Skechers Corporation sued Inter-Pacific for trademark infringement, claiming that Inter-Pacificused Skechers’ registered “S” logo mark on Inter-Pacific’s shoe products without its consent. Skechers has registered the trademark “SKECHERS” and the trademark “S” (with an oval design) with the Intellectual Property Office (IPO).
In its complaint, Skechers points out the following similarities: the color scheme of the blue, white and gray utilized by Skechers. Even the design and “wave-like” pattern of the mid-sole and outer sole of Inter Pacific’s shoes are very similar to Skechers’ shoes, if not exact patterns thereof. On the side of Inter-Pacific’s shoes, near the upper part, appears the stylized “S” placed in the exact location as that of the stylized “S” the Skechers shoes. On top of the “tongue” of both shoes, appears the stylized “S” in practically the same location and size.
In its defense, Inter-Pacific claims that under the Holistic Test, the following dissimilarities are present: the mark “S” found in Strong shoes is not enclosed in an “oval design”; the word “Strong” is conspicuously placed at the backside and insoles; the hang tags labels attached to the shoes bear the word “Strong” for Inter-Pacific and “Skechers U.S.A.” for Skechers; and, Strong shoes are modestly priced compared to the costs of Skechers shoes.
Under the foregoing circumstances, which is the proper test to be applied – Holistic or Dominancy Test? Decide. (4%)
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The Dominancy Test is the proper test to be applied. Under Philippine trademark law, the Dominancy Test focuses on the similarity of the prevalent or dominant features of competing marks that cause likelihood of confusion. The Supreme Court has
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Quick check
Which test is currently applied under Philippine jurisprudence to determine likelihood of confusion in trademark infringement cases?
The Supreme Court has explicitly adopted the Dominancy Test over the Holistic Test to evaluate trademark infringement.
What is the main focus of the Dominancy Test in trademark infringement litigation under Republic Act Number 8293?
The Dominancy Test focuses on the similarity of the prevalent or dominant visual features of the competing marks.
Under Philippine trademark law, can an infringer avoid liability by pointing out minor differences in packaging or price under the Holistic Test?
Minor dissimilarities in packaging or price do not defeat infringement under the governing Dominancy Test.
What constitutes the primary legal gravamen of trademark infringement under Section 155 of the Intellectual Property Code?
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Which primary statute governs trademark registration, trademark infringement, and tests for confusion in the Philippines?
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Learn more about these topics
1. Dominancy Test Adoption
Under Philippine trademark jurisprudence and Section 155 of the Intellectual Property Code (Republic Act Number 8293), the Supreme Court has explicitly adopted the Dominancy Test and abandoned the Holistic Test for determining likelihood of confusion. The Dominancy Test focuses on the similarity of the prevalent or dominant features of competing marks that are likely to cause confusion or deception among the purchasing public. Under this test, visual, aural, or conceptual similarity of the dominant feature is sufficient to establish trademark infringement, regardless of minor differences in surrounding details or overall packaging.
2. Holistic Test Abandonment
Under Philippine intellectual property jurisprudence, the Holistic Test considers the entirety of the marks as applied to the products, including labels, packaging, color schemes, and retail price. However, modern rulings by the Supreme Court have abandoned the Holistic Test in favor of the Dominancy Test because subtle differences in price, hang tags, or minor wording cannot prevent consumer confusion when the most prominent visual feature of a registered trademark is duplicated by a competitor. Infringers cannot escape liability merely by adding dissimilarity details around an appropriated dominant mark.
3. Likelihood of Confusion
The gravamen of trademark infringement under Republic Act Number 8293 is the likelihood of confusion, which encompasses both confusion of goods and confusion of business origin. When an infringer places an identical or colorably imitative dominant logo on similar goods, ordinary purchasers exercising ordinary care are likely to believe that the products originate from the registered owner or are affiliated with it. Proof of actual consumer confusion is not required; the mere likelihood of deception created by the dominant mark feature suffices to sustain an infringement complaint.