Trademark tests; confusion of goods; confusion of business
The Dominancy Test focuses on the similarity of the prevalent features of the
competing trademarks that might cause confusion or deception.[1] It is applied
when the trademark sought to be registered contains the main, essential and
dominant features of the earlier registered trademark, and confusion or
deception is likely to result. 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. The important issue is whether the use of
the marks involved would likely cause confusion or mistake in the mind of or
deceive the ordinary purchaser, or one who is accustomed to buy, and therefore
to some extent familiar with, the goods in question.[2] Given greater
consideration are 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.[3] The test of dominancy is now explicitly
incorporated into law in Section 155.1 of R.A. No. 8293 (which is the reason
for the abandonment of the Holistic Test) which provides--
155.1. Use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark or the same container or a dominant feature thereof in connection with the sale, offering for sale, distribution, advertising of any goods or services including other preparatory steps necessary to carry out the sale of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; (emphasis supplied)
On the other hand, the Holistic Test entails a consideration of the entirety
of the marks as applied to the products, including labels and packaging, in
determining confusing similarity. The scrutinizing eye of the observer must
focus not only on the predominant words but also on the other features
appearing in both labels so that a conclusion may be drawn as to whether one
is confusingly similar to the other.[4] It must be emphasized that use of the
Holistic Test has been abandoned. (G.R. No. 228165)
Relative to the
question on confusion of marks and trade names, jurisprudence has 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.[5]
[1] Amigo Manufacturing, Inc. v. Cluett Peabody Co., Inc., 406 Phil. 905, 918 (2001).
[2] Philip Morris, Inc. v. Fortune Tobacco Corporation, supra at 359, citing Dy Buncio v. Tan Tiao Bok, 42 Phil 190, 196-197 (1921).
[3] McDonald's Corporation v. L.C. Big Mak Burger, Inc., 480 Phil. 402, 434 (2004).
[4] Mighty Corporation v. E. & J. Gallo Winery, 478 Phil. 615, 659 (2004).
[5] McDonald's Corporation v. L.C. Big Mak Burger, Inc., supra at 428, citing Sterling Products International, Incorporated v. Farbenfabriken Bayer Aktiengesellschaft, et al., 137 Phil 838, 852 (1969).