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Wednesday, May 3, 2017

Philippines Trademark similarity decision

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The Philippines Supreme Court decision in Seri Somboonsakdikul vs Orlane S.A. (G.R. No. 188996, 1 February 2017) shows how the Philippines courts must look at elements of the dominancy test to decide trademark similarity.

In 2003 Seri applied for the registration of the mark LOLANE in class 3 for personal care products. Orlane S.A. of France opposed the application for being similar to their ORLANE mark, first registered in 1967. All the lower level decisions ruled that LOLANE is confusingly similar to ORLANE. The Philippines uses something called the dominancy test to decide confusing similarity between marks.

The Supreme Court ruled that LOLANE is not a colorable imitation of ORLANE due to distinct visual and aural differences discerned using the dominancy test. They saw nothing that would lead to any likelihood of confusion to the ordinary purchasers. The Court of Appeal had correctly applied the dominancy test. However, the Supreme Court arrived at a different conclusion. In particular they said:  

    • LANE is not the dominant feature of the marks LOLANE and ORLANE
    • There are notable differences in the way the marks are written or printed, given the LOLANE font graphics
    • The marks do not sound alike. The prefixes OR- and LO- do not sound alike. The suffix of LOLANE is pronounced as “LEYN” while the suffix of ORLANE, being of French origin, is pronounced as “LAN”.
    • While there is a possibility of 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.
The Supreme Court was able to find dissimilarities in the sound and look of the marks. whilst the lower court's had focused only on the spelling of the suffix.

 

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