G.R. No.

222702 APRIL 5, 2006

RAPPLER, INC. vs. ANDRES D. BAUTISTA
‘Limitations on copyright under Section 184.1 (c) of the Intellectual Property
Code”

FACTS:
Petitioner Rappler, Inc. filed a petition for certiorari and prohibition
against Andres D. Bautista (respondent), in his capacity as Chairman of the
Commission on Elections (COMELEC).
The MOA in issue revolves around the 2016 Presidential and Vise-
Presidential Debates and was executed by the COMELEC through its
Chairperson, Andres D. Bautista, and the Kapisanan ng mga Brodkaster ng
Pilipinas (KBP), and various media networks, including the petitioner
In a meeting organized by the respondent on September 21, 2015,
over the upcoming "PiliPinas 2016 Debates," respondent proposed that
petitioner and Google, Inc. be in charge of online and social media
engagement in which petitioner therafter sent proposed guidelines and
conduct for the debates. However, in a meeting held 19 October 2015,
petitioner and Google's participation were dropped in favor of the online
outlets owned by the Lead Networks via a draft made by the COMELEC
although it was decided that the lone vice-presidential debate will be
sponsored by CNN, Business Mirror, and petitioner. Petitioner alleged that
the draft MOA permitted online streaming, provided proper attribution is
given the Lead Network.
Petitioner communicated with respondent its concerns regarding
certain provisions of the MOA particularly regarding the coverage and online
streaming of the presidential debates. Respondent assured petitioner that
its concerns will be addressed afterwards, but it has to sign the MOA because
time was of the essence. Petitioner signed the MOA believing in good faith
that the issues will be resolved by the respondent.
 Several attempts to contact the respondent were made but all proved
to be futile. The petition seeks to nullify certain provisions of a Memorandum
of Agreement (MOA) on the 2016 presidential and vice-presidential debates,
in which petitioner is discriminated particularly as regards the MOA
provisions on live audio broadcast via online streaming. Petitioner argues
that the MOA grants radio stations the right to simultaneously broadcast live
the audio of the debates, even if the radio stations are not obliged to perform
any obligation under the MOA. Yet, this right to broadcast by live streaming
online the audio of the debates is denied petitioner who is a signatory to the
MOA, and other online media entities, which also have the capacity to live
stream the audio of the debates.

ISSUE: Whether the debates whould be allowed to be broadcasted on other

websites, including petitioners without infringement of copyright.

RULING OF THE SUPREME COURT:

Respondent should implement Part VI (C), paragraph 19 and Part VI (D),

paragraph 20 of the MOA, which reads:
xxxxx
C. ONLINE STREAMING
17. Live broadcast the debates produced by the Lead Networks on their
respective web sites and social media sites for free viewing by the public;
18. Maintain a copy of the debate produced by the Lead Network on its on-
line site(s) for free viewing by the public during the period of elections or
longer;
19. Subject to copyright conditions or separate negotiations with the Lead
Networks, allow the debates they have produced to be shown or streamed
on other websites;
 The MOA allows the live streaming of the debates subject only to
compliance with the "copyright conditions." Once petitioner complies with
the copyright conditions, petitioner can exercise the right to live stream the
audio of the debates as expressly allowed by the MOA.
The "copyright conditions" refer to the limitations on copyright as provided
under Section 184.1 (c) of the Intellectual Property Code which provides that:
“The reproduction or communication to the public by mass media of
articles on current political, social, economic, scientific or religious topic,
lectures, addresses and other works of the same nature, which are delivered
in public if such use is for information purposes and has not been expressly
reserved; Provided, That the source is clearly indicated”
Once the conditions imposed under Section 184.1 (c) of the IPC are
complied with, the information - in this case the live audio of the debates -
now forms part of the public domain. There is now freedom of the press to
report or publicly disseminate the live audio of the debates. The freedom of
the press to report and disseminate the live audio of the debates, subject to
compliance with Section 184. l (c) of the IPC, can no longer be infringed or
subject to prior restraint.
The presidential and vice-presidential debates are held primarily for
the benefit of the electorate to assist the electorate in making informed
choices on election day. Under the Intellectual Property Code, the debates
fall under "addresses and other works of the same nature.”
In the case at bar, all conditions are present
G.R. No. 221717 June 19, 2017
MANG INASAL PHILIPPINES, INC., Petitioner vs. IFP MANUFACTURING
CORPORATION, Respondent
“Application of the Dominancy Test in Similarities between trademarks”

FACTS:
On May 26, 2011, respondent filed with the Intellectual Property Office (IPO)
an application for the registration of the mark "OK Hotdog Inasal Cheese
Hotdog Flavor Mark" in connection with goods under Class 30 of the Nice
Classification 4. This application was, however, opposed by petitioner Mang
Inasal Philippines, Inc.

Petitioner is a domestic fast food company and the owner of the mark "Mang
Inasal, Home of Real Pinoy Style Barbeque and Device." The said mark, which
was registered with the IPO in 2006, has been used by petitioner for its chain
of restaurants since 2003.
Petitioner argued that the OK Hotdog Inasal mark and the Mang Inasal mark
share similarities, both as to their appearance and as to the goods or services
that they represent which tend to suggest a false connection or association
between the said marks and, in that regard, would likely cause confusion on
the part of the public, citing Section 123 (d)(iii) of Republic Act No. (RA) 8293
which provides:
SECTION 123. Registrability. –
123. 1. A mark cannot be registered if it:
xxxx
d. xxx:
1. x x x
11. x x x
iii. ... nearly resembles [a registered mark belonging to a different proprietor or a
mark with an earlier filing or priority date] as to be likely to deceive or cause confusion.
 Petitioner’s case was later forwarded to the Bureau of Legal Affairs
(BLA) of the Intellectual Property Office, and upon denial of the petition, to
the Director General of the Intellectual Property Office. However, the DG of
the IPO was also not convinced the OK Hotdog Inasal Mark is confusingly
similar to the Mang Inasal Mark, stating that the only similarity between the
two marks is the word "INASAL."
In addition, petitioner cannot prevent the application of the word
"INASAL" in the OK Hotdog Inasal mark. No person or entity can claim
exclusive right to use the word "INASAL" because it is merely a generic or
descriptive word that means barbeque or barbeque products.
Neither can the underlying goods and services of the two marks be
considered as closely related. The products represented by the two marks
are not competitive and are sold in different channels of trade.
An appeal was then later filed with the Court of Appeals but was denied.

ISSUE: Whether the “OK Hotdog Inasal mark” is so confusingly similar to the
“Mang Inasal mark” to deny respondent of his trademark application for said
mark

RULING OF THE SUPREME COURT:

The respondent’s OK Hotdog Inasal Mark is confusingly similar to the
Mang Inasal Mark and is likely to cause confusion and deception to the
public. Jurisprudence, particularly in the case of Skechers U.S.A., Inc. v.
Trendworks International Corporation, the Court has noted two (2) types of
confusion:
(1) confusion of goods (product confusion), where the ordinarily
prudent purchaser would be induced to purchase one product in the belief
that he was purchasing the other; and
 (2) confusion of business (source or origin confusion), where, although
the goods of the parties are different, the product, the mark of which
registration is applied for by one party, is such as might reasonably be
assumed to originate with the registrant of an earlier product, and the public
would then be deceived either into that belief or into the belief that there is
some connection between the two parties, though inexistent.
Confusion, in either of its forms, is, thus, only possible when the goods or
services covered by allegedly similar marks are identical, similar or related in
some manner.
To fall under the ambit of Sec. 123. l(d)(iii) and be regarded as likely to
deceive or cause confusion upon the purchasing public, a prospective mark
must be shown to meet two (2) minimum conditions:
1. The prospective mark must nearly resemble or be similar to an earlier
mark; and
2. The prospective mark must pertain to goods or services that are either
identical, similar or related to the goods or services represented by the
earlier mark.

The first condition of the proscription requires resemblance or similarity

between a prospective mark and an earlier mark. To be regarded as similar
to an earlier mark, it is enough that a prospective mark be a colorable
imitation of the former. Colorable imitation denotes such likeness in form,
content, words, sound, meaning, special arrangement or general appearance
of one mark with respect to another as would likely mislead an average buyer
in the ordinary course of purchase.
In determining whether there is similarity or colorable imitation
between two marks, authorities employ either the dominancy test or the
holistic test. In Mighty Corporation v. E. & J. Gallo Winery, the court
distinguished between the two tests as follows:
 The Dominancy Test focuses on the similarity of the prevalent features
of the competing trademarks which might cause confusion or deception, and
thus infringement. If the competing trademark contains the main, essential
or dominant features of another, and confusion or deception is likely to
result, infringement takes place. Duplication or imitation is not necessary;
nor is it necessary that the infringing label should suggest an effort to imitate.
The question is whether the use of the marks involved is likely to cause
confusion or mistake in the mind of the public or deceive purchasers.
On the other hand, the Holistic Test requires that the entirety of the
marks in question be considered in resolving confusing similarity.
Comparison of words is not the only determining 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.

The petitioner's Mang Inasal mark has a single dominant feature-the

word "INASAL" written in a bold red typeface against a black outline and
yellow background with staggered design. The other perceptible elements of
the mark-such as the word "MANG" written in black colored font at the
upper left side of the mark and the phrase "HOME OF REAL PINOY STYLE
BARBEQUE' written in a black colored stylized font at the lower portion of
the mark-are not as visually outstanding as the mentioned feature.
Being the sole dominant element, the word "INASAL," as stylized in the
Mang Inasal mark, is also the most distinctive and recognizable feature of the
said mark.
The respondent's OK Hotdog Inasal mark, on the other hand, has three
(3) dominant features: (a) the word "INASAL" written in a bold red typeface
against a black and yellow outline with staggered design; (b) the word
"HOTDOG" written in green colored font; and (c) a picture of three pieces of
curls. Though there are other observable elements in the mark-such as the
word "OK'' written in red colored font at the upper left side of the mark, the
small red banner overlaying the picture of the curls with the words "CHEESE
HOTDOG FLAVOR" written on it, and the image of a block of cheese beside
the picture of the curls-none of those are as prevalent as the two features
aforementioned.
The dominant element "INASAL" in the OK Hotdog Inasal mark is
exactly the same as the dominant element "INASAL" in the Mang Inasal mark.
Both elements in both marks are printed using the exact same red colored
font, against the exact same black outline and yellow background and is
arranged in the exact same staggered format.
Given the foregoing premises, and applying the dominancy test, it was held
that the OK Hotdog Inasal mark is a colorable imitation of the Mang Inasal
mark.
G.R. No. 188996 Febuary 1, 2017
SERI SOMBOONSAKDIKUL, Petitioner vs. ORLANE S.A., Respondent
“Colorable Imitation in Trademark Infrignement”

FACTS:
On September 23, 2003, petitioner filed an application for registration
of the mark “LOLANE” with the IPO for gloods classified as “Personal Care
Products” under the International Classification of Goods and Services for
the Purposes of the Registration of Marks. Orlane S.A. (respondent) opposed
the application, on the ground that the mark “LOLANE” was similar to
“ORLANE” in presentation, general appearance and pronunciation, and thus
would amount to an infringement of its mark while under the same
classification of goods and products.
Respondent adds that by promotion, worldwide registration,
widespread and high standard use, the mark had acquired distinction,
goodwill, superior quality image and reputation and was now well-known,
and since LOLANE became known only later on, it acted in bad fath.
In his answer, petition denied that the LOLANE mark was confusingly
similar to the mark ORLANE as the latter was in plain block upper case letters
while the mark LOLANE was printed in stylized word with the second letter L
and the letter A co-joined. Furthermore, the similarity in one syllable would
not automatically result in confusion even if used in the same class of goods
since his products always appear with Thai characters while those of ORLANE
always had the name Paris on it. The two marks are also pronounced
differently.
The Bureau of Legal Affairs (BLA) rejected petitioner's application in a,
finding that respondent's application was filed, and its mark registered, much
earlier. The BLA ruled that there was likelihood of confusion based on the
following observations: (1) ORLANE and LOLANE both consisted of six letters
with the same last four letters - LANE; (2) both were used as label for similar
products; (3) both marks were in two syllables and that there was only a
slight difference in the first syllable; and (4) both marks had the same last
syllable so that if these marks were read aloud, a sound of strong similarity
would be produced and such would likely deceive or cause confusion to the
public as to the two trademarks.
Petitioner filed a motion for reconsideration but this was denied by
the Director of the BLA. By application of the Dominancy Test, it found that
the dominant feature in both marks was the word LANE; and that the marks
had a strong visual and aural resemblance that could cause confusion to the
buying public. This resemblance was amplified by the relatedness of the
goods.
On appeal, the Director General of the IPO affirmed the Decision of
the BLA Director.
A petition for review was later filed with the CA, but the latter only
affirmed the decision of the DLA Director. The CA ruled that since the only
difference is the first letters of the mark, the words would likely cause
confusion to the public since, when pronounced, the two marks produce
similar sounds. The CA did not heed petitioner's contention that since the
mark ORLANE is of French origin, the same is pronounced as "ORLAN."
Filipinos would invariably pronounce it as "OR-LEYN." The CA also noted that
the trademark ORLANE is a fanciful name and petitioner was not able to
explain why he chose the word LOLANE as trademark for his personal care
products. Thus, the only logical conclusion is that he would want to benefit
from the established reputation and goodwill of the ORLANE mark.

ISSUE: Whether there is confusing similarity between ORLANE and LOLANE

which would bar the registration of LOLANE before the IPO.

RULING OF THE SUPREME COURT:

There is no colorable imitation between the marks LOLANE and
ORLANE which would lead to any likelihood of confusion to the ordinary
purchasers. A trademark is defined under Section 121.1 of RA 8293 as any
visible sign capable of distinguishing the goods. It is susceptible to
registration if it is crafted fancifully or arbitrarily and is capable of identifying
and distinguishing the goods of one manufacturer or seller from those of
another.
The most essential requirement for the determination of likelihood of
confusion is the existence of colorable imitation. Jurisprudence has defined
Colorable Imitation as "such similarity in form, content, words, sound,
meaning, special arrangement or general appearance of the trademark or
trade name in their overall presentation or in their essential and substantive
and distinctive parts as would likely mislead or confuse persons in the
ordinary course of purchasing the genuine article. Absent such resemblance,
there can be no infringement.
The Court disagreed with the CA the the suffix LANE is the dominant
feature of petitioner’s mark. Neither can it be considered as the dominant
feature of ORLANE which would make the two marks confusingly similar.
While there are no set rules as what constitutes a dominant feature with
respect to trademarks applied for registration, usually, what are taken into
account are signs, color, design, peculiar shape or name, or some special,
easily remembered earmarks of the brand that readily attracts and catches
the attention of the ordinary consumer.
As correctly argued by petitioner in his answer before the BLA, there
are visual differences between LOLANE and ORLANE since the mark ORLANE
is in plain block upper case letters while the mark LOLANE was rendered in
stylized word with the second letter L and the letter A co-joined.
Second, as to the aural aspect of the marks, LOLANE and ORLANE do
not sound alike. As the proper pronunciation of the last syllable LANE-"LEYN"
for LOLANE and "LAN" for ORLANE, being of French origin, also differ. The
Court found no basis in the statement of the Director General, which was
affirmed by the CA, that Filipinos would invariably pronounce ORLANE as
"ORLEYN."
Further, respondent failed to show proof that the suffix “LANE” has
registered in the mind of consumers that such suffix is exclusively or even
predominantly associated with ORLANE products. Hence, colorable imitation
by LO LANE of the mark ORLANE, is absent in this case. Resemblance
between the marks is a separate requirement from, and must not be
confused with, the requirement of a similarity of the goods to which the
trademarks are attached.
The basic rule in trademarks that confusing similarity is determined by
the aural, visual and connotative and overall impressions created by the
marks. Finding that the mark of the goods were not confusingly similar,
LOLANE is entitled to registration.
G.R. No. 166115 February 2, 2007
McDONALD’S CORPORATION, vs. MACJOY FASTFOOD CORPORATION
“Dominancy versus Holistic Test”

FACTS:
Since 1987, MacJoy Devices had been operating in Cebu. MacJoy is a
fast food restaurant which sells fried chicken, chicken barbeque, burgers,
fries, spaghetti, palabok, tacos, sandwiches, halo-halo and steaks. In 1991,
MacJoy filed its application for trademark before the Intellectual Property
Office (IPO). McDonald’s opposed the application as it alleged that MacJoy
closely resembles McDonald’s corporate logo such that when used on
identical or related goods, the trademark applied for would confuse or
deceive purchasers into believing that the goods originate from the same
source or origin that the use and adoption in bad faith of the “MacJoy and
Device” mark would falsely tend to suggest a connection or affiliation with
McDonald’s restaurant services and food products, thus, constituting a fraud
upon the general public and further cause the dilution of the distinctiveness
of McDonald’s registered and internationally recognized McDonald’S marks
to its prejudice and irreparable damage.

The IPO ruled in favor of McDonald’s. MacJoy appealed before the

Court of Appeals and the latter ruled in favor of MacJoy. The Court of
Appeals, in ruling over the case, actually used the holistic test which looks
upon the visual comparisons between the two trademarks. In this case, the
Court of Appeals ruled that other than the letters “M” and “C” in the words
MacJoy and McDonald’s, there are no real similarities between the two
trademarks. “MacJoy” is written in round script while “McDonald’s” is
written in thin gothic. “MacJoy” is accompanied by a picture of a (cartoonish)
chicken while “McDonald’s” is accompanied by the arches “M”. The color
schemes between the two are also different. “MacJoy” is in deep pink while
“McDonald’s” is in gold color.
ISSUE: Whether MacJoy’s application should be denied for infringing upon
the trademark of McDonald’s.

RULING OF THE SUPREME COURT:

The Supreme Court ruled that the proper test to be used is the
dominancy test. The dominancy test not only looks at the visual comparisons
between two trademarks but also the aural impressions created by the
marks in the public mind as well as connotative comparisons, giving little
weight to factors like prices, quality, sales outlets and market segments. In
the case at bar, the Supreme Court ruled that “McDonald’s” and “MacJoy”
marks are confusingly similar with each other such that an ordinary
purchaser can conclude an association or relation between the marks.
To begin with, both marks use the corporate “M” design logo and the
prefixes “Mc” and/or “Mac” as dominant features. The first letter “M” in
both marks puts emphasis on the prefixes “Mc” and/or “Mac” by the similar
way in which they are depicted i.e. in an arch-like, capitalized and stylized
manner. For sure, it is the prefix “Mc,” an abbreviation of “Mac,” which
visually and aurally catches the attention of the consuming public. Verily, the
word “MACJOY” attracts attention the same way as did “McDonalds,”
“MacFries,” “McSpaghetti,” “McDo,” “Big Mac” and the rest of the
MCDONALD’S marks which all use the prefixes Mc and/or Mac. Besides and
most importantly, both trademarks are used in the sale of fastfood products.
Further, the owner of MacJoy provided little explanation why in all the
available names for a restaurant he chose the prefix “Mac” to be the
dominant feature of the trademark. The prefix “Mac” and “Macjoy” has no
relation or similarity whatsoever to the name Scarlett Yu Carcel, which is the
name of the niece of MacJoy’s president whom he said was the basis of the
trademark MacJoy. By reason of the MacJoy’s implausible and insufficient
explanation as to how and why out of the many choices of words it could
have used for its trade-name and/or trademark, it chose the word “Macjoy,”
the only logical conclusion deducible therefrom is that the MacJoy would
want to ride high on the established reputation and goodwill of the
McDonald’s marks, which, as applied to its restaurant business and food
products, is undoubtedly beyond question.