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\VliiTI:i~ SIIAHK G.n.. No. 192294

E~NTEI{PH.ISE~S~ INC.,
Petitioner. Present:

CAI{PIO, Chui1person,
BRION,
DEL CASTILLO,
- versus - PEREZ, and
PERI,AS-BERNABE, JJ.

Promulgated:
UANILO M. CARALilE, .Ill.,
Respondent. ~qV_XJ 20!l~!W~1h0
x----------------------------------------------------------------------------------l~~

n E CIS I() N

PERLAS-BIU~NABE, J.:

Assailed in this Petition lor Revie\v on Certiorari under Rule 45 of

the Rules of Court is the December 1-:J-, 2009 Decision! of the Court of
Appe[ds (CA) in CA--Ci.R. SP No. I05nn, \Vhich reversed and set aside the

October tJ, :wog Decisiot/ of the Director General of the Intellectual

Property Office (I PO), and directed him to grant the applic<::tion for the mark
"SIIARK & LOCJO" filed by re~pondent Danilo !'vi. Caralde, .Jr. (Caralde).

Penned by Associate Justice Vicente S.L. Vcloso, \vith Associate Ju;;tices Andres B. Reyes, Jr. and
f\1arlcttc Gonzulcs-Sison, CllllClltTing. Nollu, pp. 35-52.
l'cnnc:J by Dircctur General Adrian S. Cri~tobal, .Jr. IJ. al -106 111.
Decision 2 G.R. No. 192294

The Factual Antecedents

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 domiciled in Florida, USA, opposed 3
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, 2002,4 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.

In his Answer,5 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 and it was issued Certificate of Registration No.

3
Notice of Opposition. Id. at 57-62.
4
Id. at 58.
5
Id. at 64-68.
Decision 3 G.R. No. 192294

4-2002-001478 on October 23, 2006 for clothing, headgear and footwear,

including socks, shoes and its components.6

The Ruling of the BLA Director

On June 14, 2007, the BLA Director rendered a Decision7 rejecting

Caralde's application, ratiocinating, as follows:

Prominent in both competing marks is the illustration of a shark.

The dominant feature in opposer's mark is the illustration of a shark drawn
plainly. On the other hand, the dominant feature in respondent's mark is a
depiction of shark shaded darkly, with its body designed in a way to
contain the letters A and R with the tail suggestive of the letter K.
Admittedly, there are some differences between the competing marks.
Respondent's mark contains additional features which are absent in
opposer's mark. Their dominant features, i.e., that of an illustration of a
shark, however, are of such degree that the overall impression it create
[sic] is that the two competing marks are at least strikingly similar to each
another [sic], hence, the likelihood of confusion of goods is likely to
occur. x x x x

Moreover, the goods of the competing marks falls [sic] under the
same Class 25. Opposer's mark GREG NORMAN LOGO, which was
applied for registration on February 19, 2002, pertains to clothing apparel
particularly hats, shirts and pants. Respondent, on the other hand, later
applied for the registration of the mark SHARK & LOGO on July 3, 2002
(should be July 31, 2002) for footwear products particularly slippers,
shoes, sandals. Clearly, the goods to which the parties use their marks
belong to the same class and are related to each other.8 (Italics ours)

The BLA Director, however, found no merit in Great White Shark's

claim that its mark was famous and well-known for insufficiency of
evidence.

6
Id. at 406.
7
Penned by Director Estrellita Beltran-Abelardo. Id. at 295-305.
8
Id. at 302-303.
Decision 4 G.R. No. 192294

The Ruling of the IPO Director General

On appeal, the IPO Director General affirmed9 the final rejection of

Caralde's application, ruling that the competing marks are indeed
confusingly similar. Great White Shark's mark is used in clothing and
footwear, among others, while Caralde's mark is used on similar goods like
shoes and slippers. Moreover, Great White Shark was first in applying for
registration of the mark on February 19, 2002, followed by Caralde on July
31, 2002. Furthermore, Great White Sharks mark consisted of an
illustration of a shark while Caralde's mark had a composite figure forming
a silhouette of a shark. Thus, as to content, word, sound and meaning, both
marks are similar, barring the registration of Caralde's mark under Section
123.1(d) of Republic Act No. 8293, otherwise known as the Intellectual
Property Code (IP Code). Nonetheless, while Great White Shark submitted
evidence of the registration of its mark in several other countries, the IPO
Director General considered its mark as not well-known for failing to meet
the other criteria laid down under Rule 102 10 of the Rules and Regulations
on Trademarks, Service Marks, Trade Names and Marked or Stamped
Containers.

9
Id. at 406-413.
10
RULE 102. Criteria in determining whether a mark is well-known. In determining whether a mark is
well-known, the following criteria or any combination thereof, may be taken into account:
(a) the duration, extent and geographical area of any use of the mark, in particular, the duration,
extent and geographical area of any promotion of the mark, including advertising or publicity and
the presentation, at fairs or exhibitions, of the goods and/or services to which the mark applies;
(b) the market share, in the Philippines and in other countries, of the goods and/or services to
which the mark applies;
(c) the degree of the inherent or acquired distinction of the mark;
(d) the quality-image or reputation acquired by the mark;
(e) the extent by which the mark has been registered in the world;
(f) the exclusivity of registration attained by the mark in the world;
(g) the extent to which the mark has been used in the world;
(h) the exclusivity of use attained by the mark in the world;
(i) the commercial value attributed to the mark in the world;
(j) the record of successful protection of the rights in the mark;
(k) the outcome of litigations dealing with the issue of whether the mark is a well-known mark; and
Decision 5 G.R. No. 192294

The Ruling of the Court of Appeals

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. The CA found no confusing
similarity between the subject marks notwithstanding that both contained
the shape of a shark as their dominant feature. It 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. It further opined
that considering their price disparity, there is no likelihood of confusion as
they travel in different channels of trade.11

Issues Before The Court

THE COURT OF APPEALS ERRED IN RULING THAT THE

RESPONDENT'S MARK SUBJECT OF THE APPLICATION BEING
OPPOSED BY THE PETITIONER IS NOT CONFUSINGLY SIMILAR
TO PETITIONER'S REGISTERED MARK

THE COURT OF APPEALS ERRED IN RULING THAT THE COST OF

GOODS COULD NEGATE LIKELIHOOD OF CON[F]USION

THE COURT OF APPEALS ERRED IN REVERSING THE PREVIOUS

RESOLUTIONS OF THE DIRECTOR GENERAL AND THE BLA12

(l) the presence or absence of identical or similar marks validly registered for or used on identical or
similar goods or services owned by persons other than the person claiming that his mark is a well-
known mark.
11
Rollo, pp. 35-52.
12
Id. at 19.
Decision 6 G.R. No. 192294

The Court's Ruling

In the instant petition for review on certiorari, Great White Shark

maintains that the two (2) competing marks are confusingly similar in
appearance, shape and color scheme because of the dominant feature of a
shark which is likely to deceive or cause confusion to the purchasing public,
suggesting an intention on Caralde's part to pass-off his goods as that of
Great White Shark and to ride on its goodwill. This, notwithstanding the
price difference, targets market and channels of trade between the
competing products. Hence, the CA erred in reversing the rulings of the
IPO Director General and the BLA Director who are the experts in the
implementation of the IP Code.

The petition lacks merit.

A trademark device is susceptible to registration if it is crafted

fancifully or arbitrarily and is capable of identifying and distinguishing the
goods of one manufacturer or seller from those of another. Apart from its
commercial utility, the benchmark of trademark registrability is
distinctiveness.13 Thus, a generic figure, as that of a shark in this case,
if employed and designed in a distinctive manner, can be a registrable
trademark device, subject to the provisions of the IP Code.

Corollarily, Section 123.1(d) of the IP Code provides that a mark

cannot be registered if it is identical with a registered mark belonging to a

13
See McDonalds Corporation v. L.C. Big Mak Burger, Inc., G.R. No. 143993, August 18, 2004,
437 SCRA 10, 26.
Decision 7 G.R. No. 192294

different proprietor with an earlier filing or priority date, with respect to the
same or closely related goods or services, or has a near resemblance to such
mark as to likely deceive or cause confusion.

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 14 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.15

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 16 lines/strokes, to
wit:

14
Berris Agricultural Co., Inc. v. Abyadang, G.R. No. 183404, October 13, 2010, 633 SCRA 196, 209-
210.
15
Dermaline, Inc. v. Myra Pharmaceuticals, Inc., G.R. No. 190065, August 16, 2010, 628 SCRA 356,
365, citing Philip Morris, Inc. v. Fortune Tobacco Corporation, 493 SCRA 333, 359 (2006).
16
Rollo, p. 49.
Decision 8 G.R. No. 192294

In contrast, the shark in Caralde's SHARK & LOGO mark 17 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. In addition, the latter
mark includes several more elements such as the word SHARK in a
different font underneath the shark outline, layers of waves, and a tree on
the right side, and liberally used the color blue with some parts in red,
yellow, green and white.18 The whole design is enclosed in an elliptical
shape with two linings, thus:

17
Id. at 187.
18
Id. at 49.
I )el:ision Ci.R. No. 19220-1

As may b(; gleaned from the foregoing, the visual dissimilarities

bet ween the two ( 2) marks are evident and significant, negating the

possibility or confusion in the minds of the ordinary purchaser, especially

considering the distinct cmntl difference between the marks.

Finally, there being no confusing similarity between the subject

marks, the matter of whether Great Whik Shark's mark has gained

recognition and acquired goodwill becomes unnecessary. 19 Besides, both

the BLA Director and the JPO Director General have ndeJ that Great White

Shark failed to meet the criteria under Rule 1U2 of the Rules and

Regulations on Trademarks, Service Marks, Trade Names and Marked or

Stamped Containers to establish that its mark is well-known, and the latter

tailed to show otherwise.

WI-IEl~EFOIH~, the Comt resolves to IH~NY the instant petition and

AFFIRM the assailed December 1-l, 2009 Decision of the Court of Appeals

(CA) for h1ilure to show that the CA commitkd reversible error in setting

aside the Decision of the IPO Director C)eneral and allowing the registration

of the murk 'SHARK & LOGO" hy respondent Danilo M. Caralde, Jr.

SO ORDERED.

)ufl1- ftpV{/
ESTf1~LA f\;1r PEIU,AS-BEI{NABE
Associate Justice

1
'' llmkr Section I J 1.3 of the II' Code. tl1e owner uf a well knmvn mark may oppose the registration,
pditio11 the cancellation of regislrdtion ur ~ue J(Jr untair compL:tition against an identical or cu!!fiLsint',{Ji
similur mark, without prejudice ll> availing himself of oth~r remedies provided for under the law.
(Italics supplied)
1kcision ]() Ci.R. No. I <>229-!

WE CONCIH~:

c::u~:12~
ANTONIO T. CA I<PIO
Associate .I ustice
Chairperson

Doohlf1m;__
ARTIJnO n. BI<ION MAI<IANO C. DEL CASTILLO
Associate Justice Associate Justice

ATTESTATION

I attest that the conclusions in the above Decision bad been reached in

consultation Ldore the case was assigned lo the writer of the opinion of the

Court's Division.
-; ()
~~ I(__~-r----u
ANTONIO T. CARPIO
Associate Justice
Chairper::;on, Second Division
Decision 11 G.R. No. 192294

CER'fiFICATION

Pursuant to Section 13, Article V Ill of the Constitution, and the

Division Chairperson's Attestation, I certifY that the conclusions in the

above Decision had been reached in consultation bef()re the case was

assigned to the writer of the npinion of the Court's Division.

L.;r-~~~4-~
MARIA LOlH~DES P. A. SERENO
Chief Justice