What is the Dominancy Test in Assessing Trademarks?

Nicolas & de Vega Article What is the Dominancy Test in Assessing Trademarks

The dominancy test focuses on the similarity of the prevalent or dominant features of the competing trademarks that might cause confusion, mistake, and deception in the mind of the purchasing public.

A trademark serves to distinguish the goods or services of a company from others

Section 121 of Republic Act No. 8293, otherwise known as the Intellectual Property Code of the Philippines (“IP Code”), defines a trademark as any visible sign capable of distinguishing the goods or services of an enterprise. Thus, a trademark serves to distinguish the goods or services of a company from others. Following this logic, trademarks that do not serve this purpose and perform the opposite cannot be registered.

A trademark application can be refused if it is confusingly similar with another mark with an earlier filing, priority or registration date

One of the grounds for disallowing a trademark application is if it is identical with or confusingly similar to a trademark with an earlier filing or priority date covering the same or closely related goods (Sec. 123 (d) of the IP Code). Such disallowance is justified since colorable imitation will likely deceive or cause confusion in the minds of the consumers.

In the case of Emerald Garment Manufacturing Corporation vs. Court of Appeals (G.R. No. 100098, 29 December 1995), the Supreme Court defined colorable imitation as such a close or ingenious imitation as to be calculated to deceive ordinary purchasers, or such resemblance of the infringing mark to the original as to deceive an ordinary purchaser giving such attention as a purchaser usually gives, and to cause him to purchase the one supposing it to be the other. How then is colorable imitation determined?

The usual test in determining the likelihood of confusion among competing trademarks is the dominancy test

One of the tests employed in determining the existence of colorable imitation is the dominancy test. Under this test, courts give greater weight to the similarity of the appearance of the product arising from the adoption of the dominant features of the registered mark, disregarding minor differences (McDonald’s Corporation vs. L.C. Big Mak Burger, Inc., G.R. No. 143993, 18 August 2004). More consideration is given on the aural and visual impressions created by the marks on the buyers of goods, giving little weight to factors like process, quality, sales outlets, and market segments (Skechers, U.S.A., Inc. v. Inter Pacific Industrial Trading Corp., G.R. No. 164321, 28 March 2011). While there are no set rules as what constitutes a dominant feature with respect to trademarks applied for registration, usually, what are taken into account are signs, color, design, peculiar shape or name, or some special, easily remembered earmarks of the brand that readily attracts and catches the attention of the ordinary consumer (Dermaline, Inc. vs. Myra Pharmaceuticals, Inc., G.R. No. 190065, 16 August 2010).

Employing the dominancy test, the Philippine Supreme Court has found the following trademarks confusingly similar: “FREEDOM” and “FREEMAN” for T-shirts (Co Tiong Sa Vs. Director Of Patents); “AMBISCO” and “NABISCO” for bakery goods (Operators Incorporated vs. Director of Patents, G.R. No. L-17901, 29 October 1965); “Philippine Planters Cordial Peanuts” and “Planters Cocktail Peanuts” for salted peanuts (Philippine Nut Industry, Inc. vs. Standard Brands Incorporated, G.R. No. L-23035, 31 July 1975); “GOLD TOP” and “GOLD TOE” for socks (Amigo Manufacturing, Inc. vs. Cluett Peabody Co., Inc, G.R. No. 139300, 14 March 2001); “NANNY” and “NAN” for milk products (Societe Des Produits Nestle, S.A. vs. Dy, G.R. No. 172276, 08 August 2010); and “DYNAFLEX” and “DURAFLEX” for electric wires.

Using the same dominancy test, the Supreme Court has ruled that the following trademarks are NOT confusingly similar: “LOLANE” and “ORLANE” for cosmetics (Seri Somboonsakdikul vs. Orlane S.A., G.R. No. 188996, 01 February 2017); and “COFFEE MATCH” and “COFFEE-MATE” for coffee products (Societe Des Produits, Nestle vs. Puregold Price Club, Inc., G.R. No. 217194, 06 September 2017).

Confusion can arise even if the trademarks are not identical

The dominancy test acknowledges that confusion can arise even if the marks are different but their dominant features are the same. Exact duplication is not necessary. Neither is an effort to imitate an element to negate the likelihood of confusion. At the end of the day, the primordial question is whether the use of the competing marks would likely cause confusion or mistake in the mind of the public or deceive purchasers.

That is how the dominancy test is applied in trademark law in the Philippines.

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