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LEVI STRAUSS & CO., opposer, vs.

ARTHUR SORIANO, “(b) That the use of Respondent-Applicant’s mark DOCKERS on the goods
respondent-applicant. mentioned in the application will likely cause confusion or mistake, or will likely
Inter Partes Case No. 3753 deceive purchasers who may be led to believe that the mark of Respondent-
Opposition to: Applicant and the goods on which Respondent Applicant’s mark are used or to be
Application Serial No. 70959 used are those of the Opposer herein, and vice versa.
Date Filed : February 22, 1990 “3. For the reasons set forth in paragraph 2 above, Opposer will be damaged by
Trademark: “DOCKLAND” the registration of the trademark DOCKLAND in the name of Respondent-
Applicant and further; should the respondent applicant’s product be of an inferior
quality to that of Opposer’s, Opposer’s business reputation and goodwill will
suffer grave and irreparable injury.”
DECISION In his Answer dated June 19, 1992, Respondent denied the material allegations in
This is an Opposition to the registration of the mark “DOCKLAND” under the Opposition and interposed the following special defenses:
Application Serial No. 70959 filed by Respondent-Applicant Arthur Soriano. CIScaA “4. It is clear from the alleged Notice of Opposition that Levi Strauss and
The file wrapper of the subject application shows that on February 22, 1990, Company, the alleged Opposer, is not a duly registered entity in the Philippines,
Arthur Soriano (hereafter “Respondent” filed with the then Bureau of Patents, nor does it have any authorized agent duly registered in the Philippines; hence,
Trademarks and Technology Transfer his application for registration of the the alleged Opposer has no legal personality to sue in the Philippines.
trademark “Dockland” for use on shoes under Class 25 of the International “5. Being without any legal representative or authorized agent in the Philippines,
Classification of Goods, claiming first use of the mark in the Philippines on the Notice of Opposition should be dismissed outright under Secs. 1 and 3 of Rule
October 1, 1989. 3 of the Rules of Court, and that the alleged Opposer is not a legally registered
On September 5, 1990, the Bureau of Patents, Trademarks and Technology juridical person in the Philippines, it cannot do business nor litigate in the
Transfer sent Respondent a letter (Paper No. 3) advising him that the subject Philippines.
mark is confusingly similar with the mark “Dockers” in the name of Levi Strauss & “6. DOCKLAND being a distinct and different trademark from the so-called
Co. under Registration No. 45556 issued on June 30, 1989, and with the mark DOCKERS, Respondent is legally entitled to maintain the same in his business.
“Docksides” and Device being applied for registration by Adel Morales under “7. As author/creator of trade name DOCKLAND, respondent has caused a
Serial No. 67771 dated April 26, 1989. copyright registration thereof as evidenced by a Certificate of Copyright
On October 15, 1990, the Bureau of Patents Trademarks and Technology Transfer Registration hereto attached as Annex “1″.
declared the subject application as Abandoned for the failure of Respondent to As no amicable settlement was arrived at by the parties during the pre-trial
reply and submit the additional requirements requested by the Bureau of Patents conference, the case proceeded to trial on the merits.
Trademarks and Technology Transfer. During trial, Opposer presented the testimonies of its witnesses, Ramon
On February 6, 1991, herein Respondent filed his Petition for Revival declaring Martelino, Stephen Nathan Goldstein, and Bernabe Alajar. It also presented
that he had no intention of abandoning his application. Respondent further documents consisting of Exhibits “A” to “W” including their sub-markings that
alleged that his mark had a different spelling, pronunciation and meaning, and were admitted in evidence in accordance with Order No. 98-45 dated February
that the marks mentioned in Paper No. 3 covered distinct and different products, 17, 1997.
hence, confusion is remote. Finding meritorious grounds therein, the Bureau of For his part, Respondent failed to present evidence despite proper notices issued
Patents Trademarks and Technology Transfer granted the petition to revive the by the Bureau of Patents Trademarks and Technology Transfer. On motion of
abandoned application in accordance with Paper No. 6 (Office Memorandum) and Opposer, Respondent was subsequently declared as having waived his right to
on May 16, 1991, recommended the publication of the application after finding present evidence under Order No. 2000-230 dated May 10, 2000. On August 7,
that the mark had complied with the requirements of the law. Respondent’s 2000, Opposer filed its Memorandum, hence, this Decision based on the evidence
application was published for opposition in the November v. December 1991 issue of Opposer.
of the Bureau of Patents Trademarks and Technology Transfer Official Gazette, Under Section 21-A of Republic Act No. 166, any foreign corporation or juristic
Volume IV, No. 6 that was released for publication on December 31, 1991. person to which a mark or trade name has been registered or assigned under said
On January 31, 1992, Levi Strauss & Co. (hereafter “Opposer” filed its Notice of Act may bring an action for infringement, for unfair competition, or false
Opposition alleging that it would be damaged by the registration of Respondent’s designation of origin and false description, whether or not it has been licensed to
mark based on the following grounds: do business in the Philippines under Act No. 1459, as amended, otherwise known
“1. That the Opposer is the owner-registrant of the trademark DOCKERS as the Corporation Law, provided, that at the time it brings the complaint, the
(Registration No. 45556) and DOCKERS Design (Registration No. 46619) which country of which said foreign corporation or juristic person is a citizen, or in which
has been continuously used in trade and commerce on goods covered in Class 25, it is domiciled, by treaty, convention or law, grants a similar privilege to corporate
and, specifically, which use has not been abandoned. or juristic persons of the Philippines. Being the holder of Certificates of
“2. That the trademark DOCKLAND is confusingly similar to opposer-registrant’s Registration No. 45556 and 46619 issued by the Bureau of Patents Trademarks
trademark, to wit: and Technology Transfer on June 30, 1989 and valid for a term of twenty (20)
“(a) That the trademark DOCKLAND of Respondent-Applicant is nearly if not years, there is no question that Opposer has the legal personality to file the
completely identical and therefore confusingly similar to the trademark DOCKERS instant Opposition and has the exclusive right to use the marks “Dockers” and
used and owned by the opposer on essentially the same goods. Thus, the use in “Dockers and Design” for goods falling under Class 25.
the Philippines of the trademark DOCKLAND by the Respondent Applicant Consequently, the only issue left to be resolved is whether Respondent’s mark is
constitutes an unlawful appropriation of a mark previously used and registered confusingly similar to Opposer’s mark as to preclude the registration of the
and not abandoned, a statutory violation of Section 4 (d) of Republic Act No. 166, former.
as amended. The law provides that the owner of a trademark, trade name or service mark used
to distinguish his goods, business or services from the goods, business or services to the existence of confusing similarity between the marks of Respondent and
of others shall have the right to register the same on the principal register, unless Opposer. In addition, confusion of goods becomes more likely because pants and
it consists of or comprises a mark or trade name which so resembles a mark or shoes flow in the same channel of trade and purchased by the same class of
trade name registered in the Philippines or a mark or trade name previously used consumers aside from the fact that they fall under one international classification
in the Philippines by another and not abandoned, as to be likely, when applied to of goods i.e. Class 25.
or used in connection with the goods, business or services of the applicant, to The above finding is consistent with existing jurisprudence and decisions of the
cause confusion or mistake or to deceive purchasers. [Section 4 (d) Republic Act Supreme Court. As pointed out by Opposer in its Memorandum, the Supreme
No. 166, as amended.] Court has previously held in Marvex Commercial Inc. v. Petra Hawpia & Co., 18
The confusion referred to in the law exists when the ordinary prudent purchaser SCRA 1178 (1966) that the marks “SALONPAS” and “LIONPAS” are confusingly
would be induced to purchase one product or service because of the similarity of similar. In Sapolin v. Balmaceda, 67 Phil. 705, (1939), the words “Sapolin” and
the marks or trade names used thereon. In other words, a person’s goods or “Lusolin” were also held to be confusingly similar. Also, this Office previously held
services are purchased as those of another person, and the poorer quality of the in Guess, Inc. v. The Clothes Shop, Inc., Inter Partes Case No. 3899, Decision No.
former reflects adversely on the latter’s reputation. [Sterling Products 97-19 dated November 13, 1997, that the marks “GEORGE MACHADO” and
International, Inc. v. Farbenfabriken Bayer, 27 SCRA 1214 (1969)]. “GEORGES MARCIANO” are confusingly similar. Likewise, in General Garments v.
In this case, Respondent’s mark “Dockland” appearing on the shoe label and in Sadhwani, Inter Partes Case No. 322, Decision dated August 29, 1978, it was held
the bristol board contained in the file wrapper is written in capital letters with two that the marks “PURITRON” and “PURITAN” are confusingly similar. And in
(2) bold horizontal lines placed on the top and bottom portion. Located on the left Jantzen, Inc. v. Janton Garment Manufacturing Co., Inter Partes Case No. 1312,
side of the mark is a representation of a ship’s anchor that is encircled by a rope. Decision No. 64 dated August 3, 1988, this Office ruled that “JANTZEN” and
On the other hand, the mark of Opposer consists of the word “Dockers” written in “JANTON” are confusingly similar.
capital letters placed above a device with a wing-shaped design consisting of four We find no reason to deviate from these rulings, and reiterate our findings on the
(4) solid, horizontal lines with each of the lines gradually decreasing in length existence of colorable imitation that is likely to cause confusion to the buying
from top to bottom. The words “since 1850″ are also printed on top in a public.
semicircular fashion, with an anchor and ribbon-like figure in the middle of the In view of the foregoing, the instant Opposition is hereby SUSTAINED. Accordingly,
device with the word “LEVI’S” placed underneath. Both marks are used on goods the application for registration of the mark “Dockland” used on shoe under Serial
falling under the same class — Respondent’s mark on shoes in Class 25 and No. 70959 filed by Arthur Soriano is hereby REJECTED.
Opposer’s mark on pants also in Class 25. ATSIED Let the file wrapper of DOCKLAND subject matter of the instant case be
After considering how the marks are written and spelled, and after evaluating the forwarded to the Administrative, Financial, and Human Resource Development
manner in which the marks and devices are placed alongside each other, this Service Bureau for appropriate action in accordance with this Decision with a
Office finds confusing similarity between the two marks that would lead an copy thereof to be furnished the Bureau of Trademarks for information and update
ordinary purchaser to believe that the shoes with the mark “Dockland” are also of its record.
being manufactured and sold by Opposer. Colorable imitation exists in the SO ORDERED.
general appearance of the mark as the two (2) marks both start with four lettered (SGD.) ESTRELLITA BELTRAN-ABELARDO
word “DOCK” both written in CAPITAL LETTERS and contain an illustration of a Director
ship’s anchor encircled by a rope. Bureau of Legal Affairs
Colorable imitation is such a close or ingenious imitation as to be calculated to Intellectual Property Office
deceive ordinary persons, or such a resemblance to the original as to deceive an
ordinary purchaser giving such attention as a purchaser usually gives, and to [IPO Decision No. 01-29. December 19, 2001.]
cause him to purchase the one supposing it to be the other. [Etepha v. Director of WILFRO P. LUMINLUN, opposer, vs. ALEXANDER JULIAN, INC., respondent-
Patents, 16 SCRA 495(1966)]. It does not mean such similitude as “amounts to applicant.
identity, nor does it require that all the details be literally copied. Colorable Inter Partes Case No. 3704
imitation refers to such similarity in form, content, words, sound, meaning, Opposition to:
special arrangement, or general appearance of the mark or trade name with that Application Serial No. : 70197
of the other mark or trade name in their over all presentation or in their essential, Filed : November 29, 1989
substantive and distinctive parts as would likely to mislead or confuse persons in Trademark: Bar Design (with the Colors
the ordinary course of purchasing the genuine article. [Agpalo, The Law on Blue, Red, and Green)
Trademark, Infringement and Unfair Competition, 2000 ed., p. 49; Co Tiong Sa v. DECISION
Director of Patents, 95 Phil. 1 (1954)]. ATICcS This pertains to an opposition made by Wilfro P. Luminlun, Filipino, of legal age
A visual comparison of “Dockers” and “Dockland” as they appear on the product and with address at No. 595 Soler St., Binondo, Manila, to the above-captioned
labels shows that the first four letters spelled as “DOCK” is the dominant feature trademark application filed by Alexander Julian, Inc, a corporation organized and
of these composite marks. This is the word that the ordinary buyer would existing under the laws of North Carolina, United States of America, with business
remember and recall when shopping for similar goods in department stores. Aside address at 8th West, 40th Street, New York, N.Y. 10018, U.S.A.
from this, another common feature of the two marks is the use of a ship’s anchor On September 1991, Opposer filed a Motion for Extension of Time to File Notice of
surrounded by a rope that appears to have been used to supplement the word Opposition, which was granted by the Bureau of Patents, Trademarks and
“dock” which in the English language means to disembark or moor in a pier. While Technology Transfer as per Order No. 91-806 giving Opposer until 30 October
it may true that Respondent’s mark also contains the additional word “land” after 1991 within which to file the Notice of Opposition. The Opposer filed the Verified
“Dock”, it does not afford such a substantial difference as to prevent likelihood of Notice of Opposition on 16 October 1991 based on the following grounds:
confusion among the purchasers. The format, design, and arrangement all point
“1. The approval of Application Serial No. 70197 is contrary to Section 4(d) of Comment filed on 8 January 1991, Opposer manifested that the Notice of
Republic Act No. 166, as amended. Opposition was filed within the extended period granted by the BPTTT in its Order
“2. The approval of Application Serial No. 70197 is violative of the Copyright Law. No. Order No. 91-806, which gave Opposer until 30 October 1991 within which to
“3. As of the date of the filing of Application Serial No. 70197 on November 28, file said Notice. Consequently, on 30 January 1992, the Respondent-Applicant
1989, respondent-applicant was not entitled to register subject LABEL MARK WITH filed another Answer, alleging as its affirmative defenses that (a) the mark LABEL
THE COLORS GREEN, RED, BLUE, RED AND GREEN in its favor in the Philippines. WITH COLORS GREEN RED BLUE RED AND GREEN had long enjoyed trademark
“4. The Opposer will be damaged and prejudiced by the registration of subject protection in the United States and in other countries, i.e., Canada and Mexico;
LABEL MARK WITH THE COLORS GREEN, RED, BLUE, RED AND GREEN in the name (b) that the trademark, which has been in continuous use since its adoption, has
of the respondent-applicant and his business reputation and goodwill will suffer a wide consumer following in various countries: (c) that the trademark has gained
great and irreparable injury. tremendous goodwill for the Respondent-Applicant and has become clearly
To support the opposition, Opposer relied upon the following facts, among others: distinctive of the products it manufactures and distributes; and (d) that the
“1. That Opposer adopted and started the use of the trademark COLOURS on trademark can be considered as a well-known mark and therefore, entitled to
January 1, 1982 in good faith. protection pursuant to Article 6bis of the Paris Convention and Executive Order
“2. That Opposer is the registered owner of the trademark COLOURS for use on No. 913 issued by the Minister of Trade on 7 October 1983.
shoes, sandals, slippers, boots, jeans, pants, t-shirts, shirts, briefs, shorts, socks, On 31 January 1991, Opposer filed a Motion for Judgment on the Pleadings,
handkerchiefs, belts, jogging pants and sweat shirts under Registration Certificate alleging that Respondent-Applicant’s Answer, filed on 22 November 1991, failed
No. 54870 issued on July 26, 1989, without any opposition being filed thereto, and to tender an issue since the Answer merely contained general denials of the
which registration is still in full force and effect. grounds and supporting facts alleged in the Opposition. Hence, under Rule 169-I
“3. That Opposer has been using the trademark COLOURS together with the of the Revised Rules of Practice in Trademark Cases, the Respondent-Applicant is
COLOURS LABEL MARK in lawful commerce in the Philippines since January 1, deemed to have admitted the material allegations of the Opposition, such that a
1982 continuously up to the present. judgment on the pleadings may be rendered by the Director of Patents.
“4. That Opposer has registered his COLOURS LABEL MARK under Certificate of On 19 February 1991, Opposer filed a Motion to Strike Off Respondent-Applicant’s
Registration 8383 issued on October 30, 1990. Answer dated 29 January 1992, alleging that said Answer was filed beyond the 12
“5. That in addition, Opposer has copyrighted the COLOURS LABEL MARK for December 1991 deadline for the Respondent-Applicant to file its Answer, and
which he was issued last March 20, 1990, Certificate of Copyright Registration No. without prior leave of court after a prior Answer had already been filed on 19
0-9253 by the National Library. December 1991.
“6. That the LABEL MARK WITH THE COLORS GREEN, RED, BLUE, RED AND GREEN On 24 February 1992, Respondent-Applicant filed an Opposition to the Motion for
being registered by the respondent-applicant is identical and/or confusingly Judgment on the Pleadings, stating that said motion has no basis in law and in
similar to Opposer’s duly registered and copyrighted COLOURS LABEL MARK. fact. Citing its Answer filed on 30 January 1992, Respondent-Applicants claimed
“7. That Opposer has spent a considerable amount of time money and efforts to that contrary to Opposer’s allegation that only general denials were made in the
advertise and promote his products bearing his registered trademark COLOURS Answer, Respondent-Applicant stated in its Answer that its trademark has enjoyed
and registered and copyrighted COLOURS LABEL MARK, so much so that said tremendous goodwill in various countries, such mark being well-known and
trademark and label mark has become distinctive of Opposer’s goods and registered in various countries.
received the consumer’s recognition and goodwill. On 31 March 1999, this Office issued Order 99-68 denying the Motion for
“8. That considering that the goods upon which respondent-applicant uses its Judgment on the Pleadings in the interest of justice and fair play. The case was
subject label mark, are identical/and or related to the goods upon which the thereafter set for pre-trial trial. The pre-trial proceedings failed to result in an
Opposer uses his registered trademark COLOURS and duly registered and amicable settlement. Subsequently, trial on the merits was conducted and the
copyrighted COLOURS LABEL MARK, likelihood of confusion, deception or mistake, parties were directed to present their respective evidence. HSIDTE
as to the actual source or origin of respondent-applicant’s goods is likely. On 04 May 2000, Opposer commenced the presentation of its evidence by
“9. That the allowance of Application Serial No. 70197 is clearly violative of presenting and marking as exhibits the following documents: (a) certified true
Section 4(d) of Republic Act 166, as amended. copy of Certificate of Registration No. 45840 of the trademark COLOURS issued in
“10. That the approval of Application Serial No. 70197 is contrary to the Copyright the name of Opposer on 26 July 1989, together with the Affidavits of Use filed on
Law. 02 December 1994 and 01 June 2000; (b) labels actually being used by the
“11. That as of November 29, 1989, when it filed Application Serial No. 70197, Opposer and on file with the records of Registration No. 45840 of the trademark
respondent-applicant was not entitled to register the LABEL MARK WITH COLORS COLOURS; (c) certified true copy of Certificate of Registration No. SR-8383 of the
GREEN, RED, BLUE, RED AND GREEN under Section 37 of Republic Act No. 166, as COLOURS LABEL MARK issued in the name of the Opposer on 30 October 1990,
amended. together with the Affidavit of Use filed on 02 October 1996; (d) certified true copy
“12. That respondent-applicant is now precluded by the equitable principles of of Certificate of Copyright Registration No. 0-9253 for COLOURS Label issued in
acquiescence, estoppel and laches from registering the LABEL MARK WITH the name of the Opposer on 20 March 1990; (e) certified true copy of Certificate
COLORS GREEN, RED, BLUE, RED AND GREEN. ADCSEa of Registration No. 62139 of the trademark COLOURS AGAINST A RECTANGULAR
“13. That the allowance of Application Serial No. 70197 will damage and prejudice BACKGROUND COLORED BLUE, RED, GREEN; and (f) certified true copy of
Opposer and his business reputation and goodwill will suffer great and irreparable Certificate of Copyright Registration No. 0-12308 for COLOURS (the colors, blue,
injury. red and green are claimed) Label issued in the name of the Opposer on 01
In its Answer filed on 22 November 1991, Respondent-Applicant denied the October 1992, together with the notarized application for copyright, to defend its
allegations in the Opposition and claimed that the Notice of Opposition was filed proprietary right to the LABEL MARK WITH COLORS BLUE, RED AND GREEN.
beyond the reglementary period of thirty days from the publication of the mark in Opposer fled its Formal Offer of Exhibits on 10 August 2000, to which
the Official Gazette, which in the instant case, was on 31 August 1991. In his Respondent-Applicant did not file any comment or objection. Hence, the
Opposer’s documentary evidence consisting of Exhibits “A” to “F” inclusive of sub- In the case of Del Monte Corporation vs. Court of Appeals (G.R. No. 78325, 25
markings were admitted for whatever purpose they may be worth. January 1990) the Supreme Court, in ruling that the Sunshine Tomato Catsup label
The case was set for hearing on 12 February 2001 for the presentation of is a colorable imitation of the Del Monte trademark, found that:
Respondent-Applicant’s evidence. For failure of Respondent-Applicant or its “Sunshine Tomato Catsup label is a colorable imitation of the Del Monte
counsel to appear, the case was re-set for hearing on 15 March 2001 and 19 April trademark due to prominent similarities in general design although there are
2001. Neither of the Respondent Applicant or its counsel appeared on the some differences. The predominant colors used in the Del Monte label are green
scheduled hearings so that counsel for the Opposer moved that Respondent- and red orange, the same with Sunshine. The word “catsup” in both bottles is
Applicant be deemed to have waived its right to present evidence. printed in white and the style of the print/letter is the same. Although the logo of
On 19 April 2001, this Office issued Order No. 2001-196 declaring Respondent- Sunshine is not a tomato, the figure nevertheless approximates that of a tomato.”
Applicant to have waived its right to present evidence. The instant case was In the instant case, a comparison of Opposer’s trademarks COLOURS, COLOURS
submitted for resolution on the basis of the evidence on record. LABEL MARK and COLOURS AGAINST A RECTANGULAR BACKGROUND COLORED
The issues to be resolved in this particular case are: (a) whether or not there BLUE, RED AND GREEN and the Respondent-Applicant’s BAR DESIGN (WITH
exists a confusing similarity between the Opposer’s trademarks COLOURS and COLORS BLUE, RED AND GREEN) will show that other than the word “COLOURS”
COLOURS LABEL MARK and Respondent-Applicant’s trademark BAR DESIGN WITH in the trademarks of the Opposer, the appearance of the Opposer’s and
COLORS GREEN, RED, BLUE, RED AND GREEN; and (b) who between the Opposer Respondent-Applicant’s marks/labels are the same. The shape of both
and the Respondent-Applicant is the prior user entitled to protection under the trademarks/labels is rectangular. The design of both trademarks/labels is also the
Trademark Law. same bar design with the same colors, i.e., blue, red and green. And considering
Considering that the Application subject of the instant opposition was filed under that both trademarks/labels also covers similar goods, i.e., clothing and
the old Trademark Law (R.A. 166, as amended), this Office shall resolve the accessories that flow through the same channels of trade, confusion between the
instant case under said law so as not to adversely affect rights already acquired trademarks/labels is likely to result in the mind of the prospective buyers.
prior to the effectivity of the new Intellectual Property Code (R.A. 8293). As per the evidence presented, the trademark COLOURS and the COLOURS LABEL
The applicable provision of the Trademark Law, Section 4(d) provides: MARK were first used by the Opposer in the Philippines on 01 January 1982.
“SECTION 4. Registration of trademarks, trade-names and service-marks on the Opposer has continuously been using said marks as proven by the Affidavits of
principal register. — . . . The owner of a trademark, trade-name or service-mark Use presented by the Opposer. On the other hand, no evidence was presented
used to distinguish his goods, business or services from the goods, business or pertaining to the first use by the Respondent-Applicant of the trademark/label
service of others shall have a right to register the same on the Principal Register, BAR DESIGN (with colors blue, red and green) in the Philippines. Respondent,
unless it: while claiming registration of its mark in other countries and that said mark is a
xxx xxx xxx well-known mark, did not present evidence to prove said allegations.
“(d) Consists of or comprises a mark or trade-name which so resembles a mark or Thus, it is clear from the foregoing that between the Opposer and the
trade-name registered in the Philippines or a mark or trade-name previously used Respondent-Applicant, the former has sufficiently proven that it is prior user of
in the Philippines by another and not abandoned, as to be likely, when applied to the trademark COLOURS and COLOURS LABEL MARK and is therefore entitled to
or in connection with the goods, business or service of the applicant, to cause protection from infringement thereof.
confusion or mistake or to deceive purchasers.” WHEREFORE, premises considered, the Notice of Opposition is hereby
The determinative factor in a contest involving registration of trademark is not SUSTAINED. Consequently, Application bearing Serial No. 70197 for the mark
whether the challenged mark would actually cause confusion or deception of the “BAR DESIGN (with colors green, red and blue)” filed by ALEXANDER JULIAN, INC.
purchasers but whether the use of the mark would likely cause confusion or on 29 November 1989 is hereby REJECTED.
mistake on the part of the buying public. The law does not require that the Let the filewrapper of BAR DESIGN, subject matter of this case be forwarded to
competing trademarks must be so identical as to produce actual error or mistake. the Administrative, Financial and Human Resource Development Bureau for
It would be sufficient that the similarity between the two trademarks is such that appropriate action in accordance with this Decision with a copy thereof furnished
there is a possibility or likelihood of the older brand mistaking the newer brand for the Bureau of Trademarks for information and update of its record. SCIcTD
it. SO ORDERED.
The Supreme Court, in determining whether or not there is confusing similarity (SGD.) ESTRELLITA BELTRAN-ABELARDO
between trademarks, has relied on the dominancy test or the assessment of the Director
essential or dominant features in the competing trademarks. If the competing Bureau of Legal Affairs
trademark contains the main or essential or dominant features of another by Intellectual Property Office
reason of which confusion or deception are likely to result, then infringement
takes place. Duplication or imitation is not necessary. A similarity in the dominant
features of the trademark would be sufficient. Factors such as similarity in
appearance, form, style, shape, format and color have been considered in
determining confusing similarity. HTCIcE
In the case of case of Etepha vs. Director of Patents (16 SCRA 502), the Supreme
Court stated that:
“The essential element of infringement is colorable imitation. This term has been
defined as “such a close or ingenious imitation as to be calculated to deceive
ordinary purchasers, or such resemblance of the infringing mark to the original as
to deceive an ordinary purchaser giving such attention as a purchaser usually
gives, and to cause him to purchase the one, supposing it to be the other.”