WILTON DY v. KONINKLIJKE PHILIPS ELECTRONICS, GR No.

186088, 2017-03-22
Facts:
On 12 April 2000, petitioner PHILITES filed a trademark application (Application Serial
Number 4-2000-002937) covering its fluorescent bulb, incandescent light, starter and
ballast. After publication, respondent Koninklijke Philips Electronics, N.V. ("PHILIPS") filed a
Verified Notice of Opposition on 17 March 2006, alleging the following:
(a) The approval of Application Serial No. 4-2000-002937 is contrary to the following
provisions of Republic Act No. [RA] 8293 or the Intellectual Property Code of the
Philippines... approval... will cause grave and irreparable damage and injury to opp... ose.
use and registration of the applied for mark by [petitioner] will mislead the public as to the
origin, nature, quality, and characteristic of the goods on which it is affixed... application for
registration is tantamount to fraud as it seeks to register and obtain legal protection for an
identical or confusingly similar mark that clearly infringes upon the established rights of the
[respondent] over its registered and internationally well-known mark... egistration of the
trademark PHILITES & LETTER P DEVICE in the name of the [petitioner] will violate the
proprietary rights and interests, business reputation and goodwill of the [respondent] over its
trademark, considering that the distinctiveness of the trademark PHILIPS will be diluted...
registration of the applied for mark will not only prejudice the Opposer, but will also cause
[petitioner] to unfairly profit commercially from the goodwill, fame and notoriety of Opposer's
trademark and reputation.
registration and use of the applied for mark in connection with goods under Class 11 will
weaken the unique and distinctive significance of mark PHILIPS
On 8 August 2006, petitioner filed a Verified Answer, stating that its PHILITES & LETTER P
DEVICE trademark and respondent's PHILIPS have vast dissimilarities in terms of spelling,
sound and meaning... on 9 November 2006, IPP-BLA Director Estrellita Beltran-Abelardo
rendered a Decision[8] denying the Opposition filed by respondent PHILIPS
Application... filed by Respondent-Applicant, Wilton Dy and/or Philites Electronic & Lighting
Products on 12 April 2000 for the mark "PHILITES & LETTER P DEVICE" used on
fluorescent bulb, incandescent light, starter, ballast under class 11, is
GRANTED
IPP-BLA concluded that the PHILIPS and PHILITES marks were so unlike, both visually
and aurally. It held that no confusion was likely to occur, despite their contemporaneous
use... observations:
The Philips shield mark has four stars in different sizes located at the north east and south
west portions inside a circle within the shield. There are three wavy lines dissecting the
middle of the circle. None of these appear in the respondent's mark.[Respondent] declares
that the word Philips is the surname of the brothers who founded the Philips company
engaged in manufacturing and selling lighting products. [Petitioner] on the other hand has
testified that the word Philites is coined from the word 'Philippines' and 'lights,' hence
'Philites.' This Bureau finds that there is no dictionary meaning to the [petitioner's] mark. It is
a coined and arbitrary word capable of appropriation as a trademark. x x xMoreover, by
mere pronouncing the two marks, the phonetic sounds produced when each mark is uttered
are not the same. The last syllable of respondent's mark is uttered in a long vowel sound,
while the last vowel of the opposer's mark is not.
the IPP-DG noted that "[t]he dominant feature of the [respondent's] trademark is 'PHILIPS'
while that of the [petitioner's] trademark is 'PHILITES.' While the first syllables of the marks
are identical - 'PHI' - the second syllables are not. The differences in the last syllable
accounted for the variance of the trademarks visually and aurally."
Moreover, there were "glaring differences and dissimilarities in the design and general
appearance of the Philips shield emblem mark and the letter 'P' of Philites mark."
Upon intermediate appellate review, the CA rendered a Decision... the Petition for Review
.is GRANTED. The Decision dated 16 April 2008 of the Director General of the Intellectual
Property Office in Appeal No. 14-06-28; IPC No. 14-2006-00034 is REVERSED and SET
ASIDE.
the CA reasoned that the "drawing of the trademark submitted by [petitioner] has a different
appearance from that of [petitioner's] actual wrapper or packaging that contain the light
bulbs, which We find confusingly similar with that of [respondent's] registered trademark
and packaging."
"self-serving [petitioner's] asseveration that the mark 'PHILITES' is a coined or arbitrary
mark from the words 'Philippines' and 'lights.'
Issues:
Whether or not respondent's mark is a registered and well-known mark in the Philippines
Whether or not the mark applied for by petitioner is identical or confusingly similar with that
of respondent
Ruling:
Petition is bereft of merit.
A trademark is "any distinctive word, name, symbol, emblem, sign, or device, or any
combination thereof, adopted and used by a manufacturer or merchant on his goods to
identify and distinguish them from those manufactured, sold, or dealt by others.
Respondent opposes petitioner's application on the ground that PHILITES' registration will
mislead the public over an identical or confusingly similar mark of PHILIPS, which is
registered and internationally well-known mark.
respondent invokes the following provisions of Section 123:
(d) Is identical with a registered mark belonging to a different proprietor or a mark with an
earlier filing or priority date, in respect of:    (i) The same goods or services, or     (ii) Closely
related goods or services, or    (iii) If it nearly resembles such a mark as to be likely to
deceive or cause confusion;
(e) Is identical with, or confusingly similar to, or constitutes a translation of a mark which is
considered by the competent authority of the Philippines to be well-known internationally
and in the Philippines, whether or not it is registered here, as being already the mark of a
person other than the applicant for registration, and used for identical or similar goods or
services: Provided, That in determining whether a mark is well-known, account shall be
taken of the knowledge of the relevant sector of the public, rather than of the public at large,
including knowledge in the Philippines which has been obtained as a result of the promotion
of the mark.
Respondent's mark is a registered and well-known mark in the Philippines.There is no
question that respondent's mark PHILIPS is already a registered and well-known mark in
the Philippines.
'a mark which is considered by the competent authority of the Philippines to be well-known
internationally and in the Philippines, whether or not it is registered here,' cannot be
registered by another in the Philippines."
Petitioner seeks to register a mark nearly resembling that of respondent, which may likely to
deceive or cause confusion among consumers.Despite respondent's diversification to
numerous and varied industries,[33] the records show that both parties are engaged in the
same line of business: selling identical or similar goods such as fluorescent bulbs,
incandescent lights, starters and ballasts.In determining similarity and likelihood of
confusion, jurisprudence has developed two tests: the dominancy test, and the holistic or
totality test.
he 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. Duplication or imitation is not necessary... neither is it required that
the mark sought to be registered suggests an effort to imitate. Given more consideration are
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."... the holistic or
totality test necessitates a "consideration of the entirety of the marks as applied to the
products, including the labels and packaging, in determining confusing similarity. The
discerning eye of the observer must focus not only on the predominant words, but also on
the other features appearing on both labels so that the observer may draw conclusion on
whether one is confusingly similar to the other."
Applying the dominancy test to this case requires us to look only at the mark submitted by
petitioner in its application, while we give importance to the aural and visual impressions the
mark is likely to create in the minds of the buyers. We agree with the findings of the CA that
the mark "PHILITES" bears an uncanny resemblance or confusing similarity with
respondent's mark "PHILIPS," to wit:
An examination of the trademarks shows that their dominant or prevalent feature is the five-
letter "PHILI", "PHILIPS" for petitioner, and "PHILITES" for respondent. The marks are
confusingly similar with each other such that an ordinary purchaser can conclude an
association or relation between the marks. The consuming public does not have the luxury
of time to ruminate the phonetic sounds of the trademarks, to find out which one has a short
or long vowel sound.
Most importantly, both trademarks are used in the sale of the same goods, which are light
bulbs.
nfusing similarity becomes even more prominent when we examine the entirety of the
marks used by petitioner and respondent, including the way the products are packaged. In
using the holistic test, we find that there is a confusing similarity between the registered
marks PHILIPS and PHILITES, and note that the mark petitioner seeks to register-is vastly
different from that which it actually uses in the packaging of its products. We quote with
approval the findings of the CA as follows:
A comparison between petitioner's registered trademark "PHILIPS" as used in the wrapper
or packaging of its light bulbs and that of respondent's applied for trademark "PHILITES" as
depicted in the container or actual wrapper/packaging of the latter's light bulbs will readily
show that there is a strong similitude and likeness between the two trademarks that will
likely cause deception or confusion to the purchasing public.
the Petition for Review on Certiorari is hereby DENIED