In a trademark dispute between Seri Somboonsakdikul and Orlane S.A., the Supreme Court reversed the Court of Appeals’ decision, allowing the registration of the trademark “LOLANE.” The IPO’s denial, affirmed by the CA, was based on the similarity between LOLANE and the already registered “ORLANE,” arguing potential consumer confusion. However, the Supreme Court emphasized the importance of distinctiveness and the absence of “colorable imitation” between the marks, focusing on visual and aural differences. This ruling clarifies the threshold for trademark similarity and protects a business’s ability to establish its own brand identity.

Brand Identity Under Scrutiny: Can LOLANE and ORLANE Coexist in the Beauty Market?

The heart of this case lies in the application for trademark registration of “LOLANE” by Seri Somboonsakdikul, intended for personal care products. Orlane S.A., already possessing the registered trademark “ORLANE” for similar goods, opposed this application. The primary contention revolved around whether the similarity between LOLANE and ORLANE would likely cause consumer confusion, potentially infringing on Orlane S.A.’s established brand. The Intellectual Property Office (IPO) initially sided with Orlane S.A., a decision later upheld by the Court of Appeals (CA), prompting Somboonsakdikul to elevate the case to the Supreme Court.

The legal framework governing this dispute is primarily the Republic Act No. 8293, also known as the Intellectual Property Code of the Philippines. Section 123.1 of this code outlines the conditions under which a trademark cannot be registered, particularly focusing on marks that are identical or confusingly similar to existing registered marks. This provision aims to protect brand owners from unfair competition and prevent consumer deception. The key question, therefore, is whether LOLANE is “confusingly similar” to ORLANE, as to deceive or cause confusion.

The IPO and CA decisions leaned heavily on the perceived similarity between the two marks, citing the shared ending “LANE,” their similar syllabic structure, and their use in relation to similar products. The CA applied the dominancy test, concluding that the suffix “LANE” was the dominant feature, leading to potential confusion. However, this approach was contested by Somboonsakdikul, who argued that the overall impression of the marks, including visual and aural differences, should be considered.

The Supreme Court, in its analysis, emphasized the importance of determining whether there is “colorable imitation” between the trademarks. Colorable imitation is defined as:

“such similarity in form, content, words, sound, meaning, special arrangement or general appearance of the trademark or trade name in their overall presentation or in their essential and substantive and distinctive parts as would likely mislead or confuse persons in the ordinary course of purchasing the genuine article.”

The Court referenced its previous rulings in cases like Mighty Corporation v. E. & J. Gallo Winery, highlighting that the likelihood of confusion must be assessed by considering the resemblance between trademarks, the similarity of goods, the likely effect on purchasers, and other equitable considerations. While acknowledging the dominancy test, the Supreme Court differed in its application, focusing on the distinct visual and aural differences between LOLANE and ORLANE. The Court contrasted the plain block letters of ORLANE with the stylized presentation of LOLANE, where the letters “L” and “A” are conjoined.

Furthermore, the Supreme Court addressed the aural aspect, finding that the pronunciations of LOLANE and ORLANE differed significantly. It stated, regarding the differences of the marks in question:

“Appeals to the ear in pronouncing ORLANE and LOLANE are dissimilar. The first syllables of each mark, i.e., OR and LO do not sound alike, while the proper pronunciation of the last syllable LANE-“LEYN” for LOLANE and “LAN” for ORLANE, being of French origin, also differ.”

The Court also challenged the generalization that Filipinos would invariably pronounce ORLANE as “ORLEYN,” asserting that some consumers might be aware of the proper French pronunciation. This point underscores the Court’s focus on the overall impression and the potential for consumers to differentiate between the brands.

Moreover, the Supreme Court noted that the IPO had previously allowed the registration of “GIN LANE” for similar goods, indicating that the suffix “LANE” was not exclusively associated with ORLANE products. This demonstrated that LANE is a weak mark, commonly used by other sellers in the market. This decision highlights a critical aspect of trademark law: the need to protect unique brand identifiers while allowing common terms to be used in ways that do not create genuine confusion.

The Supreme Court’s decision has practical implications for both trademark applicants and existing brand owners. It emphasizes the importance of creating trademarks that are sufficiently distinct to avoid confusion. While similarities may exist, the overall impression, including visual and aural differences, must be considered. The decision also underscores the need for the IPO to maintain consistency in its rulings, taking into account previous registrations and the common use of certain terms in the market.

This case serves as a reminder that trademark law seeks to strike a balance between protecting established brands and fostering competition. The Supreme Court’s decision reflects a nuanced understanding of this balance, prioritizing distinctiveness and the absence of genuine consumer confusion. By focusing on the specific characteristics of the trademarks and the context in which they are used, the Court has provided valuable guidance for future trademark disputes.

FAQs

What was the key issue in this case?	The central issue was whether the trademark “LOLANE” was confusingly similar to the registered trademark “ORLANE,” thus preventing its registration under the Intellectual Property Code. The court assessed if the visual and aural similarities would likely cause consumer confusion.
What is “colorable imitation”?	“Colorable imitation” refers to similarities in trademarks that are close enough to deceive ordinary purchasers, leading them to believe they are buying the genuine product. This includes similarities in form, content, words, sound, meaning, or general appearance.
What is the dominancy test in trademark law?	The dominancy test focuses on the dominant features of competing trademarks that are most likely to cause confusion among consumers. It emphasizes the aural and visual impressions created by the marks, rather than a detailed analysis of all differences.
How did the Supreme Court apply the dominancy test in this case?	The Supreme Court, while using the dominancy test, disagreed with the lower courts’ emphasis on the suffix “LANE.” Instead, it focused on the distinct visual and aural differences between “LOLANE” and “ORLANE,” concluding that the marks were not confusingly similar.
What aural differences did the Court consider?	The Court noted that the first syllables, “OR” and “LO,” sound different, and the proper pronunciation of the last syllable “LANE” also varies. “LOLANE” ends with “LEYN,” while “ORLANE,” of French origin, ends with “LAN.”
Why did the Court consider the IPO’s previous registration of “GIN LANE”?	The Court cited the “GIN LANE” registration to show that the suffix “LANE” was not exclusively associated with ORLANE products. This suggested that the term was in common use and did not inherently create confusion.
What is the significance of the visual differences between the marks?	The visual differences, such as the stylized lettering of “LOLANE” (with conjoined L and A) versus the plain block letters of “ORLANE,” contributed to the Court’s finding of no colorable imitation. These differences help consumers distinguish the brands.
What factors did the Supreme Court weigh in its decision?	The Supreme Court considered the visual and aural differences, the common use of the suffix “LANE,” and the overall impression of the marks. It also noted that the absence of evidence proving LANE was particularly connected to respondent’s product.

The Supreme Court’s ruling in Seri Somboonsakdikul v. Orlane S.A. offers valuable insights into the complexities of trademark law and the importance of distinctiveness in brand identity. By prioritizing a comprehensive assessment of visual and aural differences, the Court has provided a balanced framework for evaluating potential consumer confusion and protecting the rights of trademark applicants.

For inquiries regarding the application of this ruling to specific circumstances, please contact ASG Law through contact or via email at frontdesk@asglawpartners.com.

Disclaimer: This analysis is provided for informational purposes only and does not constitute legal advice. For specific legal guidance tailored to your situation, please consult with a qualified attorney.
Source: SERI SOMBOONSAKDIKUL vs. ORLANE S.A., G.R. No. 188996, February 01, 2017