Case Digest (G.R. No. 223270) Core Legal Reasoning Model
Facts:
Lacoste S.A., a limited liability company organized under French law, is the registered owner of the "CROCODILE DEVICE" trademark in the Philippines, registered under Trademark Registration No. 64239, covering goods across Classes 1 to 42 of the Nice Classification. Lacoste has been using this mark locally since 1963 for its clothing apparel. Crocodile International Pte Ltd., a Singapore-based corporation and party to various international conventions including the Paris Convention and TRIPS Agreement, filed Trademark Application No. 4-1996-116672 on December 27, 1996, for the mark "CROCODILE AND DEVICE" covering goods under Class 25. Crocodile had already been exporting products to the Philippines since 2002. The two companies operate in substantially the same line of business. Lacoste opposed Crocodile's application in 2004, claiming the marks were confusingly similar due to the use of the crocodile figure, thus infringing its exclusive rights. Crocodi
... Case Digest (G.R. No. 223270) Expanded Legal Reasoning Model
Facts:
- Parties and Marks
- Petitioner Lacoste S.A., a French limited liability company, owns the trademark "CROCODILE DEVICE" registered in the Philippines under Registration No. 64239, covering goods and services in Classes 1 to 42 of the Nice Classification. Lacoste began using this mark in the Philippines as early as 1963.
- Respondent Crocodile International Pte Ltd., a Singaporean company, is also engaged in the clothing business. It is similarly registered under international treaties and has been exporting goods to the Philippines since 2002.
- Crocodile filed Trademark Application No. 4-1996-116672 on December 27, 1996, for the mark "CROCODILE AND DEVICE" covering goods in Class 25.
- Nature of the Opposition
- On August 18, 2004, Lacoste filed a verified Notice of Opposition claiming that Crocodile's mark is confusingly similar or identical to its "CROCODILE DEVICE" mark and that, as the registered owner, Lacoste has the exclusive right to use the mark in the Philippines.
- Crocodile argued that their mark is distinct in appearance and overall impression: Lacoste's crocodile device faces right while theirs faces left with the word "Crocodile" stylized above the device.
- Crocodile presented evidence of concurrent registrations and peaceful coexistence with Lacoste's mark in other countries, including judicial rulings and a 1983 Mutual Co-Existence Agreement acknowledging the non-confusing similarity of the marks.
- Lacoste denied the applicability of the Mutual Co-Existence Agreement to the Philippines and argued that differences in foreign jurisdictions do not apply locally.
- Proceedings and Rulings Prior to Supreme Court
- The IPO Bureau of Legal Affairs (IPO-BLA) denied Lacoste’s opposition on December 21, 2009, finding no confusing similarity after applying the Dominancy and Holistic Tests.
- The IPO-BLA questioned the credibility of Lacoste's commissioned consumer survey Project Copy Cat and emphasized the peaceful coexistence history.
- Lacoste’s Motion for Reconsideration was denied on June 21, 2013.
- The IPO Director General (IPO-DG) affirmed IPO-BLA’s decision on October 7, 2014.
- Lacoste filed a Rule 43 Petition for Review with the Court of Appeals (CA).
- On September 8, 2015, the CA likewise affirmed the rulings of IPO-DG and IPO-BLA.
- Lacoste’s Motion for Reconsideration before the CA was denied on February 29, 2016.
Issues:
- Whether the Court of Appeals correctly affirmed the IPO Bureau of Legal Affairs and IPO Director General’s decisions denying Lacoste’s opposition due to lack of confusing similarity between the "CROCODILE DEVICE" and "CROCODILE AND DEVICE" marks.
Ruling:
- (Subscriber-Only)
Ratio:
- (Subscriber-Only)
Doctrine:
- (Subscriber-Only)