Co Tiong Sa vs Director of Patents

G.R. No. L-5378 – 95 Phil. 1 – Mercantile Law – Intellectual Property Law – Law on Trademarks, Service Marks and Trade Names – Test of Infringement

Co Tiong Sa has been producing T-shirts since March 1947 and he had been using the brand “Freedom” which has been designed and imprinted on the shirts he was manufacturing. He applied his trademark to be registered but the application was opposed by Saw Woo Chiong who alleged that “Freedom” is an infringement of Saw Woo Chiong’s trademark “Freeman” which is also being used in his T-Shirt business and was a registered trademark since 1938. The Director of Patents noted that there are differences between the designs but each trademark gives the same general impression and are confusingly similar and so he ruled against the application of Co Tiong Sa as he further ruled that if Co Tiong Sa’s application is approved and, if it would not result to confusion or deception, Saw Woo Chiong would nevertheless be damaged.

ISSUE: Whether or not the Director of Patents is correct.

HELD: Yes. There is no question that if the details of the two trademarks are to be considered, many differences would be noted that would enable a careful and scrutinizing eye to distinguish one trademark from the other. But differences of variations in the details of one trademark and of another are not the legally accepted tests of similarity in trademarks. It has been consistently held that the question of infringement of a trademark is to be determined by the test of dominancy. Similarity in size, form, and color, while relevant, is not conclusive. If the competing trademark contains the main or essential or dominant features of another, and confusion and deception is likely to result, infringement takes place. The question at issue in cases of infringement of trademarks is whether the use of the marks involved would be likely to cause confusion or mistake in the mind of the public or to deceive purchasers – this is the universal test applicable. In the case at bar, the dominant characteristic of Saw Woo Chiong’s trademark “Freeman” has been imitated by Co Tiong Sa’s “Freedom” such as to confuse the unwary customers and to deceive them into believing that the articles bearing one label are similar.

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