AT A GLANCE:

While trademark rights are generally acquired through registration under the Intellectual Property Code, registration does not confer rights where it was obtained fraudulently or in violation of the law. The Intellectual Property Code does not protect the registration of a mark that knowingly appropriates another’s established business identity. 

In the case of Heirs of King Si Biak, namely, Albert King and Arthur King v. Panciteria Lido Chinese Co., G.R. No. 279019, August 12, 2026, Lido Restaurant was owned by Eng Son Co., a partnership established in 1997 between two individuals: King Si Biak and Annie Alipio. When the business relationship between the two deteriorated, Alipio filed her own application for registration of the trademark “Panciteria Lido” in 2008. The application was opposed by King Si Biak.

In a Decision dated November 19, 2010, the Bureau of Legal Affairs (BLA) ruled that the right to register the trademark “Panciteria Lido” belonged to Eng Son Co., considering Alipio’s own admission that  the partnership owned the business. Hence, Alipio could not register it in her own name. The BLA further ruled that, even assuming the partnership had been dissolved at Alipio’s instance, such dissolution did not terminate the partnership, which continued to exist until the winding up of its affairs.

King Si Biak passed away in 2010, leaving the brothers King as his heirs. Alipio, on the other hand, entered into a new partnership with other individuals and formed Panciteria Lido Chinese Cuisine Co. (PLCCC). In 2012, PLCCC applied for the registration of the subject Lido marks. The applications were granted, prompting the heirs to file the petitions for cancellation.

Trademark Registration No. 4-2012-014828	Trademark Registration No. 4-2012-014829

The petitions for cancellation were granted by the BLA Adjudication Officer. The latter found that the mark “Lido” was first adopted and used in commerce as part of the name “Panciteria Lido,” which later become the Lido Restaurant. King Si Biak and Alipio subsequently formed Eng Son Co. to operate the restaurant, and the partnership continuously used the “Lido” name in connection with its business. Considering that PLCCC’s registered marks belonged to Eng Son Co., not PLCCC, and that the latter’s trademark registration s could not prevail over the partnership’s superior ownership rights. Aggrieved, PLCCC appealed.

The Director of BLA affirmed the Decision of the Adjudication Officer, and found that PLCCC registered the subject marks in bad faith, having prior knowledge that the “Lido” mark belonged to Eng Son Co. Absent any showing that the partnership had been liquidated and its assets lawfully distributed, ownership of the “Lido” mark remained with Eng Son Co. PLCCC appealed the Director’s Decision to the IPO Director General.

The Director General reversed of the Decision of the Director and dismissed the petitions for cancellation. It held that, under the Intellectual Property Code, ownership of a trademark is acquired through registration rather than prior use. Since neither Eng Son Co. nor King Si Biak had an existing trademark registration or pending application covering the subject marks, PLCCC validly acquired ownership of the marks upon registration.

The Supreme Court held that under Section 122 of the Intellectual Property Code, ownership of a trademark is acquired through valid registration. However, such rule is not without qualification. Section 122 provides that trademark rights arise only from registration “made validly” in accordance with the Intellectual Property Code. This requirement is significant: it recognizes that every registration automatically vests protectable trademark rights upon the registrant. A registration procured in bad faith or otherwise obtained contrary to the provisions of the Intellectual Property Code is not one made validly and does not give rise to protectable trademark rights. Such registrations remain subject to cancellation under Section 151.1 (b), which states that:

“Section 151. Cancellation. – 151.1. A petition to cancel a registration of a mark under this Act may be filed with the Bureau of Legal Affairs by any person who believes that [they are] or will be damaged by the registration of a mark under this Act as follows:

(b) At any time, if the registered mark becomes the generic name for the goods or services, or a portion thereof, for which it is registered, or has been abandoned, or its registration was obtained fraudulently or contrary to the provisions of this Act, or if the registered mark is being used by, or with the permission of, the registrant so as to misrepresent the source of the goods or services on or in connection with which the mark is used. If the registered mark becomes the generic name for less than all of the goods or services for which it is registered, a petition to cancel the registration for only those goods or services may be filed. A registered mark shall not be deemed to be the generic name of goods or services solely because such mark is also used as a name of or to identify a unique product or service. The primary significance of the registered mark to the relevant public rather than purchaser motivation shall be the test for determining whether the registered mark has become the generic name of goods or services on or in connection with which it has been used.”

The records established that the “Lido” mark and its Chinese equivalent had long been used in connection with the restaurant business operated by Eng Son Co. The Lido Restaurant traces its origins to as early as 1936. King Si Biak and Alipio later organized Eng Son Co. for the specific purpose of operating the Lido Restaurant, after which the partnership continuously used the Lido name in connection with its business.

This prior use of the “Lido” mark by Eng Son Co. had been recognized by the IPO as early as 2010. In IPC No. 14-2009-00213, the IPO ruled that the right to register the trademark “Panciteria Lido,” which incorporates the same dominant element “Lido,” belonged to Eng Son Co., and not to Alipio or King Si Biak individually.

This case does not turn on who secured a certificate of registration. Rather it turns on whether such registration was validly obtained in accordance with the Intellectual Property Code. PLCCC knowingly caused the registration of the marks that, through one of its own partners, it knew had long been used and closely identified with another entity. Registration obtained under such circumstances cannot be regarded as registration validly made in accordance with the Intellectual Property Code.

Hence, it cannot give rise to protectable trademark rights.

Related article/s:

• Rights of Performers under the Intellectual Property Code
• What are the rights of book authors and writers under the Intellectual Property Code?

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Alburo Alburo and Associates Law Offices specializes in business law and labor law consulting. For inquiries regarding legal services, you may reach us at info@alburolaw.com, or dial us at (02)7745-4391/ 09175772207/ 09778050020.

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