GR 192294; (November, 2012) (Digest)
G.R. No. 192294; November 21, 2012
GREAT WHITE SHARK ENTERPRISES, INC., Petitioner, vs. DANILO M. CARALDE, JR., Respondent.
FACTS
Respondent Danilo M. Caralde, Jr. filed an application to register the trademark “SHARK & LOGO” for footwear under Class 25. Petitioner Great White Shark Enterprises, Inc., a foreign corporation, opposed the application. Petitioner claimed ownership of a registered mark consisting of a shark illustration, known as the “GREG NORMAN LOGO,” used for apparel and footwear. It argued that the similarity between the two marks would cause confusion, deceiving the public into believing Caralde’s goods originated from or were connected to the petitioner.
The Bureau of Legal Affairs (BLA) Director and, on appeal, the IPO Director General both rejected Caralde’s application. They ruled the marks were confusingly similar, as both had a shark as the dominant feature and were used on related goods under the same class. However, the Court of Appeals reversed this decision, finding no confusing similarity. The CA noted Caralde’s mark was more fanciful and distinguishable, and that the price disparity and different trade channels negated any likelihood of confusion.
ISSUE
Whether the respondent’s “SHARK & LOGO” mark is confusingly similar to the petitioner’s registered “GREG NORMAN LOGO” mark, warranting the denial of its registration.
RULING
The Supreme Court denied the petition and affirmed the Court of Appeals’ decision, directing the grant of Caralde’s application. The Court applied the dominancy test, which focuses on the similarity of the prevalent features of the competing marks that are likely to be remembered by buyers. Examining the marks holistically, the Court found them visually and aurally distinct.
Petitioner’s mark is a simple, plain illustration of a shark in profile. Respondent’s mark is a composite, stylized, and shaded silhouette of a shark, with its body designed to incorporate the letters forming “SHARK.” The conceptual differences are significant; one is a literal depiction, while the other is a figurative representation integrating word elements. The Court held that an ordinary purchaser, exercising reasonable caution, would not be confused. The added finding by the CA regarding price disparity and market channels further supported the absence of a likelihood of confusion. Since the marks are not identical or confusingly similar, the prohibition under Section 123.1(d) of the Intellectual Property Code does not apply.