G.R. No. 188996 - Seri Somboonsakdikul vs. Orlane S.A.

Petitioner Seri Somboonsakdikul filed an application for registration of the mark LOLANE on September 23, 2003, with the Intellectual Property Office (IPO) for goods classified under Class 3 (personal care products).
The mark covered products such as hair decolorants, shampoos, skin whitening cream, deodorants, and other cosmetic and personal care products.
The application was docketed as No. 4-2003-0008858 and published for opposition on December 17, 2004.

Respondent Orlane S.A., owner of the mark ORLANE, opposed the application on the ground of confusing similarity.
ORLANE was first used in 1948 and registered in the Philippines on July 26, 1967, under Registration No. 129961 for perfumes, cosmetics, toiletries, and related goods under Class 3.
Respondent claimed to have filed further applications for additional products under Class 3 on September 5, 2003.
Respondent alleged that ORLANE is a well-known mark with established goodwill, reputation, and superior quality image worldwide.
Respondent contended that petitioner’s use of LOLANE starting only in August 2003 showed bad faith.

Petitioner denied confusing similarity and alleged lawful ownership and earlier use of LOLANE, first used in Vietnam on July 4, 1995, and subsequently marketed worldwide, including in the Philippines.
Petitioner claimed the marks are visually and aurally distinct, emphasizing differences in stylization and pronunciation.
Petitioner argued that the presence of Thai characters on LOLANE products and the word “Paris” on ORLANE products further differentiated them.
Prior co-existence of trademarks sharing common syllables (e.g., "joy", "book") was cited as precedent.

The Bureau of Legal Affairs (BLA) denied petitioner’s application in February 2007.
The BLA found likelihood of confusion based on the dominant similarity of the four-letter suffix "LANE," same product classification, similar syllable count, and similar pronunciation.
The BLA rejected the argument that marks must be identical to cause confusion, relying on the likelihood of confusion standard.
Petitioner’s motion for reconsideration was denied in May 2007.

The Director General of IPO affirmed the BLA ruling on appeal.
The Director General highlighted the fanciful and distinctive nature of ORLANE and the strong visual and aural resemblance to LOLANE, particularly the “LANE” suffix.
Foreign decisions cited by petitioner were disregarded as non-precedential in the Philippines.

Petitioner elevated the case to the Court of Appeals (CA), challenging the similarity, dominancy test application, and reliance on foreign judgments, and argued for deference to the Trademark Examiner’s preliminary finding of no confusion.

The CA denied the petition in its July 14, 2009 decision.
It applied the dominancy test, holding that the dominant element “LANE” created colorable imitation and likelihood of confusion.
The CA rejected petitioner’s claim of different pronunciation, asserting Filipinos would pronounce ORLANE as “OR-LEYN.”
The CA noted the fanciful character of ORLANE and found insufficient explanation for LOLANE’s choice.
The CA held that the difference in market and product pricing did not eliminate the chance of confusion.
The CA affirmed the use of the dominancy test, favoring it over the holistic test and refusing to consider foreign rulings or the Trademark Examiner’s prior findings.

Whether the marks LOLANE and ORLANE are confusingly similar, such that the registration of LOLANE should be denied under the Intellectual Property Code.
Whether the dominancy test or holistic test should be applied in assessing confusing similarity in this case.
Whether the IPO Director General’s and CA’s findings were supported by substantial evidence or were arbitrary and amounted to grave abuse of discretion.