G.R. No.

188996 Respondent adds that by promotion, worldwide registration, widespread and high standard
use, the mark had acquired distinction, goodwill, superior quality image and reputation and
SERI SOMBOONSAKDIKUL, Petitioner
was now well-known.9 Imputing bad faith on the petitioner, respondent claimed that LOLANE' s
vs.
first usage was only on August 19, 2003.10
ORLANE S.A., Respondent
In his answer,11 petitioner denied that the LOLANE mark was confusingly similar to the mark
DECISION
ORLANE. He averred that he was the lawful owner of the mark LOLANE which he has used for
JARDELEZA, J.: various personal care products sold worldwide. He alleged that the first worldwide use of the
mark was in Vietnam on July 4, 1995. Petitioner also alleged that he had continuously
Assailed in this petition is the Decision1 of the Court of Appeals (CA) in CA-G.R. SP No. 105229 marketed and advertised Class 3 products bearing LOLANE mark in the Philippines and in
dated July 14, 2009 which affirmed the decision of the Director General of the Intellectual different parts of the world and that as a result, the public had come to associate the mark
Property Office (IPO) denying the application for the mark "LOLANE." with him as provider of quality personal care products.12
Facts Petitioner maintained that the marks were distinct and not confusingly similar either under the
On September 23, 2003, petitioner Seri Somboonsakdikul (petitioner) filed an application for dominancy test or the holistic test. The mark ORLANE was in plain block upper case letters
registration2 of the mark LOLANE with the IPO for goods3 classified under Class 3 (personal care while the mark LOLANE was printed in stylized word with the second letter L and the letter A
products) of the International Classification of Goods and Services for the Purposes of the co-joined. Furthermore, the similarity in one syllable would not automatically result in
Registration of Marks (International Classification of Goods).4 Orlane S.A. (respondent) filed an confusion even if used in the same class of goods since his products always appear with Thai
opposition to petitioner's application, on the ground that the mark LOLANE was similar to characters while those of ORLANE always had the name Paris on it. The two marks are also
ORLANE in presentation, general appearance and pronunciation, and thus would amount to an pronounced differently. Also, even if the two marks contained the word LANE it would not
infringement of its mark.5 Respondent alleged that: (1) it was the rightful owner of the ORLANE make them confusingly similar since the IPO had previously allowed the co-existence of
mark which was first used in 1948; (2) the mark was earlier registered in the Philippines on July trademarks containing the syllable "joy" or "book" and that he also had existing registrations
26, 1967 under Registration No. 129961 for the following goods:6 and pending applications for registration in other countries.13

x x x perfumes, toilet water, face powders, lotions, essential oils, cosmetics, lotions for the hair, The Bureau of Legal Affairs (BLA) rejected petitioner's application in a Decision14 dated
dentrifices, eyebrow pencils, make-up creams, cosmetics & toilet preparations under February 27, 2007, finding that respondent's application was filed, and its mark registered,
Registration No. 12996.7 much earlier.15 The BLA ruled that there was likelihood of confusion based on the following
observations: (1) ORLANE and LOLANE both consisted of six letters with the same last four
and (3) on September 5, 2003, it filed another application for use of the trademark on its letters - LANE; (2) both were used as label for similar products; (3) both marks were in two
additional products: syllables and that there was only a slight difference in the first syllable; and (4) both marks had
x x x toilet waters; revitalizing waters, perfumes, deodorants and body deodorants, anti- the same last syllable so that if these marks were read aloud, a sound of strong similarity
perspiration toiletries; men and women perfume products for face care and body care; face, would be produced and such would likely deceive or cause confusion to the public as to the
eye, lips, nail, hand make-up products and make-up removal products, towels impregnated two trademarks.16
with cosmetic lotions; tanning and instant tanning sunproducts, sunprotection products, (not Petitioner filed a motion for reconsideration but this was denied by the Director of the BLA on
for medical use), after-suncosmetic products; cosmetic products; slimming cosmetic aids; May 7, 2007.17 The BLA ruled that the law did not require the marks to be so identical as to
toiletries; lotions, shampoos and hair care products; shave and after shave products, shaving produce actual error or mistake as the likelihood of confusion was enough. The BLA also found
and hair removing products; essential oils; toothpastes; toiletry, cosmetic and shaving kits for that the dominant feature in both marks was the word LANE; and that the marks had a strong
travel, filled or fitted vanity-cases[.]8
visual and aural resemblance that could cause confusion to the buying public. This difference in the first letters, thus the two marks would likely cause confusion to the eyes of
resemblance was amplified by the relatedness of the goods.18 the public. The similarity is highlighted when the two marks are pronounced considering that
both are one word consisting of two syllables. The CA ruled that when pronounced, the two
On appeal, the Director General of the IPO affirmed the Decision of the BLA Director. Despite
marks produce similar sounds.28 The CA did not heed petitioner's contention that since the
the difference in the first syllable, there was a strong visual and aural resemblance since the
mark ORLANE is of French origin, the same is pronounced as "ORLAN." Filipinos would
marks had the same last four letters, i.e.,  LANE, and such word is pronounced in this
invariably pronounce it as "OR-LEYN."29 The CA also noted that the trademark ORLANE is a
jurisdiction as in "pedestrian lane."19 Also, the mark ORLANE is a fanciful mark invented by the
fanciful name and petitioner was not able to explain why he chose the word LOLANE as
owner for the sole purpose of functioning as a trademark and is highly distinctive. Thus, the
trademark for his personal care products. Thus, the only logical conclusion is that he would
fact that two or more entities would accidentally adopt an identical or similar fanciful mark
want to benefit from the established reputation and goodwill of the ORLANE mark.30
was too good to be true especially when they dealt with the same goods or services.20 The
Director General also noted that foreign judgments invoked by petitioner for the grant of its The CA rejected petitioner's assertion that his products' cheaper price and low-income market
application are not judicial precedents.21 eliminates the likelihood of confusion. Low-income groups, and even those who usually
purchased ORLANE products despite the higher cost, may be led to believe that LOLANE
Thus, petitioner filed a petition for review22 before the CA arguing that there is no confusing
products are low-end personal care products also marketed by respondent.31
similarity between the two marks. Petitioner maintained that LANE is not the dominant feature
of the mark and that the dominancy test did not apply since the trademarks are only plain The CA upheld the applicability of the dominancy test in this case. According to the CA, the
word marks and the dominancy test presupposes that the marks involved are composite dominancy test is already recognized and incorporated in Section 155.1 of Republic Act No.
marks.23 Petitioner pointed out that the IPO had previously allowed the mark GIN LANE under 8293 (RA 8293), otherwise known as the Intellectual Property Code of the
Registration No. 4-2004-006914 which also involved products under Class 3.24 While petitioner Philippines.32 Citing McDonald's Corporation v. MacJoy Fastfood Corporation,33 the CA ruled
admitted that foreign judgments are not judicial precedents, he argued that the IPO failed to that the dominancy test is also preferred over the holistic test. This is because the latter relies
recognize relevant foreign judgments, i.e.,  the Australian Registrar of Trademarks and the IPO only on the visual comparison between two trademarks, whereas the dominancy test relies not
of Singapore which ruled that there was no confusing similarity between the marks LOLANE only on the visual, but also on their aural and connotative comparisons, and their overall
and ORLANE.25 Lastly, the Director General should have deferred to the findings of the impressions created.34 Nonetheless, the CA stated that there is nothing in this jurisdiction
Trademark Examiner who made a substantive examination of the application for trademark dictating that the dominancy test is applicable for composite marks.35
registration, and who is an expert in the field and is in the best position to determine whether
The CA was not swayed by the alleged favorable judgment by the IPO in the GIN LANE
there already exists a registered mark or mark for registration. Since petitioner's application for
application, ruling that in trademark cases, jurisprudential precedents should be applied only
registration of the mark LOLANE proceeded to allowance and publication without any adverse
to a case if they are specifically in point.36 It also did not consider the ruling of the IPOs in
citation of a prior confusingly similar mark, this meant that the Trademark Examiner was of the
Australia, South Africa, Thailand and Singapore which found no confusing similarity between
view that LO LANE was not confusingly similar to ORLANE.26
the marks LOLANE and ORLANE, stating that foreign judgments do not constitute judicial
The CA Ruling precedent in this jurisdiction.37

The CA denied the petition and held that there exists colorable imitation of respondent's mark Finally, the CA did not give merit to petitioner's contention that the Director General should
by LOLANE.27 have deferred to the findings of the Trademark Examiner. According to the CA, the proceedings
before the Trademark Examiner are ex-parte,38 and his findings are merely prima
The CA accorded due respect to the Decision of the Director General and ruled that there was
facie.  Whatever his decision may be is still subject to review and/or appeal.39
substantial evidence to support the IPO's findings of fact. Applying the dominancy test, the CA
ruled that LOLANE' s mark is confusingly or deceptively similar to ORLANE. There are The Petition40
predominantly striking similarities in the two marks including LANE, with only a slight
Petitioner maintains that the CA erred in its interpretation of the dominancy test, when it ruled the names of local outlets that products bearing the mark ORLANE are being marketed or sold
that the dominant feature of the contending marks is the suffix "LANE."41 The CA failed to to the general consuming public.55
consider that in determining the dominant portion of a mark, significant weight must be given
Respondent's Comment56
to whether the buyer would be more likely to remember and use one part of a mark as
indicating the origin of the goods.42 Thus, that part which will likely make the most impression Respondent reiterates the decisions of the CA and the IPO.57 It maintains that ORLANE is
on the ordinary viewer will be treated as the dominant portion of conflicting marks and given entitled to protection under RA 8293 since it is registered with the IPO with proof of actual
greater weight in the comparison.43 use.58 Respondent posits that it has established in the world59 and in the Philippines an image
and reputation for manufacturing and selling quality beauty products. Its products have been
Petitioner argues that both LOLANE and ORLANE are plain word marks which are devoid of
sold in the market for 61 years and have been used in the Philippines since 1972.60 Thus, to
features that will likely make the most impression on the ordinary viewer. If at all, the very
allow petitioner's application would unduly prejudice respondent's right over its registered
word marks themselves, LOLANE and ORLANE are each to be regarded as dominant
trademark.61 Lastly, respondent argues that decisions of administrative agencies such as the
features.44 Moreover, the suffix LANE is a weak mark, being "in common use by many other
IPO shall not be disturbed by the courts, absent any showing that the former have acted
sellers in the market. "45 Thus, LANE is also used in the marks SHELLANE and GIN LANE, the
without or in excess of their jurisdiction, or with grave abuse of discretion.62
latter covering goods under Class 3. Moreover, the two marks are aurally different since
respondent's products originate from France and is read as "OR-LAN" and not "OR-LEYN."46 Issue
Petitioner also claims that the CA completely disregarded the holistic test, thus ignoring the We resolve the issue of whether there is confusing similarity between ORLANE and LOLANE
dissimilarity of context between LOLANE and ORLANE. Assuming that the two marks produce which would bar the registration of LOLANE before the IPO.
similar sounds when pronounced, the differences in marks in their entirety as they appear in
their respective product labels should still be the controlling factor in determining confusing Our Ruling
similarity.47 We find that the CA erred when it affirmed the Decision of the IPO.
Besides, there has been no explicit declaration abandoning the holistic test.48 Thus, petitioner While it is an established rule in administrative law that the courts of justice should respect the
urges us to go beyond the similarities in spelling and instead consider how the marks appear in findings of fact of administrative agencies, the courts may not be bound by such findings of fact
their respective labels, the dissimilarities in the size and shape of the containers, their color, when there is absolutely no evidence in support thereof or such evidence is clearly, manifestly
words appearing thereon and the general appearance,49 hence: (1) the commonality of the and patently insubstantial; and when there is a clear showing that the administrative agency
marks ORLANE and LOLANE starts from and ends with the four-letter similarity-LANE and acted arbitrarily or with grave abuse of discretion or in a capricious and whimsical manner,
nothing else;50 (2) ORLANE uses "safe" or conventional colors while LOLANE uses loud or such that its action may amount to an excess or lack of jurisdiction.63 Moreover, when there is
psychedelic colors and designs with Thai characters;51 and (3) ORLANE uses the term "Paris," a showing that the findings or conclusions, drawn from the same pieces of evidence, were
indicating the source of origin of its products.52 arrived at arbitrarily or in disregard of the evidence on record, they may be reviewed by the
Petitioner likewise claims that consumers will be more careful in their choice because the courts.64 Such is the case here.
goods in question are directly related to personal hygiene and have direct effects on their well- There is no colorable imitation between the marks LOLANE and ORLANE which would lead to
being, health and safety.53 Moreover, with the huge price difference between ORLANE and any likelihood of confusion to the ordinary purchasers.
LOLANE products, relevant purchasers are less likely to be confused.54
A trademark is defined under Section 121.1 of RA 8293 as any visible sign capable of
Finally, petitioner notes that respondent has neither validly proven nor presented sufficient distinguishing the goods. It is susceptible to registration if it is crafted fancifully or arbitrarily
evidence that the mark ORLANE is in actual commercial use in the Philippines. Respondent and is capable of identifying and distinguishing the goods of one manufacturer or seller from
failed to allege in any of its pleadings submitted to the IPO's BLA and the IPO Director General
those of another.65 Thus, the mark must be distinctive.66 The registrability of a trademark is In determining the likelihood of confusion, the Court must consider: [a] the resemblance
governed by Section 123 of RA 8293. Section 123.1 provides: between the trademarks; [b] the similarity of the goods to which the trademarks are
attached; [c] the likely effect on the purchaser and [d] the registrant's express or implied
Section 123. Registrability. -
consent and other fair and equitable considerations. (Citations omitted, emphasis supplied.)68
123 .1. A mark cannot be registered if it:
While Mighty Corporation  enumerates four requirements, the most essential requirement, to
xxx our mind, for the determination of likelihood of confusion is the existence of resemblance
between the trademarks, i.e.,  colorable imitation. Absent any finding of its existence, there can
d. Is identical with a registered mark belonging to a different proprietor or a mark with an be no likelihood of confusion. Thus we held:
earlier filing or priority date, in respect of:
Whether a trademark causes confusion and is likely to deceive the public hinges on "colorable
i. The same goods or services, or imitation" which has been defined as "such similarity in form, content, words, sound, meaning,
ii. Closely related goods or services, or special arrangement or general appearance of the trademark or trade name in their overall
presentation or in their essential and substantive and distinctive parts as would likely mislead
iii. If it nearly resembles such a mark as to be likely to deceive or cause confusion; or confuse persons in the ordinary course of purchasing the genuine article." (Citations
e. Is identical with, or confusingly similar to, or constitutes a translation of a mark which is omitted.)69
considered by the competent authority of the Philippines to be well-known internationally and We had the same view in Emerald Garment Manufacturing Corporation  v. Court of
in the Philippines, whether or not it is registered here, as being already the mark of a person Appeals,70 where we stated:
other than the applicant for registration, and used for identical or similar goods or services:
Provided, That in determining whether a mark is well-known, account shall be taken of the Proceeding to the task at hand, the essential element of infringement is colorable
knowledge of the relevant sector of the public, rather than of the public at large, including imitation. This term has been defined as "such a close or ingenious imitation as to be
knowledge in the Philippines which has been obtained as a result of the promotion of the calculated to deceive ordinary purchasers, or such resemblance of the infringing mark to the
mark; original as to deceive an ordinary purchaser giving such attention as a purchaser usually gives,
and to cause him to purchase the one supposing it to be the other."
xxx
Colorable imitation does not mean such similitude as amounts to identity. Nor does it require
In Mighty Corporation v. E. & J Gallo Winery,67 we laid down the that all the details be literally copied. x x x (Citation omitted, emphasis supplied.)71
requirements for a finding of likelihood of confusion, thus: In determining colorable imitation, we have used either the dominancy test or the holistic or
There are two types of confusion in trademark infringement. The first is "confusion of goods" totality test. The dominancy test considers the similarity of the prevalent or dominant features
when an otherwise prudent purchaser is induced to purchase one product in the belief that he of the competing trademarks that might cause confusion, mistake, and deception in the mind
is purchasing another, in which case defendant's goods are then bought as the plaintiffs and its of the purchasing public. More consideration is given on the aural and visual impressions
poor quality reflects badly on the plaintiffs reputation. The other is "confusion of business" created by the marks on the buyers of goods, giving little weight to factors like process, quality,
wherein the goods of the parties are different but the defendant's product can reasonably sales outlets, and market segments.72 On the other hand, the holistic test considers the
(though mistakenly) be assumed to originate from the plaintiff, thus deceiving the public into entirety of the marks as applied to the products, including the labels and packaging, in
believing that there is some connection between the plaintiff and defendant which, in fact, determining confusing similarity. The focus is not only on the predominant words but also on
does not exist. the other features appearing on the labels.73
The CA's use of the dominancy test is in accord with our more recent ruling in UFC Philippines, the mark LOLANE was rendered in stylized word with the second letter L and the letter A co-
Inc. (now merged with Nutria-Asia, Inc. as the surviving entity) v. Barrio Fiesta Manufacturing joined.81
Corporation.74 In UFC Philippines, Inc.,  we relied on our declarations in McDonald's Corporation
Second, as to the aural aspect of the marks, LOLANE and ORLANE do not sound alike. Etepha v.
v. L.C. Big Mak Burger, Inc.,75 Co Tiong Sa v. Director of Patents,76 and Societe Des Produits
Director of Patents, et al.82 finds application in this case. In Etepha,  we ruled that there is no
Nestle, S.A. v. Court of Appeals77 that the dominancy test is more in line with the basic rule in
confusing similarity between PERTUSSIN and ATUSSIN. The Court considered among other
trademarks that confusing similarity is determined by the aural, visual and connotative and
factors the aural differences between the two marks as follows:
overall impressions created by the marks. Thus, based on the dominancy test, we ruled that
there is no confusing similarity between "PAPA BOY & DEVICE" mark, and "PAPA KETSARAP" 5. As we take up Pertussin and Atussin once again, we cannot escape notice of the fact that the
and "PAPA BANANA CATSUP." two words do not sound alike-when pronounced. There is not much phonetic similarity
between the two. The Solicitor General well-observed that in Pertussin the pronunciation of
While there are no set rules as what constitutes a dominant feature with respect to
tbe prefix "Per", whether correct or incorrect, includes a combination of three letters
trademarks applied for registration, usually, what are taken into account are signs, color,
design, peculiar shape or name, or some special, easily remembered earmarks of the brand P, e  and r;  whereas, in Atussin the whole starts with the single letter A  added to suffix
that readily attracts and catches the attention of the ordinary consumer.78 In UFC Philippines, "tussin".1âwphi1 Appeals to the ear are dissimilar. And this, because in a word combination,
Inc.,  what we considered as the dominant feature of the mark is the first word/figure that the part that comes first is the most pronounced.  An expositor of the applicable rule here is the
catches the eyes or that part which appears prominently to the eyes and ears.79 decision in the Syrocol-Cheracol controversy. There, the ruling is that trademark Syrocol (a
cough medicine preparation) is not confusedly similar to trademark Cheracol  (also a cough
However, while we agree with the CA's use of the dominancy test, we arrive at a different
medicine preparation). Reason: the two words "do not look or sound enough alike to justify a
conclusion. Based on the distinct visual and aural differences between LOLANE and ORLANE,
holding of trademark infringement", and the "only similarity is in the last syllable, and that is
we find that there is no confusing similarity between the two marks.
not uncommon in names given drug compounds". (Citation omitted, emphasis supplied.)83
The suffix LANE is not the dominant feature of petitioner's mark. Neither can it be considered
Similar to Etepha,  appeals to the ear in pronouncing ORLANE and LOLANE are dissimilar. The
as the dominant feature of ORLANE which would make the two marks confusingly similar.
first syllables of each mark, i.e.,  OR and LO do not sound alike, while the proper pronunciation
of the last syllable LANE-"LEYN" for LOLANE and "LAN" for ORLANE, being of French origin, also
differ. We take exception to the generalizing statement of the Director General, which was
affirmed by the CA, that Filipinos would invariably pronounce ORLANE as "ORLEYN." This is
another finding of fact which has no basis, and thus, justifies our reversal of the decisions of
the IPO Director General and the CA. While there is possible aural similarity when certain
sectors of the market would pronounce ORLANE as "ORLEYN," it is not also impossible that
some would also be aware of the proper pronunciation--especially since, as respondent claims,
its trademark ORLANE has been sold in the market for more than 60 years and in the
Philippines, for more than 40 years.84

First, an examination of the appearance of the marks would show that there are noticeable Respondent failed to show proof that the suffix LANE has registered in the mind of consumers
differences in the way they are written or printed as shown below:80 that such suffix is exclusively or even predominantly associated with ORLANE products. Notably
and as correctly argued by petitioner, the IPO previously allowed the registration of the mark
As correctly argued by petitioner in his answer before the BLA, there are visual differences
GIN LANE for goods also falling under Class 3, i.e.,  perfume, cologne, skin care preparations,
between LOLANE and ORLANE since the mark ORLANE is in plain block upper case letters while
hair care preparations and toiletries.85
We are mindful that in the earlier cases of Mighty Corporation  and Emerald,  despite a finding
that there is no colorable imitation, we still discussed the nature of the goods using the
trademark and whether the goods are identical, similar, competing or related. We need not
belabor a similar discussion here considering that the essential element in determining
likelihood of confusion, i.e.,  colorable imitation by LO LANE of the mark ORLANE, is absent in
this case. Resemblance between the marks is a separate requirement from, and must not be
confused with, the requirement of a similarity of the goods to which the trademarks are
attached. In Great White Shark Enterprises, Inc v. Caralde, Jr.,86 after we ruled that there was
no confusing similarity between Great White Shark's "GREG NORMAN LOGO" and Caralde's
"SHARK & LOGO" mark due to the visual and aural dissimilarities between the two marks, we
deemed it unnecessary to resolve whether Great White Shark's mark has gained recognition as
a well-known mark.

Finding that LOLANE is not a colorable imitation of ORLANE due to distinct visual and aural
differences using the dominancy test, we no longer find it necessary to discuss the contentions
of the petitioner as to the appearance of the marks together with the packaging, nature of the
goods represented by the marks and the price difference, as well as the applicability of foreign
judgments. We rule that the mark LOLANE is entitled to registration.

WHEREFORE, the petition is GRANTED. The Decision of the Court of Appeals dated July 14,
2009 is REVERSED and SET ASIDE. Petitioner's application of the mark LOLANE for goods
classified under Class 3 of the International Classification of Goods is GRANTED.

SO ORDERED.