15.

Case Digest:

G.R. No. 192294 November 21, 2012

GREAT WHITE SHARK ENTERPRISES, INC., Petitioner,

vs.
DANILO M. CARALDE, JR., Respondent.

TOPIC: Registrability, Dominancy Test

FACTS:

Caralde, respondent, filed before the Bureau of Legal Affairs (BLA) IPO a trademark application for
“SHARK & LOGO” for his manufactured goods consisting of slippers, shoes and sandals. This was
opposed by the petitioner, Great White Shark Enterprises, Inc. (Great White Shark), a foreign
corporation domiciled in Florida, USA and was issued a Certificate Registration for trademark application
for clothing, headgear and footwear, including socks, shoes and its components in the Philippines.
Petitioner alleges among other things that there is a confusing similarity between the two (2) marks
which is likely to deceive or confuse the purchasing public into believing that respondent’s goods are
produced by or originated from the petitioner, or are under its sponsorship, to the petitioner’s damage
and prejudice; that since petitioner was first in applying for registration of the mark, the same should be
favoured with respondent’s mark to be denied of its application.

BLA Director ruled in favour of petitioner. The BLA observed that prominent in both marks are the
illustration of a shark, that although there are some differences, dominant features are of such degree
that overall it creates an impression of striking similarity with one another.

IPO Director General on appeal by respondent, affirmed the decision by the BLA Director that there is
indeed confusing similarity between the two mark; that there is similarity between the two marks as to
content, word, sound and meaning barring respondent’s registration under Sec 123.1(d) of RA 8293 of
the IP Code.

The Court of Appeals, upon petition for review by respondent, reversed and set aside the decision by
the BLA Director and IPO Director General on its finding that there is in fact no confusing similarity
between the two marks; that respondent’s mark is more fanciful and colourful and contains several
elements which are easily distinguishable from that on the petitioner.

The case was then elevated to the Supreme Court by petitioner, hence this petition.

ISSUES:

1. WON the two (2) marks can be considered identical, applying Sec. 123.1(d) of the IP Code, which
is likely to deceive or cause confusion.

HELD:
No. The two marks are not identical and there is no confusing similarity likely to deceive or cause
confusion between them.

“A trademark device is susceptible to registration if it is crafted fancifully or arbitrarily and

is capable of identifying and distinguishing the goods of one manufacturer or seller from
those of another”. “Apart from its commercial utility, the benchmark of trademark
registrability is distinctiveness”. (Thus, a generic figure, as that of a shark in this case, if
employed and designed in a distinctive manner, can be a registrable trademark device,
subject to the provisions of the IP Code.)In connection with the registrability of
trademarks, Section 123.1(d) of the IP Code provides, among others, a mark which
cannot be registered, to wit:

Section 123. Registrability. –

123.1 A mark cannot be registered if it:

(d) Is identical with a registered mark belonging to a different proprietor or

a mark with an earlier filing or priority date, in respect of:

(i) The same goods or services, or

(ii) Closely related goods or services, or

(iii) If it nearly resembles such a mark as to be likely to

deceive or cause confusion;

xxx

The mark will therefore be registrable if it is distinct or if it does not nearly resembles
another mark to deceive or cause confusion.

The court used Dominancy Test (although Holistic or Totality Test was defined in the
case, this was not used in the analysis) for this purpose and confirmed that there is no
confusing similarity between the marks; that, further, there was a distinct visual and aural
differences between them.

“In Great White Shark's "GREG NORMAN LOGO," there is an outline of a

shark formed with the use of green, yellow, blue and red16lines/strokes;
The shark in Caralde's "SHARK & LOGO" mark 17 is illustrated in l et t er s
outlined in the form of a shark with the letter "S" forming the head, the
letter "H" forming the fins, the letters "A" and "R" forming the body, and the
letter "K" forming the tail. In addition, the latter mark includes several more
elements such as the word "SHARK" in a different font underneath the
shark outline, layers of waves, and a tree on the right side, and liberally
 used the color blue with some parts in red, yellow, green and white.18 The
whole design is enclosed in an elliptical shape with two linings”.

The visual dissimilarities between the two (2) marks are evident and significant, negating
the possibility of confusion in the minds of the ordinary purchaser, especially considering
the distinct aural difference between the marks.

APPENDIX

1. Great White Shark (GWS) also alleged that its trademark is a world famous and well-
known mark since its mark registered in different countries, in order to better his position
that Caralde just copied GWS’s mark to be able to ride on its goodwill. Both BLA Director
and IPO Director General however found the same without merit due to insufficiency of
evidence. IPO Dir-Gen further noted that it failed to meet the other criteria under Rule 102
of the Rules and Regulations on Trademarks, Service Marks, Trade Names and
Marked or Stamped Containers to be considered as well-known. Finally, SC no longer
ruled on this matter (,being mooted,) since it already found that there was no confusing
similarity between the two marks.

2. The Dominancy Test focuses on the similarity of the dominant features of the
competing trademarks that might cause confusion, mistake, and deception in the mind of
the ordinary purchaser, and gives more consideration to the aural and visual impressions
created by the marks on the buyers of goods, giving little weight to factors like prices,
quality, sales outlets, and market segments.

The Holistic or Totality Test considers the entirety of the marks as applied to the
products, including the labels and packaging, and focuses not only on the predominant
words but also on the other features appearing on both labels to determine whether one is
confusingly similar to the other14 as to mislead the ordinary purchaser. The "ordinary
purchaser" refers to one "accustomed to buy, and therefore to some extent familiar with,
the goods in question."15

3. Copy of the trademarks in the case