Lacoste S.A. v. Crocodile International Pte Ltd.
REITERATIONFacts
The Antecedents: Lacoste S.A. (Lacoste), a French company, is the registered owner of the mark "CROCODILE DEVICE" in the Philippines since 1963. Crocodile International Pte Ltd. (Crocodile), a Singaporean company, filed a trademark application for "CROCODILE AND DEVICE" in 1996 for goods in Class 25. Lacoste opposed the application, alleging confusing similarity and potential damage to its registered mark. Procedural History: The Intellectual Property Office-Bureau of Legal Affairs (IPO-BLA) denied Lacoste's opposition, finding no confusing similarity between the marks based on the Dominancy and Holistic Tests. The IPO-Director General (IPO-DG) affirmed this ruling. The Court of Appeals (CA) also affirmed the IPO-DG's decision, reiterating that the marks, despite sharing a "saurian" figure, have distinct visual differences and commercial impressions, especially considering the word elements and the nature of the products. The Petition: Lacoste filed a Petition for Review on Certiorari with the Supreme Court, assailing the CA's decision, arguing that the IPO-BLA and IPO-DG committed grave errors in denying its opposition.
Issue(s)
Whether the Court of Appeals correctly affirmed the rulings of the IPO-BLA and IPO-DG which held that there is no confusing similarity between Lacoste's and Crocodile's marks, and whether Lacoste's allegation of trademark dilution has sufficient basis. Whether Lacoste's opposition to Crocodile's trademark application should be denied, and Crocodile's application should be given due course, considering the admissibility of survey evidence and the relevance of prior IPO-BLA decisions.
Ruling
The petition is DENIED. The Decision of the Court of Appeals dated September 8, 2015 and the Resolution dated February 29, 2016 in CA-G.R. SP No. 137801 are AFFIRMED.
Ratio Decidendi
On the issue of confusing similarity between the marks and trademark dilution: The Court held that the CA correctly affirmed the rulings of the IPO-BLA and IPO-DG, finding no confusing similarity between Lacoste's "CROCODILE DEVICE" mark and Crocodile's "CROCODILE AND DEVICE" mark, reiterating the Dominancy Test as the sole criterion. The Court found Lacoste's allegation of trademark dilution to be speculative and lacking sufficient basis, noting the absence of defamation or disparagement and the Mutual Co-Existence Agreement between the parties. On the denial of Lacoste's opposition and the admissibility of evidence: The Court explicitly stated that the Holistic Test was abandoned in favor of the Dominancy Test. The Court found that "The Project Copy Cat" survey lacked trustworthiness and probative value due to issues with the universe, sample size, and questionnaire. Lacoste's reliance on a previous IPO-BLA decision was deemed untenable, as IPO-BLA rulings are not binding precedents and trademark cases are decided on their own merits.
Main Doctrine
The Dominancy Test, which focuses on the similarity of the prevalent or dominant features of competing trademarks, is the sole test to determine confusing similarity, abandoning the Holistic or Totality Test. The visual and commercial impressions of the marks, considering their dominant features, are crucial in assessing the likelihood of confusion.