Tag: Dominancy Test

Navigating Trademark Confusion: The Dominancy Test and Its Impact on Brand Protection in the Philippines
Understanding the Dominancy Test: A Key to Resolving Trademark Disputes

Levi Strauss & Co. v. Antonio Sevilla and Antonio L. Guevarra, G.R. No. 219744, March 01, 2021

In the bustling markets of the Philippines, where brands vie for consumer attention, the line between competition and confusion can often blur. Imagine walking into a store and mistaking a pair of jeans for a well-known brand due to a similar-looking logo. This scenario played out in a significant Supreme Court case that not only clarified the boundaries of trademark law but also underscored the importance of the Dominancy Test in protecting brand integrity.

The case involved Levi Strauss & Co., the iconic denim company, challenging the trademark “LIVE’S” owned by Antonio Sevilla and Antonio L. Guevarra. At the heart of the dispute was the question: Does the “LIVE’S” mark cause confusion with Levi’s well-established “LEVI’S” brand? The Supreme Court’s ruling provided a clear answer, emphasizing the importance of the Dominancy Test in trademark disputes.

The Legal Context: Trademarks and the Dominancy Test

Trademarks are crucial in the marketplace as they distinguish the goods or services of one enterprise from those of others. In the Philippines, the Intellectual Property Code (Republic Act No. 8293) governs trademark protection, aiming to prevent consumer confusion and unfair competition.

The Dominancy Test is a pivotal legal principle used to determine trademark infringement. It focuses on the dominant features of competing trademarks that might cause confusion among consumers. Unlike the Holistic or Totality Test, which considers the entirety of the marks, the Dominancy Test prioritizes the most prominent elements of the trademarks.

Section 155 of the Intellectual Property Code states that infringement occurs when someone uses “any reproduction, counterfeit, copy, or colorable imitation of a registered mark or the same container or a dominant feature thereof” that is likely to cause confusion. This provision underscores the importance of the Dominancy Test in legal proceedings.

For example, if a local brand uses a logo that prominently features the same distinctive design element as a well-known international brand, it could be deemed infringing under the Dominancy Test, even if other elements of the mark differ.

The Case Breakdown: Levi Strauss & Co. vs. “LIVE’S”

The journey of Levi Strauss & Co. against the “LIVE’S” trademark began in 1995 when the company filed a petition for cancellation with the Intellectual Property Office (IPO). Levi’s argued that the “LIVE’S” mark, owned by Sevilla and later assigned to Guevarra, was confusingly similar to their “LEVI’S” mark.

The IPO Bureau of Legal Affairs (IPO-BLA) initially rejected Levi’s petition, finding no confusing similarity between the marks. The decision was upheld by the IPO Director General (IPO-DG), leading Levi’s to appeal to the Court of Appeals (CA). However, the CA dismissed the appeal, citing mootness and res judicata due to a previous case (G.R. No. 162311) involving similar parties.

Undeterred, Levi’s took the case to the Supreme Court, which overturned the CA’s decision. The Supreme Court’s ruling emphasized the application of the Dominancy Test, stating, “The dominant feature of petitioner’s ‘LEVI’S’ marks is the word ‘levi’s’ composed of five letters, namely ‘L’, ‘E’, ‘V’, ‘I’, and ‘S’ with an apostrophe separating the fourth and fifth letters.”

The Court further noted, “Respondents’ ‘LIVE’S’ mark is but a mere anagram of petitioner’s ‘LEVI’S’ marks. It would not be farfetched to imagine that a buyer, when confronted with such striking similarity, would be led to confuse one over the other.”

The Supreme Court’s decision to apply the Dominancy Test and cancel the “LIVE’S” trademark registration marked a significant victory for Levi Strauss & Co., reinforcing the protection of their brand identity.

Practical Implications: Navigating Trademark Law

The Supreme Court’s ruling in the Levi Strauss case has far-reaching implications for trademark law in the Philippines. It reaffirms the Dominancy Test as the primary method for assessing trademark infringement, providing clarity for businesses seeking to protect their brands.

For companies, this decision underscores the importance of conducting thorough trademark searches before launching new products or services. It also highlights the need to monitor the market for potential infringements and to act swiftly to protect their intellectual property rights.

Key Lessons:
- Understand and apply the Dominancy Test when assessing potential trademark infringements.
- Regularly monitor the market for similar marks that could cause confusion among consumers.
- Seek legal advice promptly if you suspect trademark infringement to protect your brand’s integrity.
Frequently Asked Questions

What is the Dominancy Test in trademark law?

The Dominancy Test focuses on the similarity of the prevalent or dominant features of competing trademarks that might cause confusion, mistake, and deception in the mind of the purchasing public.

How does the Dominancy Test differ from the Holistic Test?

While the Dominancy Test concentrates on the dominant features of trademarks, the Holistic Test considers the entirety of the marks, including labels and packaging, to determine confusing similarity.

Can a registered trademark still be canceled if it causes confusion?

Yes, as demonstrated in the Levi Strauss case, a registered trademark can be canceled if it is found to be confusingly similar to another mark under the Dominancy Test.

What should businesses do to protect their trademarks?

Businesses should conduct thorough trademark searches, monitor the market for potential infringements, and seek legal advice if they suspect their trademark rights are being violated.

How can consumers avoid confusion between similar trademarks?

Consumers should pay close attention to the details of trademarks, such as spelling and design elements, and be aware of the brands they purchase to avoid confusion.

ASG Law specializes in Intellectual Property Law. Contact us or email hello@asglawpartners.com to schedule a consultation.
September 18, 2023
Navigating Trademark Infringement in the Philippines: Lessons from the CEEGEEFER vs. CHERIFER Case
Understanding Trademark Infringement: The Importance of Distinctiveness and Consumer Confusion

Prosel Pharmaceuticals & Distributors, Inc. v. Tynor Drug House, Inc., G.R. No. 248021, September 30, 2020

In the bustling aisles of pharmacies across the Philippines, consumers often rely on brand names and packaging to make quick, informed decisions about their purchases. When two products look strikingly similar, it can lead to confusion and potentially harm a company’s reputation and sales. This was the crux of the legal battle between Prosel Pharmaceuticals & Distributors, Inc. and Tynor Drug House, Inc., where the Supreme Court had to determine if the brand name CEEGEEFER infringed on the trademark of CHERIFER. The central question was whether the similarities between the two products could mislead consumers, highlighting the importance of trademark law in protecting both businesses and consumers.

Legal Context: Trademark Law and the Concept of Likelihood of Confusion

Trademark law in the Philippines is governed by the Intellectual Property Code (Republic Act No. 8293), which aims to protect marks that distinguish goods or services. A key element in trademark infringement cases is the “likelihood of confusion,” which occurs when consumers might mistakenly believe that goods or services from one source are actually from another. This principle is crucial because it safeguards the public from deception and protects a business’s goodwill.

The idem sonans rule, which means “sounds the same,” is often used in trademark cases to determine if two marks are phonetically similar enough to cause confusion. Additionally, the Dominancy Test focuses on the dominant features of the competing trademarks, while the Holistic Test considers the overall impression created by the marks. These tests are essential tools in assessing whether a trademark infringement has occurred.

For example, if a new brand of coffee named “Coffix” were to be introduced in the market alongside the well-known “Coffee Mate,” the similarity in names could potentially confuse consumers, leading to a possible infringement claim.

Case Breakdown: The Journey of CEEGEEFER and CHERIFER Through the Courts

The conflict began when Tynor Drug House, Inc., the manufacturer of CHERIFER, a popular multivitamin product, discovered that Prosel Pharmaceuticals & Distributors, Inc. was marketing a new product called CEEGEEFER. Tynor claimed that CEEGEEFER’s name and packaging were too similar to CHERIFER, potentially confusing consumers.

Initially, the Regional Trial Court (RTC) dismissed Tynor’s complaint, finding no confusing similarity between the two products. However, upon appeal, the Court of Appeals (CA) reversed this decision, ruling in favor of Tynor and finding Prosel liable for trademark infringement. The CA noted that both names were phonetically similar and that the packaging of the products bore striking resemblances, including the use of similar colors and images of a boy playing basketball.

Prosel then escalated the case to the Supreme Court, arguing that the differences in the products’ ingredients and target markets should negate any claims of infringement. The Supreme Court, however, upheld the CA’s decision, emphasizing the likelihood of confusion due to the similarities in the products’ names and packaging.

The Supreme Court’s decision included critical reasoning, such as:

“The fact that CEEGEEFER is idem sonans for CHERIFER is enough to violate respondent’s right to protect its trademark, CHERIFER.”

“Given the phonetic and visual similarities between the two products (i.e., how the product names are spelled, the sound of both product names, and the colors and shapes combination of the products’ respective packaging), it is obvious that petitioner attempted to pass CEEGEEFER as a colorable imitation of CHERIFER.”

Practical Implications: Navigating Trademark Infringement in Business

This ruling underscores the importance of ensuring that new products do not infringe on existing trademarks. Businesses must conduct thorough trademark searches and consider the potential for consumer confusion when developing new brands. The decision also highlights the need for clear and distinct branding to avoid legal disputes and protect consumer trust.

Key Lessons:
- Conduct comprehensive trademark searches before launching new products to avoid infringement.
- Ensure that product names and packaging are distinct enough to prevent consumer confusion.
- Understand the legal tests used to determine trademark infringement, such as idem sonans, Dominancy, and Holistic Tests.
Frequently Asked Questions

What is trademark infringement?

Trademark infringement occurs when a party uses a mark that is identical or confusingly similar to a registered trademark without permission, leading to a likelihood of confusion among consumers.

How is the likelihood of confusion determined?

The likelihood of confusion is assessed using various tests, including the idem sonans rule, which looks at phonetic similarities, and the Dominancy and Holistic Tests, which consider the overall impression and dominant features of the marks.

What steps should a business take to avoid trademark infringement?

Businesses should conduct thorough trademark searches, consult with legal experts, and ensure that their branding is distinct and does not resemble existing trademarks.

Can packaging design contribute to trademark infringement?

Yes, if the packaging design of a product is too similar to that of another product, it can contribute to consumer confusion and lead to a finding of trademark infringement.

What are the potential consequences of trademark infringement?

Consequences can include monetary damages, injunctions against the use of the infringing mark, and potential harm to the business’s reputation.

How can a business protect its trademarks?

Businesses can protect their trademarks by registering them with the Intellectual Property Office, monitoring the market for potential infringements, and taking legal action when necessary.

ASG Law specializes in Intellectual Property Law. Contact us or email hello@asglawpartners.com to schedule a consultation.
September 30, 2020

Trademark Registration: Likelihood of Confusion and Timely Appeals

The Supreme Court affirmed the denial of ABS-CBN Publishing, Inc.’s trademark application for “METRO” due to its similarity to existing registered marks, emphasizing the importance of timely filing of appeals. The Court underscored that failing to meet deadlines for appeals results in the finality of the original decision. This ruling serves as a reminder that neglecting procedural rules, such as filing appeals within the prescribed period, can have significant consequences in intellectual property disputes.

Trademark Tango: When ‘Metro’ Means More Than Meets the Eye

This case revolves around ABS-CBN Publishing, Inc.’s attempt to register the trademark “METRO” for its magazines. The Intellectual Property Office (IPO) rejected the application, citing its similarity to already registered marks. This decision hinged on Section 123.1(d) of the Intellectual Property Code of the Philippines (IPC), which prohibits the registration of a mark that is identical or confusingly similar to an existing registered mark.

The core legal question is twofold: first, whether the Court of Appeals erred in dismissing ABS-CBN’s petition for review due to a late filing; and second, whether the IPO correctly refused to register the “METRO” trademark because of its similarity to other registered marks. This delves into the procedural requirements for appeals and the substantive criteria for trademark registration, specifically focusing on the likelihood of confusion among consumers.

The procedural aspect of the case highlights the importance of adhering to deadlines. ABS-CBN sought extensions to file its petition for review with the Court of Appeals but failed to meet the extended deadline. The Court emphasized that an appeal is a statutory privilege, not a constitutional right, and strict compliance with procedural rules is mandatory. In Bañez vs. Social Security System, the Court reiterated that failure to perfect an appeal within the reglementary period makes the judgment final and executory, depriving the appellate court of jurisdiction.

Perfection of an appeal within the statutory or reglementary period is not only mandatory but also jurisdictional; failure to do so renders the questioned decision/resolution final and executory, and deprives the appellate court of jurisdiction to alter the decision/resolution, much less to entertain the appeal.

The Court acknowledged that exceptions exist, but only in meritorious cases where barring the appeal would be inequitable. However, ABS-CBN’s reasons for the delay—heavy workload and attendance at an international conference—were deemed insufficient. The Court stressed that lawyers have a responsibility to manage their workload and meet deadlines, and that failing to do so constitutes inexcusable negligence, as articulated in Hernandez vs. Agoncillo:

Failure of a lawyer to seasonably file a pleading constitutes inexcusable negligence on his part.

Turning to the substantive issue, the Court upheld the IPO’s decision to deny the trademark registration based on the likelihood of confusion. Section 123.1(d) of the IPC states that a mark cannot be registered if it is identical or confusingly similar to a registered mark. The Court employs two tests to determine this: the dominancy test and the holistic test. The dominancy test, now explicitly incorporated into law in Section 155.1 of the IPC, focuses on the dominant features of the marks in question. Section 155.1 defines infringement as the “colorable imitation of a registered mark x x x or a dominant feature thereof.”

SECTION 155. Remedies; Infringement. – Any person who shall, without the consent of the owner of the registered mark: 155.1. Use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark or the same container or a dominant feature thereof in connection with the sale, offering for sale, distribution, advertising of any goods or services including other preparatory steps necessary to carry out the sale of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or x x x.

In this case, the Court found that the dominant feature of ABS-CBN’s mark, “METRO,” was identical to the registered marks. The Court further explained that the test is not about identifying minor differences, but about the overall impression and potential for confusion. As the Court stated in Co Tiong Sa vs. Director of Patents:

If the competing trademark contains the main or essential or dominant features of another, and confusion and deception is likely to result, infringement takes place.

The Court also addressed ABS-CBN’s argument that it had a vested right to the trademark because its predecessor had used it under the old Trademark Law. However, the Court noted that ABS-CBN’s previous application for the trademark had been abandoned. Once a trademark is abandoned, the protection it once held is withdrawn. The Court cited Birkenstock Orthopaedie GMBH and Co. KG. vs. Philippine Shoe Expo Marketing Corporation, where no rights were accorded to a trademark owner whose trademark was abandoned for failure to file the declaration of actual use.

ABS-CBN also argued that confusion was unlikely because its magazines were sold in retail outlets, while the registered “METRO” mark was used online. However, the Court pointed to Section 3, Rule 18 of the Rules of Procedure for Intellectual Property Cases, which presumes likelihood of confusion when an identical mark is used for identical goods. In this case, both ABS-CBN’s mark and the registered marks were used for magazines.

The Supreme Court upheld the earlier findings by the IPO, emphasizing the expertise of the agency in examining trademark applications. The Court found no compelling reason to overturn these findings. However, the Court noted that should the cited marks be de-registered and cancelled, ABS-CBN could reapply for registration of the “METRO” trademark.

FAQs

What was the key issue in this case?	The main issue was whether ABS-CBN Publishing could register the trademark “METRO” for magazines, given its similarity to existing registered marks, and whether its appeal was properly dismissed for being filed late.
Why was ABS-CBN’s trademark application rejected?	The application was rejected because the Intellectual Property Office (IPO) determined that “METRO” was confusingly similar to existing registered trademarks, violating Section 123.1(d) of the Intellectual Property Code.
What is the dominancy test in trademark cases?	The dominancy test focuses on the dominant features of the marks to determine if there is a likelihood of confusion among consumers. If the dominant feature is similar, infringement is likely.
What happens if a trademark is abandoned?	If a trademark is abandoned, the legal protection afforded to it is withdrawn, and the owner loses the exclusive rights to use that mark.
Why was ABS-CBN’s appeal dismissed by the Court of Appeals?	The Court of Appeals dismissed the appeal because ABS-CBN failed to file its petition for review within the extended deadline granted by the court.
What does the Intellectual Property Code say about similar trademarks?	The Intellectual Property Code (specifically Section 123.1(d)) prohibits the registration of a mark that is identical or confusingly similar to a registered mark for the same or related goods or services.
What are the potential consequences of missing a deadline to appeal?	Missing a deadline to appeal can result in the original decision becoming final and unappealable, depriving the appellate court of jurisdiction to review the case.
Can ABS-CBN reapply for the trademark if the existing marks are de-registered?	Yes, the Supreme Court stated that ABS-CBN can reapply for the registration of the trademark “METRO” if the cited marks used as the basis for the initial rejection are de-registered or cancelled.

In conclusion, this case underscores the importance of both procedural compliance and substantive trademark law principles. Businesses must be vigilant in meeting deadlines for appeals and in ensuring that their trademarks do not infringe upon existing registered marks. It is a reminder that while trademark rights are valuable, they must be actively protected and defended within the bounds of the law.

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: ABS-CBN Publishing, Inc. vs. Director of the Bureau of Trademarks, G.R. No. 217916, June 20, 2018

February 18, 2019

Trademark Law: Distinctiveness Prevails Over Similarity in ATM Service Branding

In a trademark dispute between Citigroup, Inc. and Citystate Savings Bank, Inc., the Supreme Court ruled in favor of Citystate, allowing the registration of its trademark “CITY CASH WITH GOLDEN LION’S HEAD” for ATM services. The Court found that the golden lion’s head device, along with the overall context of ATM service usage, sufficiently distinguished Citystate’s mark from Citigroup’s “CITI” family of marks, minimizing the likelihood of consumer confusion. This decision underscores the importance of considering the entirety of a trademark and the specific market context when assessing potential infringement.

Lion’s Head Versus Citi: Differentiating Financial Brands in the Marketplace

The case originated from Citystate’s application to register its trademark “CITY CASH WITH GOLDEN LION’S HEAD” with the Intellectual Property Office (IPO). Citigroup opposed this registration, arguing that Citystate’s mark was confusingly similar to its own registered trademarks, particularly those containing the prefix “CITI”. The IPO’s Bureau of Legal Affairs initially sided with Citigroup, but this decision was overturned by the Director-General of the IPO, Adrian S. Cristobal, Jr., who found that the golden lion head device was the dominant feature of Citystate’s mark and not likely to cause confusion. This ruling was subsequently upheld by the Court of Appeals, leading Citigroup to escalate the matter to the Supreme Court. The central legal question was whether the Court of Appeals erred in determining that no confusing similarity existed between the trademarks of Citigroup and Citystate.

The Supreme Court approached the issue by emphasizing the purpose of trademark law, which is to protect the distinctiveness of brands and prevent consumer confusion. As the Court stated,

“The purpose of the law protecting a trademark cannot be overemphasized. They are to point out distinctly the origin or ownership of the article to which it is affixed, to secure to him, who has been instrumental in bringing into market a superior article of merchandise, the fruit of his industry and skill, and to prevent fraud and imposition.”

The Court noted the importance of maintaining a fair and competitive marketplace, where businesses can build their brand reputation without undue interference. The Court also cited Mirpuri v. Court of Appeals, tracing the historical development of trademark law and its evolution to protect business integrity.

To assess the likelihood of confusion, the Supreme Court employed two established tests: the dominancy test and the holistic test. The dominancy test focuses on the similarity of the prevalent features of the competing trademarks that might cause confusion and deception. In contrast, the holistic test considers the entirety of the marks as applied to the products, including the labels and packaging, in determining confusing similarity. These tests are not mutually exclusive but rather complementary tools to evaluate the overall impression created by the marks on consumers.

In applying the dominancy test, the Court identified the golden lion’s head device as the most noticeable feature of Citystate’s mark, setting it apart from Citigroup’s marks. The Court also noted that while Citigroup’s marks often included a red arc device, or consisted of the prefix “CITI” added to other words, these elements were absent in Citystate’s mark. The presence of the lion’s head in Citystate’s design significantly lessened the chance that consumers would mistake it for a Citigroup product, even though the word “CITY” may have some phonetic similarity to “CITI”. The Court agreed with the Court of Appeals’ finding that the dissimilarities between the marks were noticeable and substantial.

Building on this finding, the Court considered the context in which Citystate’s mark would be used, specifically for ATM services. The Court highlighted that ATM services are not marketed as independent products but are usually adjunct to the main deposit service provided by a bank. Before customers can use ATM services, they must first open an account with the bank, which means they already have a relationship with that specific bank, further lessening the likelihood of confusion. In this context, the Court reasoned that the specific location and branding of ATMs would further minimize potential consumer confusion. As such, the Court cited Emerald Garment Manufacturing Corp. vs. Court of Appeals, emphasizing the importance of considering the “ordinary purchaser” as an “ordinarily intelligent buyer”.

Citigroup argued that in advertisements outside the bank premises, the absence of the golden lion’s head might lead to confusion. The Supreme Court rejected this argument, stating that any effective marketing campaign for Citystate’s ATM service would still emphasize the distinct elements of its brand. The Court clarified that since ATM services must be secured and contracted for at the bank’s premises, advertisements would focus primarily on the offering bank, thus reducing potential consumer confusion. Even if there was phonetic similarity in radio ads, it was not enough to cause trademark infringement. The court stated that

“a mark is a question of visuals, by statutory definition…the similarity between the sounds of “CITI” and “CITY” in a radio advertisement alone neither is sufficient for this Court to conclude that there is a likelihood that a customer would be confused nor can operate to bar respondent from registering its mark.”

This approach contrasts with cases where products are sold in an open market, where the risk of confusion is much higher. By considering the specific circumstances of how ATM services are obtained and used, the Court provided a balanced and practical assessment of the likelihood of confusion. The Court also addressed Citigroup’s concern that it was not claiming a monopoly over all marks prefixed by words sounding like “city.” The Court agreed, noting that Director General Cristobal correctly considered Citystate’s history and name. Ultimately, the Supreme Court affirmed the Court of Appeals’ finding that the Director General of the Intellectual Property Office did not commit any grave abuse of discretion in allowing the registration of Citystate’s trademark.

FAQs

What was the key issue in this case?	The key issue was whether the trademark “CITY CASH WITH GOLDEN LION’S HEAD” was confusingly similar to Citigroup’s “CITI” family of marks, preventing its registration. The court had to determine if consumers were likely to confuse the ATM services offered by Citystate with those associated with Citigroup due to the trademark similarities.
What is the dominancy test in trademark law?	The dominancy test focuses on the similarity of the main, essential, and dominant features of competing trademarks. If these features are similar enough to cause confusion or deception, trademark infringement is likely to occur, even without exact duplication.
How did the Court apply the holistic test?	The holistic test requires a consideration of the entirety of the marks as applied to the products, including labels and packaging. The observer must focus not only on the predominant words but also on the other features appearing on both marks to determine if one is confusingly similar to the other.
What role did the golden lion’s head play in the Court’s decision?	The golden lion’s head device was crucial in differentiating Citystate’s mark from Citigroup’s marks. The Court recognized that this distinct visual element was a prevalent feature that would likely be noticed by consumers, reducing the potential for confusion.
Why was the context of ATM services important?	The context of ATM services was important because it showed that customers must first open an account with a specific bank to use its ATMs. This pre-existing relationship with the bank, along with the bank’s name being displayed at the ATM, reduces the likelihood of confusing the service with another brand.
What is the significance of the “ordinary purchaser” in this case?	The “ordinary purchaser” is considered an “ordinarily intelligent buyer” who is familiar with the products in question. The Court gave credit to the ordinary purchaser’s ability to differentiate between the marks, especially given that banking services require more informed decisions than ordinary household purchases.
How does this ruling affect trademark registration for financial institutions?	This ruling emphasizes that trademarks for financial services must be evaluated in the context of how those services are typically obtained and used. It suggests that distinct visual elements and branding within the specific service environment can help differentiate trademarks, even with some phonetic similarities.
What was Citigroup’s main argument in opposing the trademark registration?	Citigroup argued that the “CITY CASH” portion of Citystate’s trademark was confusingly similar to its “CITI” family of marks. They claimed that consumers might mistakenly believe that Citystate’s ATM services were associated with or endorsed by Citigroup, leading to potential consumer confusion and infringement.

In conclusion, the Supreme Court’s decision in Citigroup, Inc. v. Citystate Savings Bank, Inc. provides valuable insights into the application of trademark law in the context of financial services. The Court’s emphasis on the distinctiveness of the golden lion’s head device and the specific circumstances of ATM service usage underscores the importance of considering the totality of a trademark and its market context when assessing the likelihood of consumer confusion.

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: CITIGROUP, INC. VS. CITYSTATE SAVINGS BANK, INC., G.R. No. 205409, June 13, 2018

June 13, 2018

Trademark Law: Likelihood of Confusion and Forum Shopping in Trademark Registration

The Supreme Court ruled that Puregold’s trademark “COFFEE MATCH” is registrable, as it is not confusingly similar to Nestle’s “COFFEE-MATE”. This decision highlights the importance of distinctiveness in trademarks and the application of the dominancy and holistic tests in determining likelihood of confusion. The Court also emphasized the procedural requirements for corporations executing certifications against forum shopping.

Coffee Clash: Can “COFFEE MATCH” Brew Confusion with “COFFEE-MATE”?

This case revolves around Nestle’s opposition to Puregold’s application for trademark registration of “COFFEE MATCH.” Nestle argued that “COFFEE MATCH” was confusingly similar to its registered trademark “COFFEE-MATE,” potentially misleading consumers. The Intellectual Property Office (IPO) and the Court of Appeals (CA) both sided with Puregold, leading Nestle to elevate the case to the Supreme Court. The central legal question is whether Puregold’s mark infringes on Nestle’s trademark due to a likelihood of confusion among consumers.

The Supreme Court denied Nestle’s petition, affirming the CA’s decision. The Court addressed both procedural and substantive issues. Procedurally, the Court examined whether Nestle properly executed the certification against forum shopping, a requirement under Section 5, Rule 7 of the Rules of Court. This rule ensures that a party does not simultaneously pursue the same claim in multiple forums. For corporations, this certification must be signed by a duly authorized representative, typically through a board resolution or secretary’s certificate.

The Court found that Nestle failed to provide sufficient proof of authority for Mr. Dennis Jose R. Barot to sign the certification. While Nestle submitted a power of attorney, it lacked a board resolution or secretary’s certificate authorizing Celine Jorge to execute the power of attorney on Nestle’s behalf. The Supreme Court has consistently held that courts cannot take judicial notice of corporate board resolutions; they must be presented as evidence. In Development Bank of the Philippines v. Court of Appeals, the Court stated:

What petitioners failed to explain, however, is their failure to attach a certified true copy of Resolution No. 0912 to their petition for certiorari in CA-G.R. SP No. 60838. Their omission is fatal to their case. Courts are not, after all, expected to take judicial notice of corporate board resolutions or a corporate officer’s authority to represent a corporation.

Therefore, the Court upheld the CA’s dismissal on procedural grounds, emphasizing the importance of strict compliance with the Rules of Court, especially regarding certifications against forum shopping. However, the Court also addressed the substantive issue of trademark infringement, providing valuable insights into the principles of trademark law.

Turning to the likelihood of confusion, the Court applied two tests: the dominancy test and the holistic test. The dominancy test focuses on the similarity of the dominant features of the competing trademarks that might cause confusion. The holistic test considers the entirety of the marks, including labels and packaging, to determine if there is a confusing similarity. The Court acknowledged that “COFFEE” is the common dominant feature in both trademarks. However, it noted that Section 123(h) of Republic Act No. 8293 (RA 8293), also known as the Intellectual Property Code, prohibits the exclusive registration of generic marks. Section 123 states:

Sec. 123. Registrability. –
123.1 A mark cannot be registered if it:
x x x x
(h) Consists exclusively of signs that are generic for the goods or services that they seek to identify;

Since “COFFEE” is a generic term for the goods in question, neither Nestle nor Puregold can exclusively claim it. The Court then focused on the distinctive elements: “-MATE” in Nestle’s mark and “MATCH” in Puregold’s mark. While both share the first three letters, the Court found that the last two letters in “MATCH” created a distinct visual and aural character, differentiating it from “-MATE.” The Court also noted the visual difference, with “COFFEE MATCH” being two separate words with capitalized letters, unlike the hyphenated “COFFEE-MATE.” Therefore, following the ruling in Coffee Partners, Inc. v. San Francisco & Roastery, Inc., the court looked into likelihood of confusion:

In determining similarity or likelihood of confusion, our jurisprudence has developed two tests: the dominancy test and the holistic test.

In the application of the tests, the Court concluded that consumers were unlikely to confuse the two products. The Court emphasized that the distinctiveness of Puregold’s mark was sufficient to alert consumers to the difference between the two products. This aligns with the principle that trademark law protects against actual confusion, not mere similarity.

The Court’s decision reinforces the principle that generic or descriptive words cannot be exclusively appropriated as trademarks. This ensures that businesses can freely use common terms to describe their products, promoting competition and preventing monopolies on language. The decision also highlights the importance of conducting thorough trademark searches before applying for registration, to avoid potential conflicts with existing trademarks.

Moreover, this case serves as a reminder of the importance of adhering to procedural rules, particularly regarding certifications against forum shopping. Corporations must ensure that their representatives are duly authorized to sign such certifications, supported by appropriate board resolutions or secretary’s certificates. Failure to do so can result in the dismissal of their case, regardless of the merits of their claim.

The Court’s analysis provides a clear framework for assessing trademark infringement claims, balancing the rights of trademark owners with the need to avoid stifling competition. By applying the dominancy and holistic tests, the Court ensures that only truly confusingly similar marks are prevented from registration, while allowing businesses to differentiate their products in the marketplace.

FAQs

What was the key issue in this case?	The key issue was whether Puregold’s trademark “COFFEE MATCH” was confusingly similar to Nestle’s “COFFEE-MATE,” warranting the denial of Puregold’s trademark application. The court had to determine if consumers were likely to confuse the two products.
What is a certification against forum shopping?	A certification against forum shopping is a sworn statement that the party has not filed any similar action in other courts or tribunals. This requirement prevents parties from pursuing the same claim in multiple venues simultaneously.
Why was Nestle’s petition initially dismissed by the Court of Appeals?	Nestle’s petition was initially dismissed by the Court of Appeals due to procedural defects, including the failure to properly prove the authority of their representative to sign the certification against forum shopping. They also initially filed beyond the reglementary period.
What is the dominancy test in trademark law?	The dominancy test focuses on the similarity of the dominant features of the competing trademarks. If the dominant features are similar and likely to cause confusion, trademark infringement exists.
What is the holistic test in trademark law?	The holistic test involves considering the entirety of the marks, including labels and packaging, to determine if there is a confusing similarity. This test assesses the overall impression the marks create on consumers.
Why can’t the word “COFFEE” be exclusively appropriated as a trademark?	The word “COFFEE” is a generic term for coffee products. Generic terms cannot be exclusively appropriated as trademarks because they are descriptive of the goods or services and should be available for public use.
What is the significance of a board resolution in corporate litigation?	A board resolution is a formal document authorizing a corporate representative to act on behalf of the corporation in legal proceedings. It serves as evidence of the representative’s authority and is often required for signing certifications against forum shopping.
What is the effect of failing to comply with procedural rules in court?	Failing to comply with procedural rules, such as properly executing a certification against forum shopping, can lead to the dismissal of a case. Courts require strict compliance to ensure fairness and efficiency in the legal process.

This case emphasizes the importance of distinctiveness in trademarks and the need to comply with procedural rules in legal proceedings. The Supreme Court’s decision provides valuable guidance for businesses seeking to protect their trademarks and navigate the complexities of intellectual property law.

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: Societe des Produits, Nestle, S.A. vs. Puregold Price Club, Inc., G.R. No. 217194, September 06, 2017

September 6, 2017

Trademark Law: Likelihood of Confusion Between ‘Mang Inasal’ and ‘OK Hotdog Inasal’ Marks

In a trademark dispute, the Supreme Court ruled that IFP Manufacturing Corporation’s ‘OK Hotdog Inasal Cheese Hotdog Flavor Mark’ could not be registered because it was confusingly similar to Mang Inasal Philippines, Inc.’s registered ‘Mang Inasal, Home of Real Pinoy Style Barbeque and Device’ mark. The Court emphasized that the dominant use of ‘Inasal,’ styled in a similar manner, in IFP’s mark created a likelihood of confusion among consumers. This decision protects trademark owners from potential consumer confusion and unfair competition, reinforcing the importance of distinct branding in the marketplace.

‘Inasal’ Impersonation: Can Snack Foods Ride the Coattails of Restaurant Brands?

This case revolves around a trademark dispute between Mang Inasal Philippines, Inc., a well-known fast-food chain, and IFP Manufacturing Corporation, a snack food manufacturer. Mang Inasal opposed IFP’s application to register the trademark “OK Hotdog Inasal Cheese Hotdog Flavor Mark,” arguing that it was deceptively similar to their registered trademark “Mang Inasal, Home of Real Pinoy Style Barbeque and Device.” The core legal question is whether the similarities between the two marks, particularly the use of the word ‘Inasal,’ would likely cause consumer confusion, thus violating Section 123.1(d)(iii) of Republic Act No. 8293, also known as the Intellectual Property Code of the Philippines.

The Intellectual Property Code explicitly prohibits the registration of marks that could mislead or confuse the public. Section 123.1(d)(iii) of RA 8293 states that a mark cannot be registered if it:

x x x

x x x

…nearly resembles [a registered mark belonging to a different proprietor or a mark with an earlier filing or priority date] as to be likely to deceive or cause confusion.

The concept of confusion is pivotal, encompassing both confusion of goods and confusion of business. The Supreme Court cited the case of Skechers U.S.A., Inc. v. Trendworks International Corporation to distinguish these two types of confusion:

Relative to the question on confusion of marks and trade names, jurisprudence has noted two (2) types of confusion, viz.: (1) confusion of goods (product confusion), where the ordinarily prudent purchaser would be induced to purchase one product in the belief that he was purchasing the other; and (2) confusion of business (source or origin confusion), where, although the goods of the parties are different, the product, the mark of which registration is applied for by one party, is such as might reasonably be assumed to originate with the registrant of an earlier product, and the public would then be deceived either into that belief or into the belief that there is some connection between the two parties, though inexistent.

To determine whether a mark violates this provision, two conditions must be met: first, the prospective mark must nearly resemble or be similar to an earlier mark; and second, the prospective mark must pertain to goods or services that are identical, similar, or related to those represented by the earlier mark.

The Court emphasized that similarity does not require absolute identity. It is sufficient if the prospective mark is a colorable imitation of the earlier mark. Colorable imitation involves a likeness that would likely mislead an average buyer in the ordinary course of purchase.

To assess similarity, courts employ the dominancy test and the holistic test. In Mighty Corporation v. E. & J. Gallo Winery, the Supreme Court elucidated the distinction:

The Dominancy Test focuses on the similarity of the prevalent features of the competing trademarks which might cause confusion or deception, and thus infringement. If the competing trademark contains the main, essential or dominant features of another, and confusion or deception is likely to result, infringement takes place. Duplication or imitation is not necessary; nor is it necessary that the infringing label should suggest an effort to imitate. The question is whether the use of the marks involved is likely to cause confusion or mistake in the mind of the public or deceive purchasers.

On the other hand, the Holistic Test requires that the entirety of the marks in question be considered in resolving confusing similarity. Comparison of words is not the only determining factor. The trademarks in their entirety as they appear in their respective labels or hang tags must also be considered in relation to the goods to which they are attached. The discerning eye of the observer must focus not only on the predominant words but also on the other features appearing in both labels in order that he may draw his conclusion whether one is confusingly similar to the other.

The Court, in this case, favored the dominancy test, noting that the Mang Inasal mark’s dominant feature is the word ‘INASAL’ written in a bold red typeface against a black outline and yellow background with a staggered design. The Court noted that the dominant element “INASAL,” as stylized in the Mang Inasal mark, is also the most distinctive and recognizable feature of the said mark. The term “inasal” *per se* is descriptive and cannot be appropriated. The Court also stated that:

The dominant element “INASAL” in the OK Hotdog Inasal mark is exactly the same as the dominant element “NASAL” in the Mang Inasal mark. Both elements in both marks are printed using the exact same red colored font, against the exact same black outline and yellow background and is arranged in the exact same staggered format.

The Court found that the OK Hotdog Inasal mark copied and adopted the ‘INASAL’ element of the Mang Inasal mark, creating a potential for consumer confusion. While there were differences between the marks, the overall impression created by the similarity in the dominant element was deemed likely to deceive consumers into believing that the snack product was associated with the Mang Inasal brand.

The second condition for trademark infringement is whether the goods or services are related. The Court acknowledged that curl snack products and restaurant services are not identical or similar. However, they can still be related if they are logically connected, such that consumers might assume they originate from the same manufacturer or economically-linked manufacturers.

In determining relatedness, factors such as the business, product class, quality, purpose, and channels of trade are considered. The Court cited Mighty Corporation, emphasizing that the key is whether an appreciable number of ordinarily prudent purchasers would be misled or confused as to the source of the goods.

The wisdom of this approach is its recognition that each trademark infringement case presents its own unique set of facts. No single factor is preeminent, nor can the presence or absence of one determine, without analysis of the others, the outcome of an infringement suit. Rather, the court is required to sift the evidence relevant to each of the criteria. This requires that the entire panoply of elements constituting the relevant factual landscape be comprehensively examined. It is a weighing and balancing process. With reference to this ultimate question, and from a balancing of the determinations reached on all of the factors, a conclusion is reached whether the parties have a right to the relief sought.

A very important circumstance though is whether there exists a likelihood that an appreciable number of ordinarily prudent purchasers will be misled, or simply confused, as to the source of the goods in question. The “purchaser” is not the “completely unwary consumer” but is the “ordinarily intelligent buyer” considering the type of product involved he is accustomed to buy, and therefore to some extent familiar with, the goods in question. The test of fraudulent simulation is to be found in the likelihood of the deception of some persons in some measure acquainted with an established design and desirous of purchasing the commodity with which that design has been associated. The test is not found in the deception, or the possibility of deception, of the person who knows nothing about the design which has been counterfeited, and who must be indifferent between that and the other. The simulation, in order to be objectionable, must be such as appears likely to mislead the ordinary intelligent buyer who has a need to supply and is familiar with the article that he seeks to purchase.

The Court emphasized that the underlying goods and services both deal with ‘inasal’ and inasal-flavored products. Given the similarity between the marks, the Court was convinced that consumers might assume the curls were from Mang Inasal or that Mang Inasal supplied the flavorings. This could lead to a confusion of business, potentially harming Mang Inasal’s reputation. Thus, the Court concluded that the goods were related.

Ultimately, the Supreme Court granted Mang Inasal’s petition, reversing the decisions of the IPO-BLA, IPO-DG, and the Court of Appeals. The Court directed the Intellectual Property Office to deny IFP Manufacturing Corporation’s application for the registration of the ‘OK Hotdog Inasal Cheese Hotdog Flavor Mark,’ protecting Mang Inasal’s trademark and preventing potential consumer confusion.

FAQs

What was the key issue in this case?	The key issue was whether the trademark ‘OK Hotdog Inasal Cheese Hotdog Flavor Mark’ was confusingly similar to ‘Mang Inasal, Home of Real Pinoy Style Barbeque and Device’ mark, potentially violating the Intellectual Property Code.
What is the dominancy test?	The dominancy test focuses on the similarity of the prevalent features of the competing trademarks that might cause confusion or deception. If one trademark contains the main, essential, or dominant features of another, infringement takes place.
What is the holistic test?	The holistic test requires considering the entirety of the marks in question to resolve confusing similarity. It involves comparing words and other features appearing in both labels to determine if one is confusingly similar to the other.
What is ‘colorable imitation’?	Colorable imitation refers to a likeness in form, content, words, sound, meaning, special arrangement, or general appearance of one mark with respect to another, likely to mislead an average buyer.
What is ‘confusion of goods’?	Confusion of goods occurs when an ordinarily prudent purchaser is induced to buy one product believing they are purchasing another, due to the similarity of the trademarks.
What is ‘confusion of business’?	Confusion of business happens when, although the goods are different, the product with the applied-for mark might reasonably be assumed to originate from the registrant of an earlier product, deceiving the public.
Why did the Court favor Mang Inasal?	The Court favored Mang Inasal because the ‘OK Hotdog Inasal’ mark copied the dominant ‘INASAL’ element, creating a likelihood of consumer confusion, and the goods were related in dealing with ‘inasal’-flavored products.
What was the final ruling?	The Supreme Court ruled in favor of Mang Inasal, directing the Intellectual Property Office to deny IFP Manufacturing Corporation’s application for the registration of the ‘OK Hotdog Inasal Cheese Hotdog Flavor Mark.’

This case underscores the importance of trademark protection and the need for businesses to create distinct brands. The ruling emphasizes that even the use of a dominant element from an existing trademark can lead to infringement if it creates a likelihood of consumer confusion. This decision serves as a cautionary tale for businesses seeking to capitalize on the goodwill of established brands.

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: MANG INASAL PHILIPPINES, INC. VS. IFP MANUFACTURING CORPORATION, G.R. No. 221717, June 19, 2017

June 19, 2017

Trademark Confusion: Prior Use and Consumer Deception in Intellectual Property Law

In a trademark dispute between Wilton Dy (PHILITES) and Koninklijke Philips Electronics, N.V. (PHILIPS), the Supreme Court sided with PHILIPS, preventing PHILITES from registering a trademark due to its confusing similarity to the well-known PHILIPS brand. This ruling underscores the importance of protecting established trademarks and preventing consumer confusion in the marketplace. The decision reinforces the principle that even slight resemblances in trademarks, especially in the same line of business, can infringe upon existing intellectual property rights. This case serves as a reminder for businesses to conduct thorough trademark searches and ensure their branding is distinctly different from established marks to avoid legal challenges.

When Lighting Names Collide: Can ‘PHILITES’ Shine Alongside the Established ‘PHILIPS’?

The case revolves around PHILITES’ attempt to register its trademark for lighting products, which PHILIPS opposed, arguing it was confusingly similar to their own registered and internationally recognized trademark. The Intellectual Property Philippines Bureau of Legal Affairs (IPP-BLA) initially sided with PHILITES, but the Court of Appeals (CA) reversed this decision, a move ultimately affirmed by the Supreme Court. The core legal question was whether the PHILITES trademark was indeed so similar to PHILIPS that it would likely deceive or confuse consumers. This required the Court to delve into the intricacies of trademark law, specifically focusing on the concepts of likelihood of confusion and the protection afforded to well-known marks.

At the heart of trademark law is the principle that a mark should be distinctive, allowing consumers to easily identify and differentiate products from various sources. Section 123 of the Intellectual Property Code of the Philippines (IPC) explicitly states the grounds for which a mark cannot be registered. Among these is a mark that is identical or confusingly similar to a registered mark belonging to a different owner, particularly if used for the same or closely related goods or services. Additionally, a mark that is identical or confusingly similar to a well-known mark, whether registered in the Philippines or not, cannot be registered by another party for similar goods or services. Here, the relevant provisions of Section 123 are:

Section 123. Registrability. – 123.1. A mark cannot be registered if it:

x x x

(d) Is identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or priority date, in respect of:

   (i) The same goods or services, or
   (ii) Closely related goods or services, or
   (iii) If it nearly resembles such a mark as to be likely to deceive or cause confusion;

(e) Is identical with, or confusingly similar to, or constitutes a translation of a mark which is considered by the competent authority of the Philippines to be well-known internationally and in the Philippines, whether or not it is registered here, as being already the mark of a person other than the applicant for registration, and used for identical or similar goods or services: Provided, That in determining whether a mark is well-known, account shall be taken of the knowledge of the relevant sector of the public, rather than of the public at large, including knowledge in the Philippines which has been obtained as a result of the promotion of the mark.

The Court emphasized that PHILIPS’ mark is a registered and well-known mark in the Philippines. This acknowledgment is crucial, as well-known marks receive a higher degree of protection under intellectual property law. The Supreme Court has previously recognized PHILIPS as a well-known mark in Philips Export B. V., v. CA. The court affirmed the CA ruling, stating:

Petitioner (PHILIPS) is the registered owner in the Philippines of the “PHILIPS” and “PHILIPS SHIELD EMBLEM” trademarks, as shown by Certificates of Registration Nos. 42271 and 42270. The Philippine trademark registrations of petitioner’s “PHILIPS” and “PHILIPS SHIELD EMBLEM” are also evidenced by Certificates of Registration Nos. R-1651, R-29134, R-1674, and R-28981. The said registered trademarks “PHILIPS” and “PHILIPS SHIELD EMBLEM” cover classes 7, 8, 9, 10, 11, 14, and 16. The assailed Decision itself states that “(T)he Appellant’s trademark is already registered and in use in the Philippines”. It also appears that worldwide, petitioner has thousands of trademark registrations x x x in various countries. As found by the High Court in Philips Export B. V. vs Court of Appeals, PHILIPS is a trademark or trade name which was registered as far back as 1922, and has acquired the status of a well-known mark in the Philippines and internationally as well.

Given PHILIPS’ established status, the Court then considered whether PHILITES’ mark was confusingly similar, employing two tests: the dominancy test and the holistic test. The dominancy test focuses on the similarity of the dominant features of the competing trademarks that could cause confusion among consumers. It emphasizes the aural and visual impressions created by the marks. The holistic test, on the other hand, considers the entirety of the marks as applied to the products, including labels and packaging. This involves examining all features to determine if one mark is confusingly similar to the other.

Applying the dominancy test, the Court found that the “PHILI” prefix, common to both marks, was a dominant feature that could easily lead to consumer confusion. As the court observed, “the letters ‘PHILI’ visually catch the attention of the consuming public and the use of respondent’s trademark will likely deceive or cause confusion.” Furthermore, both trademarks were used on the same goods—light bulbs—increasing the likelihood of confusion. Even under the holistic test, the court found a strong similitude between the trademarks, noting that the packaging of PHILITES products, in practice, amplified the potential for consumer deception. The court’s decision underscores the importance of considering both the visual and aural similarity of trademarks, as well as the context in which they are used, to protect consumers from potential confusion.

The Court gave importance to the aural and visual impressions the mark is likely to create in the minds of the buyers. We agree with the findings of the CA that the mark “PHILITES” bears an uncanny resemblance or confusing similarity with respondent’s mark “PHILIPS,” to wit:

Applying the dominancy test in the instant case, it shows the uncanny resemblance or confusing similarity between the trademark applied for by respondent with that of petitioner’s registered trademark. An examination of the trademarks shows that their dominant or prevalent feature is the five-letter “PHILI”, “PHILIPS” for petitioner, and “PHILITES” for respondent. The marks are confusingly similar with each other such that an ordinary purchaser can conclude an association or relation between the marks. The consuming public does not have the luxury of time to ruminate the phonetic sounds of the trademarks, to find out which one has a short or long vowel sound. At bottom, the letters “PHILI” visually catch the attention of the consuming public and the use of respondent’s trademark will likely deceive or cause confusion. Most importantly, both trademarks are used in the sale of the same goods, which are light bulbs.

The court also reiterated that the mark petitioner seeks to register is vastly different from that which it actually uses in the packaging of its products, as follows:

Applying the holistic test, entails a consideration of the entirety of the marks as applied to the products, including the labels and packaging, in determining confusing similarity. A comparison between petitioner’s registered trademark “PHILIPS” as used in the wrapper or packaging of its light bulbs and that of respondent’s applied for trademark “PHILITES” as depicted in the container or actual wrapper/packaging of the latter’s light bulbs will readily show that there is a strong similitude and likeness between the two trademarks that will likely cause deception or confusion to the purchasing public. The fact that the parties’ wrapper or packaging reflects negligible differences considering the use of a slightly different font and hue of the yellow is of no moment because taken in their entirety, respondent’s trademark “PHILITES” will likely cause confusion or deception to the ordinary purchaser with a modicum of intelligence.

Ultimately, the Supreme Court’s decision underscores the importance of protecting established trademarks to prevent consumer confusion and unfair competition. The application of both the dominancy and holistic tests serves to thoroughly assess the likelihood of confusion, ensuring that trademarks that are deceptively similar are not allowed to be registered. This case acts as a reminder to businesses that when choosing a trademark, they must ensure it is sufficiently distinct from existing marks, particularly those that are well-known, to avoid potential legal challenges. Moreover, it reinforces the protection afforded to well-known marks, recognizing their established reputation and the potential for consumer confusion if similar marks are allowed in the marketplace.

FAQs

What was the key issue in this case?	The key issue was whether the trademark “PHILITES” was confusingly similar to the well-known trademark “PHILIPS,” potentially deceiving consumers. The Court needed to determine if the similarity was enough to warrant preventing PHILITES from registering its mark.
What is the dominancy test in trademark law?	The dominancy test focuses on the similarity of the dominant features of competing trademarks that might cause confusion among consumers. It prioritizes the aural and visual impressions created by the marks over other factors.
What is the holistic test in trademark law?	The holistic test considers the entirety of the marks as applied to the products, including labels and packaging, to determine if there’s a confusing similarity. It involves assessing all features to see if one mark is likely to be mistaken for the other.
Why is a well-known trademark given more protection?	Well-known trademarks have established recognition and goodwill, and their reputation can be damaged if similar marks are used, leading to consumer confusion. Protecting these marks prevents others from unfairly benefiting from the established brand recognition.
What did the Court of Appeals decide in this case?	The Court of Appeals reversed the IPP-BLA’s decision, ruling that the “PHILITES” trademark was confusingly similar to “PHILIPS.” It set aside the approval of PHILITES’ trademark application, a decision that was later affirmed by the Supreme Court.
What was the basis for PHILIPS’ opposition to PHILITES’ trademark application?	PHILIPS opposed the application based on the grounds that PHILITES’ mark was confusingly similar to its own registered and internationally well-known trademark. They argued that allowing PHILITES’ registration would mislead the public and infringe on their established rights.
What is the significance of Section 123 of the Intellectual Property Code?	Section 123 of the Intellectual Property Code lists the grounds for which a trademark cannot be registered in the Philippines. These include identity or confusing similarity to existing registered or well-known trademarks.
What was the effect of the Supreme Court’s decision?	The Supreme Court’s decision prevented PHILITES from registering its trademark for lighting products. The effect to PHILIPS is that their intellectual property is protected from potential consumer confusion.

The Supreme Court’s decision serves as a crucial precedent for trademark law in the Philippines, reinforcing the importance of protecting established brands and preventing consumer confusion. Businesses must prioritize conducting thorough trademark searches and ensuring their branding is distinctly different from existing marks to avoid legal challenges and uphold the integrity of intellectual property rights.

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: WILTON DY vs. KONINKLIJKE PHILIPS ELECTRONICS, G.R. No. 186088, March 22, 2017

March 22, 2017

Trademark Distinctiveness: How Similar is Too Similar? A Case of LOLANE vs. ORLANE

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

February 1, 2017

Trademark Law: Dominancy Test Prevails in “PAPA” Brand Dispute

The Supreme Court has ruled in favor of UFC Philippines, Inc. (now Nutri-Asia, Inc.) in a trademark dispute against Fiesta Barrio Manufacturing Corporation, emphasizing the importance of the dominancy test in assessing trademark similarity. The Court reversed the Court of Appeals’ decision, reinstating the Intellectual Property Office’s ruling that Fiesta Barrio’s “PAPA BOY & DEVICE” mark for lechon sauce was confusingly similar to Nutri-Asia’s “PAPA” mark for ketchup. This decision underscores the protection afforded to registered trademark owners and prevents potential consumer confusion by prioritizing the dominant features of trademarks in infringement analysis, safeguarding brand reputation and goodwill.

“PAPA” vs. “PAPA BOY”: When Trademark Similarity Leads to Market Confusion

The case revolves around the application filed by Barrio Fiesta Manufacturing Corporation (respondent) on April 4, 2002, for the trademark “PAPA BOY & DEVICE” intended for their lechon sauce product. UFC Philippines, Inc. (now Nutri-Asia, Inc., petitioner), opposed this application, arguing that the respondent’s mark was confusingly similar to their existing “PAPA” marks used on banana catsup and other related goods. The petitioner had been using the “PAPA” mark since 1954, with continuous registration and use by its predecessors-in-interest. The core legal question was whether the respondent’s “PAPA BOY & DEVICE” mark infringed on the petitioner’s registered “PAPA” trademark, potentially leading to consumer confusion in the marketplace.

The Intellectual Property Office (IPO) initially sided with the petitioner, applying the dominancy test and concluding that the dominant feature, the word “PAPA,” created a likelihood of confusion among consumers. The IPO Director General upheld this decision, emphasizing the prominence of “PAPA” in both marks. However, the Court of Appeals reversed these findings, favoring the holistic test. The appellate court held that when considering the trademarks as a whole, “PAPA BOY & DEVICE” was not confusingly similar to “PAPA KETSARAP,” citing differences in labels, product types (lechon sauce vs. banana catsup), and manufacturer identification. This divergence in rulings set the stage for the Supreme Court’s intervention.

The Supreme Court addressed the central issue of which test, dominancy or holistic, should apply in determining trademark infringement in this case. The Court highlighted that the dominancy test focuses on the similarity of the prevalent or dominant features of the competing trademarks, which might cause confusion, mistake, and deception in the mind of the purchasing public. The Intellectual Property Code explicitly incorporates this test in Section 155.1, defining infringement as the “colorable imitation of a registered mark… or a dominant feature thereof.”

Section 155.1 of the Intellectual Property Code defines infringement as the “colorable imitation of a registered mark x x x or a dominant feature thereof.”

Building on this principle, the Court reiterated that the findings of specialized administrative agencies like the IPO, which possess expertise in intellectual property matters, are generally accorded great respect. The Supreme Court has emphasized,

Verily, the protection of trademarks as intellectual property is intended not only to preserve the goodwill and reputation of the business established on the goods bearing the mark through actual use over a period of time, but also to safeguard the public as consumers against confusion on these goods. On this matter of particular concern, administrative agencies, such as the IPO, by reason of their special knowledge and expertise over matters falling under their jurisdiction, are in a better position to pass judgment thereon.

This deference stems from their specialized knowledge and expertise in evaluating trademark-related disputes. The Court noted that each trademark case is unique, requiring scrutiny of its specific circumstances. Relevant precedents should only apply if they are specifically in point.

In applying the dominancy test, the Supreme Court concurred with the IPO’s assessment that “PAPA” was indeed the dominant feature of both the petitioner’s “PAPA KETSARAP” mark and the respondent’s “PAPA BOY & DEVICE” mark. The Court reasoned that the term “KETSARAP” in the petitioner’s mark was descriptive, merely indicating the product’s nature (catsup) and a quality (delicious). Conversely, the Court emphasized that the word “PAPA” stood out prominently in the respondent’s mark, capturing the consumer’s initial attention. The IPO-BLA decision highlighted this, stating:

In Respondent-applicant’s mark, the word “PAPA” is written on top of and before the other words such that it is the first word figure that catches the eyes. The visual and aural impressions created by such dominant word “PAPA” at the least is that the respective goods of the parties originated from the other, or that one party has permitted or has been given license to the other to use the word “PAPA” for the other party’s product, or that there is a relation/connection between the two parties when, in fact, there is none.

The Court reasoned that the similarity in the dominant feature could lead consumers to believe the products originated from the same source, causing confusion of business. The close relationship between catsup and lechon sauce, both being condiments commonly found in the same grocery aisles, further heightened the likelihood of confusion. The fact that respondent’s label also included “Barrio Fiesta” did not eliminate the potential for confusion, as consumers might still associate the “PAPA BOY” product with the makers of “PAPA” catsup.

The Supreme Court emphasized that trademark protection extends beyond identical goods to related goods and market areas that represent the normal expansion of a business. Section 138 of the IP Code supports this principle, stating that a certificate of registration serves as evidence of the registrant’s exclusive right to use the mark for specified goods and related products. The Court cited several cases to illustrate this point, including Mighty Corporation v. E. & J. Gallo Winery, where it was held that “non-competing goods may be those which, though they are not in actual competition, are so related to each other that it can reasonably be assumed that they originate from one manufacturer, in which case, confusion of business can arise out of the use of similar marks.” This underscores the importance of protecting trademark owners from potential market encroachment.

Ultimately, the Supreme Court rejected the Court of Appeals’ conclusion that “PAPA” was merely a common term of endearment, incapable of exclusive appropriation. The Court clarified that the mark was registered as a family name, specifically the name of the brand’s originator. This rendered it an arbitrary mark eligible for protection. Even though “PAPA” may refer to “father,” this had no logical connection with catsup products, reinforcing its distinctiveness and registrability as a trademark. Since the petitioner was the prior user and registrant of a similar mark, the court protected the goodwill and reputation that the company built.

In summary, the Supreme Court’s decision reaffirms the importance of the dominancy test in trademark infringement cases, particularly in assessing the likelihood of consumer confusion. The ruling provides significant guidance on how courts should evaluate trademark disputes, balancing the need to protect registered trademarks with the interests of fair competition. The practical impact of this ruling is that it strengthens the rights of trademark owners, preventing others from capitalizing on established brand recognition. It also serves as a cautionary tale for businesses seeking to introduce new products with marks similar to existing ones, highlighting the need for thorough trademark clearance to avoid potential legal challenges.

FAQs

What was the key issue in this case?	The key issue was whether Barrio Fiesta’s “PAPA BOY & DEVICE” trademark for lechon sauce was confusingly similar to Nutri-Asia’s (formerly UFC Philippines) “PAPA” trademark for ketchup, leading to potential consumer confusion.
What is the dominancy test in trademark law?	The dominancy test focuses on the similarity of the dominant features of competing trademarks, assessing if these similarities could cause confusion among consumers. It gives greater weight to the prominent aspects that catch the eye and ear of the public.
What is confusion of business?	Confusion of business occurs when consumers mistakenly believe that products from different companies are related or originate from the same source. This type of confusion can damage a company’s reputation and goodwill.
Why did the Supreme Court side with Nutri-Asia?	The Supreme Court sided with Nutri-Asia because it found that “PAPA” was the dominant feature in both trademarks and that the products (ketchup and lechon sauce) were related, increasing the likelihood of consumer confusion.
What is the significance of prior registration in trademark disputes?	Prior registration of a trademark provides the registrant with a prima facie right to use the mark, giving them an advantage in disputes against later applicants. It establishes a presumption of ownership and the exclusive right to use the mark for related goods.
Can a common word be trademarked?	Yes, a common word can be trademarked if it is used in an arbitrary or fanciful way, meaning it has no logical connection to the product it represents. This allows the word to function as a unique identifier for the brand.
What is the holistic test in trademark law?	The holistic test considers the entirety of a trademark and compares it with another mark, looking at similarities and differences in appearance, sound, and meaning. It assesses whether the overall impression is likely to cause confusion, not just the dominant features.
Why was the Court of Appeals’ decision reversed?	The Court of Appeals applied the holistic test and found no confusing similarity, but the Supreme Court reversed this, emphasizing that the dominancy test was more appropriate given the circumstances. The products had the potential to create confusion for consumers.
What is the practical implication of this ruling?	The ruling strengthens the rights of trademark owners, making it more difficult for others to use similar marks on related goods, and safeguards consumers from potential market confusion.

In conclusion, this Supreme Court decision reinforces the importance of the dominancy test in trademark law and its application in assessing the likelihood of consumer confusion. It highlights the protection afforded to registered trademarks and provides valuable guidance for businesses seeking to protect their brand identity. This case serves as a reminder of the need for careful trademark selection and clearance to avoid infringing on existing rights.

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: UFC PHILIPPINES, INC. VS. FIESTA BARRIO MANUFACTURING CORPORATION, G.R. No. 198889, January 20, 2016

January 20, 2016

Trademark Infringement: Likelihood of Confusion as the Core Element

The Supreme Court held that the likelihood of confusion is the critical element in trademark infringement cases. The accused was acquitted because the prosecution failed to prove beyond reasonable doubt that the allegedly infringing mark would likely cause confusion among consumers. This decision emphasizes the importance of assessing the overall impression of the marks and considering the perspective of ordinary purchasers when determining infringement.

Levi’s vs. LS Jeans: How Similar is Too Similar in Trademark Law?

This case revolves around Victorio P. Diaz, who was accused of violating the Intellectual Property Code of the Philippines for allegedly infringing on Levi Strauss’ registered trademarks. Levi Strauss Philippines, Inc. (Levi’s Philippines) claimed that Diaz was selling counterfeit LEVI’S 501 jeans in his tailoring shops. The prosecution argued that the jeans sold by Diaz reproduced, counterfeited, copied, and colorably imitated Levi’s registered trademarks, such as the arcuate design, two-horse brand, and tab. Diaz, however, maintained that his products were distinct and carried the label “LS Jeans Tailoring,” which was also registered. He argued that his target market and channels of trade differed significantly from those of Levi Strauss.

The Regional Trial Court (RTC) initially found Diaz guilty, but the Court of Appeals (CA) dismissed his appeal due to the late filing of his appellant’s brief. The Supreme Court (SC), however, took cognizance of the case, emphasizing that it should not allow the inadvertence or incompetence of counsel to result in the deprivation of an appellant’s right to life, liberty, or property. The SC then proceeded to evaluate the merits of the case to ensure a just outcome.

The central legal question was whether Diaz’s use of the trademark “LS Jeans Tailoring” constituted an infringement of Levi Strauss’ registered trademarks. Section 155 of the Intellectual Property Code defines trademark infringement as using a reproduction, counterfeit, copy, or colorable imitation of a registered mark in commerce, which is likely to cause confusion, mistake, or deception. The elements of trademark infringement are (1) the trademark is registered, (2) the trademark is reproduced, counterfeited, copied, or colorably imitated, (3) the infringing mark is used in connection with the sale of goods or services, (4) the use of the infringing mark is likely to cause confusion, and (5) the use is without the consent of the trademark owner.

The Court focused primarily on the fourth element, the likelihood of confusion, which is the gravamen of the offense. To determine the likelihood of confusion, courts apply either the dominancy test or the holistic test. The dominancy test focuses on the similarity of the main, prevalent, or essential features of the competing trademarks. In contrast, the holistic test considers the entirety of the marks, including labels and packaging. The Court opted to apply the holistic test, noting that the case involved trademark infringement related to jeans products, similar to the case of Emerald Garment Manufacturing Corporation v. Court of Appeals. In this case, the Supreme Court emphasized that the likelihood of confusion should be determined from the perspective of an ordinary purchaser. The Court in Emerald Garment stated:

…. Among these, what essentially determines the attitudes of the purchaser, specifically his inclination to be cautious, is the cost of the goods. To be sure, a person who buys a box of candies will not exercise as much care as one who buys an expensive watch. As a general rule, an ordinary buyer does not exercise as much prudence in buying an article for which he pays a few centavos as he does in purchasing a more valuable thing. Expensive and valuable items are normally bought only after deliberate, comparative and analytical investigation. But mass products, low priced articles in wide use, and matters of everyday purchase requiring frequent replacement are bought by the casual consumer without great care….

The Court considered that LEVI’S 501 jeans were known to be a foreign brand, expensive, and sold in malls or boutiques as ready-to-wear items, not in tailoring shops like Diaz’s. The Court further reasoned that the consuming public could easily distinguish between original LEVI’S 501 jeans and imitations or other brands. This reduces the likelihood of confusion or deception.

Moreover, the Court noted several distinctions between the trademarks. Diaz used the trademark “LS JEANS TAILORING,” which was visually and aurally different from “LEVI STRAUSS & CO.” The addition of “TAILORING” suggested that the jeans came from Diaz’s tailoring shops, not from the official retailers of LEVI’S 501 jeans. The Court also highlighted that Diaz’s jeans featured a “buffalo design” instead of the “two horse design” associated with Levi’s and that the red tab on Diaz’s jeans displayed “LSJT” (LS Jeans Tailoring) instead of “LEVI’S.”

The Court also pointed out that Diaz had a registered trademark for “LS JEANS TAILORING,” which the Intellectual Property Office (IPO) had approved. This registration indicated that the IPO did not find Diaz’s trademark confusingly similar to the registered trademarks for LEVI’S 501 jeans. Given these considerations, the Court concluded that there was no likelihood of confusion between the trademarks, and the evidence of guilt did not satisfy the standard of proof beyond reasonable doubt. As Section 2, Rule 133 of the Rules of Court states:

Proof beyond a reasonable doubt does not mean such a degree of proof as, excluding possibility of error, produces absolute certainty. Moral certainty only is required, or that degree of proof which produces conviction in an unprejudiced mind.

Consequently, the Court acquitted Diaz of the charges, underscoring the need for the prosecution to establish guilt beyond a reasonable doubt in trademark infringement cases.

FAQs

What was the key issue in this case?	The key issue was whether the use of the trademark “LS Jeans Tailoring” by Victorio P. Diaz constituted an infringement of Levi Strauss’ registered trademarks, specifically concerning the likelihood of confusion among consumers.
What is the “likelihood of confusion” in trademark law?	The “likelihood of confusion” refers to the probability that consumers will be misled or confused about the source or origin of goods or services due to the similarity of trademarks. It is a critical element in determining trademark infringement.
What is the difference between the dominancy test and the holistic test?	The dominancy test focuses on the similarity of the main features of the trademarks, while the holistic test considers the entirety of the marks, including labels and packaging. The choice between them depends on the specific facts of each case.
Why did the Supreme Court acquit Victorio P. Diaz?	The Supreme Court acquitted Diaz because the prosecution failed to prove beyond a reasonable doubt that his trademark “LS Jeans Tailoring” was likely to cause confusion among consumers with Levi Strauss’ registered trademarks.
What factors did the Supreme Court consider in determining the likelihood of confusion?	The Court considered that LEVI’S 501 jeans were expensive and sold in malls, while Diaz’s jeans were more affordable and sold in tailoring shops, targeting a different market segment. The differences in the trademarks, such as “LSJT” versus “LEVI’S” on the red tab, were also significant.
What is the significance of having a registered trademark?	Having a registered trademark provides legal protection and exclusive rights to use the mark in commerce. It also indicates that the Intellectual Property Office did not find the mark confusingly similar to existing registered trademarks.
What was the role of the Intellectual Property Office (IPO) in this case?	The Intellectual Property Office had previously registered Diaz’s trademark “LS JEANS TAILORING,” which suggested that the IPO did not consider it confusingly similar to Levi Strauss’ trademarks. This was taken into consideration by the court in their ruling.
What is the standard of proof required in criminal cases of trademark infringement?	In criminal cases, the standard of proof is beyond a reasonable doubt, meaning the prosecution must provide enough evidence to convince the court that there is no other logical explanation other than the defendant committed the crime.

The Supreme Court’s decision in this case serves as a reminder of the importance of proving the likelihood of confusion in trademark infringement cases. The Court’s application of the holistic test and its focus on the perspective of the ordinary purchaser provide valuable guidance for future cases. The decision underscores that mere similarity between trademarks is not enough; the critical factor is whether the allegedly infringing mark is likely to cause confusion, mistake, or deception in the minds of consumers.

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: VICTORIO P. DIAZ vs. PEOPLE, G.R. No. 180677, February 18, 2013

February 18, 2013

Tag: Dominancy Test

Understanding the Dominancy Test: A Key to Resolving Trademark Disputes

Levi Strauss & Co. v. Antonio Sevilla and Antonio L. Guevarra, G.R. No. 219744, March 01, 2021

The Legal Context: Trademarks and the Dominancy Test

The Case Breakdown: Levi Strauss & Co. vs. “LIVE’S”

Practical Implications: Navigating Trademark Law

Frequently Asked Questions

Understanding Trademark Infringement: The Importance of Distinctiveness and Consumer Confusion

Prosel Pharmaceuticals & Distributors, Inc. v. Tynor Drug House, Inc., G.R. No. 248021, September 30, 2020

Legal Context: Trademark Law and the Concept of Likelihood of Confusion

Case Breakdown: The Journey of CEEGEEFER and CHERIFER Through the Courts

Practical Implications: Navigating Trademark Infringement in Business

Frequently Asked Questions

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Coffee Clash: Can “COFFEE MATCH” Brew Confusion with “COFFEE-MATE”?

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‘Inasal’ Impersonation: Can Snack Foods Ride the Coattails of Restaurant Brands?

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When Lighting Names Collide: Can ‘PHILITES’ Shine Alongside the Established ‘PHILIPS’?

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

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“PAPA” vs. “PAPA BOY”: When Trademark Similarity Leads to Market Confusion

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Levi’s vs. LS Jeans: How Similar is Too Similar in Trademark Law?

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