Case Digest (G.R. No. 192294)
Facts:
Great White Shark Enterprises, Inc. v. Danilo M. Caralde, Jr., G.R. No. 192294, November 21, 2012, Supreme Court Second Division, Perlas-Bernabe, J., writing for the Court.On July 31, 2002, Danilo M. Caralde, Jr. filed with the Bureau of Legal Affairs (BLA), Intellectual Property Office (IPO) an application to register the mark SHARK & LOGO for Class 25 goods (slippers, shoes, sandals). Great White Shark Enterprises, Inc., a Florida corporation, opposed the application asserting ownership of a shark-device mark known as the GREG NORMAN LOGO, which it had applied for on February 19, 2002 and which was later registered (Certificate No. 4-2002-001478 issued October 23, 2006). The opposer alleged confusing similarity and risk of deception of the purchasing public.
In Answer, Caralde denied confusing similarity, stressing differences in appearance, style, composition, colors and the presence of other design elements. He also noted distinctions in format and trade presentation.
The BLA Director issued a decision on June 14, 2007 rejecting Caralde’s application for registration, finding the dominant shark illustration common to both marks likely to cause confusion and noting that the parties’ goods fell within the same class. The BLA did not find opposer’s mark to be well-known for want of evidence under Rule 102. On appeal, the IPO Director General affirmed the BLA rejection in an October 6, 2008 Decision, likewise finding confusing similarity despite opposer’s inability to establish a well-known mark under Rule 102.
Caralde sought judicial review before the Court of Appeals in CA-G.R. SP No. 105787. On December 14, 2009 the Court of Appeals reversed and set aside the IPO Director General’s decision and ordered the IPO to grant Caralde’s application, reasoning that the marks were visually and aurally distinguishable, that Caralde’s mark was more fanciful and colorful, and that price disparity and different channels of trade reduced t...(Pro-only)
Issues:
- Did the Court of Appeals err in ruling that respondent’s mark SHARK & LOGO is not confusingly similar to petitioner’s registered GREG NORMAN LOGO?
- Did the Court of Appeals err in treating the cost (price disparity) of the goods as a factor that could negate likelihood of confusion?
- Did the Court of Appeals err in reversing the decisions of the IPO Directo...(Pro-only)
Ruling:
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Ratio:
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Doctrine:
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