Case Digest (G.R. No. 223270)
Facts:
Lacoste S.A. v. Crocodile International Pte. Ltd., G.R. No. 223270, November 06, 2023, Supreme Court Second Division, KHO, JR., J., writing for the Court.Petitioner Lacoste S.A. (Lacoste), a French limited liability company and registered owner in the Philippines of the mark “CROCODILE DEVICE” (Trademark Reg. No. 64239), alleged prior use in the Philippines since 1963. Respondent Crocodile International Pte. Ltd. (Crocodile), a Singapore corporation, filed Philippine Trademark Application No. 4-1996-116672 on December 27, 1996 for the mark “CROCODILE AND DEVICE” for goods in Class 25. Crocodile had long used its mark abroad and had exported to the Philippines beginning in 2002.
On August 18, 2004 Lacoste filed a verified Notice of Opposition contending that Crocodile’s mark was confusingly similar to Lacoste’s registered device and would cause damage. Crocodile answered, stressing visual differences (word element “Crocodile” above a left-facing saurian figure versus Lacoste’s right-facing device), prior coexistence and registrations in many jurisdictions, letters and a 1983 Mutual Co-Existence Agreement between the parties, and foreign judgments finding non-similarity.
Trial before the IPO-Bureau of Legal Affairs (IPO-BLA) included Lacoste’s expert presenting a consumer survey called “The Project Copy Cat.” In a Decision dated December 21, 2009, the IPO-BLA denied Lacoste’s opposition, applying the Dominancy and Holistic tests, finding Crocodile’s composite mark distinguishable and discounting the private survey’s probative value. Lacoste’s motion for reconsideration was denied by IPO-BLA (Resolution, June 21, 2013). Lacoste appealed to the Intellectual Property Office–Director General (IPO-DG).
In a Decision dated October 7, 2014, the IPO-DG affirmed the IPO-BLA, concluding there was no confusing similarity and noting the parties’ long co-existence in various jurisdictions. Lacoste filed a Rule 43 petition to the Court of Appeals (CA). In a Decision dated September 8, 2015, the CA Second Division affirmed the IPO-DG, applying the Dominancy and Holistic tests, emphasizing differences in device orientation, placement of word elements on labels, and the nature of the products (higher-priced items prompting closer consumer scrutiny). Lacoste’s motion for reconsideration in the CA was denied (Resolution, February 29, 2016).
Lacoste sought review in this Court by...(Pro-only)
Issues:
- Under the applicable trademark law and precedent, did the Court of Appeals correctly affirm that there is no confusing similarity between Lacoste’s and Crocodile’s marks such that Lacoste’s opposition must be denied and Crocodile’s application given due course?
- Is The Project Copy Cat consumer survey admissible and sufficiently trustworthy to establish actual confusion?
- Does Lacoste’s claim of ...(Pro-only)
Ruling:
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Ratio:
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Doctrine:
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