Case Summary (G.R. No. 223270)
Factual Background
Lacoste gained trademark registration for its "CROCODILE DEVICE" in the Philippines since 1963. Conversely, Crocodile has marketed goods under its trademark since 2002. Lacoste claimed that Crocodile's mark could cause confusion due to its similarity to Lacoste's registered mark. In defense, Crocodile argued that their respective marks are different enough to prevent consumer confusion and cited various judicial decisions and agreements that support their claim of co-existence.
Arguments and Counterarguments
Lacoste primarily contended that the differences between the marks are negligible and insufficient to distinguish them in the perception of average consumers. It also referenced historical agreements and letters suggesting that both parties tacitly acknowledged the absence of confusing similarity in jurisdictional contexts outside the Philippines. Crocodile, on the other hand, maintained that several distinguishing factors exist in their designs and that both marks are recognized and registered concurrently in various international jurisdictions.
Ruling of the IPO-BLA
The Intellectual Property Office's Bureau of Legal Affairs (IPO-BLA) ruled in December 2009 that Lacoste's opposition was denied, affirming that Crocodile's "CROCODILE AND DEVICE" mark did not cause confusion based on the Dominancy and Holistic Tests applied. The IPO-BLA found significant differences in the design and presentation of both marks, supporting the conclusion of no confusing similarity.
Subsequent Appeals and Rulings
Lacoste's appeal to the IPO-Director General (IPO-DG) reaffirmed the IPO-BLA's findings in October 2014. Dissatisfied, Lacoste sought redress through the Court of Appeals (CA), which upheld the earlier decisions in September 2015. The CA emphasized that the appearance of the marks and their respective branding elements contribute to distinguishing consumer perceptions.
Legal Principles Defined
The Court clarified that trademark applications should be evaluated under Republic Act No. 166, which predicates that a mark can be denied registration if it resembles a prior registered mark to the extent that consumer confusion is likely. The Dominancy Test focuses on the similarity of the predominant features creating confusion in consumers' minds.
Examination of Similarity
A detailed comparison indicated both marks exhibit the "saurian" figure but display notable visual distinctions. Lacoste's mark depicts a crocodile facing right, while Crocodile's design features a crocodile facing left, with additional differences in representation and overall appearance that support the findings of dissimilarity under the Dominancy Test.
Trademark Dilution and Co-Existence
Lacoste's claim of trademark dilution lacked sufficient evidential backing. The Court underscored the absence of indications that Crocodile's mark demeaned Lacoste’s or implied fraud or misrepresentation in the marketplace. It emphasized the importance of the long-standi
...continue readingCase Syllabus (G.R. No. 223270)
Parties and Nature of the Case
- Petitioner: Lacoste S.A., a limited liability company organized under the laws of France
- Respondent: Crocodile International Pte. Ltd., a corporation duly organized under the laws of Singapore
- Issue: Opposition to Crocodile's trademark application for the mark "CROCODILE AND DEVICE" on ground of confusing similarity with Lacoste's registered trademark "CROCODILE DEVICE"
- Legal basis: Petition for Review on Certiorari under Rule 45 of the Rules of Court
Facts
- Lacoste registered "CROCODILE DEVICE" Trademark Registration No. 64239 in the Philippines covering goods & services under Classes 1-42 of the Nice Classification
- Lacoste began using the mark in the Philippines in 1963
- Crocodile registered its mark in Singapore in 1949 and began exporting to the Philippines in 2002
- Crocodile applied to register "CROCODILE AND DEVICE" Trademark Application No. 4-1996-116672 covering Class 25 goods
- Lacoste opposed the application alleging confusing similarity causing damage
- Crocodile contended substantial differences in appearance and overall commercial impression
- Crocodile presented evidence of concurrent registrations in numerous other countries and mutual coexistence agreement with Lacoste
- Lacoste rebutted denying peaceful coexistence applicability in the Philippines, argued marks are mirror images
- Lacoste also invoked trademark dilution principle citing Levi Strauss & Co. v. Clinton Apparelle, Inc.
Procedural History
- IPO-Bureau of Legal Affairs (IPO-BLA) denied Lacoste's opposition and gave course to Crocodile's application
- IPO-BLA dismissed the consumer survey "Project Copy Cat" commissioned by Lacoste due to questionable credibility
- IPO-BLA cited mutual coexistence agreement and foreign court rulings supporting no confusing similarity
- IPO Bureau Director General (IPO-DG) affirmed IPO-BLA's decision
- Court of App