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Holistic Test vs Dominancy Test

As its title implies, the test of dominancy focuses on the similarity of the prevalent features of the competing trademarks which might cause confusion or deception and thus constitutes infringement.

Issues: 1. W/N there exists no confusing similarity between the marks 2. W/N the cancellation of Petitioner’s duly registered and validly existing trademark in the absence of a properly filed Petition for Cancellation before the Intellectual Property Office is not in accord with the Intellectual Property Code and applicable Decisions of the Supreme Court. Held:

xxx xxx xxx . . . 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. Duplication or imitation is not necessary; nor it is necessary that the infringing label should suggest an effort to imitate. The question at issue in cases of infringement of trademarks is whether the use of the marks involved would be likely to cause confusion or mistakes in the mind of the public or deceive purchasers. xxx xxx xxx On the other side of the spectrum, the holistic test mandates that the entirety of the marks in question must be considered in determining confusing similarity. xxx xxx xxx In determining whether the trademarks are confusingly similar, a comparison of the words is not the only determinant 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.

BERRIS AGRICULTURAL CO., INC. vs. NORVY ABYADANG, G.R. No. 183404, October 13, 2010 Facts: Abyadang filed a trademark application with the IPO for the mark "NS D-10 PLUS" for use in connection with Fungicide (Class 5) with active ingredient 80% Mancozeb. Berris Agricultural Co., Inc. (Berris), filed with the IPO Bureau of Legal Affairs (IPOBLA) a Verified Notice of Opposition against the mark under application allegedly because "NS D-10 PLUS" is similar and/or confusingly similar to its registered trademark "D-10 80 WP," also used for Fungicide (Class 5) with active ingredient 80% Mancozeb. Director Estrellita Beltran-Abelardo of the IPO-BLA decided in favor of Berris. However, Abyadang appealed to the CA which reversed the decision.

First Issue The determination of priority of use of a mark is a question of fact. Adoption of the mark alone does not suffice. One may make advertisements, issue circulars, distribute price lists on certain goods, but these alone will not inure to the claim of ownership of the mark until the goods bearing the mark are sold to the public in the market. Accordingly, receipts, sales invoices, and testimonies of witnesses as customers, or orders of buyers, best prove the actual use of a mark in trade and commerce during a certain period of time. In the instant case, both parties have submitted proof to support their claim of ownership of their respective trademarks. Berris presented the following evidence: (1) its trademark application dated November 29, 2002 with Application No. 4-2002-0010272; (2) its IPO certificate of registration dated October 25, 2004 and July 8, 2004 as the date of registration; (3) a photocopy of its packaging bearing the mark "D-10 80 WP"; (4) photocopies of its sales invoices and official receipts; and (5) its notarized DAU dated April 23, 2003, stating that the mark was first used on June 20, 2002, and indicating that, as proof of actual use, copies of official receipts or sales invoices of goods using the mark were attached as Annex "B." Abyadang’s proofs consisted of the following: (1) a photocopy of the packaging for his marketed fungicide bearing mark "NS D-10 PLUS"; (2) Abyadang’s Affidavit dated February 14, 2006, stating among others that the mark "NS D-10 PLUS" was his own creation derived from: N – for Norvy, his name; S – for Soledad, his wife’s name; D – the first letter for December, his birth month; 10 – for October, the 10th month of the year, the month of his business name registration; and PLUS – to connote superior quality; that when he applied for registration, there was nobody applying for a mark similar to "NS D-10 PLUS" (3) Certification dated December 19, 2005 issued by the FPA, stating that "NS D-10 PLUS" is owned and distributed by NS Northern Organic Fertilizer, registered with the FPA since May 26, 2003, and had been in the market since July 30, 2003; Berris is the prior user of the mark. Berris was able to establish that it was using its mark "D-10 80 WP" since June 20, 2002, even before it filed for its registration with the IPO on November 29, 2002, as shown by its DAU which was under oath and notarized, bearing the stamp of the Bureau of Trademarks of the IPO on April 25, 2003, and the DAU, being a notarized document, especially when received in due course by the IPO, is evidence of the facts it stated and has the presumption of regularity, entitled to full faith and credit upon its face. The DAU is supported by the Certification dated April 21, 2006 issued by the Bureau of Trademarks that Berris’ mark is still valid and existing. According to Section 123.1(d) of R.A. No. 8293, a mark cannot be registered if it is identical with a registered mark belonging to a different proprietor with an earlier filing or priority date, with respect to: (1) the same goods or services; (2) closely related goods or services; or (3) near resemblance of such mark as to likely deceive or cause confusion. Comparing Berris’ mark "D-10 80 WP" with Abyadang’s mark "NS D-10 PLUS," as appearing on their respective packages, one cannot but notice that both have a common component which is "D10." On Berris’ package, the "D-10" is written with a bigger font than the "80 WP." Admittedly, the "D-10" is the dominant feature of the mark. The "D-10," being at the beginning of the mark, is what is most remembered of it. Although, it appears in Berris’ certificate of registration in the

" and they are pronounced practically in the same manner in three (3) syllables. vegetables. the IPO declared that both confusion of goods and service and confusion of business or of origin were apparent in both trademarks. Using this test.same font size as the "80 WP. August 16. both marks pertain to the same type of goods – fungicide with 80% Mancozeb as an active ingredient and used for the same group of fruits. neither is it necessary that the label of the applied mark for registration should suggest an effort to imitate. case law has developed two (2) tests. No. Relative to the question on confusion of marks and trade names. their findings of fact in that regard are generally accorded great respect. though inexistent. green. Undeniably. and the public would then be deceived either into that belief or into the belief that there is some connection between the two parties. predominantly the "D-10. chances are he will associate it with Myra’s. it has the right under Section 147 of R. using the same dosage and manner of application. vs. Inc. or similar signs or containers for goods or services.A. and the marks are both predominantly red in color. Undeniably. In determining confusion. and (2) confusion of business (source or origin confusion). The Dominancy Test focuses on the similarity of the prevalent features of the competing trademarks that might cause confusion or deception. where such use would result in a likelihood of confusion. 8293. for example. Inc. as long as they are supported by substantial evidence. Myra Pharmaceuticals. crops. mistake and deception to the purchasing public. hears an advertisement of Dermaline’s applied trademark over the radio. even without any opposition on the part of the owner and user of a previously registered label or trademark. and ornamental plants.” NO trademark does not eradicate the possibility of mistake on the part of the purchasing public to associate the former with the latter. GR No. Considering these striking similarities. for the skin. Dermaline. They also belong to the same classification of goods under R.. they are almost spelled in the same way. without its consent. we consider it proper not to belabor anymore the issue of whether cancellation of a registered mark may be done absent a petition for cancellation identical or similar to its registered trademark." the buyers of both products. Further. the likelihood of confusion is present. Duplication or imitation is not even required. if not finality by the courts. the dominant feature is the term “Dermaline” to which the first 8 letters were identical to that of “Dermalin. are in a better position to pass judgment on matters regarding intellectual property. “Dermalin” was registered way back 1986 and was commercially used since 1977. mainly farmers. where the ordinarily prudent purchaser would be induced to purchase one product in the belief that he was purchasing the other. with the same phrase "BROAD SPECTRUM FUNGICIDE" written underneath. viz: (1) confusion of goods (product confusion). Further. Both depictions of "D-10. both have 3 syllables each with identical sound and appearance.A. Dermaline’s stance that its product belongs to a separate and different classification from Myra’s products with the registered Issue: W/N the IPO should allow the registration of the trademark “Dermaline. Inasmuch as the ownership of the mark “D-10 80 WP” fittingly belongs to Berris. the product. especially considering that both classifications pertain to treatments Held: As Myra correctly posits. jurisprudence noted two (2) types of confusion." As to the Second Issue IPO. Thus. such that this portion is what catches the eye of the purchaser. by reason of their special knowledge and expertise over matters falling under their jurisdiction. and white). with the ending letter "E" in Dermaline’s mark pronounced silently. for both use the same type of material (foil type) and have identical color schemes (red. 8293 to prevent third parties from using a trademark." its dominancy in the "D-10 80 WP" mark stands since the difference in the form does not alter its distinctive character. This likelihood of confusion and mistake is made more manifest when the Holistic Test is applied. are similar in size. the application should be rejected and dismissed outright. It is not the task of the appellate court to weigh once more the evidence submitted before the administrative body and to substitute its own judgment for that of the administrative agency in respect to sufficiency of evidence. and because the same should not have been cancelled by the CA. except for Dermaline’s mark which ends with the letter "E. 2010 Facts: Dermaline filed with the IPO an application to register the trademark “Dermaline. taking into consideration the packaging. it cannot be gainsaid that Abyadang’s "NS D-10 PLUS" is similar to Berris’ "D-10 80 WP. While it is true that the two marks are presented differently. .” The pronunciation for both is also identical." that confusion or mistake is more likely to occur. No." as found in both marks. although the goods of the parties are different. where. is such as might reasonably be assumed to originate with the registrant of an earlier product. Thus. Applying the Dominancy Test. even if such evidence might not be overwhelming or even preponderant. When one applies for the registration of a trademark or label which is almost the same or that very closely resembles one already used and registered by another. 190065.” Myra opposed this alleging that the trademark resembles its trademark “Dermalin” and will cause confusion. when an ordinary purchaser. the Dominancy Test and the Holistic or Totality Test. Myra claims that despite attempts of Dermaline to differentiate its mark. may be misled into thinking that "NS D-10 PLUS" could be an upgraded formulation of the "D-10 80 WP. the mark of which registration is applied for by one party.

YES. and other coffee companies. Inc. FACTS o Petitioner Coffee Partners. SAN FRANCISCO COFFEE AND ROASTERY. then respondent must be protected from infringement of its trade name. here’s the nature of the case / procedural history: o This is a petition for review of the 15 June 2005 Decision and the 1 September 2005 Resolution of the Court of Appeals in CA-G. INC. Fat Willy’s. it would be inequitable to rule in favor of the latter. an application for the registration of the . open a coffee shop under the name “SAN FRANCISCO COFFEE” in Libis. (BCCPI). McDONALD’S CORPORATION v. Trademarks and Technology Transfer (BPTT). thus: Property Office. o The Court of Appeals reversed the ODG-IPO decision and reinstated the decision of the BLA-IPO finding infringement. MACJOY FASTFOOD CORPORATION G. usiness name “SAN FRANCISCO COFFEE & ROASTERY. packages. or advertising of any goods. however.. INC. the same need not be registered. motion for partial reconsideration. o BLA-IPO also held that respondent did not abandon the use of its trade name as substantial evidence indicated respondent continuously used its trade name in connection with the purpose for which it was organized. wrappers. business or services.R. or colorably imitated by the infringer. this Court laid down what constitutes infringement of an unregistered trade name.COFFEE PARTNERS. and commercial impression of the words which is the dominant portion of respondent’s trade name and petitioner’s trademark. n 1998. the Court of Appeals set aside the 22 October 2003 Decision of the Office of the Director General-Intellectual Property Office and reinstated the 14 August 2002 Decision of the Bureau of Legal Affairs-Intellectual Property Office. 2010 [edited property block a digest] THE CASE Note: Since the topic is jurisdiction. No. likely to cause confusion or mistake or to deceive purchasers or others as to the goods or services themselves or as to the source or origin of such goods or services or the identity of such business. or services. 166115 February 2. after it entered into a joint venture with Boyd Coffee USA in 1998 while petitioner continuously used the trademark since June 2001 when it opened its first coffee shop in Libis. is a local corporation engaged in the business of establishing and maintaining coffee shops in the country.” with the Department of Trade and Industry (DTI) in June 1995. use of the trademark "SAN FRANCISCO COFFEE" did not infringe on respondent's trade name. Quezon City. for a non-exclusive right to operate coffee shops in the Philippines using trademarks “SAN FRANCISCO COFFEE. the Court of Appeals denied petitioner's motion for reconsideration and respondent's motion for partial reconsideration. in infringement of trade name. o On the issue of unfair competition.” o Respondent also filed a complaint with the Bureau of Legal Affairs-Intellectual Property Office (BLA-IPO) for infringement and/or unfair competition with claims for damages o Ruling of the Bureau of Legal Affairs-Intellectual Property Office eedom from infringement by similarity is determined from priority of adoption 1995 and petitioner registered its trademark with the IPO in 2001 in the Philippines and in 1997 in other countries. receptacles. Tagaytay Highlands. sale. Quezon City. Company.” o Respondent is a local corporation engaged in the wholesale and retail sale of coffee. v. All that is required is that the trade name is previously used in trade or commerce in the Philippines. or advertisements intended to be used upon or in connection with such goods. -shaped figure with a cup in the center in petitioner's trademark because greater weight is given to words. o Petitioner’s use of the trademark “SAN FRANCISCO COFFEE” will likely cause confusion because of the exact similarity in sound. ISSUE o Whether petitioner’s use of the trademark “SAN FRANCISCO COFFEE” constitutes infringement of respondent’s trade name “SAN FRANCISCO COFFEE & ROASTERY. 80396. prints. the BLA-IPO absolved petitioner from liability. Inc. signs. o The Office of the Director General – Intellectual Property Office (ODG-IPO) reversed the BLA-IPO. business entity organized and existing under the laws of British Virgin Islands. a domestic corporation engaged in the sale of fast food products in Cebu City. spelling. In its 15 June 2005 Decision. offering for sale. SP No.. pronunciation. respondent formed a joint venture company with Boyd Coffee USA under the company name Boyd Coffee Company Philippines. and the assignee thereof. In its 1 September 2005 Resolution. Horphag Research Management SA. Inc. a trade name need not be registered with the IPO before an infringement suit may be filed by its owner against the owner of an infringing trademark. filed with the then Bureau of Patents. RULING o In Prosource International.R. March 3. v. respondent MacJoy Fastfood Corporation. faith and a prior user who had stopped using such trade name. 169504. using the name “SAN FRANCISCO COFFEE. business. there was no evidence of intent to defraud on the part of petitioner. o Clearly.R. NO. now the Intellectual Property Office (IPO). INC.” even if the trade name is not registered with the Intellectual Property Office (IPO) -. or the infringing mark or trade name is applied to labels. INC. G. 2007 Facts: · On 14 March 1991.

the holistic test requires the court to consider the entirety of the marks as applied to the products. · Applying the dominancy test to the instant case. The dominancy test focuses on the similarity of the prevalent features of the competing trademarks that might cause confusion or deception. brilliant and noticeable color scheme as that of its wrappers. while Petitioner’s restaurant is in yellow and red colors. in an arch-like. namely. while the word "McDonald’s" comes with an arches "M" in gold colors. · Both marks use the corporate "M" design logo and the prefixes "Mc" and/or "Mac" as dominant features. constituting a fraud upon the general public and further cause the dilution of the distinctiveness of petitioner’s registered and internationally recognized MCDONALD’S marks to its prejudice and irreparable damage. W/N there is a confusing similarity between MACJOY and MCDONALDS trademarks as to justify the IPO’s rejection of Macjoy’s trademark application Ratio: 1. fried chicken. YES." and the prefixes "Mac/Mc" in both the "MACJOY" and the "MCDONALDS" marks lead to the conclusion that there is confusing similarity between them especially since both are used on almost the same products falling under classes 29 and 30 of the International Classification of Goods. tacos. The word "MacJoy" is set in deep pink and white color scheme while "McDonald’s" is written in red. i. quality. instead of the holistic test. burgers.e. and its marks "McDonalds. The word "MacJoy" comes with the picture of a chicken head with cap and bowtie and wings sprouting on both sides. containers. ruling that there was no confusing similarity between the marks "MACJOY" and "MCDONALD’S. the respondent’s trademark application for the "MACJOY & DEVICE" trademark covers goods under Classes 29 and 30 of the International Classification of Goods. (hereinafter MCDONALD’S marks) such that when used on identical or related goods. thus. and with the mascot of "Ronald McDonald" being prominently displayed therein. · In determining similarity and likelihood of confusion. The façade of the respective stores of the parties are entirely different. (IPO used the dominancy test) · IPO denied MR. cups.. chicken barbeque. food and ingredients of food. Courts will consider more the aural and visual impressions created by the marks in the public mind.." McChicken. · Also. CA reversed the IPO decision. including the labels and packaging. reasons: 1. 2. and absolutely without any picture of a chicken. in determining confusing similarity. · IPO ruled that the predominance of the letter "M.trademark "MACJOY & DEVICE" for fried chicken.e. the dominancy test and the holistic test. . otherwise known as the Golden Arches or "M" design. etc. YES. 2." etc. · Under the dominancy test. halo-halo and steaks under classes 29 and 30 of the International Classification of Goods. The word "MacJoy" is written in round script while the word "McDonald’s" is written in single stroke gothic." Issue: 1. · Both trademarks are used in the sale of fastfood products. spaghetti. Indisputably." which visually and aurally catches the attention of the consuming public. jurisprudence has developed two tests. sandwiches. disregarding minor differences. the trademark applied for would confuse or deceive purchasers into believing that the goods originate from the same source or origin. 4. filed a verified Notice of Opposition against the respondent’s application claiming that the trademark "MACJOY & DEVICE" so resembles its corporate logo. burgers. The first letter "M" in both marks puts emphasis on the prefixes "Mc" and/or "Mac" by the similar way in which they are depicted i. petitioner alleged that the respondent’s use and adoption in bad faith of the "MACJOY & DEVICE" mark would falsely tend to suggest a connection or affiliation with petitioner’s restaurant services and food products." "MacFries. giving little weight to factors like prices. the Court finds that herein petitioner’s "MCDONALD’S" and respondent’s "MACJOY" marks are confusingly similar with each other such that an ordinary purchaser can conclude an association or relation between the marks 2. W/N the dominancy test should be applied. · Petitioner McDonald’s Corporation." an abbreviation of "Mac. courts give greater weight to the similarity of the appearance of the product arising from the adoption of the dominant features of the registered mark." for the ff. yellow and black color combination. sustained the petitioner’s opposition and rejected the respondent’s application. sales outlets and market segments. etc. capitalized and stylized manner. the Court has consistently used and applied the dominancy test in determining confusing similarity or likelihood of confusion between competing trademarks. · It is the prefix "Mc. chicken barbeque. fries. 3. fries. palabok. Respondent’s restaurant is set also in the same bold. In contrast. spaghetti. · In recent cases with a similar factual milieu as here.

or under the sponsorship of the other is not far-fetched. Dy. In their answer. RTC issued a temporary restraining order against respondents enjoinining them from using the Big Mak mark in the operation of their business in the NCR. Dy. From 1982 to 1990.R. that McDonalds does not have an exclusive right to the Big Mac mark or to any other similar marks. William B. LC Big Mak burger inc. Respondent Francis B. It owns a family of marks including the “Big Mac” mark for its “double decker hamburger sandwich. prior to McDonalds registration on 1985. Such that the common awareness or perception of customers that the trademarks McDonalds mark and MACJOY & DEVICE are one and the same. Respondents claimed. the PBPTT." "Mc. the assailed Decision and Resolution of the Court of Appeals in CA-G. 3861 is REINSTATED. · Predominant features such as the "M. One Rodolfo Topacio similarly registered the same mark on 1983. Dy. Jesus Aycardo. SP NO. is McDonalds Philippine franchisee. Even non-regular customers of their fastfood restaurants would readily notice the predominance of the "M" design. On 1988. respondent corporation applied with the PBPTT for the registration of the Big Mak mark for its hamburger sandwiches. McDonalds also informed respondent Francis Dy. Edna A. "Mc/Mac" prefixes shown in both marks. which. · When one applies for the registration of a trademark or label which is almost the same or very closely resembles one already used and registered by another. 57247." the only logical conclusion deducible therefrom is that the respondent would want to ride high on the established reputation and goodwill of the MCDONALD’s marks. Petitioner McGeorge Food Industries (Petitioner McGeorge) a domestic corporation.C. Jesus Aycardo. a global chain of fast food restaurants. Respondents point out that the Isaiyas group of corporations registered the same mark for hamburger sandwiches with the PBOTT on 1979. Edna A. 402) FACTS: Petitioner. the chairman of the board of directors of the respondent corporation. Dy. Dy. by itself or through its franchisees. Accordingly. Respondents asserted that they did not fraudulently pass off their hamburger sandwiches as those of petitioners Big Mak hamburgers. are REVERSED and SET ASIDE and the Decision of the Intellectual Property Office in Inter Partes Case No. Like its other marks. is a domestic corporation which operates fast food outlets and snack vans in metro manila and nearby provinces. L. It operates. William B. August 18. Respondent. · By reason of the respondent’s implausible and insufficient explanation as to how and why out of the many choices of words it could have used for its tradename and/or trademark. Respondents corporation’s menu includes hamburger sandwiches and other food items. McDonalds applied for registration of the same mark in principal registry of the then Philippine Bureau of Patents. allowed registration of the “Big Mac” mark in the Philippine registry based on its home registration in the US. 143993. petitioners sued respondents in the RTC Makati for trademark infringement and unfair competition. but also to protect an already used and registered trademark and an established goodwill. Araceli Aycardo. Araceli Aycardo. WHEREFORE. Respondents sought damages in their counterclaim. On 1990. now the Intellectual Property Office . respondents admitted that they have been using the Big Mak burger for their fast food business. or an affiliate. it chose the word "MACJOY. and Grace Huerto (G. 480 Phil. Dy. this not only to avoid confusion on the part of the public. US. the application should be rejected and dismissed outright. as applied to petitioner’s restaurant business and food products. Alternatively.R. Trademark and Technology (PBPTT). On 1985. Pending approval of this application.McDonald’s registered trademark covers goods similar if not identical to those covered by the respondent’s application. McDonalds opposed respondent corporation’s application on the ground that Big Mak was colorable imitation of its registered Big Mac mark for the same food products. Dy. of its exclusive right to the Big Mac mark and requested him to desist from using the Big Mak mark or any similar mark. stockholders and directors of respondent corporation. McDonalds introduced its “Big Mac” hamburger sandwiches in the Philippine market in 1981." and "Mac" appearing in both McDonald’s marks and the MACJOY & DEVICE" easily attract the attention of would-be customers. Inc. Based on home registration. McDonald's Corporation and McGeorge Food Industries. Rene B. even without any opposition on the part of the owner and user of a previously registered label or trademark. McDonalds Corporation (McDonalds) is a corporation organized under the laws of Delaware.. Having received no reply from respondent Dy.” McDonalds registered his trademark with the US trademark registry sometime 1979. Francis B. Inc. and its outdoor and indoor signages. McDonalds spent millions in advertisement for big mac hamburger sandwich alone. 2004. Rene B. respondents claimed that they are not liable for trademark infringement and unfair competition. and Grace Huero are the incoporators. (IPO). is undoubtedly beyond question. as the Big Mak mark they sought to register does not constitute a colorable imitation of the Big Mac mark. RTC issued a writ of preliminary injunction replacing the TRO. Big Mak Burger. No. McDonalds display the Big Mac mark in its item and paraphernalia in its restaurant. the instant petition is GRANTED. vs. however. Dy.

Petitioner Societe Des Produits Nestle. For as stated in Section 29. then it would be less likely for the ordinary purchaser tonotice that CFC’s trademark FLAVOR MASTER carries the colors orange and mochawhile that of Nestle’s uses red and brown. a verified Notice of Opposition was filed by Nestle Philippines. 4 Nestle claimedthat the use. The provision of the law concerning unfair competition is broader and more inclusive than that the law concerning the infringement of trademark.. The application of the totality or holistictest is improper since the ordinary purchaser would not be inclined to notice thespecific features. or the devices or words thereon. this Court believes that the dominancy test is more suitable to this case inlight of its peculiar factual milieu."Colorable imitation denotes such a close or ingenious imitatio n as to becalculated to deceive ordinary persons. as a matter of due course. SOCIETIES AND NESTLE VS CAG.Rather.A. Petitioners asserted that while the Isaiyas group and Topacio did register the Big Mac mark ahead of them. The application. asto cause him to purchase the one supposing it to be the other. similarities or dissimilarities. 112012 April 4. plaintiffs have established their valid cause of action against the defendants for trademark infringement and unfair competition and for damages."Likewise. and are therefore less inclined to closely examine specific detailsof similarities and dissimilarities between competing products. waspublished in the July 18. which would likely influence purchasers to believe that the goods offered are those of a manufacturer or dealer other than the actual manufacturer or dealer. This Court cannot agree that totality test is the one applicab le in this case.9 In determining if colorable imitation exists. or deceive purchasers and would falselysuggest to the purchasing public a connection in the business o f Nestle. 52994. aPhilippine corporation and a licensee of Societe Des Produits Nestle S. of goods of another manufacturer or dealer. or that the goodsof CFC might be mistaken as having originated from the latter. Thus. if any.If the ordinary purchaser is "undiscerningly rash" in buying such common andinexpensive household products as instant coffee. Notwithstanding the distinction between an action for trademark infringement and an action for unfair competition. againstCFC’s application for registration of the trademark FLAVOR MASTER. under Serial No. or in causing the name Big Mak to be printed on the wrappers and containers of their food products also constitute an act of unfair competition under section 29 of the trademark law? RULING: Yes. the law extends substantially the same relief to the injured party for both cases. asthe dominant word present in the three (3) trademarks is "MASTER". a Swiss company registered . ISSUE: WON there is Trademark Infringement HELD: YES RATIO RECIDENDI: A trademark has been generally defined as "any word.. S. No.A. The determination of whether two trademarks are indeed c onfusingly similarmust be taken from the viewpoint of the ordinary purchasers who are. McDonalds disclosed that it had acquired Topacio’s rights to his registration in a deed of assignment. private respondent CFC Corporation filed with the BPTTTan application for the registration of the trademark "FLAVOR MASTER" for instantcoffee.undiscerningly rash in buying the more common and less exp ensive householdproducts like coffee. underSwiss laws and domiciled in Switzerland. jurisprudence has developed two kinds o f tests .theDominancy Test and the Holistic Test. or in any other feature of their appearance. the holistic test mandates that the entirety of the marks in question mustbe considered in determining confusing similarity. and would there fore be "lessinclined to closely examine specific details of similarities and dissimilarities" betweenthe two competing products. a person is guilty of unfair competition who in selling his goods shall give them the general appearance.R. 1984. 1988 issue of the BPTTT’s Official Gazette. Any conduct may be said to constitute unfair competition if the effect is to pass off on the public the goods of one man as the goods of another. filed an unverified N otice of Opposition. the Isaiyas group did so only in the supplemental register of PBPTT and such registration does not provide any protection.In their reply. Inc. 10 The test of dominancy focuses on thesimilarity of the prevalent features of the competing trademarks which might causeconfusion or deception and thus constitute infringement. name. or such a resemblance to the original as todeceive an ordinary purchaser giving such attention as a purchaser usually gives. symbol ordeviceadopted and used by a manufacturer or merchant to identify his goods anddistinguish them from those manufactured and sold by others. 2001 FACTS: On January 18. in general. either as goods themselves or in the wrapping of the packages in which they are contained.. which is more limited range. however. to wit: MASTERROAST and MASTER BLEND. 3 claiming that the trademark of private respondent’s product is"confus ingly similar to its trademarks for coffee and coffee extracts. considering that th e product is an inexpensive and common household item. ISSUE: Did the same acts of defendants in using the name Big Mak as a trademark or trade name in their signages. The choice of Big Mak as trade name by defendant corporation is not merely for sentimental reasons but was clearly made to take advantage of the reputation. On the other side of thespectrum. but within its narrower range recognizes a more exclusive right derived by the adoption and registration of the trademark by the person whose goods or services are first associated therewith. petitioners denied respondents claim that McDonalds is not the exclusive owner of the Big Mac mark. by CFC of the trademark FLAVOR MASTER and its registrationwould likely cause confusion in the trade. popularity and the established goodwill of plaintiff McDonalds.

Fruit of the Loom the registrant of the trademark “Fruit for Eve. No confusion would arise in the pronunciation of the two marks. 100098. Held: Although the Court decided in favor of the respondent. shorts. Further. the IPC was not yet enacted so the relevant laws used were the Trademark Law and the Paris Convention. TRADEMARKS AND TECHNOLOGY TRANSFER and H. 2004. No. General Garments appealed. The likelihood of confusion is further made more probable by the fact that both parties are engaged in the same line of business. shirts and lingerie under Class 25.the similarities of the competing trademarks are completely lost in the substantial difference in the design andgeneral appearance of their respective hang tags. the discerningeye of the observer must focus not only on the predominant words but also on the other features appearing inthe labels. It is the mark which draws the attention of the buyer and leads him to conclude that the goods originated from the same manufacturer.D. jackets. Lee Co. meaning. while General Garments corp. if the competing trademark contains the main or essential or dominant features of another by reason of which confusion and deception are likely to result.. dresses. Inc. It is undeniably the dominant feature of the mark. LEE COMPANY. CA GR L-32747. the Director of Patents rendered a decision granting private respondent's petition for cancellation and opposition to registration. private respondent H. The Director of Patents. HON. the appellee has sufficiently established its right to prior use and registration of the trademark "LEE" in the Philippines and is thus entitled to protection from any infringement upon the same. mistake and deception on the part of the purchasing public as to the origin of the goods. SR 5054 for the trademark "STYLISTIC MR.k Fruit of theLoom filed with the trial court a complaint for infringement and unfair competition against General Garments. The court mentioned two types of confusion in Trademark Infringement: . jogging suits. The appellate court reversedthe trial court’s decision. INC. The SC held that there was no infringement. In 1976.D. Private respondent averred that petitioner's trademark "so closely resembled its own trademark. issued on 27 October 1980 in the name of petitioner Emerald Garment Manufacturing Corporation. 1995 FACTS: On 18 September 1981. December 29. 29 November 1984. the petition for review on certiorari. Second division. BUREAU OF PATENTS. The trademarks “Fruit of the Loom” and “Fruit for Eve” do not resemble each other as to confuseor deceive an ordinary purchaser. Whether there was an infringement of the trademark of Fruit of the Loom. declared that petitioner's trademark was confusingly similar to private respondent's mark because "it is the word 'Lee' which draws the attention of the buyer and leads him to conclude that the goods originated from the same manufacturer. G. Corona) Facts: Respondent manufacture wines and uses the trademark “Gallo” for its product.R. using the test of dominancy. Makasiar (J) Facts: Fruit of the Loom is the registrant of the trademark “Fruit of the Loom”. No. the petitioner is a manufacturer of cigarette and also uses “Gallo” in its products. HELD: The word "LEE" is the most prominent and distinctive feature of the appellant's trademark and all of the appellee's "LEE" trademarks. COURT OF APPEALS. Issue: Is there infringement? Held: At the time the cause of action accrued in this case. Hence. ISSUE: Whether or not a trademark causes confusion and is likely to deceive the public is a question of fact which is to be resolved by applying the "test of dominancy". The use of the respondent of the mark “Gallo” for its wine products was exclusive in nature.” Both trademarks cover clothing. The alleged difference is too insubstantial to be noticeable. jeans. July 14. Mighty Corporation vs ENJ Gallo Winers (GR No 154342.EMERALD GARMENT MANUFACTURING CORPORATION vs. The dissenting opinion of Justice Padilla is more acceptable. For one to be confusingly similar to another. On the other hand. LEE" used on skirts. Issue: On 19 July 1988. socks. blouses. 'LEE' as previously registered and used in thePhilippines cause confusion.The trial court ruled in favor of Fruit of the Loom. filed with the Bureau of Patents. Trademarks & Technology Transfer (BPTTT) a Petition for Cancellation of Registration No. briefs.

form. art works and markings. . the two goods are not closely related because he products belong to different classifications. the SC employing the dominancy test. and (d) the registrant’s express or implied consent and other fair and equitable considerations. does not exist. Further. composition and they have different intended markets or consumers. the Court must consider: (a) the resemblance between the trademarks. (c) the likely effect on the purchaser.Confusion of Goods – when an otherwise prudent purchaser is induced to purchase one product in the belief that he is purchasing another. in which case defendant’s goods are then brought as the plaintiff’s and its poor quality reflects badly on the plaintiff’s reputation. (b) the similarity of the goods to which the trademark is attached. in fact. Confusion of Business – wherein the goods of the parties are different but the defendant’s product can reasonably (though mistakenly) be assumed to originate from the plaintiff. In this case. In determining the likelihood of confusion. thus deceiving the public into believing that there is some connection between the plaintiff and defendant which. They materially differ in color scheme. concluded that there is no likelihood of confusion.