODG found that Gloria Maris had been using the name ‘Gloria Maris’ as part of its corporate name and business identity for more than 10 years before Lim’s registration with the IPO,” the SC said in a press release on its decision.
The trademark battle reached the Court of Appeals which ruled in favor of Lim, prompting Gloria Maris to seek a reversal in the SC.
Lim argued that he did not commit fraud since the trademark was his creation or his intellectual property, but the High Court did not side with him.
“It was bad faith on Lim’s part to reap the fruits of the goodwill built by the Gloria Maris brand when he registered the subject marks in his own name. Obviously, it was the corporation as a whole that built and established the brand,” the SC said in the ruling penned by Associate Justice Maria Filomena Singh.
Associate justices Benjamin Caguioa, Henri Jean Paul Inting, Samuel Gaerlan, and Japar Dimaampao concurred in the decision of the 3rd Division.
“The Court held that a trademark registered in bad faith may be canceled for being unfair competition under the Intellectual Property Code. Thus, it ordered the cancellation of Lim’s registration over the trademark,” the SC added.
“Bad faith in the context of trademark registration means that the applicant has knowledge of prior creation, use, and/or registration by another of an identical or similar trademark.”
Gloria Maris serves “authentic Chinese cuisine,” such as braised shark’s fin in various soup dishes and braised abalone.
A large serving of braised shark’s fin soup costs P4,300 while a small serving sells for P2,200, based on the menu on its website.
The website does not say whether the fins used in the soup are from actual sharks or just substitutes.
Gloria Maris also serves other expensive dishes such as Peking duck, lobster, and sea mantis.
Aside from the branch in Greenhills, San Juan City, Gloria Maris also has branches at Gateway Mall and Eastwood, both in Quezon City; and in Dagupan City, Pangasinan. All of them use the original logo.
Many companies now no longer want their brands associated with the shark fin trade. Airlines such as flag carrier Philippine Airlines and Cebu Pacific have stopped carrying shark fin cargo in response to a global conservation clamor. – Rappler.com
