In Great White Shark Enterprises, Inc. v. Caralde, 21 November 2012 (G.R. No. 192294), Great White Shark Enterprises, Inc. (“Petitioner”) assailed the decision of the Court of Appeals (“CA”), which reversed and set aside the decision of the Director General of the Intellectual Property Office of the Philippines.
On 31 July 2002, Danilo M. Caralde, Jr. (“Respondent”) filed a trademark application for the registration of the SHARK & LOGO mark in Class 25 for slippers, shoes, and sandals. Petitioner filed an opposition to the said registration stating that the subject mark is confusingly similar to its world famous Greg Norman logo, which was pending registration in Class 25 for clothing, headgear, and footwear. Said mark was subsequently registered during the pendency of this case.
The Bureau of Legal Affairs (“BLA”) ruled in favor of the Petition and rejected Respondent’s trademark application. However, the BLA held that Petitioner’s trademark is not a well-known mark. The Director General affirmed the decision of the BLA. However, the CA reversed and set aside the decision of the Director General.
The Supreme Court (“Court”) denied the Petition.
A mark can be registered if it is capable of distinguishing the goods of one person from that of another. In other words, the mark sought to be registered must be distinctive. Thus, a generic figure such as a shark can be registered if it is designed in a distinctive manner.
Section 123.1 (d) of the Intellectual Property Code of the Philippines provides that a mark cannot be registered if it is identical to a mark belonging to a 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.
The Court held there is no confusing similarity between the competing marks, regardless of the test used (Dominancy or Holistic test). The fact that both marks use the shape of a shark is not enough as the competing marks are visually and aurally distinct:
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, to wit:
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. 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. shape with two linings, thus: The whole design is enclosed in an elliptical shape with two linings, thus:
Therefore, the evident and significant visual dissimilarities between the competing marks negate the possibility of confusion in the minds of the ordinary purchaser.
How are the marks aurally different?