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 respondents goods are produced by or originated from the
petitioner, or are under its sponsorship, to the petitioners damage and prejudice;
that since petitioner was first in applying for registration of the mark, the same
should be favoured with respondents 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
respondents 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 respondents
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"
mark17 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 GWSs 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 other 14 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