Determining trademark infringement
In determining the similarity and likelihood of confusion of trademarks as would result in possible trademark infringement, two tests have been applied by the Supreme Court in a plethora of cases.
Published in Daily Tribune on December 9, 2021
by: Migmar Bernped S. Francisco
Trademarks are used to identify and distinguish one product from another. Once registered with the Intellectual Property Office, trademarks are accorded protection by our laws. Aside from the right to the exclusive use of the trademark for one’s goods or services, the law also grants the trademark owner the right to prevent others from exploiting the same mark. Accordingly, an owner of a registered trademark may prevent applications for trademarks that are confusingly similar to its own.
In determining the similarity and likelihood of confusion of trademarks as would result in possible trademark infrignement, two tests have been applied by the Supreme Court in a plethora of cases. These are the Holistic Test and the Dominancy Test. The question of when to apply either or even both of the tests has, however, become an issue.
The Dominancy Test focuses on the similarity of the prevalent features of the competing marks which may lead to confusion or deception. The test centers on the aural and visual impressions created by the marks in the public mind, giving little credence to other factors like prices, quality, sales outlets and market segments. Thus, there is infringement when a competing trademark contains the main, essential or dominant features of the other, and confusion or deception is likely to result.
The Holistic Test, on the other hand, requires that the entirety of the marks must be taken into consideration in resolving the question of confusing similarity where the comparison of words used is not the only determining factor. In particular, the trademarks in their entirety as they appear in their respective labels are considered in relation to the products to which they are attached.
To finally settle the issue of when to use either or both of the aforementioned tests, the Supreme Court in the landmark Kolin case (9 February 2021, G.R. 228165) categorically abandoned the Holistic Test.
The case arose from the trademark application by Respondent Kolin Philippines International Inc., or “KPII” for the “kolin” mark. The said application was opposed by Petitioner Kolin Electronics Co. Inc., or “KECI,” arguing the fact that it is the registered owner of the “KOLIN” mark and that the registration of KPII’s “kolin” mark will cause confusion among consumers.
In this case, the Supreme Court recognized its inconsistent application of both tests in its previous rulings, where it had prescribed the use of either the Dominancy Test alone or the Holistic Test alone; or both tests.
In abandoning the Holistic Test, the Supreme Court has noted that only the Dominancy Test has been formally incorporated in our law, particularly in Section 155.1 of the Intellectual Property Code. In addition, the legislative deliberations reveal that the legislative intent was to abandon the Holistic Test altogether.
Thus, in applying the dominancy test, and ultimately ruling in favor of KECI, the Court held that KPII’s “kolin” mark so resembles KECI’s KOLIN mark considering that “KOLIN” is the prevalent feature of both marks. Further, the marks are the same phonetically and aurally, having no difference in terms of connotation and overall impression. As a matter of fact, the Court also revealed that there is evidence of actual confusion among consumers concerning the said KOLIN marks.
With the abandonment of the application of the Holistic Test, it is expected that subsequent decisions of the Court would be more consistent and uniform in evaluating trademark resemblance.
This would ideally afford registered trademark owners a more practical way of discerning whether their intellectual property rights are being violated.
