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.