Commercial and Taxation Laws › Intellectual Property Law (RA 8293, as amended by RA 9150, 9502, and 10372) › Trademarks, Service Marks, and Trade Names

6. Likelihood of Confusion (Dominancy Test)

TESTS TO DETERMINE CONFUSING SIMILARITY BETWEEN MARKS

To aid in determining the similarity and likelihood of confusion between marks, our jurisprudence has developed two (2) tests: the dominancy test and the holistic test.

Dominancy Test Holistic Test
Focuses on the similarity of the prevalent features of the competing trademarks that might cause confusion and deception, thus constituting infringement. If the competing trademark contains the main, essential, and dominant features of another, and confusion or deception is likely to result, infringement occurs. Exact duplication or imitation is not required. The question is whether the use of the marks involved is likely to cause confusion or mistake in the mind of the public or to deceive consumers. Entails a consideration of the entirety of the marks as applied to the products, including the labels and packaging, in determining confusing similarity. The discerning eye of the observer must focus not only on the predominant words but also on the other features appearing on both marks in order that the observer may draw his conclusion whether one is confusingly similar to the other.

(Citigroup, Inc. v. Citystate Savings Bank, Inc., G.R. No. 205409, 13 June 2018)1

Idem Sonans

Literally “same sound” in Latin; an identity of sound in the pronunciation of words or names.

As to the syllabication and sound of the two tradenames “Sapolin” and “Lusolin” being used for paints, it seems plain that whoever hears or sees them cannot but think of paints of the same kind and make. (Sapolin Co., Inc. v. Balmaceda, G.R. No. L-45502, 2 May 1939)2.

Although the marks differ in spelling, “SALONPAS” and “LIONPAS” sound confusingly similar when pronounced. Be that as it may, when the two words are pronounced, the sound effects are confusingly similar. And where goods are advertised over the radio, similarity in sound is of especial importance. The importance of this rule is emphasized by the increase of radio advertising in which we are deprived of the help of our eyes and must depend entirely on the ear. “SALONPAS” and “LIONPAS”, when spoken, sound very much alike. Similarity of sound is sufficient ground for this Court to rule that the two marks are confusingly similar when applied to merchandise of the same descriptive properties. (Marvex Commercial Co., Inc. v. PETRA HAWPIA and CO, G.R. No. L-19297, 22 December 1966)3

The determining point in trademark infringement is a likelihood of confusion. The similarity in sound between CEEGEEFER and CHERIFER supports a finding of likelihood of confusion; assess it together with the goods and other relevant circumstances. (Latest SC decision is Prosel Pharmaceuticals & Distributors, Inc. v. Tynor Drug House, Inc., G.R. No. 248021, 30 September 2020)4

Authorities

  • Citigroup, Inc. v. Citystate Savings Bank, Inc., G.R. No. 205409, 13 June 2018
  • Marvex Commercial Co., Inc. v. Petra Hawpia, G.R. No. L-19297, 22 December 1966
  • Prosel Pharmaceuticals v. Tynor Drug House, Inc., G.R. No. 248021, 30 September 2020
  • Sapolin Co., Inc. v. Balmaceda, G.R. No. L-45502, 2 May 1939