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Also, the matters contained in the following were written in accordance with the law, rules, and jurisprudence prevailing at the time of writing and posting, and do not include any future developments on the subject matter under discussion.
AT A GLANCE:
The Dominancy Test focuses on the similarity of the prevalent features of the competing trademarks which might cause confusion or deception, and thus infringement. If the competing trademark contains the main, essential or dominant features of another, and confusion or deception is likely to result, infringement takes place. Duplication or imitation is not necessary; nor is it necessary that the infringing label should suggest an effort to imitate. The question is whether the use of the marks involved is likely to cause confusion or mistake in the mind of the public or deceive purchasers||| (Kolin Electronics Co., Inc. v. Kolin Philippines International, Inc., G.R. No. 228165, [February 9, 2021])
The law says –
SECTION 155. Remedies; Infringement. ‑ Any person who shall, without the consent of the owner of the registered mark:
155.1. Use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark or the same container or a dominant feature thereof in connection with the sale, offering for sale, distribution, advertising of any goods or services including other preparatory steps necessary to carry out the sale of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or
155.2. Reproduce, counterfeit, copy or colorably imitate a registered mark or a dominant feature thereof and apply such reproduction, counterfeit, copy or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive, shall be liable in a civil action for infringement by the registrant for the remedies hereinafter set forth: Provided, That the infringement takes place at the moment any of the acts stated in Subsection 155.1 or this subsection are committed regardless of whether there is actual sale of goods or services using the infringing material.
Jurisprudence has developed two tests in determining similarity and likelihood of confusion in trademark resemblance:
(a) the Dominancy Test applied in Asia Brewery, Inc. vs. Court of Appeals and other cases, and (b) the Holistic or Totality Test used in Del Monte Corporation vs. Court of Appeals and its preceding cases.
It has been consistently held that the question of infringement of a trademark is so to be determined by the test of dominancy. Similarity in size, form, and color, while relevant, is not conclusive. If the competing trademark contains the main or essential or dominant features of another, and confusion and deception is likely to result, infringement takes place. Duplication or imitation is not necessary; nor it is necessary that the infringing label should suggest an effort to imitate. (Co Tiong Sa vs. Director of Patents, L-5372, May 24, 1954.||| (Lim Hoa v. Director of Patents, G.R. No. L-8072, [October 31, 1956], 100 PHIL 214-219)
Out of the two tests, however, only the Dominancy Test has been incorporated in the IP Code. This was discussed in McDonald’s Corporation v. L.C. Big Mak Burger, Inc., where the Court also observed its own reliance on the dominancy test, thus:
The dominancy test considers the dominant features in the competing marks in determining whether they are confusingly similar. Under the dominancy test, courts give greater weight to the similarity of the appearance of the product arising from the adoption of the dominant features of the registered mark, disregarding minor differences. Courts will consider more the aural and visual impressions created by the marks in the public mind, giving little weight to factors like prices, quality, sales outlets and market segments.
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The test of dominancy is now explicitly incorporated into law in Section 155.1 of the Intellectual Property Code which defines infringement as the “colorable imitation of a registered mark x x x or a dominant feature thereof.” (Emphasis supplied; italics omitted)
More than an indicator of a mere preference for the Dominancy Test, it appears that the legislative intent in explicitly adopting the Dominancy Test was to abandon the Holistic Test altogether, as can be seen in the legislative deliberations:
Trademarks
Part III of the Code is the new law on trademarks.
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To resolve the conflicting doctrines regarding what constitutes colorable imitation of a registered mark, the Code adopts the Dominancy Test so that any person who uses in commerce any colorable imitation of [a] registered mark or a dominant feature thereof shall be liable for damages for infringement.
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Policy Issues
We have summarized the basic features of the proposed Intellectual Property Code. Let me now try to identify provisions of the Code that may be the focus of policy debates.
Without being exclusive, they are the following:
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Trademarks
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- The committee notes the varying decisions of the Supreme Court regarding colorable imitation of a registered mark. There are decisions which espouse the Dominancy Test, while there are others which use the Holistic Test. We, therefore, recommend the adoption of the Dominancy Test to resolve once and for all the debate. (Emphasis supplied)
Considering the adoption of the Dominancy Test and the abandonment of the Holistic Test, as confirmed by the provisions of the IP Code and the legislative deliberations, the Court hereby makes it crystal clear that the use of the Holistic Test in determining the resemblance of marks has been abandoned. (Kolin Electronics Co., Inc. v. Kolin Philippines International, Inc., G.R. No. 228165, [February 9, 2021])
Read also: What is the difference between trademark infringement and unfair competition?
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