Intellectual Property Law

EMERALD GARMENT v. CA G.R. No. 100098 December 29, 1995 Trademark Law

FACTS:

Private respondent H.D. Lee Co., Inc., a foreign corporation, 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 clothing and lingerie issued in the name of petitioner Emerald Garment Manufacturing Corp., a domestic corporation organized and existing under Philippine laws.

Petitioner contended that its trademark was entirely and unmistakably different from that of private respondent and that its certificate of registration was legally and validly granted.

The Director of Patents found private respondent to be the prior registrant of the trademark “LEE” in the Philippines and that it had been using said mark in the Philippines.

Moreover, 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.”

Petitioner appealed to the CA which in turn affirmed the decision of the Director of Patents.

 

ISSUE:

Whether or not petitioner’s trademark Stylistic Mr. Lee, is confusingly similar with the private respondent’s trademark Lee or Lee-Rider, Lee-Leens and Lee-Sures.

 

RULING:

The pertinent provision of R.A. No. 166 (Trademark Law) states thus:

Sec. 22. Infringement, what constitutes. — Any person who shall use, without the consent of the registrant, any reproduction, counterfeit, copy or colorable imitation of any registered mark or trade-name in connection with the sale, offering for sale, or advertising of any goods, business or services on or in connection with which such use is likely to cause confusion or mistake or to deceive purchasers or others as to the source or origin of such 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, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used upon or in connection with such goods, business or services; shall be liable to a civil action by the registrant for any or all of the remedies herein provided.

In determining whether colorable imitation exists, jurisprudence has developed two kinds of tests — the Dominancy Test and the Holistic 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.

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.

x x x           x x x          x x x

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

x x x           x x x          x x x

Applying the foregoing tenets to the present controversy and taking into account the factual circumstances of this case, we considered the trademarks involved as a whole and rule that petitioner’s “STYLISTIC MR. LEE” is not confusingly similar to private respondent’s “LEE” trademark.

Petitioner’s trademark is the whole “STYLISTIC MR. LEE.” Although on its label the word “LEE” is 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.

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