G.R. No. L-28744. April 29, 1971. ACOJE MINING CO., INC., petitioner-applicant, vs. THE DIRECTOR OF PATENTS, respondent.
FACTS:

Petitioner Acoje Mining Company, Inc. filed an application with the Bureau of Patents for the registration of the trademark “LOTUS” for its product, soy sauce, under Class 47. The Chief Trademark Examiner rejected the application on the ground of confusing similarity with an existing trademark “LOTUS” registered under Certificate No. 12476 in favor of Philippine Refining Company for its product, edible oil, which also falls under Class 47. The Examiner held that the marks were identical and the goods related.
The matter was elevated to the respondent Director of Patents, who affirmed the rejection in a decision dated January 31, 1968. The Director acknowledged differences in the visual presentation of the marks, such as typeface, size, and color (petitioner’s mark being in yellow and red on a distinct background, compared to the registrant’s green and yellow). However, he ruled that the close relationship between soy sauce and edible oil as food products was such that purchasers would likely be misled into believing the goods originated from a common source. Hence, this petition for review.

ISSUE

Whether the petitioner’s application for the trademark “LOTUS” for soy sauce should be denied on the ground of confusing similarity with the prior registered trademark “LOTUS” for edible oil.

RULING

The Supreme Court reversed the decision of the Director of Patents and granted the petitioner’s application. The Court applied the controlling doctrine from American Wire & Cable Co. v. Director of Patents, which states that the determinative factor is not whether the challenged mark would actually cause confusion, but whether its use would likely cause confusion or mistake among the buying public.
Applying this test, the Court found no likelihood of confusion. First, there is a clear and fundamental difference between the products—soy sauce and edible oil. A purchaser in the market for one is not likely to be mistaken into buying the other merely because they share an identical word mark. The nature and use of the goods are distinct. Second, the Court emphasized that the trademarks must be considered in their entirety as they appear on their respective labels. Here, the visual dissimilarities in type, color, size, and overall design were significant, making the possibility of confusion remote. The petitioner’s specific presentation of the mark created a distinct commercial impression.
Therefore, the Court concluded that the Director of Patents erred in denying the registration. The remote chance of confusion did not justify a prohibition under trademark law, and the petitioner successfully made out its case for the registration of its trademark “LOTUS” for soy sauce.