G.R. No. 192294 - Great White Shark Enterprises, Inc. vs. Caralde, Jr.

Case Summary (G.R. No. 192294)

Key Dates

Respondent’s trademark application filed: July 31, 2002.
Opposer’s (petitioner’s) trademark application filed: February 19, 2002; Certificate of Registration issued October 23, 2006.
BLA Director decision rejecting respondent’s application: June 14, 2007.
IPO Director General affirmed rejection: October 6, 2008.
Court of Appeals reversed and ordered registration: December 14, 2009.
Supreme Court decision denying the petition for review: November 21, 2012.

Factual Background

Caralde applied to register the mark SHARK & LOGO for manufactured goods under Class 25 (slippers, shoes, sandals). Great White Shark opposed, claiming ownership of a shark representation known as the GREG NORMAN LOGO and asserting likelihood of confusion with Caralde’s proposed mark. While opposition proceedings were pending, Great White Shark’s application matured into a Certificate of Registration (No. 4-2002-001478) covering clothing, headgear and footwear. The parties’ marks both depict sharks but differ in design elements and composition.

BLA Director’s Ruling

The BLA Director rejected Caralde’s application on the ground of confusing similarity. The Director found that the prominent or dominant feature in both marks is an illustration of a shark; despite some differences (additional features in respondent’s mark), the overall impression was “strikingly similar,” making confusion likely. The BLA Director also observed both parties’ goods belong to the same Class 25 and are therefore related. The BLA found insufficient evidence to declare Great White Shark’s mark well-known.

IPO Director General’s Ruling

On appeal, the IPO Director General affirmed the rejection, reiterating that both marks are confusingly similar in content, word, sound and meaning and that both are used on similar goods (including footwear). The IPO Director General likewise concluded that Great White Shark did not establish that its mark was well-known under the criteria of Rule 102.

Court of Appeals’ Ruling

The Court of Appeals reversed and ordered registration of Caralde’s SHARK & LOGO mark. The CA concluded that, notwithstanding the shared shark figure as a dominant element, the respondent’s mark was more fanciful and colorful, included multiple distinguishable elements (letter-formed silhouette, additional word mark, waves, tree, elliptical enclosure), and created a distinct overall impression. The CA further considered differences in price, target market and channels of trade and found no likelihood of confusion.

Issues Presented to the Supreme Court

Whether the Court of Appeals erred in ruling that Caralde’s mark is not confusingly similar to Great White Shark’s registered mark.
Whether disparity in cost of the goods and differences in market or channels of trade can negate likelihood of confusion.
Whether the CA improperly reversed prior rulings of the IPO Director General and the BLA.

Applicable Law and Legal Standards

Primary statutory provision: Section 123.1(d) of Republic Act No. 8293 (Intellectual Property Code) — prohibition against registration of a mark identical with or confusingly similar to a registered mark of another proprietor with an earlier filing or priority date for the same or closely related goods or services.
Well-known mark criteria: Rule 102 of the Rules and Regulations on Trademarks (enumerating factors to determine whether a mark is well-known).
Tests for similarity and likelihood of confusion: the Dominancy Test (focus on the dominant features and the aural/visual impressions on the ordinary purchaser; gives little weight to price, quality, sales outlets and market segments) and the Holistic/Totality Test (considers the entirety of the marks as applied, including labels, packaging and all features). The “ordinary purchaser” is one familiar with the goods and thus accustomed to buying them. Relevant precedent and principles referenced in the decision include prior decisions applying these tests. Section 131.3 (remedies available to owners of well-known marks) was also noted.

Supreme Court’s Analysis: Similarity and Dominancy Versus Totality

The Court applied both the dominancy and holistic tests and concluded that there is no confusing similarity between the competing marks. Although both marks employ a shark silhouette, the Court found significant visual and aural differences: Great White Shark’s device is an outline formed by multicolored strokes (green, yellow, blue, red) associated with the GREG NORMAN LOGO, whereas Caralde’s shark is a composite formed from letter shapes (S, H, A, R, K), accompanied by the word “SHARK” underneath, layered waves, a tree, liberal use of blue with other colors, and an elliptical double-lined enclosure. Those distinguishing elements alter the overall impression sufficiently to negate likely confusion in the mind of the ordinary purchaser. The Court emphasized the evident and significant visual dissimilarities and the au

Case Syllabus (G.R. No. 192294)

Procedural Posture and Relief Sought

Petition for Review on Certiorari under Rule 45 of the Rules of Court assailing the December 14, 2009 Decision of the Court of Appeals (CA) in CA-G.R. SP No. 105787.
The CA decision reversed and set aside the October 6, 2008 Decision of the Director General of the Intellectual Property Office (IPO) and directed the IPO to grant respondent Danilo M. Caralde, Jr.’s application for the mark “SHARK & LOGO.”
Petitioner Great White Shark Enterprises, Inc. (Great White Shark) sought review by the Supreme Court, asserting that the CA erred in finding no confusing similarity between the competing marks and in reversing the prior administrative rulings.
The Supreme Court resolved to deny the petition and to affirm the CA’s December 14, 2009 decision, thereby allowing registration of respondent’s mark.

Factual Antecedents — Chronology of Filings and Registration

July 31, 2002: Danilo M. Caralde, Jr. filed with the Bureau of Legal Affairs (BLA), Intellectual Property Office (IPO), a trademark application to register the mark “SHARK & LOGO” for manufactured goods under Class 25 (slippers, shoes, sandals).
February 19, 2002: Great White Shark had a pending trademark application for an illustration of a shark known as the “GREG NORMAN LOGO”; it later obtained registration.
October 23, 2006: Great White Shark’s trademark application was granted and Certificate of Registration No. 4-2002-001478 was issued for clothing, headgear and footwear, including socks, shoes and its components.
Administrative, appellate and judicial proceedings followed from opposition to the application through IPO and CA decisions to the Supreme Court petition.

Parties, Claims and Positions

Petitioner: Great White Shark Enterprises, Inc., a foreign corporation domiciled in Florida, U.S.A., owner of a mark described as a representation of a shark known as the “GREG NORMAN LOGO,” used on apparel.
Respondent: Danilo M. Caralde, Jr., applicant for registration of the mark “SHARK & LOGO” for footwear goods under Class 25.
Great White Shark’s claim: Its shark illustration mark is a world-famous mark (pending registration before BLA since February 19, 2002) and the similarity between the two marks is likely to deceive or confuse the purchasing public into believing respondent’s goods are produced by, originate from, or are sponsored by petitioner, to its damage and prejudice.
Caralde’s defence: The marks are distinctively different and easily distinguishable; similarities are limited to the word and/or notion “shark” while other factors—appearance, style, shape, size, format, color, elements, and the particular goods—are different.

Opposition and Administrative Proceedings

Great White Shark filed a Notice of Opposition to respondent’s application.
The BLA Director (Estrellita Beltran-Abelardo) rendered a decision on June 14, 2007 rejecting Caralde’s application, holding that:
- The prominent/dominant feature in both marks is the illustration of a shark.
- Despite some differences (additional features in respondent’s mark), the dominant shark illustration produced an overall impression that the two marks are “at least strikingly similar,” creating a likelihood of confusion.
- The goods fall under the same Class 25 (clothing, footwear) and are related; petitioner had earlier application filing date (Feb. 19, 2002) and respondent later applied (noting in the decision the date as July 3, 2002, with an annotation that it should be July 31, 2002).
- The BLA Director found no merit in petitioner’s claim of fame/well-known status due to insufficient evidence.

IPO Director General Ruling (Affirmation)

On appeal, the IPO Director General (Adrian S. Cristobal, Jr.) affirmed the final rejection of Caralde’s application (October 6, 2008 Decision as assailed).
Reasoning of the IPO Director General:
- The competing marks are confusingly similar; both use a shark illustration and are applied to similar goods (clothing, footwear, slippers, shoes).
- Great White Shark had the earlier filing date (Feb. 19, 2002) compared to Caralde’s July 31, 2002 filing.
- Great White Shark’s mark consists of an illustration of a shark; Caralde’s is a composite figure forming a shark silhouette; in content, word, sound and meaning, both marks are similar.
- Notwithstanding evidence of registration in other countries, Great White Shark’s mark was not considered well-known/well-known for failure to satisfy the criteria set in Rule 102 of the Rules and Regulations on Trademarks, Service Marks, Trade Names and Marked or Stamped Containers.

Court of Appeals Ruling

The Court of Appeals reversed the IPO Director General and directed the IPO to grant Caralde’s application for registration of “SHARK & LOGO.”
CA findings and rationale:
- No confusing similarity between the subject marks despite both containing a shark-shaped dominant feature.
- Caralde’s mark is more fanciful and colorful and contains several elements easily distinguishable from petitioner’s mark.
- Consideration of price disparity and different channels of trade: the CA opined that, given the price differences, there is no likelihood of confusion as the products travel in different channels of trade.

Issues Presented to the Supreme Court (as stated in the record)

“THE COURT OF APPEALS ERRED IN RULING THAT THE RESPONDENT’S MARK SUBJECT OF THE APPLICATIO