Case Digest (G.R. No. 188996)
Facts:
Seri Somboonsakdikul v. Orlane S.A., G.R. No. 188996, February 01, 2017, Supreme Court Third Division, Jardeleza, J., writing for the Court.
Petitioner Seri Somboonsakdikul filed on September 23, 2003 an application with the Intellectual Property Office (IPO) to register the word mark LOLANE for goods in Class 3 (personal care products). Orlane S.A. opposed the application on the ground that LOLANE is confusingly similar to its earlier-registered mark ORLANE, alleging prior use (since 1948), an earlier Philippine registration (July 26, 1967, Reg. No. 129961) for various cosmetics and toiletries, an additional 2003 application for expanded products, and worldwide reputation and goodwill.
In its opposition Orlane S.A. also alleged bad faith by petitioner, asserting that petitioner's first usage of LOLANE was only in August 2003. Petitioner denied confusing similarity, asserted earlier use of LOLANE abroad (Vietnam, July 4, 1995), and claimed continuous marketing of LOLANE-branded Class 3 products in the Philippines and elsewhere; he stressed differences in presentation (stylized LOLANE with Thai characters vs. ORLANE often bearing "Paris"), pronunciation, and cited prior IPO co-existence of marks sharing common syllables.
The IPO Bureau of Legal Affairs (BLA) on February 27, 2007 denied petitioner's application, finding likelihood of confusion because both marks contain six letters with the same last four letters "LANE", are used on similar goods, are both two-syllable words with only a slight difference in the first syllable, and would create a strong visual and aural resemblance. The BLA denied petitioner’s motion for reconsideration on May 7, 2007, reiterating that the dominant feature was "LANE" and that likelihood of confusion need not rise to actual mistake.
The IPO Director General affirmed the BLA decision, emphasizing the visual and aural resemblance and describing ORLANE as a fanciful, highly distinctive mark. Petitioner appealed to the Court of Appeals (CA), which denied his petition in a Decision dated July 14, 2009, applying the dominancy test and finding colorable imitation: the CA agreed that the dominant feature was "LANE", that the marks would be similarly pronounced by Filipinos, and that petitioner had not explained his choice of LOLANE.
Petitioner then brought the matter to the Supreme Court by petition. The parties argued trademark distinctiveness, the applicability of the dominancy versus holistic tests, ...(Pro-only)
Issues:
- Whether the mark LOLANE is confusingly similar to ORLANE such that registration of LOLANE should be d...(Pro-only)
Ruling:
- (Pro-only)
Ratio:
- (Pro-only)
Doctrine:
- (Pro-only)