The war of the crocodile marks

 

The legal  battle of the crocodile marks  was used in  one of  the  three  questions on intellectual property law  in  the 2025 bar exams.  

 

In Question no. 12, XYZ Inc. filed before the Intellectual Property Office (IPO) Trademark Application No. 1-2025-12345 for the mark “TURTLE AND DEVICE.” XYZ Inc.’s mark is an image of a turtle with the word “Turtle” on its side.

 

ABC Inc. opposed the application, alleging that XYZ Inc.’s mark is confusingly similar or identical to its own mark, which is an image of a tortoise sans any accompanying words.

 

 In its defense, XYZ Inc. argued that the entirety or totality, not just the dominant part, of the marks should be considered in determining whether there is infringement.

 

The question was lifted from the case of Lacoste S.A. v. Crocodile International Pte Ltd., (G.R. No. 223270 November 6, 2023 ) wherein  French fashion giant Lacoste S.A. lost a protracted trademark dispute over the use of a crocodile logo in the Philippines.

 

A trademark is a word, a group of words, sign, symbol, logo or a combination thereof that identifies and differentiates the source of the goods or services of one entity from those of others.

 

A trademark protects a business’ brand identity in the marketplace. Aside from being a source-identifier, differentiator, quality indicator, and an advertising device, a protective mark may also bring another stream of income to the owner through licensing or franchising.

 

In determining similarity and likelihood of confusion, case law has developed the Dominancy Test and the Holistic or Totality Test.

 

The Dominancy Test focuses on the similarity of the prevalent or dominant features of the competing trademarks that might cause confusion, mistake, and deception in the mind of the purchasing public.

 

Duplication or imitation is not necessary; neither is it required that the mark sought to be registered suggests an effort to imitate. Given more consideration are the aural and visual impressions created by the marks on the buyers of goods, giving little weight to factors like prices, quality, sales outlets, and market segments.

 

In contrast, the Holistic or Totality Test considers the entirety of the marks as applied to the products, including the labels and packaging, and focuses not only on the predominant words but also on the other features appearing on both labels to determine whether one is confusingly similar to the other as to mislead the ordinary purchaser. The “ordinary purchaser” refers to one “accustomed to buy, and therefore to some extent familiar with, the goods in question.”

 

The Dominancy Test was used by the Supreme  Court in the Lacoste case when it held   that the likelihood of confusion between  Lacoste' s and Crocodile's marks is  nil as there exist distinct visual differences both in appearance and overall commercial impression.

 

The form, arrangement, general appearance, and overall presentation of their marks are evidently dissimilar, thus, the propensity to mistake one for the other is very low.

 

The Court noted that Lacoste's "saurian" figure is facing to the right, meaning the head is at the right side while the tail is at the left side, and is aligned horizontally. On the other hand, Crocodile's "saurian" figure, is facing to the left, meaning the head is at the left side while the tail is at the right side.  Both the "saurian" figure and the word "Crocodile" in stylized format on top of it are tilted in that the right side's alignment is higher than the left side.

 

The "saurian" figures in both marks are easily distinguishable from one another, considering that in Lacoste' s mark, the "saurian" figure is solid, except for the crocodile scutes  found on the body and the base of the tail which are depicted in white inverted triangles.

 

There are also crocodile scutes protruding from the tail of Lacoste's "saurian" figure.  Meanwhile, the "saurian" figure in Crocodile's mark is not solid, but rather, more like a drawing.

 

Unlike Lacoste's "saurian" figure, Crocodile's "saurian" figure does not have crocodile scutes, whether protruding or not; and instead, is depicted with various scale patterns from the base of the head up to the tail.

 

Absent showing of fraud and misrepresentation to the public, the Court  said that it should allow enterprises, to enter the Philippine market through, among others, the registration of their trademarks.

 

SC Senior Associate Justice Marvic Leonen said in an earlier case that “Even if products are found to be in the same market, in all cases of unfair competition, competition should be presumed. Courts should take care not to interfere in a free and fair market, or to foster monopolistic practices. Instead, they should confine themselves to prevent fraud and misrepresentation on the public.”

 

  ( Atty. Dennis R. Gorecho heads the seafarers’ division of the Sapalo Velez Bundang Bulilan law offices. For comments, e-mail info@sapalovelez.com, or call 0908-8665786)