Victorio P.

Diaz vs People of the Philippines and Levi Strauss [Phils.], Inc.

G.R. No. 180677 February 18, 2003
Facts:
Levi Strauss Philippines, Inc. (Levi’s Philippines) is a licensee of Levi’s. After receiving information that Diaz was selling
counterfeit LEVI’S 501 jeans in his tailoring shops in Almanza and Talon, Las Piñas City, Levi’s Philippines hired a private
investigation group to verify the information. Surveillance and the purchase of jeans from the tailoring shops of Diaz
established that the jeans bought from the tailoring shops of Diaz were counterfeit or imitations of LEVI’S 501.
Armed with search warrants, NBI agents searched the tailoring shops of Diaz and seized several fake LEVI’S 501 jeans from
them. Levi’s Philippines claimed that it did not authorize the making and selling of the seized jeans; that each of the jeans
were mere imitations of genuine LEVI’S 501 jeans by each of them bearing the registered trademarks, like the arcuate
design, the tab, and the leather patch; and that the seized jeans could be mistaken for original LEVI’S 501 jeans due to the
placement of the arcuate, tab, and two-horse leather patch.
On his part, Diaz admitted being the owner of the shops searched, but he denied any criminal liability . Diaz stated
that he did not manufacture Levi’s jeans, and that he used the label “LS Jeans Tailoring” in the jeans that he made
and sold; that the label “LS Jeans Tailoring” was registered with the Intellectual Property Office; that his shops received
clothes for sewing or repair; that his shops offered made-to-order jeans, whose styles or designs were done in
accordance with instructions of the customers; that since the time his shops began operating in 1992, he had
received no notice or warning regarding his operations ; that the jeans he produced were easily recognizable because
the label “LS Jeans Tailoring,” and the names of the customers were placed inside the pockets, and each of the jeans had an
“LSJT” red tab; that “LS” stood for “Latest Style;” and that the leather patch on his jeans had two buffaloes, not two
horses.
Issue:
Whether there exists a likelihood of confusion between the trademarks of Levi’s and Diaz.
 Held:
The Court held, through the application of the holistic test, that there was no likelihood of confusion between the
trademarks involved.
Accordingly, the jeans trademarks of Levi’s Philippines and Diaz must be considered as a whole in determining the
likelihood of confusion between them. The maong pants or jeans made and sold by Levi’s Philippines, which included LEVI’S
501, were very popular in the Philippines. The consuming public knew that the original LEVI’S 501 jeans  were under a
foreign brand and quite expensive. Such jeans could be purchased only in malls or boutiques as ready-to-wear items, and
were not available in tailoring shops like those of Diaz’s as well as not acquired on a “made-to-order” basis. Under the
circumstances, the consuming public could easily discern if the jeans were original or fake LEVI’S 501, or were
manufactured by other brands of jeans.
Diaz used the trademark “LS JEANS TAILORING” for the jeans he produced and sold in his tailoring shops. His trademark
was visually and aurally different from the trademark “LEVISTRAUSS & CO” appearing on the patch of original jeans under
the trademark LEVI’S 501. The word “LS” could not be confused as a derivative from “LEVI STRAUSS” by virtue of the “LS”
being connected to the word “TAILORING”, thereby openly suggesting that the jeans bearing the trademark “LS JEANS
TAILORING” came or were bought from the Tailoring shops of Diaz, not from the malls or boutiques selling original LEVI’S
501 jeans to the consuming public.
The prosecution also alleged that the accused copied the “two horse design” of the petitioner-private complainant but the
evidence will show that there was no such design in the seized jeans. Instead, what is shown is “buffalo design.” Again, a
horse and a buffalo are two different animals which an ordinary customer can easily distinguish. The prosecution further
alleged that the red tab was copied by the accused. However, evidence will show that the red tab used by the private
complainant indicates the word “LEVI’S” while that of the accused indicates the letters “LSJT” which means LS JEANS
TAILORING. Again, even an ordinary customer can distinguish the word LEVI’S from the letters LSJT. In terms of classes of
customers and channels of trade, the jeans products of the private complainant and the accused cater to different classes
of customers and flow through the different channels of trade. The customers of the private complainant are mall goers
belonging to class A and B market group– while that of the accused are those who belong to class D and E market who can
only afford Php 300 for a pair of made-to-order pants.
 ZUNECA PHARMACEUTICAL, AKRAM ARAIN AND/OR VENUSARAIN, M.D., AND STYLE OF ZUNECA PHARMACEUTICAL v.
NATRAPHARM, INC.
G.R. No. 211850, 08 September 2020, EN BANC (Caguioa, J.)
DOCTRINE OF THE CASE
While Natrapharm is the owner of the “ZYNAPSE” mark, this does not, however, automatically mean that its complaint
against Zuneca should be granted. This is because Sec. 159.1 of the IP Code clearly contemplates that a prior user in good
faith may continue to use its mark even after the registration of the mark by the first-to-file registrant in good faith, subject
to the condition that any transfer or assignment of the mark by the prior user in good faith should be made together with
the enterprise or business or with that part of his enterprise or business in which the mark is used. The mark cannot be
transferred independently of the enterprise and business using it.
From the provision itself, it can be gleaned that while the law recognizes the right of the prior user in good faith to the
continuous use of its mark for its enterprise or business, it also respects the rights of the registered owner of the mark by
preventing any future use by the transferee or assignee that is not in conformity with Section 159.1 of the IP Code.
FACTS
Natrapharm, Inc. (Natrapharm) filed with the Regional Trial Court (RTC) a Complaint against Zuneca Pharmaceutical, Akram
Arain and/or Venus Arain, M.D., and Style of Zuneca Pharmaceutical (Zuneca) for Injunction, Trademark Infringement,
Damages, and Destruction, alleging that Zuneca's "ZYNAPS" is confusingly similar to its registered trademark "ZYNAPSE"
and the resulting likelihood of confusion is dangerous because the marks cover medical drugs intended for different types
of illnesses.
In its Answer, Zuneca claims that as the prior user, it had already owned the “ZYNAPS” mark prior to Natrapharm’s
registration of its confusingly similar mark, thus, its rights prevail over the rights of Natrapharm.
The RTC ruled that the first filer in good faith defeats a first user in good faith who did not file any application for
registration. Hence, Natrapharm, as the first registrant, had trademark rights over "ZYNAPSE" and it may prevent others,
including Zuneca, from registering an identical or confusingly similar mark. Moreover, the RTC ruled that there was
insufficient evidence that Natrapharm had registered the mark "ZYNAPSE" in bad faith. Further, following the use of the
dominancy test, the RTC likewise observed that "ZYNAPS" was confusingly similar to "ZYNAPSE." To protect the public from
the disastrous effects of erroneous prescription and mistaken dispensation, the confusion between the two drugs must be
eliminated. On appeal, the Court of Appeals (CA) affirmed the Decision of the RTC. Hence, the instant petition for review on
Certiorari.
ISSUES
(1) How is ownership over a trademark acquired?
(2) Assuming that both parties owned their respective marks, do the rights of the first-to-file registrant Natrapharm defeat
the rights of the prior user Zuneca?
(3) If so, should Zuneca be held liable for trademark infringement?
RULING
(1) Upon the effectivity of the IP Code on 01 January 1998, the manner of acquiring ownership of trademarks is acquired
through registration, as expressed in Section 122 of the IP Code. To clarify, while it is the fact of registration which confers
ownership of the mark and enables the owner thereof to exercise the rights expressed in Section 147 of the IP Code, the
first-to-file rule nevertheless prioritizes the first filer of the trademark application and operates to prevent any subsequent
applicants from registering marks described under Section 123.1 (d) of the IP Code.
Reading together Sections 122 and 123.1 (d) of the IP Code, a registered mark or a mark with an earlier filing or priority
date generally bars the future registration of — and the future acquisition of rights in — an identical or a confusingly
similar mark, in respect of the same or closely-related goods or services, if the resemblance will likely deceive or cause
confusion.
At present, prior use no longer determines the acquisition of ownership of a mark. To emphasize, for marks that are first
used and/or registered after the effectivity of the IP Code, ownership is no longer dependent on the fact of prior use in
light of the adoption of the first-to-file rule and the rule that ownership is acquired through registration.
(2) NO. The presence of bad faith alone renders void the trademark registrations. Accordingly, it follows as a matter of
consequence that a mark registered in bad faith shall be cancelled by the IPO or the courts, as the case may be, after the
appropriate proceedings.
This concept of bad faith, however, does not only exist in registrations. To the mind of the Court, the definition of bad faith
as knowledge of prior creation, use, and/or registration by another of an identical or similar trademark is also applicable in
the use of trademarks without the benefit of registration. Accordingly, such bad faith use is also appropriately punished in
the IP Code as can be seen in its unfair competition provisions. It is apparent, therefore, that the law intends to deter
registrations and use of trademarks in bad faith.
Concurrent with these aims, the law also protects prior registration and prior use of trademarks in good faith. Being the
first-to-file registrant in good faith allows the registrant to acquire all the rights in a mark. This can be seen in Section 122
vis-à-vis the cancellation provision in Section 155.1 of the IP Code. Reading these two provisions together, it is clear that
when there are no grounds for cancellation — especially the registration being obtained in bad faith or contrary to the
provisions of the IP Code, which render the registration void — the first to-file registrant acquires all the rights in a mark. In
the same vein, prior users in good faith are also protected in the sense that they will not be made liable for trademark
infringement even if they are using a mark that was subsequently registered by another person. This is expressed in Section
159.1 of the IP Code.
At this point, it is important to highlight that the following facts were no longer questioned by both parties:
(a) Natrapharm is the registrant of the "ZYNAPSE" mark which was registered with the IPO on September 24, 2007;
(b) Zuneca has been using the "ZYNAPS" brand as early as 2004; and (c) “ZYNAPSE" and "ZYNAPS" are confusingly similar
and both are used for medicines.
In light of these settled facts, it is clear that Natrapharm is the first-to-file registrant of "ZYNAPSE." Zuneca, on the other
hand, is a prior user in good faith of a confusingly similar mark, "ZYNAPS." What remains contentious is Natrapharm's
good or bad faith as Zuneca contends that the mark was registered in bad faith by Natrapharm.
The rule is that when the registration was not obtained in bad faith or contrary to the provisions of the IP Code, the first-
to-file registrant in good faith acquires all the rights in a mark. Here, Natrapharm was not shown to have been in bad
faith. Thus, it is considered to have acquired all the rights of a trademark owner under the IP Code upon the registration
of the "ZYNAPSE" mark.
(3) NO. While Natrapharm is the owner of the “ZYNAPSE” mark, this does not, however, automatically mean that its
complaint against Zuneca should be granted. This is because Sec. 159.1 of the IP Code clearly contemplates that a prior
user in good faith may continue to use its mark even after the registration of the mark by the first-to-file registrant in good
faith, subject to the condition that any transfer or assignment of the mark by the prior user in good faith should be made
together with the enterprise or business or with that part of his enterprise or business in which the mark is used. The mark
cannot be transferred independently of the enterprise and business using it.
In any event, the application of Section 159.1 of the IP Code necessarily results in at least two entities — the unregistered
prior user in good faith or their assignee or transferee, on one hand; and the first-to-file registrant in good faith on the
other — concurrently using identical or confusingly similar marks in the market, even if there is likelihood of confusion.
While this situation may not be ideal, the Court is constrained to apply Section 159.1 of the IP Code as written.
To further reduce therefore, if not totally eliminate, the likelihood of switching in this case, the Court hereby orders the
parties to prominently state on the packaging of their respective products, in plain language understandable by people with
no medical background or training, the medical conditions that their respective drugs are supposed to treat or alleviate and
a warning indicating what "ZYNAPS" is not supposed to treat and what "ZYNAPSE" is not supposed to treat, given the
likelihood of confusion between the two.
 
SUPERIOR COMMERCIAL ENTERPRISES, INC. V. KUNNAN ENTERPRISES LTD. AND SPORTS CONCEPT & DISTRIBUTOR, INC.
DOCTRINE:To establish trademark infringement, the following elements must be proven:
1. The validity of the plaintiff’s mark;
2. The plaintiff’s ownership of the mark; and
3. The use of the mark or its colorable imitation by the alleged infringer results in likelihood confusion.
FACTS:
SUPERIOR filed a complaint for trademark infringement and unfair competition with preliminary injunction against
KUNNAN and SPORTS CONCEPT with the RTC.
SUPERIOR claimed to be the owner of the trademarks, trading styles, company names and business names KENNEX,
KENNEX & DEVICE, PRO KENNE and PRO-KENNEX (disputed trademarks).
In its defense, Kunnan maintained that SUPERIOR was a mere distributor from fraudulently registered the trademarks in its
name.
Kunnan appointed Superior as its exclusive distributor in the Philippines under a Distributorship Agreement which states
that: “Kunnan intends to acquire ownership of the Kennex Trademark registered by Superior Commercial in the Philippines.
Superior Commercial is desirious of being appointed as the sole distributor of Kunnan products in the Philippines.”  
Upon termination of distributorship agreement with Superior, Kunnan appointed Sports Concept as its new distributor.
Kunnan caused the publication of a Notice and Warning in the Manila Bulletin’s issue. This notice prompted Superior to file
its Complaint for Infringement of Trademark and Unfair Competition against Kunnan.
Prior to and during the pendency of the infringement and unfair competition case before the RTC, Kunnan filed with the
Bureau of Patents, Trademarks and Technology Transfer separate Petitions for the Cancellation of Registration Trademarks
involving the Kennex and Pro Kennex trademarks.
Kunnan filed the petition on the ground that Superior fraudulently registered and appropriated the disputed trademarks as
mere distributor and not as lawful owner.
RTC: issued its decision holding KUNNAN liable for trademark infringement and unfair competition.
CA: ruled that SUPERIOR was a mere distributor and had no right to the registration of the disputed trademarks since the
right to register a trademark is based on ownership.
ISSUES:
A. WON THERE WAS INFRINGEMENT
B. WON THERE WAS UNFAIR COMPETITION
HELD:
A. NONE. Thus, we have previously held that the cancellation of registration of a trademark has the effect of depriving the
registrant of protection from infringement from the moment judgment or order of cancellation has become final.
In the present case, by operation of law, specifically Section 19 of RA 166, the trademark infringement aspect of
SUPERIOR’s case has been rendered moot and academic in view of the finality of the decision in the Registration
Cancellation Case. In short, SUPERIOR is left without any cause of action for trademark infringement since the cancellation
of registration of a trademark deprived it of protection from infringement from the moment judgment or order of
cancellation became final. To be sure, in a trademark infringement, title to the trademark is indispensable to a valid cause
of action and such title is shown by its certificate of registration. With its certificates of registration over the disputed
trademarks effectively cancelled with finality, SUPERIOR’s case for trademark infringement lost its legal basis and no longer
presented a valid cause of action.
Even assuming that SUPERIOR’s case for trademark infringement had not been rendered moot and academic, there can be
no infringement committed by KUNNAN who was adjudged with finality to be the rightful owner of the disputed
trademarks in the Registration Cancellation Case. Even prior to the cancellation of the registration of the disputed
trademarks, SUPERIOR — as a mere distributor and not the owner — cannot assert any protection from trademark
infringement as it had no right in the first place to the registration of the disputed trademarks . In fact, jurisprudence holds
that in the absence of any inequitable conduct on the part of the manufacturer, an exclusive distributor who employs the
trademark of the manufacturer does not acquire proprietary rights of the manufacturer, and a registration of the
trademark by the distributor as such belongs to the manufacturer, provided the fiduciary relationship does not terminate
before application for registration is filed.
To establish trademark infringement, the following elements must be proven: (1) the validity of plaintiff’s mark; (2) the
plaintiff’s ownership of the mark; and (3) the use of the mark or its colorable imitation by the alleged infringer results in
“likelihood of confusion.”
Based on these elements, we find it immediately obvious that the second element — the plaintiff’s ownership of the mark
— was what the Registration Cancellation Case decided with finality. On this element depended the validity of the
registrations that, on their own, only gave rise to the presumption of, but was not conclusive on, the issue of ownership.
In no uncertain terms, the appellate court in the Registration Cancellation Case ruled that SUPERIOR was a mere
distributor and could not have been the owner, and was thus an invalid registrant of the disputed
trademarks. Significantly, these are the exact terms of the ruling the CA arrived at in the present petition now under our
review. Thus, whether with one or the other, the ruling on the issue of ownership of the trademarks is the same. Given,
however, the final and executory ruling in the Registration Cancellation Case on the issue of ownership that binds us and
the parties, any further discussion and review of the issue of ownership — although the current CA ruling is legally correct
and can stand on its own merits — becomes a pointless academic discussion.
B. NONE. From jurisprudence, unfair competition has been defined as the passing off (or palming off) or attempting to pass
off upon the public of the goods or business of one person as the goods or business of another with the end and probable
effect of deceiving the public. The essential elements of unfair competition are (1) confusing similarity in the
general appearance of the goods; and (2) intent to deceive the public and defraud a competitor.
Jurisprudence also formulated the following “true test” of unfair competition: whether the acts of the defendant have the
intent of deceiving or are calculated to deceive the ordinary buyer making his purchases under the ordinary conditions of
the particular trade to which the controversy relates. One of the essential requisites in an action to restrain unfair
competition is proof of fraud; the intent to deceive, actual or probable must be shown before the right to recover can exist.
In the present case, no evidence exists showing that KUNNAN ever attempted to pass off the goods it sold (i.e.,
sportswear, sporting goods and equipment) as those of SUPERIOR. In addition, there is no evidence of bad faith
or fraud imputable to KUNNAN in using the disputed trademarks. Specifically, SUPERIOR failed to adduce any
evidence to show that KUNNAN by the above-cited acts intended to deceive the public as to the identity of the
goods sold or of the manufacturer of the goods sold.
In McDonald’s Corporation v. L.C. Big Mak Burger, Inc., we held that there can be trademark infringement without unfair
competition such as when the infringer discloses on the labels containing the mark that he manufactures the goods, thus
preventing the public from being deceived that the goods originate from the trademark owner. In this case, no issue of
confusion arises because the same manufactured products are sold; only the ownership of the trademarks is at issue.
Furthermore, KUNNAN’s January 29, 1993 notice by its terms prevents the public from being deceived that the goods
originated from SUPERIOR since the notice clearly indicated that KUNNAN is the manufacturer of the goods bearing the
trademarks “KENNEX” and “PRO KENNEX.”
UFC PHILIPPINES, INC. (NOW MERGED WITH NUTRI-ASIA, INC., WITH NUTRI-ASIA, INC. AS THE SURVIVING
ENTITY), Petitioner, v. FIESTA BARRIO MANUFACTURING CORPORATION, Respondent.

DOCTRINE:
Under the Dominancy Test, the dominant features of the competing marks are considered in determining whether these
competing marks are confusingly similar. Greater weight is given to the similarity of the appearance of the products arising
from the adoption of the dominant features of the registered mark, disregarding minor differences. The visual, aural,
connotative, and overall comparisons and impressions engendered by the marks in controversy as they are encountered in
the realities of the marketplace are the main considerations.
FACTS:
Petitioner Nutri-Asia, Inc. (petitioner) is a corporation duly organized and existing under Philippine laws. It is the emergent
entity in a merger with UFC Philippines, Inc. that was completed on February 11, 2009. Respondent Barrio Fiesta
Manufacturing Corporation (respondent) is likewise a corporation organized and existing under Philippine laws.
Respondent filed an application for the trademark “PAPA BOY & DEVICE” for goods under Class 30, specifically for “lechon
sauce.” Petitioner filed with the IPO-BLA a Verified Notice of Opposition to the above-mentioned application alleging that
the mark “PAPA” is for use on banana catsup and other similar goods was first used [in] 1954 by Neri Papa, and thus, was
taken from his surname. After using the mark “PAPA” for about twenty-seven (27) years, Neri Papa subsequently assigned
the mark “PAPA” to Hernan D. Reyes who, on September 17, 1981, filed an application to register said mark “PAPA” for use
on banana catsup, chili sauce, achara, banana chips, and instant ube powder.
On November 7, 2006, the registration was assigned to Nutri-Asia. The company has not abandoned the use of the mark
“PAPA” and the variations thereof as it has continued their use up to the present. Petitioner further allege that the mark
“PAPA BOY & DEVICE” is identical to the mark “PAPA” owned by Opposer and duly registered in its favor, particularly the
dominant feature thereof. With the dominant feature of respondent-applicant’s mark “PAPA BOY & DEVICE”, which is
Petitioner’s “PAPA” and the variations thereof, confusion and deception is likely to result. The consuming public,
particularly the unwary customers, will be deceived, confused, and mistaken into believing that respondent-applicants
goods come from Nutri-Asia, which is particularly true since Southeast Asia Food Inc., sister company of Nutri-Asia, have
been major manufacturers and distributors of lechon sauce since 1965 under the registered trademark “Mang Tomas”.
The IPO-BLA rendered a Decision rejecting respondent’s application for “PAPA BOY & DEVICE.” Respondent filed an appeal
before the IPO Director General but was denied. The CA, however, reversed the decision of the IPO-BLA and ruled to grant
the application.  
ISSUE: 
Whether or not by using the “dominant feature” of Nutri-Asia’s “PAPA” mark for “PAPA BOY & DEVICE” would constitute
trademark infringement.
HELD: 
Yes. In Dermaline, Inc. v. Myra Pharmaceuticals, Inc., we defined a trademark as “any distinctive word, name, symbol,
emblem, sign, or device, or any combination thereof, adopted and used by a manufacturer or merchant on his
goods to identify and distinguish them from those manufactured, sold, or dealt by others. ” We held that a
trademark is “an intellectual property deserving protection by law.”
In this case, the findings of fact of the highly technical agency, the Intellectual Property Office, which has the expertise in
this field, should have been given great weight by the Court of Appeals.
Again, this Court discussed the dominancy test and confusion of business in Dermaline, Inc. v. Myra Pharmaceuticals, Inc.,
and we quote:
The Dominancy Test focuses on the similarity of the prevalent features of the competing trademarks that might cause confusion or
deception. 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. 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. The test
of dominancy is now explicitly incorporated into law in Section 155.1 of R.A. No. 8293 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 x x x.
A scrutiny of petitioner’s and respondent’s respective marks would show that the IPO-BLA and the IPO Director General correctly found
the word “PAPA” as the dominant feature of petitioner’s mark “PAPA KETSARAP.” Contrary to respondent’s contention, “KETSARAP”
cannot be the dominant feature of the mark as it is merely descriptive of the product. Furthermore, it is the “PAPA” mark that has been
in commercial use for decades and has established awareness and goodwill among consumers.
We likewise agree with the IPO-BLA that the word “PAPA” is also the dominant feature of respondent’s “PAPA BOY & DEVICE” mark
subject of the application, such that “the word ‘PAPA’ is written on top of and before the other words such that it is the first
word/figure that catches the eyes.”49 Furthermore, as the IPO Director General put it, the part of respondent’s mark which appears
prominently to the eyes and ears is the phrase “PAPA BOY” and that is what a purchaser of respondent’s product would immediately
recall, not the smiling hog.
 SERI SOMBOONSAKDIKUL, Petitioner vs. ORLANE S.A., Respondent
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 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. Respondent alleged that: (1) it was the rightful owner of the ORLANE mark which
was first used in 1948; (2) the mark was earlier registered in the Philippines on July 26, 1967 under Registration
No. 129961 with the following goods: x x x perfumes, toilet water, face powders, lotions, essential oils, cosmetics,
lotions for the hair, dentrifices, eyebrow pencils, make-up creams, cosmetics & toilet preparations under
Registration No. 12996 and (3) on September 5, 2003, it filed another application for use of the trademark on its
additional products.

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 Bureau of Legal Affairs (BLA) rejected petitioner's application in a Decision dated February 27, 2007, finding
that respondent's application was filed, and its mark registered, much earlier. The BLA ruled that there was
likelihood of confusion based on the following observations: (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.16

Petitioner filed a motion for reconsideration but this was denied by the Director of the BLA on May 7, 2007. On
appeal, the Director General of the IPO affirmed the Decision of the BLA Director. Thus, petitioner filed a petition
for review before the CA arguing that there is no confusing similarity between the two marks. The Court of
Appeals denied the petition and held that there exists 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. Applying the dominancy test, the CA ruled that LOLANE' s mark is confusingly
or deceptively similar to ORLANE.
Issue:
Wether or not there is confusing similarity between ORLANE and LOLANE which would bar the registration of
LOLANE before the IPO.

Ruling:
No, there is no confusing similarity between ORLANE and LOLANE which would bar the registration of
LOLANE before the IPO. The Court ruled that the CA erred when it affirmed the Decision of the IPO.

There is no colorable imitation between the marks LOLANE and ORLANE which would lead to any likelihood of
confusion to the ordinary purchasers. A trademark is defined under Section 121.1 of RA 8293 as any visible sign
capable of distinguishing the goods. It is susceptible to registration if it is crafted fancifully or arbitrarily and is
capable of identifying and distinguishing the goods of one manufacturer or seller from those of another. Thus, the
mark must be distinctive. The registrability of a trademark is governed by Section 123 of RA 8293. Section 123.1
provides: Section 123. 1. A mark cannot be registered if it: xxx...d. Is identical with a registered mark belonging to
a different proprietor or a mark with an earlier filing or priority date, in respect of: i. The same goods or services,
or ii. Closely related goods or services, or iii. If it nearly resembles such a mark as to be likely to deceive or cause
confusion; e. Is identical with, or confusingly similar to, or constitutes a translation of a mark which is considered
by the competent authority of the Philippines to be well-known internationally and in the Philippines, whether or
not it is registered here, as being already the mark of a person other than the applicant for registration, and used for
identical or similar goods or services: provided, that in determining whether a mark is well-known, account shall
be taken of the knowledge of the relevant sector of the public, rather than of the public at large, including
knowledge in the Philippines which has been obtained as a result of the promotion of the mark; xxx.
In determining the likelihood of confusion, the Court must consider: [a] the resemblance between the trademarks;
[b] the similarity of the goods to which the trademarks are attached; [c] the likely effect on the purchaser and [d]
the registrant's express or implied consent and other fair and equitable considerations. Likewise, the Court finding
that LOLANE is not a colorable imitation of ORLANE due to distinct visual and aural differences using the
dominancy test, it no longer finds necessary to discuss the contentions of the petitioner as to the appearance of the
marks together with the packaging, nature of the goods represented by the marks and the price difference, as well
as the applicability of foreign judgments.