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12 August 2019
The Supreme Court has repeatedly stated that there are no set rules to determine "whether one trademark is confusingly similar to or is a colorable imitation of another… Each case must be decided on its own merits".(1)
Nonetheless, over the years, the Supreme Court has fashioned two tests (ie, the dominancy and holistic tests) to determine whether a mark infringes another. This article reviews a number of landmark Supreme Court decisions that applied these tests.(2)
The Supreme Court describes the dominancy test as follows:
The dominancy test focuses on 'the similarity of the prevalent or dominant features of the competing trademarks that might cause confusion, mistake, and deception in the mind of the purchasing public. Duplication or imitation is not necessary; neither is it required that the mark sought to be registered suggests an effort to imitate. Given more consideration are 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.(3)
On the other hand, the holistic test is described as follows:
The holistic or totality test necessitates a 'consideration of the entirety of the marks as applied to the products, including the labels and packaging, in determining confusing similarity. The discerning eye of the observer must focus not only on the predominant words, but also on the other features appearing on both labels so that the observer may draw conclusion on whether one is confusingly similar to the other.(4)
These definitions and the application of these tests in practice implies that the holistic test is the stricter of the two. Relevant case law from the Philippines suggests that Supreme Court decisions which apply the holistic test tend to find the absence of trademark infringement, while decisions which apply the dominancy test tend to find its presence. Thus, the holistic test generally favours local imitations, while the dominancy test generally favours established international brands.
McDonald's has been involved in two trademark infringement cases that reached the Supreme Court. One case involved a trademark infringement lawsuit filed by McDonald's Corporation against LC Big Mak Burger, Inc, a domestic corporation that operates fast-food outlets and snack vans that sell hamburgers and other food items on which it uses the mark BIG MAK.(5) In this case, the Supreme Court applied the dominancy test and found a likelihood of confusion between the BIG MAK and BIG MAC marks, thus rendering the former infringing:
First, 'Big Mak' sounds exactly the same as 'Big Mac.' Second, the first word in 'Big Mak' is exactly the same as the first word in 'Big Mac.' Third, the first two letters in 'Mak' are the same as the first two letters in 'Mac.' Fourth, the last letter in 'Mak' while a 'k' sounds the same as 'c' when the word 'Mak' is pronounced. Fifth, in Filipino, the letter 'k' replaces 'c' in spelling, thus 'Caloocan; is spelled 'Kalookan.'
In short, aurally the two marks are the same, with the first word of both marks phonetically the same, and the second word of both marks also phonetically the same. Visually, the two marks have both two words and six letters, with the first word of both marks having the same letters and the second word having the same first two letters. In spelling, considering the Filipino language, even the last letters of both marks are the same.(6)
Further, according to the Supreme Court, the fact that Big Mak hamburgers are targeted at low-income groups and Big Mac hamburgers are targeted at middle and upper-income groups did not remove the likelihood of confusion "since the low-income group might be led to believe that the Big Mak hamburgers are the low-end hamburgers marketed by petitioners".(7) In addition, the fact that the BIG MAK mark was being used by the defendant on food products other than hamburgers, which were wrapped in plastic (unlike McDonald's Styrofoam boxes) and sold in food stalls and mobile vans (unlike McDonald's fast-food restaurants) did not excuse the infringement. In this respect, the court stated that:
The registered trademark owner may use his mark on the same or similar products, in different segments of the market, and at different price levels depending on variations of the products for specific segments of the market. The Court has recognized that the registered trademark owner enjoys protection in product and market areas that are the normal potential expansion of his business.(8)
Although LC Big Mak Burger, Inc stopped using the BIG MAK mark on its food items, it continued using the name 'LC Big Mak Burger, Inc' on its food stalls and food items. This prompted McDonald's to sue LC Big Mak Burger, Inc again for contempt, alleging disobedience of the injunction order. LC Big Mak Burger, Inc won, as the Supreme Court held that the injunction order was against the use of the mark BIG MAK, rather than the use of the corporate name LC Big Mak Burger, Inc.(9)
The second McDonald's dispute involved an inter partes case in which McDonald's opposed MacJoy Fastfood Corporation's registration of the mark MACJOY & DEVICE for chicken, burgers, fries, spaghetti, palabok (a noodle dish), tacos, sandwiches, halo-halo (a cold dessert) and steaks.(10) The Supreme Court found confusing similarity "such that an ordinary purchaser can conclude an association or relation between the marks",(11) ruling as follows:
To begin with, both marks use the corporate 'M' design logo and the prefixes 'Mc' and/or 'Mac' as dominant features. The first letter 'M' in both marks puts emphasis on the prefixes 'Mc' and/or 'Mac' by the similar way in which they are depicted i.e. in an arch-like, capitalized and stylized manner.
For sure, it is the prefix 'Mc,' an abbreviation of 'Mac,' which visually and aurally catches the attention of the consuming public. Verily, the word 'MACJOY' attracts attention the same way as did 'McDonalds,' 'MacFries,' 'McSpaghetti,' 'McDo,' 'Big Mac' and the rest of the MCDONALD'S marks which all use the prefixes Mc and/or Mac.
Besides and most importantly, both trademarks are used in the sale of fastfood products. Indisputably, the respondent's trademark application for the 'MACJOY & DEVICE' trademark covers goods under Classes 29 and 30 of the International Classification of Goods, namely, fried chicken, chicken barbeque, burgers, fries, spaghetti, etc. Likewise, the petitioner's trademark registration for the MCDONALD'S marks in the Philippines covers goods which are similar if not identical to those covered by the respondent's application.
The differences and variations in styles as the device depicting a head of chicken with cap and bowtie and wings sprouting on both sides of the chicken head, the heart-shaped 'M,' and the stylistic letters in 'MACJOY & DEVICE;' in contrast to the arch-like 'M' and the one-styled gothic letters in McDonald's marks are of no moment. These minuscule variations are overshadowed by the appearance of the predominant features mentioned hereinabove.
Nestlé is another international brand that has been accorded protection by the dominancy test. Societe Des Produits Nestlé, SA, a Swiss corporation, which uses the marks MASTER ROAST and MASTER BLEND for coffee and coffee extracts, opposed CFC Corporation's registration of FLAVOR MASTER for instant coffee.(12) The Supreme Court applied the dominancy test because the product involved was a common and inexpensive item:
An ordinary purchaser or buyer does not usually make such scrutiny nor does he usually have the time to do so. The average shopper is usually in a hurry and does not inspect every product on the shelf as if he were browsing in a library.
If the ordinary purchaser is 'undiscerningly rash' in buying such common and inexpensive household products as instant coffee, and would therefore be 'less inclined to closely examine specific details of similarities and dissimilarities' between the two competing products, then it would be less likely for the ordinary purchaser to notice that CFC's trademark FLAVOR MASTER carries the colors orange and mocha while that of Nestle's uses red and brown. The application of the totality or holistic test is improper since the ordinary purchaser would not be inclined to notice the specific features, similarities or dissimilarities, considering that the product is an inexpensive and common household item.(13)
The Supreme Court ruled in Nestlé's favour because the word 'master' was the dominant feature of Nestlé's mark:
From the evidence at hand, it is sufficiently established that the word MASTER is the dominant feature of opposer's mark. The word MASTER is printed across the middle portion of the label in bold letters almost twice the size of the printed word ROAST. Further, the word MASTER has always been given emphasis in the TV and radio commercials and other advertisements made in promoting the product.(14)
The Supreme Court also decided in Nestlé's favour in a case involving a conflict between its NAN milk products for infants and the NANNY powdered milk sold by 5M Enterprises.(15) In this case, the court used the dominancy test as follows:
Applying the dominancy test in the present case, the Court finds that 'NANNY' is confusingly similar to 'NAN.' 'NAN' is the prevalent feature of Nestle's line of infant powdered milk products for children past infancy and for adults. It is written in bold letters and used in all products. The line consists of PRE-NAN, NAN-H.A., NAN-1, and NAN-2. Clearly, 'NANNY' contains the prevalent feature 'NAN.' The first three letters of 'NANNY' are exactly the same as the letters of 'NAN.' When 'NAN' and 'NANNY' are pronounced, the aural effect is confusingly similar.(16)
The use of the holistic test led to a surprising ruling in an inter partes case filed by HD Lee Co, Inc, a manufacturer of Lee jeans. HD Lee Co had asked the court to cancel Emerald Garment Manufacturing Corporation's STYLISTIC MR. LEE mark for skirts, jeans, blouses, socks, briefs, jackets, jogging suits, dresses, shorts, shirts and lingerie.(17) The Supreme Court ruled in favor of the local imitation:
[The] petitioner's trademark is the whole 'STYLISTIC MR. LEE.' Although on its label the word 'LEE' is prominent, the trademark should be considered as a whole and not piecemeal. The dissimilarities between the two marks become conspicuous, noticeable and substantial enough to matter especially in the light of the following variables that must be factored in.
First, the products involved in the case at bar are, in the main, various kinds of jeans. These are not your ordinary household items like catsup, soysauce or soap which are of minimal cost. Maong pants or jeans are not inexpensive. Accordingly, the casual buyer is predisposed to be more cautious and discriminating in and would prefer to mull over his purchase.
Second, like his beer, the average Filipino consumer generally buys his jeans by brand. He does not ask the sales clerk for generic jeans but for, say, a Levis, Guess, Wrangler or even an Armani. He is, therefore, more or less knowledgeable and familiar with his preference and will not easily be distracted.
Finally, in line with the foregoing discussions, more credit should be given to the 'ordinary purchaser.' Cast in this particular controversy, the ordinary purchaser is not the 'completely unwary consumer' but is the 'ordinarily intelligent buyer' considering the type of product involved.(18)
The Supreme Court also applied the holistic test, quoting its decision in the STYLISTIC MR. LEE case, to reverse a trademark infringement conviction involving jeans. In this case, Victorio Diaz allegedly imitated the arcuate design, two-horse brand and two-horse patch of Levi's jeans by using LS JEANS TAILORING on the jeans that it was selling.(19) Unlike its decision in the BIG MAK case that trademark protection extends to the normal potential expansion of business, the court found it significant that the local imitation was sold in tailoring shops, while Levi's jeans were expensive and sold in malls and boutiques:
The maong pants or jeans made and sold by Levi's Philippines, which included LEVI'S 501, were very popular in the Philippines. The consuming public knew that the original LEVI'S 501 jeans were under a foreign brand and quite expensive. Such jeans could be purchased only in malls or boutiques as ready-to-wear items, and were not available in tailoring shops like those of Diaz's as well as not acquired on a 'made-to-order' basis. Under the circumstances, the consuming public could easily discern if the jeans were original or fake LEVI'S 501, or were manufactured by other brands of jeans.
Diaz used the trademark 'LS JEANS TAILORING' for the jeans he produced and sold in his tailoring shops. His trademark was visually and aurally different from the trademark 'LEVI STRAUSS & CO' appearing on the patch of original jeans under the trademark LEVI'S 501. The word 'LS' could not be confused as a derivative from 'LEVI STRAUSS' by virtue of the 'LS' being connected to the word 'TAILORING', thereby openly suggesting that the jeans bearing the trademark 'LS JEANS TAILORING' came or were bought from the tailoring shops of Diaz, not from the malls or boutiques selling original LEVI'S 501 jeans to the consuming public.
The prosecution also alleged that the accused copied the 'two horse design' of the petitioner-private complainant but the evidence will show that there was no such design in the seized jeans. Instead, what is shown is 'buffalo design.' Again, a horse and a buffalo are two different animals which an ordinary customer can easily distinguish.
The prosecution further alleged that the red tab was copied by the accused. However, evidence will show that the red tab used by the private complainant indicates the word 'LEVI'S' while that of the accused indicates the letters 'LSJT' which means LS JEANS TAILORING. Again, even an ordinary customer can distinguish the word LEVI'S from the letters LSJT.
In terms of classes of customers and channels of trade, the jeans products of the private complainant and the accused cater to different classes of customers and flow through the different channels of trade. The customers of the private complainant are mall goers belonging to class A and B market group – while that of the accused are those who belong to class D and E market who can only afford Php 300 for a pair of made-to-order pants.(20)
The Supreme Court also applied the holistic test to settle a trademark dispute between Philip Morris, Inc's MARK VII and MARK TEN and Fortune Tobacco's MARK for cigarettes.(21) As in the Nestlé MASTER case, the dispute concerned a dominant word; however, this time the Supreme Court found no confusing similarity between the marks:
For one, as rightly concluded by the CA after comparing the trademarks involved in their entirety as they appear on the products, the striking dissimilarities are significant enough to warn any purchaser that one is different from the other. Indeed, although the perceived offending word MARK is itself prominent in petitioners' trademarks MARK VII and MARK TEN, the entire marking system should be considered as a whole and not dissected, because a discerning eye would focus not only on the predominant word but also on the other features appearing in the labels. Only then would such discerning observer draw his conclusion whether one mark would be confusingly similar to the other and whether or not sufficient differences existed between the marks.(22)
For further information on this topic please contact Benjamin Z Lerma at Romulo Mabanta Buenaventura Sayoc & De Los Angeles by telephone (+63 2 848 0114) or email (firstname.lastname@example.org). The Romulo Mabanta Buenaventura Sayoc & De Los Angeles website can be accessed at www.romulo.com.
(2) This article is part of a series on trademark infringement in the Philippines. For the first article in the series, please see "Riding on popularity of foreign brands".
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Benjamin Z Lerma