SERI SOMBOONSAKDIKUL, PETITIONER, VS. ORLANE S.A.

, RESPONDENT

2017-02-01 | G.R. No. 188996

DECISION

JARDELEZA, J.:

Assailed in this petition is the Decision[1] of the Court of Appeals (CA) in CA-G.R. SP No. 105229 dated July
14, 2009 which affirmed the decision of the Director General of the Intellectual Property Office (IPO) denying
the application for the mark "LOLANE."

Facts

On September 23, 2003, petitioner Seri Somboonsakdikul (petitioner) filed an application for registration[2] of
the mark LOLANE with the IPO for goods [3] classified under Class 3 (personal care products) of the
International Classification of Goods and Services for the Purposes of the Registration of Marks (International
Classification of Goods).[4] Orlane S.A. (respondent) filed an opposition to petitioner's application, on the
ground that the mark LOLANE was similar to ORLANE in presentation, general appearance and
pronunciation, and thus would amount to an infringement of its mark.[5] Respondent alleged that: (1) it was the
rightful owner of the ORLANE mark which was first used in 1948; (2) the mark was earlier registered in the
Philippines on July 26, 1967 under Registration No. 129961 for the following goods:[6]

x x x perfumes, toilet water, face powders, lotions, essential oils, cosmetics, lotions for the hair,
dentrifices, eyebrow pencils, make-up creams, cosmetics & toilet preparations under Registration No.
12996.[7]

and (3) on September 5, 2003, it filed another application for use of the trademark on its additional products:

x x x toilet waters; revitalizing waters, perfumes, deodorants and body deodorants, anti-perspiration
toiletries; men and women perfume products for face care and body care; face, eye, lips, nail, hand
make-up products and make-up removal products, towels impregnated with cosmetic lotions; tanning
and instant tanning sunproducts, sunprotection products, (not for medical use), after suncosmetic
products; cosmetic products; slimming cosmetic aids; toiletries; lotions, shampoos and hair care
products; shave and after shave products, shaving and hair removing products; essential oils;
toothpastes; toiletry, cosmetic and shaving kits for travel, filled or fitted vanity-cases[.][8]

Respondent adds that by promotion, worldwide registration, widespread and high standard use, the mark had
acquired distinction, goodwill, superior quality image and reputation and was now well-known.[9] Imputing bad
faith on the petitioner, respondent claimed that LOLANE's first usage was only on August 19, 2003.[10]

In his answer,[11] petitioner denied that the LOLANE mark was confusingly similar to the mark ORLANE. He
averred that he was the lawful owner of the mark LOLANE which he has used for various personal care
products sold worldwide. He alleged that the first worldwide use of the mark was in Vietnam on July 4, 1995.
Petitioner also alleged that he had continuously marketed and advertised Class 3 products bearing LOLANE
mark in the Philippines and in different parts of the world and that as a result, the public had come to
associate the mark with him as provider of quality personal care products.[12]

Petitioner maintained that the marks were distinct and not confusingly similar either under the dominancy test
or the holistic test. The mark ORLANE was in plain block upper case letters while the n;1ark LOLANE was
printed in stylized word with the second letter L and the letter A co joined. Furthermore, the similarity in one
syllable would not automatically result in confusion even if used in the same class of goods since his products
| Page 1 of 12
always appear with Thai characters while those of ORLANE always had the name Paris on it. The two marks
are also pronounced differently. Also, even if the two marks contained the word LANE it would not make them
confusingly similar since the IPO had previously allowed the co-existence of trademarks containing the
syllable "joy" or "book" and that he also had existing registrations and pending applications for registration in
other countries.[13]

The Bureau of Legal Affairs (BLA) rejected petitioner's application in a Decision[14] dated February 27, 2007,
finding that respondent's application was filed, and its mark registered, much earlier.[15] The BLA ruled that
there was likelihood of confusion based on the following observations: (1) ORLANE and LOLANE both
consisted of six letters with the same last four letters - LANE; (2) both were used as label for similar products;
(3) both marks were in two syllables and that there was only a slight difference in the first syllable; and (4)
both marks had the same last syllable so that if these marks were read aloud, a sound of strong similarity
would be produced and such would likely deceive or cause confusion to the public as to the two trademarks.[16]

Petitioner filed a motion for reconsideration but this was denied by the Director of the BLA on May 7, 2007.[17]
The BLA ruled that the law did not require the marks to be so identical as to produce actual error or mistake
as the likelihood of confusion was enough. The BLA also found that the dominant feature in both marks was
the word LANE; and that the marks had a strong visual and aural resemblance that could cause confusion to
the buying public. This resemblance was amplified by the relatedness of the goods.[18]

On appeal, the Director General of the IPO affirmed the Decision of the BLA Director. Despite the difference
in the first syllable, there was a strong visual and aural resemblance since the marks had the same last four
letters, i.e., LANE, and such word is pronounced in this jurisdiction as in "pedestrian lane."[19] Also, the mark
ORLANE is a fanciful mark invented by the owner for the sole purpose of functioning as a trademark and is
highly distinctive. Thus, the fact that two or more entities would accidentally adopt an identical or similar
fanciful mark was too good to be true especially when they dealt with the same goods or services. [20] The
Director General also noted that foreign judgments invoked by petitioner for the grant of its application are not
judicial precedents.[21]

Thus, petitioner filed a petition for review [22] before the CA arguing that there is no confusing similarity
between the two marks. Petitioner maintained that LANE is not the dominant feature of the mark and that the
dominancy test did not apply since the trademarks are only plain word marks and the dominancy test
presupposes that the marks involved are composite marks. [23] Petitioner pointed out that the IPO had
previously allowed the mark GIN LANE under Registration No. 4-2004-006914 which also involved products
under Class 3.[24] While petitioner admitted that foreign judgments are not judicial precedents, he argued that
the IPO failed to recognize relevant foreign judgments, i.e., the Australian Registrar of Trademarks and the
IPO of Singapore which ruled that there was no confusing similarity between the marks LOLANE and
ORLANE.[25] Lastly, the Director General should have deferred to the findings of the Trademark Examiner who
made a substantive examination of the application for trademark registration, and who is an expert in the field
and is in the best position to determine whether there already exists a registered mark or mark for registration.
Since petitioner's application for registration of the mark LOLANE proceeded to allowance and publication
without any adverse citation of a prior confusingly similar mark, this meant that the Trademark Examiner was
of the view that LOLANE was not confusingly similar to ORLANE.[26]

The CA Ruling

The CA denied the petition and held that there exists colorable imitation of respondent's mark by LOLANE.[27]

The CA accorded due respect to the Decision of the Director General and ruled that there was substantial
evidence to support the IPO's findings of fact. Applying the dominancy test, the CA ruled that LOLANE's mark
is confusingly or deceptively similar to ORLANE. There are predominantly striking similarities in the two marks
including LANE, with only a slight difference in the first letters, thus the two marks would likely cause
confusion to the eyes of the public. The similarity is highlighted when the two marks are pronounced
considering that both are one word consisting of two syllables. The CA ruled that when pronounced, the two
.marks produce similar sounds.[28] The CA did not heed petitioner's contention that since the mark ORLANE is
| Page 2 of 12
of French origin, the same is pronounced as "OR LAN." Filipinos would invariably pronounce it as
"OR-LEYN."[29] The CA also noted that the trademark ORLANE is a fanciful name and petitioner was not able
to explain why he chose the word LOLANE as trademark for his personal care products. Thus, the only logical
conclusion is that he would want to benefit from the established reputation and goodwill of the ORLANE mark.[30]

The CA rejected petitioner's assertion that his products' cheaper price and low-income market eliminates the
likelihood of confusion. Low-income groups, and even those who usually purchased ORLANE products
despite the higher cost, may be led to believe that LOLANE products are low-end personal care products also
marketed by respondent.[31]

The CA upheld the applicability of the dominancy test in this case. According to the CA, the dominancy test is
already recognized and incorporated in Section 155.1 of Republic Act No. 8293 (RA 8293), otherwise known
as the Intellectual Property Code of the Philippines.[32] Citing McDonald's Corporation v. MacJoy Fastfood
Corporation,[33]the CA ruled that the dominancy test is also preferred over the holistic test. This is because the
latter relies only on the visual comparison between two trademarks, whereas the dominancy test relies not
only on the visual, but also on their aural and connotative comparisons, and their overall impressions created.[34]
Nonetheless, the CA stated that there is nothing in this jurisdiction dictating that the dominancy test is
applicable for composite marks.[35]

The CA was not swayed by the alleged favorable judgment by the IPO in the GIN LANE application, ruling
that in trademark cases, jurisprudential precedents should be applied only to a case if they are specifically in
point.[36] It also did not consider the ruling of the IPOs in Australia, South Africa, Thailand and Singapore which
found no confusing similarity between the marks LOLANE and ORLANE, stating that foreign judgments do
not constitute judicial precedent in this jurisdiction.[37]

Finally, the CA did not give merit to petitioner's contention that the Director General should have deferred to
the findings of the Trademark Examiner. According to the CA, the proceedings before the Trademark
Examiner are ex-parte,[38] and his findings are merely prima facie. Whatever his decision may be is still subject
to review and/or appeal.[39]

The Petition[40]

Petitioner maintains that the CA erred in its interpretation of the dominancy test, when it ruled that the
dominant feature of the contending marks is the suffix "LANE."[41] The CA failed to consider that in determining
the dominant portion of a mark, significant weight must be given to whether the buyer would be more likely to
remember and use one part of a mark as indicating the origin of the goods.[42] Thus, that part which will likely
make the most impression on the ordinary viewer will be treated as the dominant portion of conflicting marks
and given greater weight in the comparison.[43]

Petitioner argues that both LOLANE and ORLANE are plain word marks which are devoid of features that will
likely make the most impression on the ordinary viewer. If at all, the very word marks themselves, LOLANE
and ORLANE are each to be regarded as dominant features.[44] Moreover, the suffix LANE is a weak mark,
being "in common use by many other sellers in the market." [45] Thus, LANE is also used in the marks
SHELLANE and GIN LANE, the latter covering goods under Class 3. Moreover, the two marks are aurally
different since respondent's products originate from France and is read as "OR-LAN" and not "OR-LEYN."[46]

Petitioner also claims that the CA completely disregarded the holistic test, thus ignoring the dissimilarity of
context between LOLANE and ORLANE. Assuming that the two marks produce similar sounds when
pronounced, the differences in marks in their entirety as they appear in their respective product labels should
still be the controlling factor in determining confusing similarity.[47]

Besides, there has been no explicit declaration abandoning the holistic test.[48] Thus, petitioner urges us to go
beyond the similarities in spelling and instead consider how the marks appear in their respective labels, the
dissimilarities in the size and shape of the containers, their color, words appearing thereon and the general
appearance,[49] hence: (1) the commonality of the marks ORLANE and LOLANE starts from and ends with the
four-letter similarity-LANE and nothing else;[50] (2) ORLANE uses "safe" or conventional colors while LOLANE
| Page 3 of 12
uses loud or psychedelic colors and designs with Thai characters;[51] and (3) ORLANE uses the term "Paris,"
indicating the source of origin of its products.[52]

Petitioner likewise claims that consumers will be more careful in their choice because the goods in question
are directly related to personal hygiene and have direct effects on their well-being, health and safety.[53]
Moreover, with the huge price difference between ORLANE and LOLANE products, relevant purchasers are
less likely to be confused.[54]

Finally, petitioner notes that respondent has neither validly proven nor presented sufficient evidence that the
mark ORLANE is in actual commercial use in the Philippines. Respondent failed to allege in any of its
pleadings submitted to the IPO's BLA and the IPO Director General the names of local outlets that products
bearing the mark ORLANE are being marketed or sold to the general consuming public.[55]

Respondent's Comment[56]

Respondent reiterates the decisions of the CA and the IPO. [57] It maintains that ORLANE is entitled to
protection under RA 8293 since it is registered with the IPO with proof of actual use.[58] Respondent posits that
it has established in the world[59] and in the Philippines an image and reputation for manufacturing and selling
quality beauty products. Its products have been sold in the market for 61 years and have been used in the
Philippines since 1972.[60] Thus, to allow petitioner's application would unduly prejudice respondent's right
over its registered trademark.[61] Lastly, respondent argues that decisions of administrative agencies such as
the IPO shall not be disturbed by the courts, absent any showing that the former have acted without or in
excess of their jurisdiction, or with grave abuse of discretion.[62]

Issue

We resolve the issue of whether there is confusing similarity between ORLANE and LOLANE which would bar
the registration of LOLANE before the IPO.

Our Ruling

We find that the CA erred when it affirmed the Decision of the IPO.

While it is an established rule in administrative law that the courts of justice should respect the findings of fact
of administrative agencies, the courts may not be bound by such findings of fact when there is absolutely no
evidence in support thereof or such evidence is clearly, manifestly and patently insubstantial; and when there
is a clear showing that the administrative agency acted arbitrarily or with grave abuse of discretion or in a
capricious and whimsical manner, such that its action may amount to an excess or lack of jurisdiction.[63]
Moreover, when there is a showing that the findings or conclusions, drawn from the same pieces of evidence,
were arrived at arbitrarily or in disregard of the evidence on record, they may be reviewed by the courts.[64]
Such is the case here.

There is no colorable imitation between the marks LOLANE and ORLANE which would lead to any likelihood
of confusion to the ordinary purchasers.

A trademark is defined under Section 121.1 of RA 8293 as any visible sign capable of distinguishing the
goods. It is susceptible to registration if it is crafted fancifully or arbitrarily and is capable of identifying and
distinguishing the goods of one manufacturer or seller from those of another.[65] Thus, the mark must be
distinctive.[66] The registrability of a trademark is governed by Section 123 of RA 8293. Section 123.1 provides:

Section 123. Registrability. -

| Page 4 of 12
 123.1. A mark cannot be registered if it:
xxx
Is identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or
d.
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;

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
e. 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;
xxx

In Mighty Corporation v. E. & J. Gallo Winery,[67] we laid down the requirements for a finding of likelihood of
confusion, thus:

There are two types of confusion in trademark infringement. The first is "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 bought as the plaintiffs and its poor quality reflects badly on the
plaintiffs reputation. The other is "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, thus
deceiving the public into believing that there is some connection between the plaintiff and defendant which, in
fact, does not exist.

In determining the likelihood of confusion, the Court must consider: [a] the resemblance between the
trademarks; [b] the similarity of the goods to which the trademarks are attached; [c] the likely effect
on the purchaser and [d] the registrant's express or implied consent and other fair and equitable
considerations.(Citations omitted, emphasis supplied.)[68]

While Mighty Corporation enumerates four requirements, the most essential requirement, to our mind, for the
determination of likelihood of confusion is the existence of resemblance between the trademarks, i.e.,
colorable imitation. Absent any finding of its existence, there can be no likelihood of confusion. Thus we held:

Whether a trademark causes confusion and is likely to deceive the public hinges on "colorable imitation"
which has been 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." (Citations omitted.)[69]

We had the same view in Emerald Garment Manufacturing Corporation v. Court of Appeals,[70] where we
stated:

| Page 5 of 12
Proceeding to the task at hand, 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."

Colorable imitation does not mean such similitude as amounts to identity. Nor does it require that all the
details be literally copied. x x x (Citation omitted, emphasis supplied.)[71]

In determining colorable imitation, we have used either the dominancy test or the holistic or totality test. The
dominancy test considers the similarity of the prevalent or dominant features of the competing trademarks
that might cause confusion, mistake, and deception in the mind of the purchasing public. More consideration
is given on the aural and visual impressions created by the marks on the buyers of goods, giving little weight
to factors like process, quality, sales outlets, and market segments.[72] On the other hand, the holistic test
considers the entirety of the marks as applied to the products, including the labels and packaging, in
determining confusing similarity. The focus is not only on the predominant words but also on the other
features appearing on the labels.[73]

The CA's use of the dominancy test is in accord with our more recent ruling in UFC Philippines, Inc. (now
merged with Nutria-Asia, Inc. as the surviving entity) v. Barrio Fiesta Manufacturing Corporation.[74] In UFC
Philippines, Inc., we relied on our declarations in McDonald's Corporation v. L.C. Big Mak Burger, Inc.,[75] Co
Tiong Sa v. Director of Patents,[76] and Societe Des Produits Nestle, S.A. v. Court of Appeals[77] that the
dominancy test is more in line with the basic rule in trademarks that confusing similarity is determined by the
aural, visual and connotative and overall impressions created by the marks. Thus, based on the dominancy
test, we ruled that there is no confusing similarity between "PAPA BOY & DEVICE" mark, and "PAPA
KETSARAP" and "PAPA BANANA CATSUP."

While there are no set rules as what constitutes a dominant feature with respect to trademarks applied for
registration, usually, what are taken into account are signs, color, design, peculiar shape or name, or some
special, easily remembered earmarks of the brand that readily attracts and catches the attention of the
ordinary consumer.[78] In UFC Philippines, Inc., what we considered as the dominant feature of the mark is the
first word/figure that catches the eyes or that part which appears prominently to the eyes and ears.[79]

However, while we agree with the CA's use of the dominancy test, we arrive at a different conclusion. Based
on the distinct visual and aural differences between LOLANE and ORLANE, we find that there is no confusing
similarity between the two marks.

The suffix LANE is not the dominant feature of petitioner's mark. Neither can it be considered as the dominant
feature of ORLANE which would make the two marks confusingly similar.

First, an examination of the appearance of the marks would show that there are noticeable differences in the
way they are written or printed as shown below:[80]

(see image)

As correctly argued by petitioner in his answer before the BLA, there are visual differences between LOLANE
and ORLANE since the mark ORLANE is in plain block upper case letters while the mark LOLANE was
rendered in stylized word with the second letter L and the letter A co-joined.[81]

Second, as to the aural aspect of the marks, LOLANE and ORLANE do not sound alike. Etepha v. Director of
Patents, et al.[82] finds application in this case. In Etepha, we ruled that there is no confusing similarity
between PERTUSSIN and ATUSSIN. The Court considered among other factors the aural differences
between the two marks as follows:

5. As we take up Pertussin and Atussin once again, we cannot escape notice of the fact that the two words do
| Page 6 of 12
not sound alike-when pronounced. There is not much phonetic similarity between the two. The Solicitor
General well-observed that in Pertussin the pronunciation of the prefix "Per", whether correct or
incorrect, includes a combination of three letters P, e and r; whereas, in Atussin the whole starts with
the single letter A added to suffix "tussin". Appeals to the ear are dissimilar. And this, because in a
word combination, the part that comes first is the most pronounced. An expositor of the applicable rule here is
the decision in the Syrocol-Cheracol controversy. There, the ruling is that trademark Syrocol (a cough
medicine preparation) is not confusedly similar to trademark Cheracol (also a cough medicine preparation).
Reason: the two words "do not look or sound enough alike to justify a holding of trademark infringement", and
the "only similarity is in the last syllable, and that is not uncommon in names given drug compounds".
(Citation omitted, emphasis supplied.)[83]

Similar to Etepha, 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. We take exception to
the generalizing statement of the Director General, which was affirmed by the CA, that Filipinos would
invariably pronounce ORLANE as "ORLEYN." This is another finding of fact which has no basis, and thus,
justifies our reversal of the decisions of the IPO Director General and the CA. While there is possible aural
similarity when certain sectors of the market would pronounce ORLANE as "ORLEYN," it is not also
impossible that some would also be aware of the proper pronunciation-especially since, as respondent claims,
its trademark ORLANE has been sold in the market for more than 60 years and in the Philippines, for more
than 40 years.[84]

Respondent failed to show proof that the suffix LANE has registered in the mind of consumers that such suffix
is exclusively or even predominantly associated with ORLANE products. Notably and as correctly argued by
petitioner, the IPO previously allowed the registration of the mark GIN LANE for goods also falling under
Class 3, i.e., perfume, cologne, skin care preparations, hair care preparations and toiletries.[85]

We are mindful that in the earlier cases of Mighty Corporation and Emerald, despite a finding that there is no
colorable imitation, we still discussed the nature of the goods using the trademark and whether the goods are
identical, similar, competing or related. We need not belabor a similar discussion here considering that the
essential element ih determining likelihood of confusion, i.e., colorable imitation by LOLANE of the mark
ORLANE, is absent in this case. Resemblance between the marks is a separate requirement from, and must
not be confused with, the requirement of a similarity of the goods to which the trademarks are attached. In
Great White Shark Enterprises, Inc v. Caralde, Jr.,[86] after we ruled that there was no confusing similarity
between Great White Shark's "GREG NORMAN LOGO" and Caralde's "SHARK & LOGO" mark due to the
visual and aural dissimilarities between the two marks, we deemed it unnecessary to resolve whether Great
White Shark's mark has gained recognition as a well-known mark.

Finding that LOLANE is not a colorable imitation of ORLANE due to distinct visual and aural differences using
the dominancy test, we no longer find it necessary to discuss the contentions of the petitioner as to the
appearance of the marks together with the packaging, nature of the goods represented by the marks and the
price difference, as well as the applicability of foreign judgments. We rule that the mark LOLANE is entitled to
registration.

WHEREFORE, the petition is GRANTED. The Decision of the Court of Appeals dated July 14, 2009 is
REVERSEDand SET ASIDE. Petitioner's application of the mark LOLANE for goods classified under Class 3
of the International Classification of Goods is GRANTED.

SO ORDERED.

Velasco, Jr., (Chairperson), Bersamin, Reyes, and Caguioa,* JJ., concur.

_________________
| Page 7 of 12
 February 14, 2017

NOTICE OF JUDGMENT

Sirs / Mesdames:

Please take notice that on February 1, 2017 a Decision, copy attached hereto, was rendered by the Supreme
Court in the above-entitled case, the original of which was received by this Office on February 14, 2017 at
10:10 a.m.

Very truly yours,

WILFREDO V. LAPITAN
Division Clerk of Court

_____________________

*
Designated as Fifth Member of the Third Division per Special Order No. 2417 dated January 4, 2017.

Rollo, pp. 43-60. Penned by Associate Justice Portia-Aliño Hormachuelos with Associate Justices
[1]

Magdangal M. De Leon and Myrna Dimaranan Vidal, concurring.

CA rollo, pp. 263-265. The application was docketed as Application No. 4-2003-0008858 and published for
[2]

opposition in the December 17, 2004 issue of the IPO's electronic gazette, id. at 45.

[3]
Hair decolorants; soaps; shampoos; hair colorants; hair dyes; hair lotion; hair waving preparations; hair
straightener cream; hair sprays; hair mousse; hair gel; hair conditioner; henna color wax; pomades for
cosmetic purpose; color treatment; active mud for hair and scalp; skin whitening cream; cleansing cream;
cleansing lotion; cream rinse; pearl cream, eye cream, skin cream, skin milk, skin lotion, cold cream, moisture
cream, moisture milk, moisture lotion, cleansing foam, cleansing milk; mineral water (for cosmetic purposes);
mask powder (for cosmetic purposes); mask cream (for cosmetic purposes); roll-on; whitening roll-on;
deodorants for personal use; facial massaging cream; facial massaging powder, Declaration of Actual Use, id.
at 195.

World Intellectual Property Organization, International Classification of Goods and Services for the
[4]

Purposes of the Registration of Marks, (Nice Classification), Part II, With List of Goods and Services in Class
Order, Eight Edition, 2001. Class 3 provides:

Class 3 Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and
abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices

[5]
Rollo, pp. 44-45.

[6]
Id. at 45.

[7]
CA rollo, p. 86.

Id. Respondent alleged in its comment before the CA that its goods fell under Class 3 of the International
[8]

Classification of Goods, CA rollo, p. 606.

[9]
Rollo, pp. 44-45.

| Page 8 of 12
[10]
Id. at 45.

[11]
CA rollo, pp. 179-193.

[12]
Id. at 184-186.

[13]
Id. at 187-189.

[14]
Id. at 463-468.

[15]
CA rollo, pp. 463-468.

[16]
Rollo, p. 46.

[17]
CA rollo, pp. 479-482.

[18]
Id. at 481.

[19]
Id. at 37.

[20]
Id. at 38.

[21]
Id. at 34-35

[22]
Id. at 60-82.

[23]
Id. at 67-68.

[24]
Id. at 80.

[25]
Id. at 74-78.

[26]
Id. at 79-80.

[27]
Rollo, p. 52.

[28]
Id. at 53-54.

[29]
Id. at 54.

[30]
Id. at 54-55.

[31]
Id. at 55.

An Act Prescribing the Intellectual Property Code and Establishing the Intellectual Property Office,
[32]

Providing for its Powers and Functions, and for Other Purposes (1997).

[33]
G.R. No. 166115, February 2, 2007, 514 SCRA 95.

[34]
Rollo, p. 56.

[35]
Id. at 55.

| Page 9 of 12
[36]
Id. at 57.

[37]
Id. at 57-58.

Id. at 58, citing Rule 600 of the Rules and Regulations on Trademarks, Service Marks, Tradenames and
[38]

Marked or Stamped Containers.

Id. at 58-59, citing Rule 1102 of the Rules and Regulations on Trademarks, Service Marks, Tradenames
[39]

and Marked or Stamped Containers and Sections 7.1 and 10.1 of RA 8293.

[40]
Id. at 11-36.

[41]
Id. at 21.

[42]
Id. at 21-22.

[43]
Id. at 22.

[44]
Id.

[45]
Id. Citation omitted.

[46]
Rollo, pp. 22-23.

[47]
Id. at 23-28.

[48]
Id. at 24.

[49]
Id. at 25-26.

[50]
Id. at 26.

[51]
Id. at 29.

[52]
Id.

[53]
Rollo, p. 30.

[54]
Id. at 31-32.

[55]
Id. at 34.

[56]
Id. at 63-80.

[57]
Id. at 66-74.

[58]
Id. at 67.

In its comment, respondent claimed that as early as 1946, it sought registration of its mark in countries
[59]

such as Canada, Russia, India, Indonesia, Korea, Singapore, Taiwan, Thailand, Australia, and through the
Madrid Protocol, Algeria, Germany, Austria, Benelux, Bosnia, Egypt, Macedonia, Hungary, Italy, Liechtenstein,
Morocco, Monaco, Korea, Romania, San Marino, Switzerland, Vietnam, Yugoslavia, Bulgaria, Poland,
Portugal and Spain, id. at 76.

| Page 10 of 12
[60]
Id. at 74-75.

[61]
Id. at 76.

[62]
Id. at 77.

[63]
Office of the Ombudsman v. Capulong, G.R. No. 201643, March 12, 2014, 719 SCRA 209, 218.

[64]
Leus v. St. Scholastica's College Westgrove, G.R. No. 187226, January 28, 2015, 748 SCRA 378, 397.

Great White Shark Enterprises, Inc. v. Caralde, Jr., G.R. No. 192294, November 21, 2012, 686 SCRA 201,
[65]

207.

Id., citing McDonald's Corporation v. L.C. Big Mak Burger, Inc., G.R. No. 143993, August 18, 2004, 437
[66]

SCRA 10, 26.

[67]
G.R. No. 154342, July 14, 2004, 434 SCRA 473.

Id. at 504. We note that while in Mighty Corporation, likelihood of confusion was discussed in relation to
[68]

trademark infringement, the concept is similarly applicable to an application for trademark registration under
Section 123.1(d). Thus, in Great White Shark Enterprises, Inc. v. Caralde, Jr., supra note 65, which originated
from a trademark application case, we discussed the dominancy test and holistic test as modes of
determining similarity or likelihood of confusion and consequently, determining whether a mark is capable of
registration under Section 123.1(d).

[69]
Supra note 67 at 506.

[70]
G.R. No. 100098, December 29, 1995, 251 SCRA 600.

[71]
Id. at 614.

Skechers, US.A., Inc. v. Inter Pacific Industrial Trading Corp., G.R. No. 164321, March 28, 2011, 646
[72]

SCRA 448, 455-456, citing Prosource International, Inc. v. Horphag Research Management SA, G.R. No.
180073, November 25, 2009, 605 SCRA 523, 531; McDonald's Corporation v. Maclay Fastfood Corporation,
supra note 33 at 106; and McDonald's Corporation v. L.C. Big Mak Burger, Inc., G.R. No. 143993, August 18,
2004, 437 SCRA 10, 32.

Skechers, U.S.A., Inc. v. Inter Pacific Industrial Trading Corp., supra at 456; Philip Morris, Inc. v. Fortune
[73]

Tobacco Corporation, G.R. No. 158589, June 27, 2006, 493 SCRA 333, 357.

[74]
G.R. No. 198889, January 20, 2016, 781 SCRA 424.

[75]
G.R. No. 143993, August 18, 2004, 437 SCRA 10.

[76]
95 Phil. 1 (1954).

[77]
G.R. No. 112012, April 4, 2001, 356 SCRA 207.

[78]
Dermaline, Inc. v. Myra Pharmaceuticals, Inc., G.R. No. 190065, August 16, 2010, 628 SCRA 356, 367.

[79]
Supra note 74 at 471.

[80]
CA rollo, p. 36.

| Page 11 of 12
[81]
Rollo, p. 45.

[82]
G.R. No. L-20675, March 31, 1966, 16 SCRA 495.

[83]
Id. at 501.

[84]
Rollo, pp. 74-75.

Id. at 22. The mark GIN LANE for goods under Class 3 was registered on January 15, 2007 but was
[85]

eventually removed from register for non-use. See the Philippine Trademark Database,
<http://www.wipo.int/branddb/ph/en/>.

[86]
Supra note 65.

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