1) The case involved two opposing trademark applications - one filed by Great White Shark Enterprises for the mark "GREG NORMAN LOGO" depicting an outline of a shark in multiple colors, and one filed by Danilo Caralde for the mark "SHARK & LOGO" illustrating the word "SHARK" in the form of a shark using colored letters.
2) The Bureau of Legal Affairs initially rejected Caralde's application finding the marks confusingly similar, but the Court of Appeals later reversed finding the marks to be distinctively different.
3) Upon review, the Supreme Court affirmed and found no confusing similarity between the marks. It noted distinct visual and aural differences between the
1) The case involved two opposing trademark applications - one filed by Great White Shark Enterprises for the mark "GREG NORMAN LOGO" depicting an outline of a shark in multiple colors, and one filed by Danilo Caralde for the mark "SHARK & LOGO" illustrating the word "SHARK" in the form of a shark using colored letters.
2) The Bureau of Legal Affairs initially rejected Caralde's application finding the marks confusingly similar, but the Court of Appeals later reversed finding the marks to be distinctively different.
3) Upon review, the Supreme Court affirmed and found no confusing similarity between the marks. It noted distinct visual and aural differences between the
1) The case involved two opposing trademark applications - one filed by Great White Shark Enterprises for the mark "GREG NORMAN LOGO" depicting an outline of a shark in multiple colors, and one filed by Danilo Caralde for the mark "SHARK & LOGO" illustrating the word "SHARK" in the form of a shark using colored letters.
2) The Bureau of Legal Affairs initially rejected Caralde's application finding the marks confusingly similar, but the Court of Appeals later reversed finding the marks to be distinctively different.
3) Upon review, the Supreme Court affirmed and found no confusing similarity between the marks. It noted distinct visual and aural differences between the
1) The case involved two opposing trademark applications - one filed by Great White Shark Enterprises for the mark "GREG NORMAN LOGO" depicting an outline of a shark in multiple colors, and one filed by Danilo Caralde for the mark "SHARK & LOGO" illustrating the word "SHARK" in the form of a shark using colored letters.
2) The Bureau of Legal Affairs initially rejected Caralde's application finding the marks confusingly similar, but the Court of Appeals later reversed finding the marks to be distinctively different.
3) Upon review, the Supreme Court affirmed and found no confusing similarity between the marks. It noted distinct visual and aural differences between the
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MIRPURI vs. CA G.R. No.
114508, November 19, 1999
Facts: In 1970, Escobar filed an application with the Bureau of Patents for the registration of the trademark Barbizon for use in horsiers and ladies undergarments (IPC No. 686). Private respondent reported Barbizon Corporation, a corporation organized and doing business under the laws of New York, USA, opposed the application. It was alleged that its trademark is confusingly similar with that of Escobar and that the registration of the said trademark will cause damage to its business reputation and goodwill. In 1974, the Director of Patents gave due course to the application. Escobar later assigned all his rights and interest over the trademark to petitioner. In 1979, Escobar failed to file with the Bureau the affidavit of use of the trademark required under the Philippine Trademark Law. Due to this failure, the Bureau cancelled Escobars certificate of registration. In 1981, Escobar and petitioner separately filed this application for registration of the same trademark. (IPC 2049). Private respondent opposed again. This time it alleged (1) that the said trademark was registered with the US Patent Office; (2) that it is entitled to protection as well-known mark under Article 6 bis of the Paris Convention, EO 913 and the two Memoranda of the Minister of Trade and Industry and (3) that its use on the same class of goods amounts to a violation of the Trademark Law and Art. 189 of the RPC. Petitioner raised the defense of Res Judicata. Issue: One of the requisites of res judicata is identical causes of action. Do IPC No. 686 and IPC No. 2049 involve the same cause of action? Held: No. The issue of ownership of the trademark was not raised in IPC 686. IPC 2049 raised the issue of ownership, the first registration and use of the trademark in the US and other countries, and the international recognition of the trademark
established by extensive use and advertisement of respondents
products for over 40 years here and abroad. These are different from the issues of confessing similarity and damage in IPC 686. The issue of prior use may have been raised in IPC 686 but this claim was limited to prior use in the Philippines only. Prior use in IPC 2049 stems from the respondents claims originator of the word and symbol Barbizon, as the first and registered user of the mark attached to its products which have been sold and advertised would arise for a considerable number of years prior to petitioners first application. Indeed, these are substantial allegations that raised new issues and necessarily gave respondents a new cause of action. Moreover, the cancellation of petitioners certificate registration for failure to file the affidavit of use arose after IPC 686. This gave respondent another cause to oppose the second application. It is also to be noted that the oppositions in the first and second cases are based on different laws. Causes of action which are distinct and independent from each other, although out of the same contract, transaction, or state of facts, may be sued on separately, recovery on one being no bar to subsequent actions on others. The mere fact that the same relief is sought in the subsequent action will not render the judgment in the prior action operating as res judicata, such as where the actions are based on different statutes.
GREAT WHITE SHARK ENTERPRISES, INC vs. DANILO M.
CARALDE, JR. G.R. No. 192294, November 21, 2012 Facts On July 31, 2002, Caralde filed before the Bureau of Legal Affairs (BLA), IPO a trademark application seeking to register the mark "SHARK & LOGO" for his manufactured goods under Class 25, such as slippers, shoes and sandals. Petitioner Great White Shark Enterprises, Inc. (Great White Shark), a foreign corporation, opposed the application claiming to be the owner of the mark consisting of a representation of a shark in color, known as "GREG NORMAN LOGO" (associated with apparel worn and promoted by Australian golfer Greg Norman). It alleged that, being a world famous mark which is pending registration before the BLA since February 19, 2002, the confusing similarity between the two (2) marks is likely to deceive or confuse the purchasing public into believing that Caralde's goods are produced by or originated from it, or are under its sponsorship, to its damage and prejudice. Caralde explained that the subject marks are distinctively different from one another and easily distinguishable. When compared, the only similarity in the marks is in the word "shark" alone, differing in other factors such as appearance, style, shape, size, format, color, ideas counted by marks, and even in the goods carried by the parties. Pending the inter partes proceedings, Great White Sharks trademark application was granted The BLA Director rejected Caralde's application, finding that the two competing marks are at least strikingly similar to each
another. However, found no merit in Great White Shark's claim
that its mark was famous and well-known for insufficiency of evidence On appeal, the IPO Director General affirmed9 the final rejection of Caralde's application, ruling that the competing marks are indeed confusingly similar. However, on petition for review, the CA reversed and set aside the foregoing Decision and directed the IPO to grant Caralde's application for registration of the mark "SHARK & LOGO." It found no confusing similarity between the subject marks and observed that Caralde's mark is more fanciful and colorful, and contains several elements which are easily distinguishable from that of the Great White Shark. Issue: Whether or not petitioners mark is confusingly similar to respondents Held: No. In determining similarity and likelihood of confusion, case law has developed the Dominancy Test and the Holistic or Totality Test. The Dominancy Test focuses on the similarity of the dominant features of the competing trademarks that might cause confusion, mistake, and deception in the mind of the ordinary purchaser, and gives more consideration to the aural and visual impressions created by the marks on the buyers of goods, giving little weight to factors like prices, quality, sales outlets, and market segments. In contrast, the Holistic or Totality Test considers the entirety of the marks as applied to the products, including the labels and packaging, and focuses not only on the predominant words but also on the other features appearing on both labels to determine whether one is confusingly similar to the other as to mislead the ordinary
purchaser. The "ordinary purchaser" refers to one "accustomed
to buy, and therefore to some extent familiar with, the goods in question." Irrespective of both tests, the Court finds no confusing similarity between the subject marks. While both marks use the shape of a shark, the Court noted distinct visual and aural differences between them. In Great White Shark's "GREG NORMAN LOGO," there is an outline of a shark formed with the use of green, yellow, blue and red lines/strokes. In contrast, the shark in Caralde's "SHARK & LOGO" mark is illustrated in letters outlined in the form of a shark with the letter "S" forming the head, the letter "H" forming the fins, the letters "A" and "R" forming the body, and the letter "K" forming the tail.
United States v. Local 359, United Seafood Workers, Smoked Fish & Cannery Union, United Food and Commercial Workers International Union, Afl-Cio, Clc, Executive Board and Officers of Local 359, United Seafood Workers, Smoked Fish & Cannery Union, United Food and Commercial Workers International Union, Afl-Cio, Clc, Local 359, United Seafood Workers, Smoked Fish & Cannery Union, United Food and Commercial Workers International Union, Afl-Cio, Clc, Anthony Cirillo and Dennis Faicco, 889 F.2d 1232, 2d Cir. (1989)