Neptali L. Bulilan and Maria Rois S. Tan
In resolving conflicts of marks in inter partes cases or infringement cases which necessarily involve the determination of whether the marks involved are confusingly similar, courts are consistent on only one point: each case is unique and must be decided based on the circumstances peculiar to it.
Specifically, there is no unanimity on whether the ‘dominancy’ test or the ‘holistic’ test should be applied to determine confusing similarity between marks.
The dominancy test focuses on the similarity of the main, prevalent or essential features of the competing trademarks that might cause confusion. Infringement takes place when the competing trademark contains the essential features of another. Imitation or an effort to imitate is unnecessary. The question is whether the use of the marks is likely to cause confusion or deceive purchasers.
On the other hand, the holistic test mandates that the entirety of the marks in question must be considered in determining confusing similarity.
In determining whether the trademarks are confusingly similar, the age, training and education of the usual purchaser, the nature and cost of the article, whether the article is bought for immediate consumption and the circumstances attendant to acquisition of the goods must be taken into consideration.
“The similarity to be objectionable, must be such as appears likely to mislead the ordinary intelligent buyer who has a need for and is familiar with the article.”
It bears repeating that Section 155.1 of Intellectual Property Code (RA 8293) has embodied the dominancy test. As a legislative act, Section 155.1 of RA 8293 gave more importance to the dominancy test, thereby essentially abandoning the holistic test used in cases such as Emerald Garment Manufacturing Corporation v Court of Appeals.
This objective, however, has not been accomplished since the Supreme Court has not been dogmatic on the application of the dominancy test in inter partes and trademark infringement cases.
In Diaz v People of the Phils. and Levi Strauss and Company, the Supreme Court resorted to the holistic test in resolving the likelihood of confusion. Since the case involved a trademark infringement in relation to jeans products, the Supreme Court referred to the Emerald Garment case.
The Supreme Court took notice of the “remarkable” dissimilarities between Diaz’s ‘LS Jeans Manufacturing’ trademark/jean products and Levi’s “Levi’s 501” trademark/jean products.
It considered the following factors: (1) buyers of jeans are more cautious and discriminationg and would prefer to mull over a purchase; (2) the average Filipino usually buys his/her jeans by brand just like buying beer; and (3) more credit should be given to the average purchaser.
An average purchaser is not completely unwary but is an “ordinarily intelligent buyer” or one who is “accustomed to buy, and therefor to some extent familiar with, the goods in question”. Thus, the similarity, in order to be objectionable, must be such as appears likely to mislead the ordinary intelligent buyer who has a need for and is familiar with the article that he seeks to purchase.
Furthermore, the two trademarks cater to different classes of customers and flow through different channels of trade. The customers of the Levi’s are shopping mall-goers, while those of Diaz place their orders for ‘made-to-order’ jeans at tailoring shops.
Based on the foregoing variables, the Supreme Court ruled that there is less likelihood of deception/confusion between the two trademarks.
The ‘likelihood of confusion’ is the gravamen of trademark infringement. The likelihood of confusion is a relative concept: the particular, and sometimes peculiar, circumstances of each case determine its existence. Thus, in trademark infringement cases, more than in other kinds of litigation, precedents must be evaluated in the light of each particular case.
Neptali L. Bulilan is a senior partner at Sapalo Velez Bundang & Bulilan. He can be contacted at: firstname.lastname@example.org