The Supreme Court has unequivocally abandoned the holistic test in favour of the dominancy test in determining the confusing similarity of marks. While the court has clarified that the dominancy test is not governed by rigid rules, this absence of fixed standards often leaves parties uncertain as to which element of a mark should be considered dominant. A review of jurisprudence and the Intellectual Property Office of the Philippines (IPOPHL) rulings reveals discernible patterns that provide a more concrete framework for analysis.
Composite and figurative marks
Ernest Luigi A Manzanares
Associate
Federis & Associates Law Offices
In assessing composite marks, the court isolates the feature or features that first capture the attention of the ordinary purchaser. This approach recognises that in actual marketplace conditions, consumers rely on the eye-catching and striking features of the mark, rather than on every minor detail, and the analysis centres on their visual, aural and/or connotative similarities. The dominant, prevalent or essential features become the focal point of comparison.
Where the competing devices differ markedly in design, the dominant feature is not copied. In Great White Shark v Caralde, the contending marks contained shark devices, but one mark depicted a colourful shark formed by letters, while the other used a simple outline. The court found no confusing similarity because the overall design and commercial impression differed.
In Lacoste SA v Crocodile, there was no confusing similarity between the marks, as their dominant “saurian” figures were visually distinct. Lacoste’s mark featured a right-facing crocodile with solid detailing and scutes, while Crocodile’s composite mark paired the stylised word “Crocodile” with a left-facing, scale-patterned figure tilted upward. The differences in orientation, detailing and overall design led the court to conclude that the marks created distinct visual and commercial impressions.
Multi-word marks
In McDonald’s Corp v LC Big Mak, the court compared “BIG MAK” with “BIG MAC”. The use of “Big Mak” created a likelihood of confusion since the marks are aurally identical. Both marks are pronounced the same way. Visually, each mark consists of two words with six letters, sharing the same first word and nearly identical second words.
In some cases, the conceptual meaning of a word can dominate the mark. In Suyen Corp v Danjaq LLC, the word “Bond” evoked the famous fictional spy, and the court held that relevant consumers would associate “AGENT BOND” with “JAMES BOND”. The dominancy test considers not only the visual and aural features of the marks, but also their connotations and the overall impression they create.
Descriptive or generic terms cannot be monopolised and generally receive little weight under the dominancy test. However, they may be deemed dominant when rendered with a distinct stylisation. In Mang Inasal v IFP, the court ruled that the word “INASAL” is descriptive, but the mark as stylised, particularly the “bold red letters against a black outline and on a yellow background with staggered design”, constituted the dominant feature of the mark, which the respondent had unlawfully copied.
Meanwhile, in Dermaline, Inc v Myra Pharmaceuticals, the marks “DERMALINE” and “DERMALIN” were compared, and the court found that Dermaline Inc had appropriated the distinctive portion “DERMALIN” of Myra Pharmaceuticals’ mark. When a word mark contains a descriptive root, that element is accorded less weight. In DERMALIN, however, the suffix “-LIN” imparted the respondent’s mark with a distinctive character.
Single-word marks
Courts and the IPOPHL have usually treated the first syllables or a similar sequence of letters as the dominant feature. In Wilton Dy v Koninklijke Philips Electronics, “PHILITES” was found to be confusingly similar to “PHILIPS” because of the shared “PHILI” and their close aural impressions.
In Seri Sombooksakdikul v Orlane SA, the court observed that “-LANE” was a common suffix in the marks “LOLANE” and “ORLANE”, but ruled that it was not their dominant feature. The court explained that their aural impressions are dissimilar: “LEYN” for LOLANE, and “LAN” for ORLANE, the latter being of French origin. The court did not find a basis for the IPOPHL director-general’s sweeping conclusion that Filipinos would invariably pronounce ORLANE as “ORLEYN”.
A criticism of the dominancy test is its susceptibility to subjectivity. Adjudicators may differ in identifying which element is “dominant”, which results in conflicting outcomes across similar cases. Further, while the test directs attention to the dominant feature, it also requires consideration of the overall impression created by the mark, creating doctrinal confusion with the “holistic” test. The dominancy test continues to evolve, and its refinement will be critical in striking the balance between protecting brand owners and ensuring fairness in trademark disputes.
Ernest Luigi A Manzanares is an associate at Federis & Associates Law Offices
FEDERIS & ASSOCIATES LAW OFFICES
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