Somboonsakdikul vs. Orlane S.A.

816 SCRA 404; G.R. No. 188996; February 1, 2017

FACTS:
On September 23, 2003, petitioner Seri Somboonsakdikul (petitioner) filed an application
for registration of the mark “LOLANE” with the Intellectual Property Office (IPO) for goods
classified under Class 3 (personal care products) of the International Classification of Goods and
Services for the Purposes of the Registration of Marks (International Classification of Goods).
Orlane S.A. (respondent) filed an opposition to petitioner’s application, on the ground that the
mark “LOLANE” was similar to “ORLANE” in presentation, general appearance and
pronunciation, and thus would amount to an infringement of its mark.
In his answer, petitioner denied that the “LOLANE” mark was confusingly similar to the
mark “ORLANE.” He averred that he was the lawful owner of the mark “LOLANE” which he
has used for various personal care products sold worldwide. He alleged that the first worldwide
use of the mark was in Vietnam on July 4, 1995. Petitioner also alleged that he had continuously
marketed and advertised Class 3 products bearing “LOLANE” mark in the Philippines and in
different parts of the world and that as a result, the public had come to associate the mark with
him as provider of quality personal care products.
Petitioner maintained that the marks were distinct and not confusingly similar either
under the dominancy test or the holistic test. The mark “ORLANE” was in plain block upper
case letters while the mark “LOLANE” was printed in stylized word with the second letter ‘L’
and the letter ‘A’ co-joined. Furthermore, the similarity in one syllable would not automatically
result in confusion even if used in the same class of goods since his products always appear with
Thai characters while those of ORLANE always had the name Paris on it. The two marks are
also pronounced differently. Also, even if the two marks contained the word ‘LANE’ it would
not make them confusingly similar since the IPO had previously allowed the coexistence of
trademarks containing the syllable “joy” or “book” and that he also had existing registrations and
pending applications for registration in other countries.
The Bureau of Legal Affairs (BLA) rejected petitioner’s application finding that
respondent’s application was filed, and its mark registered, much earlier. The BLA ruled that
there was likelihood of confusion: (1) “ORLANE” and “LOLANE” both consisted of six letters
with the same last four letters — ‘LANE;’ (2) both were used as label for similar products; (3)
both marks were in two syllables and that there was only a slight difference in the first syllable;
and (4) both marks had the same last syllable so that if these marks were read aloud, a sound of
strong similarity would be produced and such would likely deceive or cause confusion to the
public as to the two trademarks.
Petitioner filed a motion for reconsideration but it was denied by the Director of the BLA.
The BLA ruled that the law did not require the marks to be so identical as to produce actual error
or mistake as the likelihood of confusion was enough. The BLA also found that the dominant
feature in both marks was the word ‘LANE;’ and that the marks had a strong visual and aural
resemblance that could cause confusion to the buying public. This resemblance was amplified by
the relatedness of the goods.
On appeal, the Director General of the IPO affirmed the decision of the BLA Director.
Despite the difference in the first syllable, there was a strong visual and aural resemblance since
the marks had the same last four letters. Also, the mark “ORLANE” is a fanciful mark invented
by the owner for the sole purpose of functioning as a trademark and is highly distinctive. Thus,
the fact that two or more entities would accidentally adopt an identical or similar fanciful mark
was too good to be true especially when they dealt with the same goods or services.
 Thus, petitioner filed a petition for review before the Court of Appeals (CA) arguing that
there is no confusing similarity between the two marks however it was denied. The CA ruled that
there exists colorable imitation of respondent’s mark by “LOLANE.”

ISSUE:
Whether or not there is confusing similarity between “ORLANE” and “LOLANE” which
would bar the registration of “LOLANE” before the IPO.

HELD:
No. There is no colorable imitation between the marks “LOLANE” and “ORLANE”
which would lead to any likelihood of confusion to the ordinary purchasers.
In determining colorable imitation, the Court has used either the dominancy test or the
holistic or totality test. The dominancy test considers the similarity of the prevalent or dominant
features of the competing trademarks that might cause confusion, mistake, and deception in the
mind of the purchasing public. More consideration is given on the aural and visual impressions
created by the marks on the buyers of goods, giving little weight to factors like prices, quality,
sales outlets, and market segments. On the other hand, the holistic test considers the entirety of
the marks as applied to the products, including the labels and packaging, in determining
confusing similarity. The focus is not only on the predominant words but also on the other
features appearing on the labels.
While there are no set rules as what constitutes a dominant feature with respect to
trademarks applied for registration, usually, 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. However, based on the distinct visual
and aural differences between “LOLANE” and “ORLANE,” the Court find that there is no
confusing similarity between the two marks. The suffix ‘LANE’ is not the dominant feature of
petitioner’s mark. Neither can it be considered as the dominant feature of “ORLANE” which
would make the two marks confusingly similar.
First, an examination of the appearance of the marks would show that there are noticeable
differences in the way they are written or printed. As correctly argued by petitioner in his answer
before the BLA, there are visual differences between “LOLANE” and “ORLANE” since the
mark “ORLANE” is in plain block upper case letters while the mark “LOLANE” was rendered
in stylized word with the second letter ‘L’ and the letter ‘A’ co-joined.
Second, as to the aural aspect of the marks, “LOLANE” and “ORLANE” do not sound
alike. The appeals to the ear in pronouncing “ORLANE” and “LOLANE” are dissimilar. The
first syllables of each mark, ‘OR’ and ‘LO’ do not sound alike, while the proper pronunciation of
the last syllable ‘LANE’ — “LEYN” for “LOLANE” and “LAN” for “ORLANE,” being of
French origin, also differ. The Court takes exception to the generalizing statement of the Director
General, which was affirmed by the CA, that Filipinos would invariably pronounce “ORLANE”
as “ORLEYN.” This is another finding of fact which has no basis, and thus, justifies our reversal
of the decisions of the IPO Director General and the CA. While there is possible aural similarity
when certain sectors of the market would pronounce “ORLANE” as “ORLEYN,” it is not also
impossible that some would also be aware of the proper pronunciation — especially since, as
respondent claims, its trademark “ORLANE” has been sold in the market for more than 60 years
and in the Philippines, for more than 40 years.
Respondent failed to show proof that the suffix ‘LANE’ has registered in the mind of
consumers that such suffix is exclusively or even predominantly associated with “ORLANE”
products. Notably and as correctly argued by petitioner, the IPO previously allowed the
registration of the mark “GIN LANE” for goods also falling under Class 3, i.e., perfume,
cologne, skin care preparations, hair care preparations and toiletries.