Beware of sharks: similarity of marks in the Philippines
01-02-2013
Anne Mariae Celeste V. Jumadla
In a November 12, 2012 decision involving two trademarks comprising representations of a shark, the Supreme Court of the Philippines discounted confusing similarity between them upon noting their “distinct visual and aural differences”.
An opposition proceeding was lodged by Great White Shark Enterprises, Inc, a multinational corporation headed by the Australian professional golfer Greg Norman, against a local, Danilo Caralde, on the basis of the company’s ‘Greg Norman’ logo consisting of a colour representation of a shark. The opposed mark comprised another representation of a shark formed by the letters constituting the word ‘shark’.
The Bureau of Legal Affairs (BLA) and the Office of the Director General (ODG) of the Intellectual Property Office of the Philippines both found confusing similarity between the two marks. However, the Court of Appeals and the Supreme Court reversed this ruling.
The BLA found the representations of a shark to be the dominant features of both marks and “to such degree that the overall impression” is that the two marks are “strikingly similar” to each other, making confusion likely.
In affirming the BLA’s ruling, the ODG found support from a December 25, 1995 Supreme Court decision in Emerald Garment Manufacturing Corp. v Court of Appeals, which states:
“Colourable imitation refers to such similarity in form, content, words, sound, meaning, special arrangement, or general appearance of the trademark or trade name with that of the other mark or trade name in their overall presentation or in their essential, substantive and distinctive parts as would likely mislead or confuse persons in the ordinary course of purchasing the genuine article.”
The ODG found the competing marks similar as to content, word, sound and meaning; comparing the marks not only visually, but equally considering the sound and concept or idea that the marks connote, and putting emphasis on the source-identifier function of a trademark.
Similarly, the Court of Appeals considered as a crucial issue “the likelihood of confusion, mistake or deceit as to the identity, source or origin of the goods or identity of the business” resulting from the use of a mark. It likewise applied the same standard for ‘colourable imitation’ as the ODG. But unlike the latter, the court focused on form and content rather than on a concept or idea.
The court likewise observed the dominance of the shape of a shark in the competing marks. However, it did not determine confusing similarity merely by comparing the dominant features, which would have sufficed under the jurisprudential ‘dominancy test’, but went on to apply the ‘holistic test’, focusing on the entirety of the marks and comparing the differences between them with regard to:
- The sharks’ appearance;
- The colours used;
- Other features present in the opposed mark not present in the other;
- Disparity in product prices—the opposer’s mark is for products sold in dollars, while the respondent’s products are sold in pesos; and
- Place of manufacture of the goods—the opposer’s goods are imported and expensive, while respondent’s goods are locally produced and cheap.
The Supreme Court, in affirming the Court of Appeals’ ruling, similarly noted distinct visual and aural differences between the two marks, even while recognising that both marks use the shape of a shark.
To support its ruling, the Supreme Court shifted focus towards the distinguishing function of a trademark, stating that it must be “capable of identifying and distinguishing the goods of one manufacturer or seller from those of another. Apart from its commercial utility, the benchmark of trademark registrability is distinctiveness”.
The BLA, ODG and Court of Appeals’ orientation were on the traditional origin-indicator or source-identifier function of a trademark; the Supreme Court, on the other hand, focused on the distinguishing function. Thus, its main consideration in determining confusing similarity was the “distinct visual and aural differences” between the contending marks, and not the similarity of the dominant features.
This practice is supported by the IP Code of the Philippines, which defines a mark as “any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise” in contrast to a sign capable of identifying the goods of a particular manufacturer.
Anne Mariae Celeste V. Jumadla is an associate attorney at Sapalo Velez Bundang & Bulilan. She can be contacted at info@sapalovelez.com