USA College of Law
SURNAME SECTION
Case Name Great White Shark Vs. Caralde, Jr
Topic Likelihood of Confusion; Confusing Similarity; Dominancy Test vs. Holistic Test
Case No. |
G.R. No. 192294, November 21, 2012
Date
Ponente PERLAS-BERNABE, J.:
When the visual dissimilarities between the two (2) marks are evident and
significant, it negates the possibility of confusion in the minds of the ordinary
Doctrine
purchaser, especially considering the distinct aural difference between the
marks.
Link https://lawphil.net/judjuris/juri2012/nov2012/gr_192294_2012.html
Caralde filed before the Bureau of Legal Affairs (BLA), IPO a trademark application seeking to
register the mark "SHARK & LOGO" for his manufactured goods under Class 25, such as
slippers, shoes and sandals. Petitioner Great White Shark Enterprises, Inc. (Great White Shark), a
foreign corporation domiciled in Florida, USA, opposed the application claiming to be the owner of
the mark consisting of a representation of a shark in color, known as "GREG NORMAN LOGO"
(associated with apparel worn and promoted by Australian golfer Greg Norman). It alleged that,
being a world famous mark which is pending registration before the BLA since February 19, 2002,
the confusing similarity between the two (2) marks is likely to deceive or confuse the purchasing
public into believing that Caralde's goods are produced by or originated from it, or are under its
sponsorship, to its damage and prejudice.
BLA Director rendered a Decision rejecting Caralde's application , stating that “Their
dominant features, i.e., that of an illustration of a shark, however, are of such degree that the
overall impression it create [sic] is that the two competing marks are at least strikingly similar to
each another [sic], hence, the likelihood of confusion of goods is likely to occur.”
On appeal, the IPO Director General affirmed the final rejection of Caralde's application , ruling
that the competing marks are indeed confusingly similar.
However, on petition for review, the CA reversed and set aside the foregoing Decision and
directed the IPO to grant Caralde's application for registration of the mark "SHARK & LOGO." The
CA found no confusing similarity between the subject marks notwithstanding that both contained
the shape of a shark as their dominant feature. It observed that Caralde's mark is more fanciful
and colorful, and contains several elements which are easily distinguishable from that of the Great
White Shark. It further opined that considering their price disparity, there is no likelihood of
confusion as they travel in different channels of trade.
ISSUE: Whether or not the two (2) marks can be considered identical, applying Section 123.1
(d) of the IP Code, which is likely to deceive and cause confusion
RULING:
NO.
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
USA College of Law
SURNAME SECTION
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.
Corollarily, Section 123.1(d) of the IP Code provides that a mark cannot be registered if it is
identical with a registered mark belonging to a different proprietor with an earlier filing or priority
date, with respect to the same or closely related goods or services, or has a near resemblance
to such mark as to likely deceive or cause confusion.
In determining similarity and likelihood of confusion, case law has developed the Dominancy
Test and the Holistic or Totality Test. Irrespective of both tests, the Court finds no confusing
similarity between the subject marks. While both marks use the shape of a shark, the Court
noted 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
red lines/strokes. In contrast, the shark in Caralde's "SHARK & LOGO" mark 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. The whole design is enclosed in
an elliptical shape with two linings.
Hence, 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.
RULING
WHEREFORE, the Court resolves to DENY the instant petition and AFFIRM the assailed
December 14, 2009 Decision of the Court of Appeals (CA) for failure to show that the CA
committed reversible error in setting aside the Decision of the IPO Director General and allowing
the registration of the mark "SHARK & LOGO" by respondent Danilo M. Caralde, Jr.
SO ORDERED.
SEPARATE OPINIONS
(optional)
NOTES
(optional)
