EMERALD GARMENT vs. THE H.D.
LEE COMPANY OGIVE CURVE DESIGN and is, therefore, entitled to
G.R. No. 210693
June 7, 2017
FACTS:
 This is a Petition for Review on Certiorari filed by Emerald
Garment Manufacturing Corporation (Emerald) against The
H.D. Lee Company, Inc. (H.D. Lee) to assail CA decision
 The CA reversed IPO decision approving H.D. Lee's
application for registration of the trademark "LEE &
OGIVE CURVE DESIGN."
 H.D. Lee filed before the IPO an application for the
registration of the trademark, "LEE & OGIVE CURVE
DESIGN" and claimed that the said mark was first used in
the Philippines.
- Relative thereto, on outer clothing categorized under
Class 25, which includes jeans, casual pants, trousers,
slacks, shorts, jackets, vests, shirts, blouses, sweaters,
tops, skirts, jumpers, caps, hats, socks, shoes,
suspenders, belts and bandannas, was filed.
 Within 3 years from the filing of the application, H.D. Lee
submitted to the IPO a Declaration of Actual Use of the
mark.
- H.D. Lee's application was published in the Intellectual
Property Philippines' Electronic Gazette for
Trademarks.
 Emerald opposed argued that the approval of the
application will violate the exclusive use of its marks,
"DOUBLE REVERSIBLE WAVE LINE," and "DOUBLE
CURVE LINES," which it has been using on a line of
clothing apparel since October 1, 1973 and 1980,
respectively.
 Refuting Emerald’s opposition, H.D. Lee insisted that it is
the owner and prior user of “LEE & OGIVE CURVE
DESIGN.”
- H.D. Lee maintained that it initially used the said mark
on February 18, 1946, and registered the same in the
USA on April 10, 1984 under Registration No.
1,273,602.
- The mark has been commercially advertised and used
all over the world as well.
BLA DIRECTOR (Atty. Abelardo) IPO: Denied HD Lee
DG Blancaflor rendered a Decision reversing the findings of
Atty. Abelardo based on the grounds cited as follows:
- Furthermore, there is nothing in the records which
explained how [Emerald] came to use a highly
distinctive sign such as a "Back Pocket Design" or the
"Double Curve Lines" which are identical or
confusingly similar to the well-known mark LEE &
OGIVE CURVE DESIGN.
- The absence of any explanation on how Emerald
conceived these marks gives credence to the position
that H.D. Lee is the owner and creator of LEE &
the registration of this mark.
CA denied in the herein assailed decision which ruled that H.D.
Lee substantially complied with the procedural requirements in
filing before the IPO a petition for registration of the mark "LEE
& OGIVE CURVE DESIGN." Hence, the petition.
ISSUE: WON the EMERALD GARMENT MANUFACTURING
CORPORATION has the rights over the registration of the marks
"DOUBLE CURVE LINES' and "DOUBLE REVERSIBLE WAVE
LINE' as against H.D. Lee's "OGIVE CURVE DESIGN."
RULING: (in favor of HD LEE)
 The instant petition is impressed with merit.
 The present controversy arose from H.D. Lee’s application
for the registration of the mark “LEE & OGIVE CURVE
DESIGN," which was filed in 2001, pending the final
resolution of Emerald’s separate applications for the
registration of the marks “DOUBLE CURVE LINES" and
“DOUBLE REVERSIBLE WAVE LINE (Back Pocket
Design).”
- BLA Director Atty. Abelardo denied H.D. Lee’s
application for registration of “OGIVE CURVE
DESIGN” by reason of opposer Emerald’s
proven prior commercial use of “DOUBLE
REVERSIBLE WAVE LINE.”
- Back then, Atty. Abelardo already took note of the
pendency of Emerald’s two separate applications
for the registration of “DOUBLE CURVE LINES”
and “DOUBLE REVERSIBLE WAVE LINE”
 Despite the foregoing, the IPO’s DG and CA proceeded to
resolve the case unmindful of the pending applications for
the registration of “DOUBLE CURVE LINES” and “DOUBLE
REVERSIBLE WAVE LINE" previously filed by Emerald
 Meanwhile, in G.R. No. 195415, the Court, via the
Resolutions dated November 28, 2012 and January 28,
2013, made the following findings with finality:
1) Emerald has been using the mark “DOUBLE
REVERSIBLE WAVE LINE (Back Pocket Design)
since October 1973, with sales invoices proving actual
commercial use of the mark more than two months
before the application for its registration in 1990;
2) H.D. Lee’s sale of its garments in the Philippines only
began in 1996;
3) H.D. Lee failed to prove that the mark “OGIVE CURVE
DEVICE" was well-known locally and internationally at
the time Emerald filed its application for the registration
of the mark “DOUBLE REVERSIBLE WAVE
LINE(Back Pocket Design).
 On the other hand, Emerald’s application for the
registration of its mark “DOUBLE CURVE LINES’’ had
likewise been resolved with finality by the IPO DG
[W]ell-settled is the principle that a decision that has
acquired finality becomes immutable and unalterable
 The reason for this is that litigation must end and
terminate sometime and somewhere, and it is essential
to an effective and efficient administration of justice
that, once a judgment has become final, the winning
party be not deprived of the fruits of the verdict.
- The Court also emphatically instructs anent the
concept and application of res judicata, viz.:"a final
judgment or decree on the merits by a court of
 competent jurisdiction is conclusive of the rights of
the parties or their privies in all later suits on all
points and matters determined in the former suit."
 The elements for res judicata to apply are as follows:
a) the former judgment was final;
b) the court that rendered it had jurisdiction over the
subject matter and the parties;
c) the judgment was based on the merits; and
d) between the first and the second actions, there was an
identity of parties, subject matters, and causes of
action.
 H.D. Lee argues that the principle of conclusiveness of
judgment does not apply since no identity of issue
exists between the instant petition, on one hand, and
G.R. No. 195415, on the other.
 The Court finds the foregoing untenable as the issues all
point to the registrability of the confusingly similar marks
"DOUBLE CURVE LINES," "DOUBLE REVERSIBLE
WAVE LINE," and "OGIVE CURVE DESIGN."
 Further, H.D. Lee's claim that the instant petition involves
the mark "LEE & OGIVE CURVE DESIGN' and not "OGIVE
CURVE DESIGN' is specious and a clear attempt to engage
into hair-splitting distinctions.
 A thorough examination of the pleadings submitted by H.D.
Lee itself shows that indeed, the focus is the "OGIVE
CURVE DESIGN," which remains to be the dominant
feature of the mark sought to be registered.
The Court needs to stress that in G.R. No. 195415 and Inter
Partes Case No. 3498 before the IPO, Emerald had already
established with finality its rights over the registration of
the marks "DOUBLE CURVE LINES' and "DOUBLE
REVERSIBLE WAVE LINE' as against H.D. Lee's "OGIVE
CURVE DESIGN."
WILTON DY AND/OR PHILITES ELECTRONIC & LIGHTING
PRODUCTS V. KONINKLIJKE PHILIPS PRODUCTS, N.V.
G.R. NO. 186088, MARCH 22, 2017
Sereno, C.J.
FACTS:
 On April 12, 2000, petitioner PHILITES filed a trademark
application covering its fluorescent bulb, incandescent
light, starter and ballast.
 After publication, respondent Koninklijke Philips
Electronics, N .V. ("PHILIPS") opposed the application on
March 17, 2006, alleging that the approval of the trademark
application of the petitioner will cause damage to the
proprietary rights, business reputation and goodwill
over its trademark, and will also cause unfair commercial
profit, due to the tendency that it will mislead the public as
to the origin, nature, quality, and characteristic of the goods
on which it is affixed, because an identical or confusingly
similar mark that clearly infringes the well-known mark
of the respondent.
 Petitioner answered that Philips and and ‘Philites & Letter P
Device’ have vast dissimilarities in terms of spelling, sound,
and meaning.
The IPP-BLA denied the opposition by the respondent. It held
that the PHILIPS and PHILITES marks were so unlike, both
visually and aurally, and that no confusion was likely to concur
despite their contemporaneous use.
On appeal, the IPP-DG affirmed the Decision of the IPP-BLA,
stating that while the first syllables of the marks are identical, the
second syllables are not.
- There were also “glaring differences and
dissimilarities” in the design and general appearance
of the PHILIPS mark and the PHILITES mark.
CA reversed and set aside the Decision of the IPP-DG. It held
that it found the petitioner’s actual wrapper and packaging that
contain the light bulbs confusingly similar with that of the
respondent’s. petitioner filed MR, but was denied. hence, this
Petition for Review.
ISSUE: WON the mark applied for by the petitioner is identical
or confusingly similar with that of the respondent.
 RULING:
Despite respondent's diversification to numerous and
varied industries, 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.
- Applying the dominancy test in the instant case, it
shows the uncanny resemblance or confusing
similarity between the trademark applied for by
respondent with that of petitioner's registered
trademark.
- An examination of the trademarks shows that their
dominant or prevalent feature is the five-letter
"PHILI",
o "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.
 At bottom, the letters "PHILI'' visually catch the attention of
the consuming public and the use of respondent's
trademark will likely deceive or cause confusion. Most
importantly, both trademarks are used in the sale of the
same goods, which are light bulbs.
 The confusing 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.
- Applying the holistic test, entails a consideration of
the entirety of the marks as applied to the products,
including the labels and packaging, in determining
confusing similarity.
- 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 fact that the parties' wrapper or packaging reflects
negligible differences considering the use of a slightly
different font and hue of the yellow is of no moment
 because taken in their entirety, respondent's trademark
"PHILITES" will likely cause confusion or deception to
the ordinary purchaser with a modicum of intelligence.
SERI SOMBOONSAKDIKUL, Petitioner vs. ORLANE S.A.,
Respondent
G.R. No. 188996
February 1, 2017
FACTS:
 On September 23, 2003, petitioner Seri Somboonsakdikul
(petitioner) filed an application for registration of the mark
LOLANE with the IPO for goods classified under Class 3
(personal care products) of the International Classification
of Goods and Services for the Purposes of the Registration
of Marks (International Classification of Goods).
 Orlane S.A. (respondent) filed an opposition to petitioner's
application, on the ground that the mark LOLANE was
similar to ORLANE in presentation, general appearance
and pronunciation, and thus would amount to an
infringement of its mark.
 Respondent alleged that:
1) it was the rightful owner of the ORLANE mark which
was first used in 1948;
2) the mark was earlier registered in the Philippines on
July 26, 1967 under Registration No. 129961 with the
following goods: perfumes, toilet water, face powders,
lotions, essential oils, cosmetics, lotions for the hair,
dentrifices, eyebrow pencils, make-up creams,
cosmetics & toilet preparations under Registration No.
12996
3) on September 5, 2003, it filed another application for
use of the trademark on its additional products.
 Petitioner denied that the LOLANE mark was confusingly
similar to the mark ORLANE.
- He averred that he was the lawful owner of the mark
LOLANE which he has used for various personal care
products sold worldwide.
- He alleged that the first worldwide use of the mark was
in Vietnam on July 4, 1995.
- Petitioner also alleged that he had continuously
marketed and advertised Class 3 products bearing
LOLANE mark in the Philippines and in different parts
of the world and that as a result, the public had come
to associate the mark with him as provider of quality
personal care products.
- Petitioner maintained that the marks were distinct and
not confusingly similar either under the dominancy test
or the holistic test.
BLA: rejected petitioner's application finding that respondent's
application was filed, and its mark registered, much earlier.
 The BLA ruled that there was likelihood of confusion based
on the following observations: (
1) ORLANE and LOLANE both consisted of six letters
with the same last four letters - LANE;
2) both were used as label for similar products;
3) both marks were in two syllables and that there was
only a slight difference in the first syllable; and
4) both marks had the same last syllable so that if these
marks were read aloud, a sound of strong similarity
would be produced and such would likely deceive or
cause confusion to the public as to the two trademarks
Director General of the IPO: affirmed the Decision of the BLA
Director.
CA: denied the petition and held that there exists colorable
imitation of respondent's mark by LOLANE. T
ISSUE: Whether or not there is confusing similarity between
ORLANE and LOLANE which would bar the registration of
LOLANE before the IPO.
RULING:
 No, there is no confusing similarity between ORLANE and
LOLANE which would bar the registration of LOLANE
before the IPO. The Court ruled that the CA erred when it
affirmed the Decision of the IPO.
 There is no colorable imitation between the marks
LOLANE and ORLANE which would lead to any
likelihood of confusion to the ordinary purchasers.
 A trademark is defined under Section 121.1 of RA 8293
as
- any visible sign capable of distinguishing the goods.
 It 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.
 Thus, the mark must be distinctive. The registrability of a
trademark is governed by Section 123 of RA 8293. Section
123.1 provides: Section 123. 1. A mark cannot be registered
if it:
- 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:
o 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; xxx.
In determining the likelihood of confusion, the Court must
consider:
a) the resemblance between the trademarks;
b) the similarity of the goods to which the trademarks are
attached;
c) the likely effect on the purchaser and
d) the registrant's express or implied consent and other fair
and equitable considerations.
 Likewise, the Court finding that LOLANE is not a colorable
imitation of ORLANE due to distinct visual and aural
differences using the dominancy test, it no longer finds
necessary to discuss the contentions of the petitioner as to
the appearance of the marks together with the packaging,
nature of the goods represented by the marks and the price
 difference, as well as the applicability of foreign judgments.
The Court ruled that the mark LOLANE is entitled to
registration. Hence, the petition is GRANTED and the
Decision of the Court of Appeals dated July 14, 2009 is
REVERSED and SET ASIDE.
246 CORPORATION, doing business under the name and
style of ROLEX MUSIC LOUNGE v
HON. REYNALDO B. DAWAY
G.R. No. 157216 | November 20 2003 | Ynares-Santiago, J.
FACTS:
 Montres Rolex S.A. and Rolex Centre Phil., Limited,
owners/proprietors of Rolex and Crown Device, filed
against petitioner 246 Corporation the instant suit for
trademark infringement and damages with prayer for the
issuance of a restraining order or writ of preliminary
injunction.
- sometime in July 1996, petitioner adopted and, since
then, has been using without authority the mark
"Rolex" in its business name "Rolex Music
Lounge" as well as in its newspaper
advertisements as – "Rolex Music Lounge, KTV,
Disco & Party Club."
 Petitioner argued that respondents have no cause of action
because no trademark infringement exist; that no confusion
would arise from the use by petitioner of the mark "Rolex"
considering that its entertainment business is totally
unrelated to the items catered by respondents such as
watches, clocks, bracelets and parts thereof.
ISSUE: Whether or not the junior use of a registered mark on
entirely different goods subsists.
RULING:
 Under the old Trademark Law where the goods for which
the identical marks are used are unrelated, there can be no
likelihood of confusion and there is therefore no
infringement in the use by the junior user of the registered
mark on the entirely different goods.
- This ruling, however, has been to some extent,
modified by Section 123.1(f) of the Intellectual Property
Code (Republic Act No. 8293), which took effect on
January 1, 1998. The said section reads:
Sec. 123. Registrability. 123.1. A mark cannot be registered if it:
 (f) Is identical with, or confusingly similar to, or constitutes
a translation of a mark considered well-known in
accordance with the preceding paragraph, which is
registered in the Philippines with respect to goods or
services which are not similar to those with respect to
which registration is applied for:
o Provided, That use of the mark in relation to those
goods or services would indicate a connection
between those goods or services, and the owner
of the registered mark:
o Provided, further, That the interest of the owner of
the registered mark are likely to be damaged by
such use;
 A junior user of a well-known mark on goods or services
which are not similar to the goods or services, and are
therefore unrelated, to those specified in the certificate of
registration of the well-known mark is precluded from using
the same on the entirely unrelated goods or services,
subject to the following requisites, to wit:
1) The mark is well-known internationally and in the
Philippines. Under Rule 102 of the Rules and Regulations
on Trademarks, Service Marks, Trade Names and Marked
or Stamped Containers 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 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 to which the mark has been registered in the
world;
f) the exclusivity of the 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; an
l) the presence of absence of identical or similar marks
validly registered for or used on identical or similar
goods or services and owned by persons other than the
person claiming that his mark is a well-known mark.
2) The use of the well-known mark on the entirely unrelated
goods or services would indicate a connection between
such unrelated goods or services and those goods or
services specified in the certificate of registration in the well
known mark. This requirement refers to the likelihood of
confusion of origin or business or some business
connection or relationship between the registrant and the
user of the mark.
3) The interests of the owner of the well-known mark are
likely to be damaged. For instance, if the registrant will be
precluded from expanding its business to those unrelated
good or services, or if the interests of the registrant of the
well-known mark will be damaged because of the inferior
quality of the good or services of the user.
Section 123.1(f) is clearly in point because the Music
Lounge of petitioner is entirely unrelated to respondents
business involving watches, clocks, bracelets, etc. However, the
Court cannot yet resolve the merits of the present controversy
considering that the requisites for the application of Section
123.1(f), which constitute the kernel issue at bar, clearly require
determination facts of which need to be resolved at the trial
court.