JACK NOTES ON IDENTICAL OR CONFUSINGLY SIMILAR TRADEMARKS - If the differences between the two trademarks outweigh their similarities

etween the two trademarks outweigh their similarities and the differences are
distinctive, it is not likely that the purchasers will be confused
In determining W/N goods are closely related, the ff. factors are considered: - For a challenged trademark to be considered confusingly similar to another, it is not necessary
1. Business to which the goods belong and the location that the challenged trademark actually cause confusion or deception; it is sufficient that the use
2. Class of products to which the goods belong will likely cause confusion or mistake on the part of the purchaser
3. Quality, quantity, size of product, including name of package, wrapper, container - Neither is it necessary that the two competing products be placed alongside each other and
4. Nature and cost of articles compared by viewing them together; the purchaser does not usually make such scrutiny he often
a. just relies on his recollection of the product he intends to purchase
5. Descriptive properties, physical attributes or essential characteristics with reference to form,
composition, texture, or quality Ordinary purchaser
6. Purpose of goods - standard for determining W/N deception of the purchasing public is likely is the average person
7. Immediacy of consumption of the article, e.g. day-to-day household items exercising the care that is ordinary under the circumstances to whom the product is sold in the
8. Field of manufacture normally prevailing conditions of trade
9. Conductions under which the article is usually purchased - not a purchaser who has special knowledge not possessed by the ordinary purchaser of the
10. Channels of trade through which the goods flow, or are distributed, marketed, displayed, and sold product and who can avoid any mistake by the use of his special knowledge
a. Phil. Refining Company v. Ng Sam - Although cooking oil and ham both fall under the - factors to consider:
classification of foods and food ingredients, they do not move through the same o age, training, education of average buyer
channels of commerce; cooking oil is a daily household item usually purchased by o class of ordinary purchaser, i.e. children, domestic helper, skilled persons
domestic helpers from retail establishments whereas ham is not daily food fare for the o nature and cost of product
average household as it is usually served on special occasions o immediacy of consumption of article
o conditions under which product is usually purchased
CONFUSION OF GOODS CONFUSION OF ORIGIN - ordinary purchaser must have some measure of acquaintance with the trademark of the product
Ordinarily prudent purchaser is induced to purchase The goods are different but the challenged product he wishes to purchase
on product in the belief that he is purchasing the might reasonably be assumed to originate from o if he knows nothing about the trademark which was imitated, it cannot be said that he
other product another manufacturer and the public would then be was deceived
deceived that there is some connection between the - ordinary purchaser is especially familiar with the product, likelihood of deception is remote
manufacturers of the two products o e.g. drinkers who order beer, shoppers who buy blue jeans, smokers who buy
cigarettes, sewers who purchase threads, loggers who acquire wire rope
Colorable imitation
sufficient to determine if two trademarks are confusingly similar - likelihood of deception is great when goods are low-priced commodities consumed every day,
such a close or ingenious imitation as to be calculated to deceive ordinary persons, or such a since these are purchased without great care
resemblance to the original as to deceive an ordinary purchaser giving such attention as a o e.g. food seasoning, soy sauce, salted peanuts, candies, ketchup, soap, coffee,
purchaser usually gives, and to cause to purchase the one supposing it to be the other chocolate bars
does not mean identity; does not require al details be copied literally - likelihood of deception is remote in case of valuable and expensive articles which are purchased
means such similarity in form, content, words, sound, meaning, special arrangement, or general only after a thorough, deliberate, comparative, and analytical investigation
appearance of the trademark with that of another trademark in their overall presentation or in their o radios, TV sets, air con units, watches, cars
essential, substantive and distinctive parts as would likely mislead or confuse the purchaser in the - likelihood of deception is remote in case of medicines, which are dispensed only upon
ordinary course of purchasing the genuine article prescription or sold with the intervention of a pharmacist
Confusing similarity cannot be avoided by merely adding, removing, or changing some letters in a
registered trademark
To determine W/N colorable imitation exists:

DOMINANCY TEST HOLISTIC TEST

If the competing trademark contains the main or Comparison of the words is not the only
essential or dominant features of another determining factor; the trademarks in their
trademark by reason of which confusion and entirety as they appear in their respective labels
deception are likely to result, infringement takes are considered in relation to the goods to which
place. they are attached

Duplication/imitation is not necessary.
Focuses on the similarity of the prevalent features
of the competing trademarks
E.g. MacJoy for a hamburger is confusingly
similar to McDonalds for hamburger, because in
both of them, the prefixes Mc/Mac are the
dominant features
Does not focus only on the predominant words
but considers also the other features appearing
in the labels
However, the Holistic Test should not be applied
to competing products which are common and
inexpensive household products, because the
ordinary purchaser is not inclined to notice their
specific features, similarities, or dissimilarities

Factors that may be considered: Sound,

appearance, form, style, shape, size, or format;
color, ideas connoted by the trademarks,
meaning, spelling, and pronunciation of words
used, setting in which the words are used