On 12 April 2000, petitioner PHILITES filed a trademark application covering its fluorescent bulb, incandescent light, starter and ballast. After publication, respondent Koninklijke Philips Electronics, N .V. (“PHILIPS”) filed an opposition on 17 March 2006.
On 8 August 2006, petitioner posited that its PHILITES & LETTER P DEVICE trademark and respondent’s PHILIPS have vast dissimilarities in terms of spelling, sound and meaning.
On 9 November 2006, IPP-BLA Director Estrellita Beltran-Abelardo denied the Opposition filed by respondent PHILIPS and granted the application of Philites.
Upon appeal, the IPP-DG affirmed the decision of the IPP-BLA on 16 April 2008.
Upon intermediate appellate review, the CA ruled in favor of Philips and dismissed the application for registration of trademark by Philites on 7 October 2008. The motion for reconsideration was denied.
ISSUES
1. Whether or not respondent’s mark is a registered and well-known mark in the Philippines; and
2. Whether or not the mark applied for by petitioner is identical or confusingly similar with that of respondent.
RULING
Petition for Review on Certiorari by Philites is DENIED.
A trademark is “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.” It is “intellectual property deserving protection by law,” and “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.”
I.
Section 122 of the Intellectual Property Code of the Philippines (IPC) provides that rights to a mark shall be acquired through registration validly done in accordance with the provisions of this law. Corollary to that rule, Section 123 provides which marks cannot be registered.
Section 123. Registrability. – 123 .1. A mark cannot be registered if it:
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(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.
Fredco Manufacturing Corporation v. Harvard University provides that Section 123.l(e) of R.A. No. 8293 now categorically states that ‘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,’ cannot be registered by another in the Philippines. “
Rule l00(a) of the Rules and Regulations on Trademarks, Service Marks, Tradenames and Marked or Stamped Containers defines “competent authority” in the following manner:
(c) “Competent authority” for purposes of determining whether a mark is well-known, means the Court, the Director General, the Director of the Bureau of Legal Affairs, or any administrative agency or office vested with quasi-judicial or judicial jurisdiction to hear and adjudicate any action to enforce the rights to a mark.
As held in the Supreme Court Decision in Philips Export B. V, v. CA, the trademark of PHILIPS is a registered and well-known mark.
II.
Both parties are engaged in the same line of business: selling identical or similar goods such as fluorescent bulbs, incandescent lights, starters and ballasts.
In determining similarity and likelihood of confusion, jurisprudence has developed two tests: the dominancy test, and the holistic or totality test.
The dominancy test focuses on “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. Duplication or imitation is not necessary; neither is it required that the mark sought to be registered suggests an effort to imitate. Given more consideration are 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. “
The holistic or totality test necessitates a “consideration of the entirety of the marks as applied to the products, including the labels and packaging, in determining confusing similarity. The discerning eye of the observer must focus not only on the predominant words, but also on the other features appearing on both labels so that the observer may draw conclusion on whether one is confusingly similar to the other.”
Applying the dominancy test, it shows the uncanny resemblance or confusing similarity between the trademark applied for by respondent with that of petitioner’s registered trademark. Their dominant or prevalent feature is the five-letter “PHILI”, “PHILIPS” for petitioner, and “PHILITES” for respondent. The marks are confusingly similar with each other such that an ordinary purchaser can conclude an association or relation between the marks. The consuming public does not have the luxury of time to ruminate the phonetic sounds of the trademarks, to find out which one has a short or long vowel sound. At bottom, the letters “PHILI” visually catch the attention of the consuming public and the use of respondent’s trademark will likely deceive or cause confusion. Most importantly, both trademarks are used in the sale of the same goods, which are light bulbs.
The confusing similarity becomes even more prominent in the entirety of the marks used by petitioner and respondent, including the way the products are packaged. In using the holistic test, there is a confusing similarity between the registered marks PHILIPS and PHILITES. A comparison between petitioner’s registered trademark “PHILIPS” as used in the wrapper or packaging of its light bulbs and that of respondent’s applied for trademark “PHILITES” as depicted in the container or actual wrapper/packaging of the latter’s light bulbs will readily show that there is a strong similitude and likeness between the two trademarks that will likely cause deception or confusion to the purchasing public. The fact that the parties’ wrapper or packaging reflects negligible differences considering the use of a slightly different font and hue of the yellow is of no moment because taken in their entirety, respondent’s trademark “PHILITES” will likely cause confusion or deception to the ordinary purchaser with a modicum of intelligence.
MARIA LOURDES P.A. SERENO, TERESITA J. LEONARDO-DE CASTRO, MARIANO C. DEL CASTILLO, ESTELLA M. PERLAS-BERNABE , ALFREDO BENJAMIN S. CAGUIOA
FiPa Legal Consulting 