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Philites VS Philips

The Supreme Court affirmed the Court of Appeals' decision to dismiss the application for trademark registration of PHILITES. Applying a holistic approach, the Court found PHILITES to be confusingly similar to the well-known and registered trademark PHILIPS for similar goods. Both marks prominently featured the five letters "PHILI" and were used for identical goods of light bulbs. Considering the trademarks and packaging in their entirety holistically, the Court concluded there was a likelihood of confusion between the marks.

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Ma. Nieves Matilde Mercader
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173 views

Philites VS Philips

The Supreme Court affirmed the Court of Appeals' decision to dismiss the application for trademark registration of PHILITES. Applying a holistic approach, the Court found PHILITES to be confusingly similar to the well-known and registered trademark PHILIPS for similar goods. Both marks prominently featured the five letters "PHILI" and were used for identical goods of light bulbs. Considering the trademarks and packaging in their entirety holistically, the Court concluded there was a likelihood of confusion between the marks.

Uploaded by

Ma. Nieves Matilde Mercader
Copyright
© © All Rights Reserved
We take content rights seriously. If you suspect this is your content, claim it here.
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Download as DOCX, PDF, TXT or read online on Scribd
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HOLISTIC APPROACH

G.R. No. 186088 March 22, 2017

WILTON DY and/or PHILITES ELECTRONIC & LIGHTING PRODUCTS ,petitioner,


vs.
KONINKLIJKE PHILIPS ELECTRONICS, N.V., respondent.

Facts:

On 12 April 2000, petitioner PHILITES filed a trademark covering its fluorescent bulb,
incandescent light, starter and ballast. After publication, respondent Koninklijke Philips
Electronics, N.V. ("PHILIPS") filed a Verified Notice of Opposition on March 17 2006, alleging
the following:

The approval of Application Serial No. 4-2000-002937 is contrary to the following provisions
(a) of Republic Act No. [RA] 8293 or the Intellectual Property Code of the Philippines (IP Code):
Sections 123.1(d), (i) and (iii), 123.1(e), 147, and 168.

The approval of Application Serial No. 4-2000-002937 will cause grave and irreparable
(b)
damage and injury to oppose.

The use and registration of the applied for mark by [petitioner] will mislead the public as to
(c)
the origin, nature, quality, and characteristic of the goods on which it is affixed;

[Petitioner's] application for registration is tantamount to fraud as it seeks to register and


obtain legal protection for an identical or confusingly similar mark that clearly infringes upon
(d)
the established rights of the [respondent] over its registered and internationally well-known
mark.

The registration of the trademark PHILITES & LETTER P DEVICE in the name of the
[petitioner] will violate the proprietary rights and interests, business reputation and goodwill
(e)
of the [respondent] over its trademark, considering that the distinctiveness of the trademark
PHILIPS will be diluted.

The registration of the applied for mark will not only prejudice the Opposer, but will also
(f) cause [petitioner] to unfairly profit commercially from the goodwill, fame and notoriety of
Opposer's trademark and reputation.

[Petitioner's] registration and use of the applied for mark in connection with goods under
Class 11 will weaken the unique and distinctive significance of mark PHILIPS and will tarnish,
(g) degrade or dilute the distinctive quality of Opposer's trademark and will result in the gradual
attenuation or whittling away of the value of Opposer's trademark, in violation of Opposer's
proprietary rights.

On 8 August 2006, petitioner filed a Verified Answer, stating that its PHILITES & LETTER
P DEVICE trademark and respondent's PHILIPS have vast dissimilarities in terms of spelling,
sound and meaning.

On November 09, 2006, IPP-BLA Director Estrellita Beltran-Abelardo rendered a Decision


denying the Opposition filed by respondent PHILIPS and concluded, from the evidence
presented, that the PHILIPS and PHILITES marks were so unlike, both visually and aurally and
It held that no confusion was likely to occur, despite their contemporaneous use.

On April 16, 2008, upon appeal, the IPP-DG rendered a Decision affirming the ruling of
the IPP-BLA and ruled that there were glaring differences and dissimilarities in the design and
general appearance of the Philips shield emblem mark and the letter 'P' of Philites mark.

On October 07, 2008, upon intermediate appellate review, the CA reversed and set aside
the decision of the Director General of the Intellectual Property Office and the application for
trademark registration of respondent Wilton Dy and/or Philites Electronic & Lighting Products
is DISMISSED and concluded that petitioner had intended to ride on the long-established
reputation and goodwill of respondent's trademark. It held that it is found to be "self-serving
asseveration that the mark 'PHILITES' is a coined or arbitrary mark from the words 'Philippines'

and 'lights. Of all the marks that petitioner could possibly think of for his light bulbs, it is odd
that petitioner chose a mark with the letters 'PHILI,' which are the same prevalent or dominant
five letters found in respondent's trademark 'PHILIPS' for the same products, light bulbs. Hence,
the appellate court concluded.

Issue:

Whether or not the mark applied for by petitioner is identical or confusingly similar with
that of respondent applying the holistic approach.

Held:

YES. A trademark is "any distinctive word, name, symbol, emblem, sign, or device, or any
combination thereof, adopted and used by a manufacturer or merchant on his goods to identify
and distinguish them from those manufactured, sold, or dealt by others.

Respondent opposes petitioner's application on the ground that PHILITES' registration


will mislead the public over an identical or confusingly similar mark of PHILIPS, which is
registered and internationally well-known mark.

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;
(e) Is identical with, or confusingly similar to, or constitutes a translation of a mark
which is considered by the competent authority of the Philippines to be well-
known internationally and in the Philippines, whether or not it is registered here,
as being already the mark of a person 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 knowledge of the
relevant sector of the public, rather than of the public at large, including
knowledge in the Philippines which has been obtained as a result of the promotion
of the mark.
Respondent's mark is a registered and well-known mark in the Philippines. There is no
question that respondent's mark PHILIPS is already a registered and well-known mark in the
Philippines.

Section 123.1 (e) of R.A. No. 8293 now categorically states that:
“a mark which is considered by the competent authority of the Philippines to be
well-known internationally and in the Philippines, whether or not it is registered
here,' cannot be registered by another in the Philippines."

Rule 100 (a) of the Rules and Regulations on Trademarks, Service Marks, Tradenames and
Marked or Stamped Containers defines "competent authority" in the following manner:

(c) "Competent authority" for purposes of determining whether a mark is well-


known, means the Court, the Director General, the Director of the Bureau of Legal
Affairs, or any administrative agency or office vested with quasi-judicial or judicial
jurisdiction to hear and adjudicate any action to enforce the rights to a mark.

Applying the dominancy test to this case requires us to look only at the mark submitted
by petitioner in its application, while we give importance to the aural and visual impressions the
mark is likely to create in the minds of the buyers. We agree with the findings of the CA that the
mark "PHILITES" bears an uncanny resemblance or confusing similarity with respondent's mark
"PHILIPS.
An examination of the trademarks shows that their dominant or prevalent feature is the
five-letter "PHILI", "PHILIPS" for petitioner, and "PHILITES" for respondent. The marks are
confusingly similar with each other such that an ordinary purchaser can conclude an association
or relation between the marks. The consuming public does not have the luxury of time to
ruminate the phonetic sounds of the trademarks, to find out which one has a short or long vowel
sound.

Most importantly, both trademarks are used in the sale of the same goods, which are light
bulbs. The confusing similarity becomes even more prominent when we examine the entirety of
the marks used by petitioner and respondent, including the way the products are packaged. In
using the holistic test, we find that there is a confusing similarity between the registered marks
PHILIPS and PHILITES, and note that the mark petitioner seeks to register-is vastly different
from that which it actually uses in the packaging of its products.

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