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Emerald Garments VS CA

Facts:
HD Lee Co., a foreing corpo, seeks the cancellation of a patent in favor of Emerald
Garment Manufacturing (domiciled in the Phil) for the trademark Stylistic Mr. Lee,
which according to HD Lee Co. closely resembled its own trademark Lee and thus
would cause confusion, mistake and deception to the purchasing public. The
Director of Patents granted the cancellation on the ground that petitioners
trademark was confusingly similar to private respondents mark because it is the
word Lee which draws the attention of the buyer and leads him to conclude that
the goods originated from the same manufacturer. It is undeniably the dominant
feature of the mark. The CA affirmed.
Issue: WON the trademark Stylistic Mr. Lee tends to mislead or confuse the public
and constitutes an infringement of the trademark Lee.
Held: Negative for lack of adequate proof of actual use of its trademark in the
Philippines prior to Emeralds use of its own mark and for failure to establish
confusing similarity between said trademarks, HD Lee Cos action for infringement
must necessarily fail.
Emeralds Stylistic Mr. Lee is not confusingly similar to private respondents "LEE
trademark. Colorable imitation DOES NOT APPLY because:
1. Petitioners trademark is the whole STYLISTIC MR. LEE. Although on its label the
word LEE is prominent, the trademark should be considered as a whole and not
piecemeal. The dissimilarities between the two marks become conspicuous,
noticeable and substantial enough to matter especially in the light of the following
variables that must be factored in, among others:
a. Expensive and valuable items are normally bought only after deliberate,
comparative and analytical investigation; and
b. The average Filipino consumer generally buys his jeans by brand.
2. LEE is primarily a surname. Private respondent cannot, therefore, acquire
exclusive ownership over and singular use of said term.
3. After a meticulous study of the records, the SC observes that the Director of
Patents and the Court of Appeals relied mainly on the registration certificates as
proof of use by HD Lee Co of the trademark LEE which are not sufficient.