In determining whether a likelihood of confusion exists between competing trademarks, the Philippine Supreme Court relies on two principal tests: the dominancy test and the holistic test.
The dominancy test focuses on the similarity of the prevalent features of the competing trademarks that might cause confusion or deception. In contrast, the holistic test considers the entirety of the marks as applied to the products, including labels and packaging.
The case of Dermaline, Inc. v. Myra Pharmaceuticals, Inc., decided on August 16, 2010, is the latest pronouncement by the court following a string of earlier decisions applying the dominancy test: Societe des Produits Nestle v. Court of Appeals (2001), McDonald’s Corporation v. L.C. Big Mak Burger (2004), McDonald’s Corporation v. MagJoy Fastfood Corporation (2007), Prosource International, Inc. v. Horphag Research Management SA (2009) and Societe des Produits Nestle v. Martin T. Dy Jr. (2010).
In Dermaline, petitioner Dermaline applied to register its ‘Dermaline, Dermaline Inc’ trademark in international class 44 for various skin treatments before the Intellectual Property Office (IPO). Respondent Myra Pharmaceuticals, Inc, the owner of an earlier registration for ‘Dermalin’ in international class 5 for pharmaceutical products, opposed Dermaline’s application.
Start a subscription to WIPR for £455.
In-house feature articles, the archive and expert comment require a paid subscription. Subscribe now.
Want to give it a try? We are offering a two week free trial to the WIPR website – register and select “Free Trial” to begin access to the full WIPR archive and read the latest news, features and expert comment. Begin your free trial here.
Is your 2 week free trial about to end? Upgrade to a 12 month subscription for £455 now.
If you have already subscribed please login.
If you have any technical issues please email James Lynn on firstname.lastname@example.org.
Philippine Supreme Court, holistic test