intellectual property office - … · 1 appellant's brief, p. 1 . intellectual property office...

, ' , • , . , Republic of the Philippines

OFFICE OF THE PRESIDENT

L.A. GEAR, INC .Petitioner-Appellee,

APPEAL NO. 14-02-11

INTER PARTES CASE NO. 4169Petition for Cancellation

-versus- Registration No. 5690 1Date Issued : 26 January 1994

Trademark : LA SPORTS andDEVICE

BENITO S. CUA,Respondent-Registrant-Appellant.

X--- ... ._..._._..... ... ... ..------------_-------x

DECISIO N

•This concerns Decision No . 2001-09 dated 17 September 2001 of the

Director of Legal Affairs (hereinafter, Director) in Inter Pa rtes Case No. 4169

sustaining the Petition for Cancellation filed by L.A. GEAR, INC . (Appellee) of the

registration of the trademark LA SPORTS and DEVICE (LA SPORTS, for brevity)

issued in favor of BENITO S . CUA (Appellant). Appellant now seeks a review of

said Decision alleging that the Director erred :'

•1 . in concluding that LA SPORTS is confusingly similar with th e

Appellee's mark L .A. GEAR; and

2. in applying solely the Dominancy Test, rather than the Totality Rule

or Holistic Test .

1 Appellant's Brief, p . 1 .

INTELLECTUAL PROPERTY OFFICEIPO Building, 351 Sen . Gil Puyat Avenue. Makati City, PhilippinesTrunk Line: 752-5450 to 65 Fax: 890-4862E-mail: [email protected] Website: http ://ipophil.govph

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Records show that on 05 April 1990, Appellant filed with the defunct

Bureau of Patents, Trademarks and Technology Transfer (BPTTT)2 of the

Department of Trade and Industry an application for the registration of the mark

LA SPORTS and DEVICE of a ball on which the word SPORTS is superimposed .

On 26 January 1994, the BPTTT issued to the Appellant Certificate of

Registration No . 56901 . Consequently, on 29 May 1995, the Appellee filed a

VERIFIED PETITION FOR CANCELLATION mainly on the ground that LA

SPORTS is confusingly similar with the mark L .A. GEAR, which is registered in

the Philippines for goods in Classes 14, 25 and 28 of the Nice Classification 3 .

According to the Appellee, the goods covered by both marks are related and

included in Class 25 such that the use of Appellant's mark will likely mislead the

buying public into believing that the latter's goods are produced by, originate in,

or under the sponsorship of the Appellee .

In his Answer, the Appellant pointed out the differences between the

contending marks . According to him, the letters L and A in the Appellee's mark

read as L.A. which could be an ac ronym for a place, like Los Angeles, while in

2 On 01 January 1998, Rep. Act No. 8293, otherwise known as the Intellectual Property Code ofthe Philippines, took effect . The Act abolished the BPTTT . Its functions were transferred to thenewly created Intellectual Property Office (IPO) .3 The Nice Classification is a classification of goods and services for the purpose of registeringtrademarks and service marks, based on a multilateral treaty administered by the WorldIntellectual Property Organization (WIPO) . This treaty is called the Nice Agreement Concerningthe International Classification of Goods and Services for the Purposes of the Registration ofMarks concluded in 1957 . The Nice Agreement is open to States party to the Paris Convention forthe Protection of Industrial Property. The trademark offices of the Contracting States of the NiceAgreement are required to include in the official documents and publications the numbers of theclasses of goods and/or services . Use of the Nice Classification by national offices has theadvantage of filing applications with reference to a single classification system . The preparation ofapplications is thereby greatly simplified, as the goods and services to which a given mark applieswill be classified in the same way in all countries that have adopted it .

L.A. Gear versus Cua of 2 3

1 5 MAY 2001

his mark, the letters form the Spanish word LA ("the" in English). They are read,

pronounced, and written differently such that the Appellee cannot claim that his

mark is geographically misdescriptive . Besides, said the Appellant, the words are

different in designs: one uses bold letters punctuated with periods and without

letter borders while the other uses bold letters without punctuation marks and

with prominent letter borders. Invoking the ruling of the Supreme Court in Asia

Brewery, Inc. v. Court of Appeals4, Appellant contended that by applying the test

of dominancy, the words L .A. and LA, assuming that they are the dominant

features of both marks, are not similar . Moreover, one uses GEAR as a second

word while the other uses SPORTS, such that L .A. GEAR mark cannot sound,

mean, be read or be written in the same way as LA SPORTS . Even the

appearance and design of the second words are patently different: while one

uses bold letters and without any pictorial representation the other is in script and

with a prominent representation of a ball .

Incidentally, when Republic Act No . 8293 otherwise known as the

Intellectual Property Code of the Philippines, took effect, the Director took over

the case,5 and after trial, rendered the assailed Decision,6 denying Appellant' s

4 224 SCRA 437 ( 1993) .5 Section 10, Rep. Act No. 8293, reads :

"SEC. 10 . The Bureau of Legal Affairs shall have the following functions :

10.1 Hear and decide opposition to the application for registration of marks, cancellationof trademarks, subject to the provisions of Section 64, cancellation of patents, utility models, andindustrial designs, and petitions for compulsory licensing . x x x"e The dispositive portion reads, as follows :


1 5 MAY 200 3

Motion for Reconsideration per Resolution No . 2001-14(d) . Not satisfied with

such decision, the Appellant filed a Notice of Appeal on 01 February 2002 .'

On 05 March 2002, this Office received the records from the Director .

Meanwhile, the Appellant filed his Brief on 10 April 2002, and the Appellee its

own on 20 May 2002 . Subsequently, the Appellee filed a Manifestation on 11

June 2002 stating that it is adopting its Brief as its memorandum . The Appellant,

meanwhile, submitted a Manifestation/Compliance on 26 June 2002 but

attaching thereto his Memorandum and Draft Decision .

•The Appellant alleges in his appeal that the Director disregarded the

dissimilarities in the competing marks saying that the shape of letters, size,

spelling, pronunciations, and general appearance give a prominent pictorial effec t

and appeal to the eye which render nil the possible confusion as to the nature

and source of goods bearing said marks .8 He cites the Supreme Court rulings i n

• "With all the foregoing, the Petition for Cancellation, as it is hereby SUSTAINED .Consequently, Reg . No. 56901 for the mark 'L A SPORTS & DEVICE' issued in favor of Benito S .Cua, herein Respondent, is hereby ordered CANCELLED .

Let the filewrapper of L A Sports and Design subject matter in this case be forwarded tothe Administrative, Financial and Human Resource Development Services Bureau (AFHRDSB)for appropriate action in accordance with the Decision with a copy to be furnished to the Bureauof Trademark (BOT) for information and update of its records ."7 The dispositive portion reads, as follows :

IN VIEW of the foregoing, this Bureau finds no cogent reason to modify or reverseDECISION No. 2001-09 dated August 20, 2001 in the light of the fact that was made afterweighing the merits of the arguments presented, the evidence, the governing law, rules and theapplicable jurisprudence .

WHEREFORE, premises considered, the Motion for Reconsideration filed byRespondent-Registrant is, as it is hereby DENIED for the lack of merit (sic) . Consequently,DECISION No. 2001-09 dated 20 August 2001 is AFFIRMED IN TOTO ."° Appellant's Brief, pp . 2-3 .

L.A. Gear versus Cua of 23

1 1; iti . IA V I) nnq

the cases of Etepha v. Director of Patents, et a1.9 (ATUSSIN v . PERTUSSIN),

Mead Johnson & Co. v. N. V.J. van Dorp Ltd.10 (ALASKA v . ALACTA), American

Cyanamid v. Director of Patents, et al." (SULMETINE v. SULMET), George Lo

Luft Co., Inc. v. Ngo Guan12 (TANGO v. TANGEE), and Emerald Garment

Manufacturing Corporation v. Court of Appeals 13 (STYLISTIC MR. LEE v. LEE),

wherein conflicting marks are supposedly used for the same classes of goods .14

The Appellant alleges that the Director based her decision mainly on the identical

use of the letters L and A in the competing marks in spite of the rule that mere

similarity in sound and spelling does not invalidate the subsequent user's mark

but on whether or not the public is likely to be deceived by its use on different

sets of articles.15 As in the Emerald Garment case, Appellant says that

everything should be taken in context . The dominant feature of his mark is the

word SPORTS which renders its general appearance quite different from the

Appellee's. LA SPORTS, according to him, means THE SPORTS . There is no

indication or inclination to imitate the latter, even impliedly as the manner of

presentation is different leaving no room for doubt as to the source and the

products being represented .16 Moreover, LA SPORTS is used exclusively for

socks (hosiery) while L .A. GEAR allegedly covers varied products but without

proof that socks are among them . The Appellant argues that the distinctions are

so well-defined foreclosing any probability or likelihood of confusion or deceptio n

9 16 SCRA 495 .10 L-17501, 27 April 1963 (7 SCRA 768) .

L-23954, 29 April 1977 (76 SRA 568) .12 L-21915,17 December 1966 .13 G.R. No . 100098, 29 December 1995 ." Appellant's Brief, p . 3 .1 s Id, p. 4 .


5 9nA'i

on the part of the normally intelligent buyer. A practical approach, Appellant

suggests, is to go into the whole of the two marks pictured in their manner of

display and inspection should be undertaken from the viewpoint of prospective

buyer. The mark should be compared and contrasted with the purchaser's

memory of the mark allegedly infringed . As socks are not ordinary household

items like soap, soy sauce or catsup, which are of minimal cost, and are not

inexpensive, the casual buyer is predisposed to be more cautious and

discriminating and would prefer to mull over his purchase . Confusion, Appellant

argues, is less likely. The average Filipino consumer generally buys his socks,

like pants, by brand and thus, more or less knowledgeable and familiar with his

preference and will not easily be distracted . More credit, Appellant contends,

should be given to the "ordinary purchaser" who is not the completely unwary

consumer but is the ordinary intelligent buyer vis-a-vis the product involved .

According to him, the definition laid down in Dy Buncio v. Tan Tiao Bok" wherein

an "ordinary purchaser" was defined as one accustomed to but, and therefore to

some extent familiar with, the goods in question, should be considered . Echoing

the Supreme Court's ruling in said case, the Appellant contends that the test of

fraudulent simulation is to be found in the likelihood of the deception of some

persons in some measure acquainted with an established design and desirous of

purchasing the commodity with which that design has been associated . The test

is not found in the deception, or the probability of deception, of persons who

know nothing about the design which has been counterfeited, and who must be

16Id, p. 5 .

" 42 Phil . 190 .


1 5 MAY 2003

indifferent between that and the other . The simulation, in order to be

objectionable, must be such as appears likely to mislead the ordinary intelligent

buyer who has a need to supply and is familiar with the goods that he seeks to

purchase. In this instance, Appellant says, there is no cause for the

apprehension that his product might be mistaken as another variation or line of

products under Appellee's mark. It is improbable that the public would

immediately and naturally conclude that LA SPORTS is the same as L.A.

GEAR."

0 For its part, the Appellee seeks the dismissal of the appeal contendin g

that the Appellant filed its brief "beyond thirty (30) days from its receipt of the

decision." According to the Appellee, the copy of the Appellant's Brief it received

is dated 10 April 2002, about seven (7) weeks from the time this Office's Order of

14 February 2002 requiring among other things the Appellant to file its brief

within 30 days from receipt of the order, was mailed to the parties . Appellee

theorizes that the Appellant's failure to allege the timeliness of the filing of the

brief shows that it was indeed filed out of time .19 The Appellee also suggests that

the "Appellant's Brief should be dismissed for being pro-forma", and is merely a

"carbon copy" of the Appellant's Motion for Reconsideration dated 14 September

2001 20

18 Appellant's Brief, pp .79 Appellee's Brief, p. 2 .20 Supra .

5-10 .


5 M AY 2001

In its counter-arguments, Appellee says that the Appellant ignored the

pertinent context of the decisions of the Supreme Court cited in the latter's brief.

According to the Appellee, in the Mead Johnson case, Appellant failed to mention

that the Supreme Court, in finding that no confusing similarity exists between the

marks ALASKA and ALACTA, took into consideration the fact that the goods

covered by the two marks are dissimilar, i .e. ALASKA is a brand for milk, milk

products, dai ry p roducts and infant feeds which fall under Class 47 the purchase

of which does not require a medical prescription, while ALACTA covers

pharmaceutical preparation for nutritional needs which fall under Class 6 and are

presc ribed by physicians . In Etepha case, Appellee says, the marks ATUSSIN

and PERTUSSIN are not confusingly similar because, stripped off their common

suffix, i .e. the Latin word "tussin" (cough in English), the marks will read A and

PER. Moreover, confusion of the goods is not likely considering that medical

preparations may be purchased upon physician's prescription . With respect to

the George W. Luft Co. case, there was no actual examination of the contending

marks because of the failure to submit evidence as to the appearance of the

mark TANGEE. Further, the word "tango" has a well-established meaning,

referring to a particular dance and that there was no allegation that the mark

TANGO will be used for products covered by the mark TANGEE . In the case of

American Cyanamid, on the other hand, SULMETINE and SULMET are not

confusingly similar because the syllables "sul" de rived from "sulfa" and "met"

de rived from "methyl", representing chemical compounds which are present in

the goods covered by the marks, are used as descriptive and generic terms i n


1 5 M AY 2003

I

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connection with the goods . Thus, Appellee argues, without said descriptive

syllables, the marks are distinguishable as one mark has the additional letters

"ine". Confusion is unlikely since the goods covered, i .e. medical preparations for

veterinary use, are carefully examined by the purchaser before purchase to

ensure that he is buying the correct preparation and because the product bearing

the "SULMETINE" label is in the form of drinking solution .2 1

The Appellee also contends that the Director appropriately applied the

Dominancy Test. Claiming that the letters L and A are the dominant features of

the competing marks, the Appellee argues that the words SPORTS and GEAR

are only descriptive of their respective goods. It cited the case of Philippine Nut

Industry, Inc. v. Standard Brands, Inc ., et al. (1975)22 defining what constitutes a

dominant feature for a mark.23 Further, Appellant's allegation that the assailed

decision is based solely on the dominant features of the competing marks is

misleading. The decision took into account the other elements or features of the

two marks, mainly the words SPORTS and GEAR. The other differences, i .e .

letter borders, lettering and pictorial representation of a ball, are trivial and do not

serve to mitigate the confusion or likelihood of confusion . The addition of the

word SPORTS does not distinguish it from L .A. GEAR but, on the contrary,

indicates an association with L .A. GEAR which Appellee claims to be well-known

in connection with athletic shoes, sports clothing and other related goods . Thus,

even if the Holistic Test is to be applied, says the Appellee, considering that bot h

21 Ibid, pp. 3-5 .22 65 SCRA 575, 579 .

L .A . Gear versus Cua of 2 3

1 5 MAY 2001

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parties disclaimed the exclusive right to the use of the word SPORTS and GEAR,

the remaining elements L .A. and LA are confusingly similar as to confuse the

purchaser as to the origin of the goods . Citing Emerald Garment and the Del

Monte cases, Appellee contends that there is no need for the competing marks to

be identified before a finding of confusing similarity can be upheld . It is sufficient

that there is colorable imitation or colorable changes employing enough points of

similarity to confuse the public . Invoking Converse Rubber Corporation v. United

Rubber Products, Inc. et al . (1987)24, the Appellee claims that the Appellant had

the option of adopting another mark dissimilar to its mark but deliberately, chose

one to deceive

The Appellee refutes the Appellant's assertion that confusion is less likely

because socks are not ordina ry household items such that a casual buyer is

more cautious and discriminating in buying them . Buying socks, says the

Appellee, is not as considerable as buying pants . Because the ordinary

purchaser of a pair of socks is accustomed to buy and therefore, to some extent

acquainted with the products bearing the L.A. GEAR mark, such buyer will think

that the socks bearing the LA SPORTS mark are Appellee's . Thus, even if, but

without admitting, that LA SPORTS is sufficiently distinguishable from L.A.

GEAR, the likelihood of confusion remains in respect of the origin of goods. The

possibility of damage to Appellee's reputation and goodwill is unmistakable . 25

23 Appellee's Brief, pp . 5-7 .24 lbid, pp. 7-10 .

L .A. Gear versus Cua of 23

s

This Office will first resolve the allegation raised by the Appellee that th e

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Appellant's Brief was filed out of time .

Records show that the copies of this Office's Order dated 14 February

2002 requiring, among other things, the Appellant to file its brief within 30 days

from receipt of the order, were sent to the parties on 18 February 2002 by

registered mail. The Return Card for the Appellant indicates that said party's

counsel received a copy of the Order on 12 March 2002 . The Appellant,

therefore, had until 11 April 2002 within which to file its brief . The Appellant filed

the brief on 10 April 2002 . Hence, the Appellant filed its brief on time .

Proceeding to the main issues, it is noted that the Appellee anchored its

case on Section 4(d) of Republic Act No. 166, as amended, the law at the time

the application for registration of the mark LA SPORTS was filed, to wit :

Sec.4 . Registration of trademark, tradenames and service marks onthe principal register.- There is hereby established a register oftrademarks, tradenames and service marks which shall be shownas the principal register . The owner of a trademark, tradename orservice mark used to distinguish his goods, business or servicesfrom the goods, business, or service of other shall have the right toregister the same on the principal register when it :

x x x

(d) Consists of or comprises a mark or tradename which soresembles a mark or tradename registered in the Philippines or amark or tradename previously used in the Philippines by another,and not abandoned, as to be likely, when applied to or used inconnection with the goods, business, or services of the applicant, tocause confusion or mistake or to deceive purchaser . "

25 Id, pp. 10-11 .

L .A. Gear versus CuaPage 1 l of 2 3

1 r" 1 : I tt nnntv

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From a reading of the above provisions of law, it can be culled that the

determination of the issue of confusing similarity between two marks, for the

purpose of barring one from registration, or canceling if already registered, is

conditioned on the occurrence that one of them is already registered or used in

the Philippines prior to the other . Thus, for a petition for cancellation anchored on

the above quoted provisions of law to prosper, the petitioner must prove that

he/she either registered or used in the Philippines his/her mark, or both, before

the other .

In this instance, the Director found that the mark LA SPORTS is

confusingly similar to several registered marks bearing the words L .A. GEAR but

without specifying if covered by all of the following Certificates of Registration, t o

wit:2s

1 . No. 48162 issued on for Class 25 ;2. No. 56525 issued on for Class 14 ;3. No. 53257 issued on for Class 14 ;4. No. 58355 issued on for Class 25 ;5. No. 56482-28 issued on for Class 14 ; and6. No. 58301 issued on for Class 25

Apparently, the Director decided the case on the assumption that the

Appellant's mark is confusingly similar with the marks covered by all of the six

Certificates of Registration . This Office finds the same not accurate .

26 Decision, p . 5 .


1 5 MA Y 2001

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It is a principle in appellate review that an appeal of the main case gives to

the appellate court jurisdiction over all matters incidental thereto or connected

therewith, which are necessary for the preservation of the subject matter of the

action on the protection of the right of the parties .27 While an appeal, as a general

rule, cannot become a general scrutiny or undirected examination of the entire

records of the case up to the time the appeal was taken, the Supreme Court held

that an appeal to it, once accepted, throws the entire case open to review, and

the Court has the authority to review matters although not specifically raised or

assigned as error by the parties, if their consideration is necessary in arriving at a

just resolution of the case.28 Although an assignment of error is essential to

appellate review, and only those assigned will be considered, the appellate court

has a broad discretionary power to waive the lack of proper assignment of errors

in order to consider errors not assigned .29 An unassigned error closely related to

an error properly assigned, or upon which the determination of the question

raised by the error properly assigned is dependent, will be considered by the

appellate court notwithstanding the failure to assign it as error .30 Issues, though

not specifically raised in the pleadings in the appellate court, may in the interest

of justice, be properly considered by the appellate court in deciding a case, if

they are questions raised in the trial court and are matters of records havin g

27 Asian Surety & Insurance Co ., Inc. v . Relucio, 47 SCRA 225 .28 Saura Import & Export Co., Inc . v . Philippine International Surety Co., Inc. 8 SCRA 143 ; Miguel v .

Court of Appeals, 29 SCRA 760 .29 Catholic Bishop of Balanga, etc. v . Court of Appeals, G .R. No. 112519, November 14, 1996, 264SCRA 181, 190-192 ; Servicewide Specialists, Inc. v . Court of Appeals, G .R. No. 117728, June 26, 1996,

275 SCRA 643; Medrano v . Court of Appeals, 105 Phil . 441, 445 .30 Diamante v . Court of Appeals, G .R. No. 51824, February 7 . 1992, 206 SCRA 52 ; see also Hernandez

v. Andal, 78 Phil . 196, 209-210 ; Servicewide Specialists, Inc . v . Court of Appeals, supra; Espina v . Court


'7(1tt't

❑

some bearing on the issue submi tted which the parties failed to raise or the lower

court ignored .3 1

Guided by the foregoing considerations, this Office finds it necessary to

peer into the entire records of the case in order to arrive at a judicious resolution

of the present controversy .

The trademark application for LA SPORTS reveals that the same was filed

on 25 April 1990 and that the date of its first use in the Philippines was on 15

Februa ry 1990 . The Ce rtificate of Registration was issued on 26 Janua ry 1994.

With respect to the Appellee's registered marks bearing the words L.A. GEAR,

the records would show the following facts and figures :32

- - ------ - ----------------------------------------------------- ----- - --------- - - ------ - ---------

•No. Trademark

48162 L.A. GEAR53257 LOS ANGELES GEAR

L.A. GEAR &CITY SEAL DESIG N

56525 L.A. GEAR56482 L.A. GEAR58301 LOS ANGELES

L.A. GEAR & SEALDESIGN

58355 L.A. GEAR

Date of Issue Date Filed First useIn the Phi l

29 May 1990 26 Feb. 1987 none07 Aug. 1992 16 Jul. 1990 none

03 Nov. 1993 16 July 1990 none03 Nov. 1993 16 July 1990 none02 Jun . 1994 16 July 1990 non e

02 June 1994 16 July 1990 non e

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of Appeals, 215 SCRA 484; Hydro Resources Contractors Corp. v. Court of Appeals, 204 SCRA 309 ;Ortigas, Jr . v. Lufthansa German Airlines, 64 SCRA 610 .31 Baquiran v. Court of Appeals, 2 SCRA 873 .32 Exhibits A-3. A-6, A-9, A-12, A-15 and A-18 .


1 ~l MA Y 9 (1tii

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From the foregoing, it is very clear that except for the mark covered by

Certificate of Registration No . 48162, all the applications and use of the marks

bearing the words L .A. GEAR were subsequent to the Appellant's application and

use of the mark LA SPORTS . As such, the Appellee cannot claim precedence

over the Appellant as far as use and date of filing of the application, at least, are

concerned. It must be emphasized that although the marks covered by the

above-enumerated Certificates of Registration bear the words L .A. GEAR, they

are distinct and separate marks .

As such, the Appellant could not have copied or made his mark similar to

the marks the registration of which were filed or used prior to his filing date and

use of the mark. It is absurd that a subsequent filer or user of a mark will oppose

or petition for the cancellation of a mark, which was earlier registered, or in this

case, used . The Ce rtificates of Registration are public documents and therefore,

the entries thereof are presumed to be true and correct . Moreover, the Appellee

itself introduced said Ce rtificates of Registration as evidence . Thus, said pa rty is

now estopped from claiming otherwise . It is similar to making a declaration

against interest .

Consequently, the Appellee cannot now rely on Section 4(d) of Republic

Act No. 166, as amended, in assailing the registration of the mark LA SPORTS,

vis-a-vis Certificate of Registration Nos . 56525, 53257, 58355, 56482 and 58301 .

Accordingly, Appellee's move to cancel the Appellant's mark based o n


1

Appellee's prior use or registration must be confined to Certificate of Registratio n

•

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No. 48162 only .

The records are not clear whether Appellee proved in the proceedings

before the Director that it used the mark L.A. GEAR in the Philippines earlier than

Appellant's use of LA SPORTS . The Appellant declared under oath in the

application for registration that he used LA SPORTS as early as 15 Februa ry

1990. On the other hand, the Appellee's evidence to prove its prior use is Exhibit

"N" corroborating the affidavit (Exhibit A) of Don C. Lawrence, Intellectual

Property Counsel of L.A.GEAR, INC ."

It is well established that in proceedings before quasi-judicial or

administrative bodies, the quantum of evidence required is substantial evidence .

A scrutiny of Exhibit "N" shows that it is self-serving, not authenticated nor

corroborated with a single actual receipt of purchase in the Philippines . Be that

as it may, records show that it was admi tted as evidence because the Appellee

did not object to or oppose the submission of said piece of evidence, among

others .34 Moreover, evidence of statements of ma tters of interest to person s

15. Sales of Company's products bearing the trademark L .A. GEAR to distributors anddealers in the Philippines are evidenced by a computer printout of L .A. Gear Commercial invoicesfrom September 21, 1988 to September 2, 1994, which are attached and made part hereof asExhibit "N" . The trademark has, therefore, become known by Philippine consumers as thedistinctive trademark for athletic shoes and goods in Class 25 including hosiery . The renown ofthe trademark L .A. GEAR in the Philippine results not only on account of the activities of theseentities but also because of the extensive promotional efforts undertaken by the Company and itsPhilippine distributor and the worldwide notoriety of its trademark .34 Order dated 27 July 1999 of the Hearing Officer, reads as follows :

33 Paragraph 15 of Exhibit A, reads, as follows :


I :l ".~ AY ?~'i~11

engaged in an occupation contained in a list, register, periodical, or other

published compilation is admissible as tending to prove the truth of any relevant

matter so stated if that compilation is published for use by persons engaged in

that occupation and is generally used and relied upon by them therein .35

•

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The matter of prior use or registration notwithstanding, it must be

emphasized that under Sec . 4(d), the resolution of this appeal depends on the

substantial issue of whether or not the contending marks are confusingly similar .

At this juncture, this Office noted that in the assailed Decision as well as in the

Resolution denying the Appellant's Motion for Reconsideration, the Director

referred to the mark LA SPORTS as L A SPORTS. Certainly, if the letters L and

A are indeed presented as separated by a space as the Director had put it, the

L.A. in the Appellee's mark and the LA in the Appellant's would be virtually

indistinguishable . This Office finds otherwise. The letters L and A in the

Appellant's mark are not presented as separate but together to form the

combination LA .

/IFFor consideration is the Formal Offer of Evidence with motion tocorrect marking filed by

Petitioner through counsel consisting of Exhibits "A" to "A-24" and remarked as Exhibits "B" to "B-24" to "V-87" inclusive of submarkings.

It appearing that the above-mentioned exhibits are offered in accordance with the Rulesof Practice in Trademark Cases and the Rules of Court, the same are all ADMITTED in evidencefor the petitioner for whatever worth they may be . It is however noted, that Respondent failed tofile its comments/objections thereto despite having been furnished with said exhibits underRegistered Receipt No. 19186 and 19187 dated November 24, 1997 .35 Section 45, Rule 130, Revised Rules of Court.


on fYI

To better appreciate the features of the contending marks, as well as to

make a careful comparison thereof, they are reproduced hereunder :

•

Evidently, the dominant feature of the Appellant's mark is the combination

of the letters L and A, which is represented and read as LA. However, the same

cannot be said with respect to the Appellee's mark . There is no clear dominating

feature as far as the latter's mark is concerned . The fact that L .A. is usually read

before GEAR does not make the former the dominant feature of the mark . In

view thereof, the marks must be scrutinized side by side, in their entirety .

It is well established that in trademark cases, particularly in ascertaining

whether one trademark is confusingly similar to or is a colorable imitation of

another, no set rules can be deduced . Each case is decided on its own merits .3 6

As the likelihood of confusion of goods or business is a relative concept, to be

36 Emerald Garment Manufacturing Corporation v . Court of Appeals, 251 SCRA 600 (1995) .


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determined only according to the particular, and sometimes peculiar,

circumstances of each case,37 the complexities attendant to an accurate

assessment of likelihood of such confusion requires that the entire panoply of

elements constituting the relevant factual landscape be comprehensively

examined .38 Confusion is likely between trademarks only if their over-all

presentation in any of the particulars of sound, appearance or meaning are such

as would lead the purchasing public into believing that the products to which the

marks are applied emanated from the same source . 39 Whether the mark or label

of one competitor resembles another is to be determined by an inspection of the

points of difference and resemblance, as a whole, and not merely the points of

resemblance .4 0

The application for registration of the mark LA SPORTS shows that the

Appellant disclaims the word SPORTS . But contrary to the finding of the

Director41, the Appellee did not disclaim the word GEAR as far as Certificate of

Registration No . 48162 is concerned . Hence, stripped of the disclaimed words,

what would be left is LA on one hand and the entire L .A. GEAR, on the other. On

that consideration alone, there is no similarity that may cause confusion a s

regards the origin of the goods involved .

37 Esso Standard Eastern, Inc . v . Court of Appeals, 116 SCRA 336 (1982).38 Fruit of the Loom, Inc . v. Court of Appeals, G .R . No. L-32747, 29 November 1984 .

3' Etepha, A .G. v . Director of Patents, supra .40 American Cyanamid Company v. Director of Patents, supra .41 In the assailed Decision, the Director stated on page 5 that "(a) comparison of the competing markswould show that both contain the DOMINANT feature consisting of the letters 'L A' . The inclusion of


I 1A Y ?G03

E

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Nevertheless, even if the disclaimed po rtions are included in the

comparison, the more it becomes apparent that no similarity exists that could

confuse the buying public. The similarity may be as regards the sound as it

indeed possible that the combination of the le tters LA in LA SPORTS could be

pronounced as "el-ey", the same sound when reading or pronouncing L.A. But

the possibility of pronouncing LA as "el-ay", is much as great as pronouncing the

same as simply as "Ia", as the Appellant argues .

Moreover, the other features of the contending marks are so prominent

that they would not escape one's view. It is very easy to the purchaser to know

that when he or she buys a pair of socks with the brand LA SPORTS, the socks

originate from the Appellant and not from the Appellee . For one, the respective

presentation of the contending marks are so different that one cannot be

mistaken for the other - the font of the letters, the embellishments, the size, and

the general appearance. LA SPORTS is presented together with a device of a

ball, which is so prominent, and on which the word SPORTS is superimposed, a

feature which is absent in nor in any way similar to any feature in L .A. GEAR .

While the goods bearing the contending marks or labels may be related, it

was not established by the evidence on record that L .A. GEAR is used for socks

(hosiery) . LA SPORTS on the other hand, is used exclusively for such goods .

There being a variety of goods to which the mark L .A. GEAR is attached to, i

the other features to both trademarks such as 'GEAR' for the Petitioner and 'SPORTS' for theRegistrant is not significant considering that said words are disclaimed by the parties respectively ."

L .A . Gear versus Cua of 23

Y 2003

would be ve ry remote that a normally intelligent buyer would believe that for just

one product, that is, socks, the "Appellee" would make a substantial variation

thereof to make it read LA SPORTS .

•

It is interesting to note that this is not the first time that there occurred a

similarity in the first words in the competing marks yet no confusing similarity

between the marks themselves is found . Even the presence of identical first

words in the contending marks would not necessarily mean that the marks are

confusingly similar . One such case was decided by no less than the Supreme

Court. In the case of Fruit of the Loom, Inc . v. Court of Appeals42, holding that the

marks FRUIT OF THE LOOM and FRUIT FOR EVE are not confusingly similar,

made the following elucidation, to wit :

x x x"In cases of this nature, there can be no better evidence as

to whether there is a confusing similarity in the contestingtrademarks than the labels or hang tags themselves. A visualpresentation of the labels or hang tags is the best argument for oneor the other, hence, x x x

"Petitioner asseverates in the third and fou rth assignment oferrors, which, as We have said, constitute the main argument, thatthe dominant features of both trademarks is the word FRUIT . Indetermining whether the trademarks are confusingly similar, acomparison of the words is not the only determinant factor. Thetrademarks in their entirety as they appear in their respective labelsor hang tags must also be considered in relation to the goods towhich they are attached. The discerning eye of the obse rver mustfocus not only on the predominant words but also on the otherfeatures appearing in both labels in order that he may draw hisconclusion whether one in confusingly similar to the other . (BristolMyers Co . vs. Director of Patents, 17 SCRA 131) .

42 133 SCRA 405 . 0/


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"In the trademarks FRUIT OF THE LOOM and FRUIT FOREVE, the lone similar word is FRUIT. WE agree with the respondentcourt that by mere pronouncing the two marks, it could hardly besaid that it will provoke a confusion, as to mistake one for the other .Standing by itself, FRUIT OF THE LOOM is wholly different fromFRUIT FOR EVE. WE do not agree with petitioner that thedominant feature of both trademarks is the word FRUIT for even inthe printing of the trademark in both hang tags, the word FRUIT isnot at all made dominant over the other words .

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"As to the design and coloring scheme of the hang tags, Webelieve that while there are similarities in the two marks like the redapple at the center of each mark, We also find differences ordissimilarities which are glaring and striking to the eye such as : x x

x

"The similarities of the competing trademarks in this case arecompletely lost in the substantial differences in the design andgeneral appearance of their respective hang tags . WE haveexamined the two trademarks as they appear in the hang tagssubmitted by the parties and We are impressed more by thedissimilarities than by the similarities appearing therein . WE holdthat the trademarks FRUIT OF THE LOOM and FRUIT FOR EVEdo not resemble each other as to confuse or deceive an ordina ry

purchaser. The ordinary purchaser must be thought of as having,and credited with, at least a modicum of intelligence (Carnation Co .

vs. California Growers Wineries, 97 F. 2d 80; Hyram Walke andSons vs. Penn-Ma ryland Corp., 79 F . 2d 836) to be able to see theobvious differences between the two trademarks in question .

Furthermore, We believe that a person who buys petitioner'sproducts and sta rts to have a liking for it, will not get confused andreach out for private respondent's products when she goes to agarment store .

In this instance, this Office finds it compelling to set aside the findings of

the Director. There is no confusing similarity between the contending marks .

WHEREFORE, premises considered, the appeal is hereby granted .

Accordingly, Decision No. 2001-09 dated 17 September 2001 of the Director o f


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k

the Bureau Legal Affairs (BLA) is REVERSED and SET ASIDE . Certificate of

Registration No. 56901 for the Appellant's mark LA SPORTS & DEVICE OF A

BALL ON THE WORD "SPORTS" for use on hosiery (socks) for a term of

Twenty Years from 26 January 1994 is hereby UPHELD subject to compliance

by the Appellant with maintenance requirements under the law and regulations .

Let a copy of this Decision as well as the records be returned to the

Director of Bureau of Legal Affairs for appropriate action . Further, let the

Directors of the Bureau of Trademarks, and the Administrative, Financial and

Human Resources Development Services Bureau be furnished copies of this

Decision for information and guidance .

SO ORDERED .

Makati City.

i ~ ~1 m tool

A IC. F~NCISCODirector General


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