Emerald Garment VS Ca

EMERALD GARMENT VS CA goods or services, or identity of such business; or
reproduce, counterfeit, copy or colorably imitable any

such mark or trade-name and apply such reproduction,
FACTS: counterfeit, copy, or colorable imitation to labels, signs,
prints, packages, wrappers, receptacles or advertisements
Private respondent H.D. Lee Co., Inc., a foreign intended to be used upon or in connection with such
corporation, filed with the BPTTTa Petition for goods, business or services; shall be liable to a civil
Cancellation of Registration No. SR 5054 for the action by the registrant for any or all of the remedies
trademark “STYLISTIC MR. LEE” used on clothing and herein provided.
lingerie issued in the name of petitioner Emerald
Garment Manufacturing Corp., a domestic corporation In determining whether colorable imitation exists,
organized and existing under Philippine laws. jurisprudence has developed two kinds of tests — the
Dominancy Test and the Holistic Test.
Petitioner contended that its trademark was entirely and
unmistakably different from that of private respondent As its title implies, the test of dominancy focuses on the
and that its certificate of registration was legally and similarity of the prevalent features of the competing
validly granted. trademarks which might cause confusion or deception
and thus constitutes infringement.
The Director of Patents found private respondent to be
the prior registrant of the trademark “LEE” in the If the competing trademark contains the main or
Philippines and that it had been using said mark in the essential or dominant features of another, and confusion
Philippines. and deception is likely to result, infringement takes
place. Duplication or imitation is not necessary; nor it is
Moreover, the Director of Patents, using the test of necessary that the infringing label should suggest an
dominancy, declared that petitioner’s trademark was effort to imitate.
confusingly similar to private respondent’s mark because
“it is the word ‘Lee’ which draws the attention of the The question at issue in cases of infringement of
buyer and leads him to conclude that the goods trademarks is whether the use of the marks involved
originated from the same manufacturer. It is undeniably would be likely to cause confusion or mistakes in the
the dominant feature of the mark.” mind of the public or deceive purchasers.
Petitioner appealed to the CA which in turn affirmed the On the other side of the spectrum, the holistic test
decision of the Director of Patents. mandates that the entirety of the marks in question must
be considered in determining confusing similarity.

In determining whether the trademarks are confusingly
ISSUE: similar, a comparison of the words is not the only
Whether or not petitioner’s trademark Stylistic Mr. Lee, determinant factor. The trademarks in their entirety as
is confusingly similar with the private respondent’s they appear in their respective labels or hang tags must
trademark Lee or Lee-Rider, Lee-Leens and Lee-Sures. 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
RULING:
may draw his conclusion whether one is confusingly
The pertinent provision of R.A. No. 166 (Trademark similar to the other
Law) states thus:
Applying the foregoing tenets to the present controversy
Sec. 22. Infringement, what constitutes. — Any person and taking into account the factual circumstances of this
who shall use, without the consent of the registrant, any case, we considered the trademarks involved as a whole
reproduction, counterfeit, copy or colorable imitation of and rule that petitioner’s “STYLISTIC MR. LEE” is not
any registered mark or trade-name in connection with confusingly similar to private respondent’s “LEE”
the sale, offering for sale, or advertising of any goods, trademark.
business or services on or in connection with which such
Petitioner’s trademark is the whole “STYLISTIC MR.
use is likely to cause confusion or mistake or to deceive
LEE.” Although on its label the word “LEE” is
purchasers or others as to the source or origin of such
prominent, the trademark should be considered as a
whole and not piecemeal. The dissimilarities between
the two marks become conspicuous, noticeable and
substantial enough to matter especially in the light of the
following variables that must be factored in.
For lack of adequate proof of actual use of its trademark
in the Philippines prior to petitioner’s use of its own
mark and for failure to establish confusing similarity
between said trademarks, private respondent’s action for
infringement must necessarily fail.

Emerald Garment VS Ca

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EMERALD GARMENT VS CA goods or services, or identity of such business; or

reproduce, counterfeit, copy or colorably imitable any

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