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SERI SOMBOONSAKDIKUL v. ORLANE S.A.

FACTS:

The petitioner filed an application to register the mark LOLANE for its personal care products. The respondent opposed the application, claiming that the mark was similar to their mark ORLANE and would amount to an infringement. The Bureau of Legal Affairs rejected petitioner's application, finding a likelihood of confusion between the marks. Petitioner's motion for reconsideration was denied, and the Director General of the IPO affirmed the BLA's decision. Petitioner then filed a petition for review before the Court of Appeals.

The petitioner argued before the CA that there is no confusing similarity between the two marks. The petitioner also pointed out that the IPO had previously allowed a mark GIN LANE under Registration No. 4-2004-006914 which also involved products under Class 3. The petitioner argued that the IPO failed to recognize relevant foreign judgments, i.e., the Australian Registrar of Trademarks and the IPO of Singapore, which ruled that there was no confusing similarity between the marks LOLANE and ORLANE. Lastly, the petitioner argued that the Director General should have deferred to the findings of the Trademark Examiner.

The CA denied the petition and held that there exists a colorable imitation of respondent's mark by LOLANE. The CA accorded due respect to the Decision of the Director General and ruled that there was substantial evidence to support the IPO's findings of fact. The CA applied the dominancy test and ruled that LOLANE's mark is confusingly or deceptively similar to ORLANE. The CA also rejected petitioner's assertion that his products' price and market eliminates the likelihood of confusion. The CA did not consider the ruling of the IPOs in Australia, South Africa, Thailand, and Singapore. Finally, the CA did not give merit to petitioner's contention that the Director General should have deferred to the findings of the Trademark Examiner.

This case involves a dispute between two cosmetic companies over the similarity of their trademarks. Petitioner filed an application with the IPO to register the trademark LOLANE for its hair products. Respondent opposed the registration of LOLANE based on its earlier registration and continuous use of the trademark ORLANE for its own cosmetic products in the Philippines.

Petitioner argues that the trademarks ORLANE and LOLANE are not confusingly similar, as the pronunciation of ORLANE is "OR-LAN" and not "OR-LEYN." Petitioner also asserts that the differences in the marks' appearance should be considered in determining confusing similarity. Petitioner further contends that consumers are likely to be more careful in their purchase decisions for personal hygiene products, considering their direct effects on well-being and safety, and the price difference between ORLANE and LOLANE products. Lastly, petitioner contests the lack of evidence presented by the respondent to prove that ORLANE is actually being used in commercial sales in the Philippines.

Respondent argues that ORLANE is entitled to protection under Philippine law as it is registered with the IPO and has been used in the market for over 60 years. Respondent claims to have established an image and reputation for quality beauty products and asserts that allowing petitioner's registration would prejudice its rights over its registered trademark. Respondent also maintains that decisions of administrative agencies like the IPO should not be disturbed by the courts unless there is a showing of grave abuse of discretion.

ISSUES:

  1. Whether there is colorable imitation between the marks LOLANE and ORLANE that would lead to likelihood of confusion to the ordinary purchasers.

  2. Whether there is confusing similarity between the marks "LOLANE" and "ORLANE" based on the dominancy test.

  3. Whether there are noticeable visual and aural differences between the marks.

  4. Whether the suffix "LANE" is the dominant feature of the marks.

  5. Whether there are visual and aural similarities between the marks "LOLANE" and "ORLANE".

  6. Whether the mark "LOLANE" is entitled to registration.

RULING:

  1. The court finds that there is no colorable imitation between the marks LOLANE and ORLANE that would lead to likelihood of confusion to the ordinary purchasers.

  2. No. The Court finds that there is no confusing similarity between the marks "LOLANE" and "ORLANE" based on the dominancy test.

  3. Yes. There are noticeable visual and aural differences between the marks. The mark "ORLANE" is in plain block uppercase letters while the mark "LOLANE" is rendered in a stylized word with the second letter "L" and the letter "A" co-joined. Moreover, the aural aspect of the marks, considering their pronunciation, also differs.

  4. No. The Court finds that the suffix "LANE" is not the dominant feature of the marks "LOLANE" and "ORLANE." The visual and aural differences between the marks outweigh the similarity in the last syllable. Additionally, there is no evidence to show that the suffix "LANE" has registered in the mind of the consumers as exclusively or predominantly associated with "ORLANE" products.

  5. The Supreme Court found that there were distinct visual and aural differences between the marks "LOLANE" and "ORLANE" using the dominancy test. Therefore, the Court did not need to discuss the other contentions raised by the petitioner regarding the appearance of the marks together with the packaging, nature of the goods, and price difference, as well as the applicability of foreign judgments.

  6. The Supreme Court ruled that the mark "LOLANE" is entitled to registration. The Decision of the Court of Appeals was reversed and set aside, and the petitioner's application for registration of the mark "LOLANE" for goods under Class 3 of the International Classification of Goods was granted.

PRINCIPLES:

  • The courts may not be bound by the findings of fact of administrative agencies when there is absolutely no evidence in support thereof or when there is a clear showing that the administrative agency acted arbitrarily or with grave abuse of discretion.

  • A trademark must be distinctive to be capable of registration.

  • The registrability of a trademark is governed by Section 123 of RA 8293.

  • Likelihood of confusion is a requirement for finding trademark infringement.

  • The most essential requirement for the determination of likelihood of confusion is the existence of resemblance between the trademarks or colorable imitation.

  • Colorable imitation does not require identity or literal copying, but refers to a close or ingenious imitation that is likely to deceive ordinary purchasers.

  • The dominancy test and the holistic or totality test are used to determine colorable imitation in trademark cases.

  • The dominancy test, which considers the aural, visual, and connotative and overall impressions created by the marks, is used to determine confusing similarity between trademarks.

  • The dominant feature of a mark is the first word/figure that catches the eyes or appears prominently to the eyes and ears.

  • To determine the dominant feature of a mark, what are taken into account are signs, color, design, peculiar shape or name, or some special, easily remembered earmarks of the brand that readily attracts and catches the attention of the ordinary consumer.

  • Resemblance between the marks is a separate requirement from the requirement of similarity of the goods to which the trademarks are attached.

  • The dominancy test is used to determine the similarity or dissimilarity of trademarks, focusing on the overall impression it creates on the consumers.

  • In trademark cases, registration may be granted if there are distinct visual and aural differences between the marks, even if the nature of the goods and packaging may be similar.

  • The Supreme Court may reverse and set aside the decision of the Court of Appeals if it finds errors or misapplication of the law or factual findings.