Somboonsakdikul vs. Orlane S.A.

A mark may be refused registration only if it is a colorable imitation of a registered mark; no colorable imitation exists when the dominant features of the competing marks—assessed by their visual, aural, and connotative impressions—are sufficiently distinct. The finding that the marks LOLANE and ORLANE share the suffix “LANE” did not establish a dominant feature common to both, because the marks were dissimilar in their overall appearance and pronunciation, eliminating any likelihood of confusion.

Respondent Orlane S.A. is the owner of the registered trademark ORLANE, first used internationally in 1948 and registered in the Philippines on July 26, 1967 for perfumes, toilet water, cosmetics, hair lotions, and similar goods under Class 3. By the time of the opposition, the ORLANE mark had been sold in the Philippine market for several decades, and respondent claimed it had acquired worldwide goodwill and a well-known status. Petitioner Seri Somboonsakdikul filed an application on September 23, 2003 to register the mark LOLANE for an extensive list of personal care products also falling under Class 3, asserting his own prior use in Vietnam since 1995 and subsequent marketing in the Philippines and abroad.

• The ORLANE Mark: Respondent Orlane S.A. first used the trademark ORLANE in 1948. The mark was registered in the Philippines on July 26, 1967 under Registration No. 129961 for perfumes, toilet water, face powders, lotions, essential oils, cosmetics, hair lotions, dentifrices, and other toilet preparations. Respondent subsequently filed another application on September 5, 2003 covering additional personal care products, all within Class 3. Respondent alleged that through worldwide registration, extensive promotion, and long-standing use, ORLANE had acquired the status of a well-known mark. Its products had been sold in the Philippines since 1972.

• The LOLANE Application: Petitioner Seri Somboonsakdikul applied for registration of the mark LOLANE on September 23, 2003, for a wide range of personal care products under Class 3. Petitioner claimed first use of LOLANE in Vietnam on July 4, 1995 and continuous marketing of LOLANE-branded products in the Philippines and internationally, asserting that the public had come to associate the mark with his goods.

• IPO Proceedings and Ruling: Respondent opposed the application, alleging that LOLANE was confusingly similar to ORLANE. Petitioner denied the similarity, pointing to differences in lettering (ORLANE in plain block uppercase letters; LOLANE in stylized characters with the second “L” and “A” co-joined), pronunciation, and the co-existence of other marks sharing the syllable “LANE.” The BLA rejected the application, finding likelihood of confusion because both marks consisted of six letters with the same last four letters “LANE,” covered similar goods, and would produce strongly similar sounds when read aloud. The Director General affirmed, ruling that the dominant feature in both marks was the word “LANE” and that ORLANE, being a fanciful mark, was entitled to broader protection. The Director General also declined to treat foreign registration decisions as judicial precedents.

• Court of Appeals Decision: The CA applied the dominancy test and upheld the IPO’s factual findings. It ruled that LOLANE was a colorable imitation because the prominent common suffix “LANE” created visual and aural similarity, with only a slight difference in the first syllables. The CA further noted that ORLANE was fanciful, petitioner had offered no explanation for choosing “LOLANE,” and the mark’s cheaper price did not eliminate the risk that consumers might associate the products with respondent’s goodwill. The CA rejected arguments based on the holistic test and declined to consider the earlier IPO allowance of “GIN LANE” for Class 3 goods as a binding precedent.

• Misapplication of the Dominancy Test: Petitioner argued that the dominancy test was erroneously applied because both LOLANE and ORLANE are plain word marks without a composite layout; thus each entire word mark constitutes its own dominant feature, and the suffix “LANE” alone cannot be singled out as dominant.

• Weakness of “LANE”: Petitioner maintained that the syllable “LANE” was a weak mark, being in common use by other sellers, as shown by the prior trademark registration of “GIN LANE” for Class 3 goods and “SHELLANE.” The suffix could not be exclusively associated with respondent’s products.

• Aural Dissimilarity: Petitioner contended that the marks are phonetically different: ORLANE, being of French origin, was properly pronounced as “OR-LAN,” whereas LOLANE was pronounced with a “LEYN” sound, making the aural impressions distinct.

• Holistic Test Ignored: Petitioner asserted that the CA failed to consider the holistic test, which would have revealed the dissimilarity of overall commercial impression. On their respective labels, LOLANE products used loud, psychedelic colors and Thai characters, while ORLANE products featured conventional colors and the term “Paris,” indicating a different source and trade dress.

• No Actual Commercial Use Proven: Petitioner claimed that respondent had not submitted sufficient evidence of actual commercial use of the ORLANE mark in the Philippines, failing to identify specific local retail outlets where ORLANE products were sold to the general public.

• Confusing Similarity Established: Respondent countered that the BLA, the IPO Director General, and the CA all correctly found visual and aural resemblance based on the shared dominant feature “LANE,” and that the dominancy test was properly employed.

• Registered and Fanciful Mark Entitled to Protection: Respondent argued that ORLANE is a registered mark in the Philippines since 1967, has been in commercial use for over six decades, and is a fanciful trademark entitled to a broad scope of protection against similar marks on related goods.

• Deference to Administrative Findings: Respondent maintained that the factual findings of the IPO, as an administrative agency with expertise, should be accorded finality and should not be disturbed absent grave abuse of discretion.

• Colorable Imitation: Whether the mark LOLANE is a colorable imitation of the registered mark ORLANE, thus likely to cause confusion and barred from registration under Section 123.1(d) of Republic Act No. 8293 (Intellectual Property Code).

• Colorable Imitation: Registration was granted because LOLANE was not a colorable imitation of ORLANE. The essential element of likelihood of confusion is resemblance between the trademarks; absent colorable imitation, confusion cannot arise regardless of the similarity or relatedness of the goods. Applying the dominancy test—which assesses the aural, visual, and connotative overall impressions—the dominant features of the two marks were found to be materially different. Visually, ORLANE appeared in plain block uppercase letters, whereas LOLANE was rendered in a stylized form with the second “L” and the letter “A” co-joined, creating a distinct layout. Aurally, the first syllables “OR” and “LO” do not sound alike, and the proper pronunciation of the last syllable differed markedly: “LAN” for the French-origin ORLANE and “LEYN” for LOLANE. The IPO’s generalization that all Filipinos would pronounce ORLANE as “OR-LEYN” lacked evidentiary support, especially given respondent’s own claim of a long market presence that would have familiarized a segment of consumers with the French pronunciation. The suffix “LANE” was not established as the dominant feature of either mark, nor had it become distinctive of ORLANE in the public mind, a fact underscored by the prior registration of “GIN LANE” for Class 3 goods. Because the marks were neither visually nor aurally confusingly similar, the requirement of colorable imitation was not met, making further inquiry into the identity or relatedness of the goods, price differentials, and packaging unnecessary.

• Colorable Imitation — “Such similarity in form, content, words, sound, meaning, special arrangement or general appearance of the trademark or trade name in their overall presentation or in their essential and substantive and distinctive parts as would likely mislead or confuse persons in the ordinary course of purchasing the genuine article.” The essential element of likelihood of confusion in trademark cases is the existence of colorable imitation; without it, there can be no likelihood of confusion, irrespective of the relatedness of the goods.

• Dominancy Test — The similarity of the prevalent or dominant features of competing trademarks is assessed by giving more weight to the aural and visual impressions created by the marks on the buyers of goods, while giving little weight to factors like price, quality, sales outlets, and market segments. The dominant feature is typically the first word or figure that catches the eye, or that part which appears most prominently to the eyes and ears, such as signs, color, design, peculiar shape, or some special, easily remembered earmark of the brand.

• Requirements for Likelihood of Confusion (Mighty Corporation) — In determining the likelihood of confusion, the following must be considered: (a) the resemblance between the trademarks; (b) the similarity of the goods to which the trademarks are attached; (c) the likely effect on the purchaser; and (d) the registrant’s express or implied consent and other fair and equitable considerations. However, resemblance (colorable imitation) is the most essential requirement, and its absence pretermits further analysis of the other factors.

• “Whether a trademark causes confusion and is likely to deceive the public hinges on ‘colorable imitation’ which has been defined as ‘such similarity in form, content, words, sound, meaning, special arrangement or general appearance of the trademark or trade name in their overall presentation or in their essential and substantive and distinctive parts as would likely mislead or confuse persons in the ordinary course of purchasing the genuine article.’”

• “The essential element of infringement is colorable imitation. This term has been defined 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.’ Colorable imitation does not mean such similitude as amounts to identity. Nor does it require that all the details be literally copied.”

• “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.”

• Mighty Corporation v. E. & J Gallo Winery, 434 SCRA 473 — Enumerated the four-factor test for likelihood of confusion and defined colorable imitation; relied upon for the proposition that resemblance between the marks is the essential prerequisite.

• Etepha v. Director of Patents, et al., 16 SCRA 495 — Applied to support the finding that the first syllables “OR” and “LO” are phonetically distinct and that where the first part of a word is the most pronounced, differences in the initial syllable can negate aural confusion.

• Emerald Garment Manufacturing Corporation v. Court of Appeals, 251 SCRA 600 — Cited for its definition of colorable imitation as the essential element of infringement, emphasizing that it does not require exactly identical copying.

• UFC Philippines, Inc. v. Barrio Fiesta Manufacturing Corporation, 781 SCRA 424 — Reaffirmed the primacy of the dominancy test and identified the first word or figure that catches the eye as the dominant feature.

• McDonald’s Corporation v. MacJoy Fastfood Corporation, 514 SCRA 95 — Relied upon for the rule that the dominancy test is preferred over the holistic test because it incorporates aural and connotative comparisons and the overall impressions created by the marks.

• Great White Shark Enterprises, Inc. v. Caralde, Jr., 686 SCRA 201 — Followed for the principle that once visual and aural dissimilarity precludes a finding of confusing similarity, it is unnecessary to resolve other issues such as the mark’s status as well-known.

• Section 123.1(d), Republic Act No. 8293 (Intellectual Property Code) — A mark cannot be registered if it is identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or priority date, in respect of the same goods or services, closely related goods or services, or if it nearly resembles such a mark as to be likely to deceive or cause confusion. Applied as the statutory basis for refusing registration, but held not to bar LOLANE because no colorable imitation or likelihood of confusion was found.

• Section 121.1, Republic Act No. 8293 — Defines a trademark as any visible sign capable of distinguishing goods; the requirement of distinctiveness was noted as the general standard for registrability.

• Presbitero J. Velasco, Jr. (Chairperson)
• Lucas P. Bersamin
• Bienvenido L. Reyes
• Alfredo Benjamin S. Caguioa