Ready to wear vs made to order


Neptali L. Bulilan and Maria Rois S. Tan

In resolving conflicts of marks in inter partes cases or infringement cases which necessarily involve the determination of whether the marks involved are confusingly similar, courts are consistent on only one point: each case is unique and must be decided based on the circumstances peculiar to it.

Specifically, there is no unanimity on whether the ‘dominancy’ test or the ‘holistic’ test should be applied to determine confusing similarity between marks.

The dominancy test focuses on the similarity of the main, prevalent or essential features of the competing trademarks that might cause confusion. Infringement takes place when the competing trademark contains the essential features of another. Imitation or an effort to imitate is unnecessary. The question is whether the use of the marks is likely to cause confusion or deceive purchasers.

On the other hand, the holistic test mandates that the entirety of the marks in question must be considered in determining confusing similarity.

trademark, Levi Strauss, Levis,