EMERALD GARMENT MANUFACTURING CORPORATION, vs. HON. COURT OF APPEALS, BUREAU OF PATENTS, TRADEMARKS AND TECHNOLOGY TRANSFER and H.D. LEE COMPANY, INC. .
- G.R. Number: G.R. No. 100098
- Promulgated: 1995-12-29
- Ponente: Kapunan, J.
Doctrine
Dominancy Test: Confusion is assessed by whether the competing mark contains the main or essential dominant features of another such that confusion or deception is likely; exact duplication is unnecessary.
Trademark comparison must consider the marks in their entirety as they appear on labels or hang tags and in relation to the goods; both predominant words and other label features are relevant.
No single formula governs trademark similarity; courts examine multiple factors (product class, packaging, purchasers, likelihood of deception) and decide each case on its merits.
Facts
Petitioner Emerald Garment Manufacturing Corporation sought review under Rule 45 to annul the Court of Appeals decision declaring petitioner's trademark confusingly similar to private respondent's mark and its denial of reconsideration.
The only issue before the courts was whether respondent-registrant's trademark "STYLISTIC MR. LEE" is confusingly similar with petitioner's trademarks "LEE or LEERIDERS, LEE-LEENS and LEE-SURES."
The Court of Appeals found the word "LEE" to be the most prominent and distinctive feature of both parties' marks, noting size, style and prominence over other words on the label.
The petition raised challenges to the CA decision and its application of trademark tests; the case discusses applicable tests and factors in trademark confusion inquiries.
Issues
Whether respondent-registrant's trademark "STYLISTIC MR. LEE" is confusingly similar to petitioner's trademarks "LEE, LEERIDERS, LEE-LEENS and LEE-SURES."
Ruling
The Supreme Court reversed and set aside the questioned decision and resolution of the Court of Appeals.
The Court applied the dominancy test in assessing trademark confusion: if a competing trademark contains the main or essential dominant features of another and confusion is likely, infringement is found; duplication is not required.
Keywords
G.R. No. 100098, Rule 45 of the Revised Rules of Court, trademark, confusingly similar, Petition for Cancellation of Registration No. SR 5054, Supplemental Register, trademark "STYLISTIC MR. LEE", Sec. 37 of R.A. No. 166 (Trademark Law), Art. VIII of the Paris Convention for the Protection of Industrial Property, prior use and registration, test of dominancy, likelihood of confusion, infringement, dominant features, property right in such symbol or mark, Intellectual Property Law, Trademark infringement, Bureau of Patents, Trademarks and Technology Transfer (BPTTT), Principal Register, private