1888

TM LAW UNDER
QUEEN MARIA CRISTINA
OF SPAIN

1947
RA 166; M. ROXAS
PRESIDENCY

1903 ACT 666;

TRADEMARK & TRADE
NAME LAW (US
OCCUPATION)

1998 RA 8293; WTO

TRIPS AGREEMENT

.................... ..

[DOMINANCY]

[ HOLISTIC ]

1909

SONG FO
VS TIU CA SIONG

M.A. CLARKE VS 1917

MANILA CANDY CO. (LTD.)
CO TIONG SA VS 1954
DIRECTOR OF PATENTS*
PHILNUT VS 1975
STANDARD BRANDS

ASIA BREWEREY VS CA

1993

1963 MEAD JOHNSON

VS N.V.J. VAN DORP.

1982

ESSO STANDARDS VS CA

1984
1990

FRUIT OF THE LOOM VS CA

DEL MONTE VS CA*

1995 EMERALD GARMENT VS CA

. .... .......

2001 AMIGO VS CLUETT PEABODY

SOCIETES DES 2001
PRODUITS NESTLE VS CA

2004 MCDONALDS VS L.C. BIG MAK

2006 PHILIP MORRIS VS

FORTUNE TOBACCO

MCDONALDS 2007
VS MACJOY

2010

COFFEE PARTNERS INC

VS SAN FRANCISCO COFFEE

2010

DERMALINE VS
MYRA PHARMATEUTICALS

.......

SKETCHERS USA INC 2011

VS INTERPACIFIC INDUSTRIAL

..........

.......

THE END.
[for now]

1954 [DOMINANCY] RA 166

CO TIONG SA VS DIRECTOR OF PATENTS

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, infrigement takes place.
* (G. Heilman Brewing Co. vs. Independent Brewing Co., 191 F., 489, 495, citing Eagle
White Lead Co. vs. Pflugh (CC) 180 Fed. 579.)

1963 [HOLISTIC]

RA 166

MEAD JOHNSON VS N.V.J. VAN DORP, LTD.

It is true that between petitioner's trademark "ALACTA" and The
trademarks in their entirety as they appear in the respective labels
must also be considered in relation to the goods to which they are
attached. The discerning eye of the observer must focus NOT only
on the predominant words but also on the other features appearing
in both labels in order that he may draw his conclusion whether one
is confusingly similar to the other. Having this view in mind, we
believe that while there are similarities in the two marks there are
also differences or dissimilarities which are glaring and striking to
the eye as the former.

1990 [HOLISTIC]

RA 166

DEL MONTE VS COURT OF APPEALS

A number of courts have held that to determine whether a
trademark has been infringed, we must consider the mark as a
whole and not as dissected. If the buyer is deceived, it is
attributable to the marks as a totality, not usually to any part of it

* (Helmet Co. v. Wm Wrigley Jr. Co., 245 F 842; Pennzoil Co. v. Pennsylvania
Petroleum Co., 159 M.D. 187)

1995 [BOTH]

RA 166

EMERALD GARMENT VS COURT OF APPEALS

In determining whether colorable imitation exists, jurisprudence has developed two
kinds of tests - the Dominancy Test applied in Asia Brewery, Inc. v. Court of Appeals
28 and other cases 29 and the Holistic Test developed in Del Monte Corporation v.
Court of Appeals 30 and its proponent cases. 31
As its title implies, the test of dominancy focuses on the similarity of the prevalent
features of the competing trademarks which might cause confusion or deception and
thus constitutes infringement.
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.
Duplication or imitation is not necessary; nor it is necessary that the infringing label
should suggest an effort to imitate.
xxx xxx xxx

On the other side of the spectrum, the holistic test mandates that the entirety of
the marks in question must be considered in determining confusing similarity.
xxx xxx xxx
In determining whether the trademarks are confusingly similar, a comparison of the
words is not the only determinant factor. The trademarks in their entirety as they
appear in their respective labels or hang tags must also be considered in relation to
the goods to which they are attached. The discerning eye of the observer must focus
not only on the predominant words but also on the other features appearing in both
labels in order that he may draw his conclusion whether one is confusingly similar to
the other. 33