G.R. No. 219709 - Republic vs. Yeban

Case Summary (G.R. No. 219709)

Procedural Posture

Crocodile filed Trademark Application No. 4-1996-116672 on December 27, 1996 for goods in Class 25. Lacoste opposed registration on grounds of confusing similarity. The IPO-BLA denied Lacoste’s opposition (Dec. 21, 2009); its denial was affirmed by the IPO-DG (Oct. 7, 2014). The CA affirmed the IPO decisions (Sept. 8, 2015) and denied reconsideration (Feb. 29, 2016). Lacoste filed a Rule 45 petition raising the same core contention before the Supreme Court.

Core Factual Background on the Marks

Lacoste’s registered mark is a solitary crocodile device (the “saurian” figure), historically used and recognized by Lacoste. Crocodile’s mark is a composite consisting of the stylized word “Crocodile” positioned above a crocodile device. Key factual distinctions acknowledged throughout the record include differences in orientation (Lacoste’s figure faces right; Crocodile’s faces left and is tilted), rendering style (Lacoste’s device is largely solid with white inverted-triangle scutes and tail protrusions; Crocodile’s device is drawn with scale patterns and lacks protruding scutes), and the presence of a prominent word element in Crocodile’s mark. The parties’ long-term co-existence internationally, prior letters acknowledging non-confusion, a 1983 Mutual Co-Existence Agreement, and subsequent foreign rulings and registrations are part of the factual matrix.

Issue Presented

Whether, under applicable law and tests, Lacoste established that Crocodile’s “CROCODILE AND DEVICE” mark is confusingly similar to Lacoste’s “CROCODILE DEVICE” mark such that Crocodile’s trademark application should be denied.

Applicable Law and Legal Standard

Because Crocodile’s application was filed in 1996 (pre-dating R.A. No. 8293) the dispositive statutory framework is R.A. No. 166, as amended, with its prohibition against registration of marks likely to cause confusion with registered or previously used marks. The Court applies the Dominancy Test — endorsed in recent jurisprudence and expressly adopted here over the Holistic/Totality Test — which focuses on the similarity of the prevalent or dominant features of competing trademarks that might cause confusion in the ordinary purchaser’s mind.

Application of the Dominancy Test to the Parties’ Marks

Under the Dominancy Test, the Court compared the dominant elements of the competing marks. Lacoste’s mark is solely a device; thus its entire mark is the dominant feature. Crocodile’s mark is composite (word + device), but in assessing confusing similarity with Lacoste’s device-only mark, the dispositive comparison is between Lacoste’s device and Crocodile’s device element (i.e., the design component of the composite mark), while recognizing the composite nature may affect overall commercial impression.

Visual and Commercial- impression Differences Identified

A detailed side-by-side inquiry revealed pronounced visual and impression differences: opposite facing orientation (right-facing vs left-facing), differing alignment (horizontal vs tilted), contrasting rendering (solid silhouette with white inverted-triangle scutes and tail protrusion vs non-solid drawing with scale patterns and no scutes), and the conspicuous presence of the stylized word “Crocodile” above the device in respondent’s mark. These differences in form, arrangement, and overall presentation reduce the propensity for confusion in the ordinary purchaser’s mind.

Effect of Co-Existence, Foreign Rulings, and Agreements

The record shows concurrent registration and long-standing co-existence of the competing marks in numerous foreign jurisdictions and contains foreign judicial determinations (e.g., Japan, Myanmar) and correspondence supporting non-confusion. The parties’ Mutual Co-Existence Agreement and evidence that Crocodile facilitated Lacoste’s registrations in some jurisdictions were considered by the administrative and appellate bodies and by the Court as corroborative that both marks have acquired distinct associations in different markets. The subsequent arbitration award limiting the geographic scope of the 1983 agreement was part of the record but did not alter the core finding about distinctiveness and lack of confusing similarity in the Philippines under the present evidentiary showing.

Trademark Dilution Claim and Its Rejection

Lacoste advanced dilution under Levi Strauss, which requires proof that (1) the plaintiff’s mark is famous and distinctive, (2) the defendant’s use began after fame was established, and (3) the defendant’s use lessens the capacity of the plaintiff’s mark. While Lacoste’s mark is internationally well-known, the Court found insufficient evidence that Crocodile’s subsequent use tarnished or blurred Lacoste’s mark or that Crocodile acted in bad faith to exploit Lacoste’s goodwill. Crocodile’s legitimate longstanding commercial use and promotional efforts supported the conclusion that dilution was not established on the record.

Admissibility and Weight of the Consumer Survey (“Project Copy Cat”)

The Court analyzed the consumer survey evidence under the standards articulated in Ginebra v. Tanduay and the Zippo framework: admi

Case Syllabus (G.R. No. 219709)

Case Caption, Procedural Posture, and Disposition

G.R. No. 223270; Second Division; Decision promulgated November 6, 2023; penned by Justice Kho, Jr.
Petition for Review on Certiorari filed under Rule 45 attacking:
- Court of Appeals Decision dated September 8, 2015 and Resolution dated February 29, 2016 in CA‑G.R. SP No. 137801.
- Those CA rulings affirmed: (a) IPO‑Director General Decision dated October 7, 2014; and (b) IPO‑Bureau of Legal Affairs Decision dated December 21, 2009 and Resolution dated June 21, 2013.
Relief sought: reversal of the denials of Lacoste S.A.’s opposition to Crocodile International Pte. Ltd.’s Trademark Application No. 4‑1996‑116672 for the mark “CROCODILE AND DEVICE” (Class 25).
Supreme Court ruling: Petition denied; CA Decision of September 8, 2015 and Resolution of February 29, 2016 affirmed.
Concurrence: Lazaro‑Javier (Acting Chairperson), M. Lopez, and J. Lopez, JJ., concur. Senior Associate Justice Leonen was on official business.

Relevant Parties and Background Facts

Petitioner: Lacoste S.A., a limited liability company organized under the laws of the Republic of France; registered owner in the Philippines of the mark “CROCODILE DEVICE” (Trademark Registration No. 64239) covering Classes 1–42 of the Nice Classification; commenced use in the Philippines as early as 1963; mark depicted as a crocodile device.
Respondent: Crocodile International Pte. Ltd., a Singapore corporation; party to international conventions (Paris Convention, TRIPS, etc.); first registered in 1949 in Singapore; began exporting to the Philippines in 2002; engaged in substantially the same line of business as Lacoste.
Chronology of Crocodile’s application and opposition:
- December 27, 1996: Crocodile filed Trademark Application No. 4‑1996‑116672 for “CROCODILE AND DEVICE” (Class 25).
- August 18, 2004: Lacoste filed a verified Notice of Opposition asserting confusing similarity with its registered “CROCODILE DEVICE” mark.
- Trial before IPO‑BLA followed; subsequent administrative and appellate proceedings culminating in CA and Supreme Court review.

Marks at Issue — Descriptions and Visual Elements

Lacoste’s mark (“CROCODILE DEVICE” / Trademark No. 64239):
- A sole “saurian” (crocodile) device; in the record it is described as the dominant and sole component of Lacoste’s mark.
- Facing to the right (head at right, tail at left); aligned horizontally; depicted as solid except for white inverted‑triangle scutes on body and base of tail; has scutes protruding from the tail.
Crocodile’s mark (“CROCODILE AND DEVICE”):
- A composite mark: the stylized word “Crocodile” above a “saurian” figure.
- The word and device are tilted (right‑side alignment higher than left); the “saurian” figure faces to the left (head at left, tail at right).
- The “saurian” figure appears more like a drawing, not solid; lacks protruding scutes but shows various scale patterns from head base to tail.
Side‑by‑side presentation was used in proceedings to compare dominant features for confusing similarity analysis.

Parties’ Primary Contentions

Lacoste (opposer):
- Alleged that Crocodile’s “CROCODILE AND DEVICE” is confusingly similar or identical to Lacoste’s “CROCODILE DEVICE.”
- Emphasized the “saurian” figure as the distinctive and dominant feature; argued directional difference is too minute for ordinary consumers and contended Crocodile’s mark is a mirror image.
- Relied on consumer survey evidence (“The Project Copy Cat”) and invoked trademark dilution doctrine (per Levi Strauss v. Clinton Apparelle, Inc.) to argue that Crocodile’s use would dilute Lacoste’s mark.
- Denied applicability/effect of Crocodile’s claims of peaceful co‑existence in other countries and contested the Mutual Co‑Existence Agreement’s applicability in the Philippines.
Crocodile (applicant):
- Asserted substantial differences in appearance and overall commercial impression due to word element and device orientation and presentation; argued no possibility of consumer confusion.
- Pointed to concurrent registrations and coexistence in numerous jurisdictions (list included Afghanistan, Bangladesh, Brunei, Cambodia, China, India, Indonesia, Japan, Kazakhstan, Laos, Malaysia, Mongolia, Morocco, Myanmar, Nepal, North Korea, Pakistan, Singapore, Sabah, Sarawak, South Korea, Sri Lanka, Turkmenistan, Taiwan, Uganda).
- Presented judicial and contractual evidence: Osaka District Court judgment (Japan, Feb. 24, 1971) and Divisional Court judgment (Yangon, Myanmar) finding no confusing similarity; letters from Lacoste (dated July 30, 1980; June 1, 1982; January 21, 1983) admitting non‑confusing similarity; and a Mutual Co‑Existence Agreement executed June 17, 1983 acknowledging co‑existence.
- Maintained the application should be evaluated under the old trademark law (R.A. No. 166) because application filed December 27, 1996, before the new Intellectual Property Code (R.A. No. 8293).

Evidence Presented at Trial

Lacoste:
- Testimony and expert presentation by Shalimar Sunshine Salvino‑Feldia of Consumer Vibe Asia, Inc. on “Project Copy Cat” logo test (purported consumer survey of 450 respondents in Greater Manila Area).
- Supplemental Opposition invoking trademark dilution doctrine.
Crocodile:
- Documentary evidence of concurrent registrations and judgments from foreign courts; letters and the 1983 Mutual Co‑Existence Agreement; evidence of legitimate business use and long‑established goodwill.

IPO‑BLA Decision and Reasoning (December 21, 2009) and Resolution (June 21, 2013)

Outcome: Denied Lacoste’s opposition; gave due course to Crocodile’s trademark application.
Tests applied: Dominancy and Holistic Tests (IPO‑BLA applied both).
Key findings:
- No confusing similarity: Crocodile’s mark is a composite mark with the prominent word “Crocodile” in stylized font above the device, creating striking differences from Lacoste’s sole device mark.
- The consumers would read the word component as well as see the device; the conspicuous “Crocodile” word distinguishes Crocodile’s goods from Lacoste’s.
- The Project Copy Cat survey lacked credibility because it was privately commissioned by Lacoste (questionable objectivity and reliability).
- Mutual Co‑Existence Agreement, foreign judicial decisions, and Lacoste’s letters supported a conclusion of non‑confusing similarity.
- Trademark dilution doctrine inapplicable: Lacoste failed to show Crocodile obtained its mark in bad faith or by fraud; Crocodile legitimately used its mark and acquired property rights in its symbol and goodwill.
Motion for Reconsideration denied by IPO‑BLA (Resolution dated June 21, 2013); IPO‑BLA reiterated the prominence of the word element and concurrent registrations in other jurisdictions.

IPO‑Director General Decision (October 7, 2014)

Outcome: Affirmed IPO‑BLA Decision.
Reasoning:
- Reiterated that both parties have used their respective marks for a long time and have co‑existed in various jurisdictions.
- Observed that consumers with at least a modicum of intelligence would not be confused as to source of origin given the noticeable differences.
- Conclusion: No cogent reason to deny C