The Rule on ‘Holistic Test’ vs ‘Dominancy Test’
| SUBJECT: The Rule on ‘Holistic Test’ vs ‘Dominancy Test’ |
I. Introduction
This memorandum provides an exhaustive analysis of the two principal doctrinal tests applied by Philippine courts in determining infringement of registered trademarks and trade names, namely, the dominancy test and the holistic test. The primary legal framework is found in Republic Act No. 8293, the Intellectual Property Code of the Philippines. The central legal issue is the ascertainment of which test governs in a given case to determine whether there exists a likelihood of confusion, which is the cornerstone of trademark infringement and unfair competition. The inconsistent application of these tests by the judiciary has created a degree of legal uncertainty, necessitating a clear understanding of their respective parameters and the emerging jurisprudential trend.
II. Statement of Legal Issue
Which doctrinal test—the dominancy test or the holistic test—should be applied to determine the existence of a likelihood of confusion in cases of alleged trademark infringement under Section 155 of the Intellectual Property Code, and what are the defining principles and factors that distinguish their application?
III. Brief Answer
The prevailing and controlling test in Philippine jurisprudence is the dominancy test. The holistic test is applied as a secondary or supplementary approach, primarily in cases where the competing marks, when considered in their entirety, present a distinct overall impression despite similarities in dominant features. The Supreme Court has consistently held that the dominancy test focuses on the similarity of the prevalent or dominant features of the competing marks that cause confusion or deception, whereas the holistic test requires a comparison of the marks in their entirety. The determination is ultimately factual and rests on whether the similarities between the dominant features of the marks are likely to cause confusion, mistake, or deception among ordinarily prudent purchasers.
IV. Applicable Laws and Doctrines
Section 155. Remedies; Infringement. – Any person who shall, without the consent of the owner of the registered mark: 155.1 Use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark or the same container or a dominant feature thereof in connection with the sale, offering for sale, distribution, advertising of any goods or services… which is likely to cause confusion, or to cause mistake, or to deceive*.
Section 123.1(d). A mark cannot be registered if it is identical with a registered mark belonging to a different proprietor or so nearly resembles it as to be likely to deceive or cause confusion*.
V. The Dominancy Test
The dominancy test is the primary test applied in trademark infringement cases. It emphasizes the aural, visual, and conceptual similarity of the main, prevalent, or essential features of the competing marks. If the dominant features of the allegedly infringing mark are identical or substantially similar to those of the registered mark, such that a likelihood of confusion is probable, infringement exists. The test is predicated on the reality that an average purchaser does not meticulously examine every detail of a mark but acts on general impressions and recollections. Courts applying this test often disregard minor differences in font, color, or non-dominant elements (e.g., house marks, company logos placed elsewhere on the label). Factors considered include:
Phonetic Similarity (Idem Sonans)*: How the marks sound when pronounced.
Visual Similarity*: The appearance of the dominant words, logos, or symbols.
Conceptual Similarity*: The idea or meaning conveyed by the dominant feature.
Class of Goods and Consumers*: The nature of the products and the typical purchaser’s level of care.
VI. The Holistic Test
The holistic test, or totality rule, requires the court to consider the overall impression created by the marks in their entirety, including all features such as labels, packaging, color schemes, graphics, and house marks. Under this test, infringement may not be found if, despite some similarities in certain elements, the overall commercial impression of the two marks is distinct and unlikely to cause confusion. This test is less favored in Philippine jurisprudence for determining trademark infringement proper but may be invoked, often by defendants, to argue that the differences in overall presentation negate any likelihood of confusion. It finds more frequent application in cases of unfair competition where the totality of the defendant’s conduct, including packaging and trade dress, is in issue.
VII. Comparative Analysis
The following table delineates the core distinctions between the two tests:
| Aspect of Comparison | Dominancy Test | Holistic Test |
|---|---|---|
| Primary Focus | The prevalent, essential, or dominant features of the marks (e.g., the most prominent word). | The overall impression created by the marks in their entirety, considering all elements as a whole. |
| Jurisprudential Status | The controlling and preferred test for trademark infringement. | Applied as a secondary or supplementary test; less favored for pure infringement analysis. |
| Treatment of Non-Dominant Elements | Minor differences in non-dominant features (size, font, peripheral graphics) are disregarded if the dominant features are confusingly similar. | All elements, including non-dominant ones, are weighed equally to assess the total effect. |
| Relation to Unfair Competition | Central to proving infringement, which focuses on the mark itself. | More closely aligned with the analysis of unfair competition, which looks at the total trade dress and conduct. |
| Purchaser’s Perspective | Considers the general impression retained by an ordinary purchaser who relies on recollection. | Considers a more deliberate, side-by-side comparison of the complete labels or packaging. |
| Typical Proponent | Usually invoked by the trademark* owner (plaintiff). | Often invoked by the alleged infringer (defendant) to defeat a claim. |
VIII. Relevant Jurisprudence
Société des Produits Nestlé, S.A. v. Puregold Price Club, Inc., G.R. No. 252301, July 28, 2021: The Supreme Court reaffirmed the dominancy test as the paramount rule. It held that the phonetic and visual similarity between “CLOUD NINE” and “CLUB NINE” for chocolates was likely to cause confusion*, emphasizing the dominant word “NINE.”
McDonald’s Corporation v. L.C. Big Mak Burger, Inc.*, G.R. No. 143993, August 18, 2004: The Court ruled that “BIG MAK” infringed “BIG MAC” because the dominant word “Mak” was phonetically identical to “Mac,” and the addition of the corporate logo “L.C.” was a mere peripheral element.
Philip Morris, Inc. v. Fortune Tobacco Corporation, G.R. No. 158589, June 27, 2006: The similarity between “MARK” and “MARK TEN” for cigarettes was found infringing, with the shared dominant word “MARK” causing confusion*.
Zuneca Pharmaceutical v. Natrapharm, Inc., G.R. No. 211850, June 19, 2019: The Court clarified that while the holistic test may be considered, the dominancy test* is primary. It found “FERN-C” and “FERZIM-C” not confusingly similar because the dominant elements (“FERN” vs. “FERZIM”) were distinct in sound and appearance.
Berris Agricultural Co., Inc. v. Abyadang, G.R. No. 183404, October 13, 2010: The Court applied a holistic view but still focused on dominance, finding “NICKEL” and “NICEL” for pesticides confusingly similar due to phonetic identity. It noted the holistic test is used when, after applying the dominancy test, a conclusion on confusion* remains uncertain.
IX. Synthesis and Current Judicial Trend
The prevailing and definitive trend in Philippine Supreme Court decisions is to apply the dominancy test as the primary and controlling standard for resolving trademark infringement cases. The holistic test is not an alternative of equal weight but is considered subsidiary. Its application is generally appropriate only in two scenarios: (1) when, after applying the dominancy test, the issue of confusion is still in doubt, requiring a review of the overall presentation; or (2) in cases of unfair competition where the defendant’s entire trade dress and conduct are under scrutiny. The courts consistently reason that the dominancy test more accurately reflects the purchasing public’s behavior. The fundamental inquiry remains whether an ordinary consumer, exercising reasonable care, would likely be deceived by the similarities in the dominant features of the marks.
X. Conclusion and Recommendation
In conclusion, for the purpose of determining trademark infringement under the Intellectual Property Code, the dominancy test is the governing rule. Legal strategy should be built upon this foundation. When assessing potential infringement or defending against a claim, the analysis must first and foremost isolate the dominant features of the marks in question—typically the most prominent words—and evaluate their aural, visual, and conceptual similarity in relation to the goods and their consumers. Arguments based on the holistic test should be advanced cautiously, primarily as a secondary line of reasoning to highlight distinct overall commercial impressions, but with the clear understanding that Philippine courts will likely give decisive weight to the comparison of dominant elements. Prudence dictates structuring any legal opinion or pleading around the parameters of the dominancy test, as established by consistent jurisprudence.