G.R. No. 222366 . December 04, 2017.
W LAND HOLDINGS, INC., PETITIONER, V. STARWOOD HOTELS AND RESORTS WORLDWIDE, INC., RESPONDENT.

FACTS

Respondent Starwood Hotels and Resorts Worldwide, Inc. (Starwood) registered the service mark “W” for hotel and related services with the Intellectual Property Office (IPO). Petitioner W Land Holdings, Inc. (W Land) later applied to register its own “W” mark for real estate services. Starwood successfully opposed W Land’s application. Subsequently, W Land filed a petition to cancel Starwood’s registration, alleging non-use under the Intellectual Property Code. W Land argued that Starwood had no physical hotel or establishment in the Philippines rendering the services covered by its registration, constituting abandonment of the mark.
Starwood defended its registration, asserting it had not abandoned the mark. It submitted a Declaration of Actual Use (DAU) to the IPO, supported by evidence including its interactive websites. Starwood contended that through these websites, Philippine residents could view services, make reservations, and book accommodations for its “W Hotels” located abroad, demonstrating actual use of the mark in the Philippines for the covered services.

ISSUE

Whether the Court of Appeals correctly affirmed the dismissal of W Land’s petition for cancellation, thereby upholding the validity of Starwood’s “W” mark registration despite the absence of a physical hotel in the Philippines.

RULING

The Supreme Court denied the petition and upheld Starwood’s registration. The legal logic centered on the interpretation of “use” of a service mark in commerce under the Intellectual Property Code. The Court clarified that actual use is not contingent upon a physical business location within the country. For service marks, especially in the hotel industry, use can be established through advertising and the offering of services to the Philippine market.
The Court found Starwood’s interactive websites, which allowed Philippine consumers to access information, make inquiries, and reserve rooms for its hotels, constituted a commercial offering of services in the Philippines. This constituted bona fide use of the “W” mark in the course of trade. The acceptance of Starwood’s DAU by the IPO Bureau of Trademarks further reinforced the presumption of valid use. The absence of a brick-and-mortar hotel was not fatal, as the essence of the service—accommodation booking—was made available to the public within the jurisdiction. Therefore, W Land failed to prove the statutory ground for cancellation based on non-use.