Courts reject holistic approach


Eunice Hyacinth L. Tan

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.

Philippine Supreme Court, holistic test