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 Petitioners 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." Abyadangs proofs consisted of the following: (1) a photocopy of the packaging for his marketed fungicide bearing mark "NS D-10 PLUS"; (2) Abyadangs 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 wifes 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 Abyadangs 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

same font size as the "80 WP," its dominancy in the "D-10 80 WP" mark stands since the difference in the form does not alter its distinctive character. Applying the Dominancy Test, it cannot be gainsaid that Abyadangs "NS D-10 PLUS" is similar to Berris "D-10 80 WP," that confusion or mistake is more likely to occur. Undeniably, 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, crops, vegetables, and ornamental plants, using the same dosage and manner of application. They also belong to the same classification of goods under R.A. No. 8293. Both depictions of "D-10," as found in both marks, are similar in size, such that this portion is what catches the eye of the purchaser. Undeniably, the likelihood of confusion is present. This likelihood of confusion and mistake is made more manifest when the Holistic Test is applied, taking into consideration the packaging, for both use the same type of material (foil type) and have identical color schemes (red, green, and white); and the marks are both predominantly red in color, with the same phrase "BROAD SPECTRUM FUNGICIDE" written underneath. Considering these striking similarities, predominantly the "D-10," the buyers of both products, mainly farmers, may be misled into thinking that "NS D-10 PLUS" could be an upgraded formulation of the "D-10 80 WP." As to the Second Issue IPO, by reason of their special knowledge and expertise over matters falling under their jurisdiction, are in a better position to pass judgment on matters regarding intellectual property. Thus, their findings of fact in that regard are generally accorded great respect, if not finality by the courts, as long as they are supported by substantial evidence, even if such evidence might not be overwhelming or even preponderant. 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. Inasmuch as the ownership of the mark D-10 80 WP fittingly belongs to Berris, and because the same should not have been cancelled by the CA, 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, where such use would result in a likelihood of confusion. In determining confusion, case law has developed two (2) tests, the Dominancy Test and the Holistic or Totality Test.

The Dominancy Test focuses on the similarity of the prevalent features of the competing trademarks that might cause confusion or deception. Duplication or imitation is not even required; neither is it necessary that the label of the applied mark for registration should suggest an effort to imitate. Relative to the question on confusion of marks and trade names, jurisprudence noted two (2) types of confusion, viz: (1) confusion of goods (product confusion), where the ordinarily prudent purchaser would be induced to purchase one product in the belief that he was purchasing the other; and (2) confusion of business (source or origin confusion), where, although the goods of the parties are different, the product, the mark of which registration is applied for by one party, is such as might reasonably be assumed to originate with the registrant of an earlier product, and the public would then be deceived either into that belief or into the belief that there is some connection between the two parties, though inexistent.

Using this test, the IPO declared that both confusion of goods and service and confusion of business or of origin were apparent in both trademarks. While it is true that the two marks are presented differently, they are almost spelled in the same way, except for Dermalines mark which ends with the letter "E," and they are pronounced practically in the same manner in three (3) syllables, with the ending letter "E" in Dermalines mark pronounced silently. Thus,

Dermaline, Inc. vs. Myra Pharmaceuticals, Inc., GR No. 190065, August 16, 2010 Facts: Dermaline filed with the IPO an application to register the trademark Dermaline. Myra opposed this alleging that the trademark resembles its trademark Dermalin and will cause confusion, mistake and deception to the purchasing public. Dermalin was registered way back 1986 and was commercially used since 1977. Myra claims that despite attempts of Dermaline to differentiate its mark, the dominant feature is the term Dermaline to which the first 8 letters were identical to that of Dermalin. The pronunciation for both is also identical. Further, both have 3 syllables each with identical sound and appearance.

when an ordinary purchaser, for example, hears an advertisement of Dermalines applied trademark over the radio, chances are he will associate it with Myras. 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, the application should be rejected and dismissed outright, even without any opposition on the part of the owner and user of a previously registered label or trademark. Further, Dermalines stance that its product belongs to a separate and different classification from Myras products with the registered

Issue: W/N the IPO should allow the registration of the trademark Dermaline. NO

trademark does not eradicate the possibility of mistake on the part of the purchasing public to associate the former with the latter, especially considering that both classifications pertain to treatments

Held: As Myra correctly posits, it has the right under Section 147 of R.A. No. 8293 to prevent third parties from using a trademark, or similar signs or containers for goods or services, without its consent,

for the skin.

COFFEE PARTNERS, INC. v. SAN FRANCISCO COFFEE AND ROASTERY, INC., G.R. NO. 169504, March 3, 2010 [edited property block a digest] THE CASE Note: Since the topic is jurisdiction, heres 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.R. SP No. 80396. In its 15 June 2005 Decision, 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. In its 1 September 2005 Resolution, the Court of Appeals denied petitioner's motion for reconsideration and respondent's motion for partial reconsideration. FACTS o Petitioner Coffee Partners, Inc. is a local corporation engaged in the business of establishing and maintaining coffee shops in the country. business entity organized and existing under the laws of British Virgin Islands, for a non-exclusive right to operate coffee shops in the Philippines using trademarks SAN FRANCISCO COFFEE. o Respondent is a local corporation engaged in the wholesale and retail sale of coffee. usiness name SAN FRANCISCO COFFEE & ROASTERY, INC. with the Department of Trade and Industry (DTI) in June 1995. Company, Tagaytay Highlands, Fat Willys, and other coffee companies. n 1998, respondent formed a joint venture company with Boyd Coffee USA under the company name Boyd Coffee Company Philippines, Inc. (BCCPI). open a coffee shop under the name SAN FRANCISCO COFFEE in Libis, Quezon City. using the name SAN FRANCISCO COFFEE. 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, then respondent must be protected from infringement of its trade name. 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. o Petitioners use of the trademark SAN FRANCISCO COFFEE will likely cause confusion because of the exact similarity in sound, spelling, pronunciation, and commercial impression of the words which is the dominant portion of respondents trade name and petitioners trademark. -shaped figure with a cup in the center in petitioner's trademark because greater weight is given to words. o On the issue of unfair competition, the BLA-IPO absolved petitioner from liability; there was no evidence of intent to defraud on the part of petitioner.

o The Office of the Director General Intellectual Property Office (ODG-IPO) reversed the BLA-IPO.

use of the trademark "SAN FRANCISCO COFFEE" did not infringe on respondent's trade name. 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, Quezon City. faith and a prior user who had stopped using such trade name, it would be inequitable to rule in favor of the latter. o The Court of Appeals reversed the ODG-IPO decision and reinstated the decision of the BLA-IPO finding infringement. motion for partial reconsideration. ISSUE o Whether petitioners use of the trademark SAN FRANCISCO COFFEE constitutes infringement of respondents trade name SAN FRANCISCO COFFEE & ROASTERY, INC., even if the trade name is not registered with the Intellectual Property Office (IPO) -- YES. RULING o In Prosource International, Inc. v. Horphag Research Management SA, this Court laid down what constitutes infringement of an unregistered trade name, thus: Property Office; however, in infringement of trade name, the same need not be registered; or colorably imitated by the infringer; sale, offering for sale, or advertising of any goods, business or services; or the infringing mark or trade name is applied to labels, signs, prints, packages, wrappers, receptacles, or advertisements intended to be used upon or in connection with such goods, business, or services; 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; and the assignee thereof. o Clearly, 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. All that is required is that the trade name is previously used in trade or commerce in the Philippines.

McDONALDS CORPORATION v. MACJOY FASTFOOD CORPORATION G.R. No. 166115 February 2, 2007 Facts: On 14 March 1991, respondent MacJoy Fastfood Corporation, a domestic corporation engaged in the sale of fast food products in Cebu City, filed with the then Bureau of Patents, Trademarks and Technology Transfer (BPTT), now the Intellectual Property Office (IPO), an application for the registration of the

trademark "MACJOY & DEVICE" for fried chicken, chicken barbeque, burgers, fries, spaghetti, palabok, tacos, sandwiches, halo-halo and steaks under classes 29 and 30 of the International Classification of Goods. Petitioner McDonalds Corporation, filed a verified Notice of Opposition against the respondents application claiming that the trademark "MACJOY & DEVICE" so resembles its corporate logo, otherwise known as the Golden Arches or "M" design, and its marks "McDonalds," McChicken," "MacFries," etc. (hereinafter MCDONALDS marks) such that when used on identical or related goods, the trademark applied for would confuse or deceive purchasers into believing that the goods originate from the same source or origin. Also, petitioner alleged that the respondents use and adoption in bad faith of the "MACJOY & DEVICE" mark would falsely tend to suggest a connection or affiliation with petitioners restaurant services and food products, thus, constituting a fraud upon the general public and further cause the dilution of the distinctiveness of petitioners registered and internationally recognized MCDONALDS marks to its prejudice and irreparable damage. IPO ruled that the predominance of the letter "M," 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, i.e., food and ingredients of food, sustained the petitioners opposition and rejected the respondents application. (IPO used the dominancy test) IPO denied MR. CA reversed the IPO decision, ruling that there was no confusing similarity between the marks "MACJOY" and "MCDONALDS," for the ff. reasons: 1. The word "MacJoy" is written in round script while the word "McDonalds" is written in single stroke gothic; 2. The word "MacJoy" comes with the picture of a chicken head with cap and bowtie and wings sprouting on both sides, while the word "McDonalds" comes with an arches "M" in gold colors, and absolutely without any picture of a chicken; 3. The word "MacJoy" is set in deep pink and white color scheme while "McDonalds" is written in red, yellow and black color combination; 4. The faade of the respective stores of the parties are entirely different. Respondents restaurant is set also in the same bold, brilliant and noticeable color scheme as that of its wrappers, containers, cups, etc., while Petitioners restaurant is in yellow and red colors, and with the mascot of "Ronald McDonald" being prominently displayed therein."

Issue: 1. W/N the dominancy test should be applied, instead of the holistic test. 2. W/N there is a confusing similarity between MACJOY and MCDONALDS trademarks as to justify the IPOs rejection of Macjoys trademark application Ratio: 1. YES. In determining similarity and likelihood of confusion, jurisprudence has developed two tests, the dominancy test and the holistic test. The dominancy test focuses on the similarity of the prevalent features of the competing trademarks that might cause confusion or deception. In contrast, the holistic test requires the court to consider the entirety of the marks as applied to the products, including the labels and packaging, in determining confusing similarity. In recent cases with a similar factual milieu as here, the Court has consistently used and applied the dominancy test in determining confusing similarity or likelihood of confusion between competing trademarks. Under the dominancy test, 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, disregarding minor differences. Courts will consider more the aural and visual impressions created by the marks in the public mind, giving little weight to factors like prices, quality, sales outlets and market segments. Applying the dominancy test to the instant case, the Court finds that herein petitioners "MCDONALDS" and respondents "MACJOY" marks are confusingly similar with each other such that an ordinary purchaser can conclude an association or relation between the marks 2. YES. Both marks use the corporate "M" design logo and the prefixes "Mc" and/or "Mac" as dominant features. 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.e. in an arch-like, capitalized and stylized manner. It is the prefix "Mc," an abbreviation of "Mac," which visually and aurally catches the attention of the consuming public. Both trademarks are used in the sale of fastfood products. Indisputably, the respondents trademark application for the "MACJOY & DEVICE" trademark covers goods under Classes 29 and 30 of the International Classification of Goods, namely, fried chicken, chicken barbeque, burgers, fries, spaghetti, etc.

McDonalds registered trademark covers goods similar if not identical to those covered by the respondents application. Predominant features such as the "M," "Mc," and "Mac" appearing in both McDonalds marks and the MACJOY & DEVICE" easily attract the attention of would-be customers. Even non-regular customers of their fastfood restaurants would readily notice the predominance of the "M" design, "Mc/Mac" prefixes shown in both marks. Such that the common awareness or perception of customers that the trademarks McDonalds mark and MACJOY & DEVICE are one and the same, or an affiliate, or under the sponsorship of the other is not far-fetched. By reason of the respondents 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, it chose the word "MACJOY," the only logical conclusion deducible therefrom is that the respondent would want to ride high on the established reputation and goodwill of the MCDONALDs marks, which, as applied to petitioners restaurant business and food products, is undoubtedly beyond question. 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, the application should be rejected and dismissed outright, even without any opposition on the part of the owner and user of a previously registered label or trademark, this not only to avoid confusion on the part of the public, but also to protect an already used and registered trademark and an established goodwill. WHEREFORE, the instant petition is GRANTED. Accordingly, the assailed Decision and Resolution of the Court of Appeals in CA-G.R. SP NO. 57247, are REVERSED and SET ASIDE and the Decision of the Intellectual Property Office in Inter Partes Case No. 3861 is REINSTATED.

(IPO). Pending approval of this application, McDonalds introduced its Big Mac hamburger sandwiches in the Philippine market in 1981. On 1985, the PBPTT, allowed registration of the Big Mac mark in the Philippine registry based on its home registration in the US. Like its other marks, McDonalds display the Big Mac mark in its item and paraphernalia in its restaurant, and its outdoor and indoor signages. From 1982 to 1990, McDonalds spent millions in advertisement for big mac hamburger sandwich alone. Petitioner McGeorge Food Industries (Petitioner McGeorge) a domestic corporation, is McDonalds Philippine franchisee. Respondent, LC Big Mak burger inc. is a domestic corporation which operates fast food outlets and snack vans in metro manila and nearby provinces. Respondents corporations menu includes hamburger sandwiches and other food items. Respondent Francis B. Dy, Edna A. Dy, Rene B. Dy, William B. Dy, Jesus Aycardo, Araceli Aycardo, and Grace Huero are the incoporators, stockholders and directors of respondent corporation. On 1988, respondent corporation applied with the PBPTT for the registration of the Big Mak mark for its hamburger sandwiches. McDonalds opposed respondent corporations application on the ground that Big Mak was colorable imitation of its registered Big Mac mark for the same food products. McDonalds also informed respondent Francis Dy, the chairman of the board of directors of the respondent corporation, of its exclusive right to the Big Mac mark and requested him to desist from using the Big Mak mark or any similar mark. Having received no reply from respondent Dy, petitioners sued respondents in the RTC Makati for trademark infringement and unfair competition. 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. On 1990, RTC issued a writ of preliminary injunction replacing the TRO. In their answer, respondents admitted that they have been using the Big Mak burger for their fast food business. Respondents claimed, however, that McDonalds does not have an exclusive right to the Big Mac mark or to any other similar marks. Respondents point out that the Isaiyas group of corporations registered the same mark for hamburger sandwiches with the PBOTT on 1979. One Rodolfo Topacio similarly registered the same mark on 1983, prior to McDonalds registration on 1985. Alternatively, respondents claimed that they are not liable for trademark infringement and unfair competition, as the Big Mak mark they sought to register does not constitute a colorable imitation of the Big Mac mark. Respondents asserted that they did not fraudulently pass off their hamburger sandwiches as those of petitioners Big Mak hamburgers. Respondents sought damages in their counterclaim.

McDonald's Corporation and McGeorge Food Industries, Inc. vs. L.C. Big Mak Burger, Inc., Francis B. Dy, Edna A. Dy, Rene B. Dy, William B. Dy, Jesus Aycardo, Araceli Aycardo, and Grace Huerto (G.R. No. 143993, August 18, 2004, 480 Phil. 402) FACTS: Petitioner, McDonalds Corporation (McDonalds) is a corporation organized under the laws of Delaware, US. It operates, by itself or through its franchisees, a global chain of fast food restaurants. It owns a family of marks including the Big Mac mark for its double decker hamburger sandwich. McDonalds registered his trademark with the US trademark registry sometime 1979. Based on home registration, McDonalds applied for registration of the same mark in principal registry of the then Philippine Bureau of Patents, Trademark and Technology (PBPTT), now the Intellectual Property Office

In their reply, petitioners denied respondents claim that McDonalds is not the exclusive owner of the Big Mac mark. Petitioners asserted that while the Isaiyas group and Topacio did register the Big Mac mark ahead of them, the Isaiyas group did so only in the supplemental register of PBPTT and such registration does not provide any protection. McDonalds disclosed that it had acquired Topacios rights to his registration in a deed of assignment. ISSUE: Did the same acts of defendants in using the name Big Mak as a trademark or trade name in their signages, 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 provision of the law concerning unfair competition is broader and more inclusive than that the law concerning the infringement of trademark, which is more limited range, 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. Notwithstanding the distinction between an action for trademark infringement and an action for unfair competition, however, the law extends substantially the same relief to the injured party for both cases. 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. 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, popularity and the established goodwill of plaintiff McDonalds. For as stated in Section 29, a person is guilty of unfair competition who in selling his goods shall give them the general appearance, of goods of another manufacturer or dealer, either as goods themselves or in the wrapping of the packages in which they are contained, or the devices or words thereon, or in any other feature of their appearance, 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. Thus, plaintiffs have established their valid cause of action against the defendants for trademark infringement and unfair competition and for damages.

underSwiss laws and domiciled in Switzerland, filed an unverified N otice of Opposition, 3 claiming that the trademark of private respondents product is"confus ingly similar to its trademarks for coffee and coffee extracts, to wit: MASTERROAST and MASTER BLEND."Likewise, a verified Notice of Opposition was filed by Nestle Philippines, Inc., aPhilippine corporation and a licensee of Societe Des Produits Nestle S.A., againstCFCs application for registration of the trademark FLAVOR MASTER. 4 Nestle claimedthat the use, if any, by CFC of the trademark FLAVOR MASTER and its registrationwould likely cause confusion in the trade; or deceive purchasers and would falselysuggest to the purchasing public a connection in the business o f Nestle, asthe dominant word present in the three (3) trademarks is "MASTER"; or that the goodsof CFC might be mistaken as having originated from the latter. ISSUE: WON there is Trademark Infringement HELD: YES RATIO RECIDENDI: A trademark has been generally defined as "any word, name, symbol ordeviceadopted and used by a manufacturer or merchant to identify his goods anddistinguish them from those manufactured and sold by others."Colorable imitation denotes such a close or ingenious imitatio n as to becalculated to deceive ordinary persons, or such a resemblance to the original as todeceive an ordinary purchaser giving such attention as a purchaser usually gives, asto cause him to purchase the one supposing it to be the other.9 In determining if colorable imitation exists, jurisprudence has developed two kinds o f tests - theDominancy Test and the Holistic Test. 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. On the other side of thespectrum, the holistic test mandates that the entirety of the marks in question mustbe considered in determining confusing similarity. The determination of whether two trademarks are indeed c onfusingly similarmust be taken from the viewpoint of the ordinary purchasers who are, in general,undiscerningly rash in buying the more common and less exp ensive householdproducts like coffee, and are therefore less inclined to closely examine specific detailsof similarities and dissimilarities between competing products. This Court cannot agree that totality test is the one applicab le in this case.Rather, this Court believes that the dominancy test is more suitable to this case inlight of its peculiar factual milieu.If the ordinary purchaser is "undiscerningly rash" in buying such common andinexpensive household products as instant coffee, and would there fore be "lessinclined to closely examine specific details of similarities and dissimilarities" betweenthe two competing products, then it would be less likely for the ordinary purchaser tonotice that CFCs trademark FLAVOR MASTER carries the colors orange and mochawhile that of Nestles uses red and brown. The application of the totality or holistictest is improper since the ordinary purchaser would not be inclined to notice thespecific features, similarities or dissimilarities, considering that th e product is an inexpensive and common household item.

SOCIETIES AND NESTLE VS CAG.R. No. 112012 April 4, 2001 FACTS: On January 18, 1984, private respondent CFC Corporation filed with the BPTTTan application for the registration of the trademark "FLAVOR MASTER" for instantcoffee, under Serial No. 52994. The application, as a matter of due course, waspublished in the July 18, 1988 issue of the BPTTTs Official Gazette.Petitioner Societe Des Produits Nestle, S.A., a Swiss company registered

EMERALD GARMENT MANUFACTURING CORPORATION vs. HON. COURT OF APPEALS, BUREAU OF PATENTS, TRADEMARKS AND TECHNOLOGY TRANSFER and H.D. LEE COMPANY, INC. G.R. No. 100098, December 29, 1995 FACTS: On 18 September 1981, private respondent H.D. Lee Co., Inc. filed with the Bureau of Patents, Trademarks & Technology Transfer (BPTTT) a Petition for Cancellation of Registration No. SR 5054 for the trademark "STYLISTIC MR. LEE" used on skirts, jeans, blouses, socks, briefs, jackets, jogging suits, dresses, shorts, shirts and lingerie under Class 25, issued on 27 October 1980 in the name of petitioner Emerald Garment Manufacturing Corporation. Private respondent averred that petitioner's trademark "so closely resembled its own trademark, 'LEE' as previously registered and used in thePhilippines cause confusion, mistake and deception on the part of the purchasing public as to the origin of the goods. Issue: On 19 July 1988, the Director of Patents rendered a decision granting private respondent's petition for cancellation and opposition to registration. The Director of Patents, using the test of dominancy, 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. It is undeniably the dominant feature of the mark. 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", meaning, 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. HELD: The word "LEE" is the most prominent and distinctive feature of the appellant's trademark and all of the appellee's "LEE" trademarks. It is the mark which draws the attention of the buyer and leads him to conclude that the goods originated from the same manufacturer. The alleged difference is too insubstantial to be noticeable. The likelihood of confusion is further made more probable by the fact that both parties are engaged in the same line of business. Held:

Although the Court decided in favor of the respondent, 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. The dissenting opinion of Justice Padilla is more acceptable.

Fruit of the Loom vs. CA GR L-32747, 29 November 1984; Second division, Makasiar (J) Facts: Fruit of the Loom is the registrant of the trademark Fruit of the Loom, while General Garments corp.is the registrant of the trademark Fruit for Eve. Both trademarks cover clothing. In 1976,k Fruit of theLoom filed with the trial court a complaint for infringement and unfair competition against General Garments.The trial court ruled in favor of Fruit of the Loom. General Garments appealed. The appellate court reversedthe trial courts decision. Hence, the petition for review on certiorari.

Whether there was an infringement of the trademark of Fruit of the Loom.

No. The trademarks Fruit of the Loom and Fruit for Eve do not resemble each other as to confuseor deceive an ordinary purchaser. No confusion would arise in the pronunciation of the two marks. Further,the similarities of the competing trademarks are completely lost in the substantial difference in the design andgeneral appearance of their respective hang tags. For one to be confusingly similar to another, the discerningeye of the observer must focus not only on the predominant words but also on the other features appearing inthe labels.

Mighty Corporation vs ENJ Gallo Winers (GR No 154342, July 14, 2004, Corona) Facts: Respondent manufacture wines and uses the trademark Gallo for its product. On the other hand, the petitioner is a manufacturer of cigarette and also uses Gallo in its products. Issue: Is there infringement? Held: At the time the cause of action accrued in this case, the IPC was not yet enacted so the relevant laws used were the Trademark Law and the Paris Convention. The SC held that there was no infringement. The use of the respondent of the mark Gallo for its wine products was exclusive in nature. The court mentioned two types of confusion in Trademark Infringement:

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 defendants goods are then brought as the plaintiffs and its poor quality reflects badly on the plaintiffs reputation. Confusion of Business wherein the goods of the parties are different but the defendants 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 trademark is attached; (c) the likely effect on the purchaser; and (d) the registrants express or implied consent and other fair and equitable considerations. In this case, the SC employing the dominancy test, concluded that there is no likelihood of confusion. They materially differ in color scheme, art works and markings. Further, the two goods are not closely related because he products belong to different classifications, form, composition and they have different intended markets or consumers.