G.R. No. L-5378. May 24, 1954

This is an appeal filed by Co Tiong Sa, applicant for registration
of the trademark “FREEDOM” and its corresponding design, against a
decision of the Director of Patents sustaining the opposition thereto
of Saw Woo Chiong & Co., and denying the application. The applicant
in said registration proceeding, now petitioner in this Court, has used
the trademark on undershirts and T-shirt since March, 1947. The
trademark sought to be registered is “FREEDOM”. The word “FREEDOM” is
in hand print, with a slight slant to the right. In the facsimiles
attached to the original application, there are no letters, lines, or
figures around the word, but in the label, Exhibit D-1, the said word
is preceded by a triangle, with the letter “F” inside and small letters
“H.L.” under. A capital letter “L” is on the lower right-hand corner;
and all of these are enclosed in a rectangle of double lines. In
Exhibit D-2, the label is the same word “FREEDOM” with a capital letter
“M” above it, a flourish under the word “FREEDOM”, and the words “HIGH
QUALITY ” thereunder. The label used for boxes is similar to label
Exhibit D-1, except that the rectangle is in a heavy line and is longer.

The label presented by Saw Woo Chiong & Co.,
oppositor-respondent herein (Exhibit D-3), consist of the word
“FREEMAN” in hand print, with a right slant, above the middle of which
is a vignette of a man wearing a tophat, which vignette is preceded by
the small word “The” in print and followed by two parallel lines close
to each other, and the words “PERFECT WEAR ” in smaller letters under
the word “FREEMAN”. This trademark was registered in 1947 in the Bureau
of Commerce and re-registered in the Patent Office on September 22,
1948. This trademark is used not only on shirts, but also on polo
shirts, undershirts, pajamas, skippers, and T-shirts, although in the
year 1947 Saw Woo Chiong & Co. discontinued manufacturing skippers
and T-shirts on the ground of scarcity of materials. This trademark has
been used since 1938, and it had been advertised extensively in
newspapers, magazines, etc.

The applicant-petitioner claims that in sustaining the objection of
the oppositor-respondent, the Director of Patents erred: (1) in holding
that in determining an opposition in the registration of trademarks,
attention should be centered upon the central idea of each trademark,
disregarding their differences in details; (2) in holding that if the
central idea of each trademark gives the same general impression, the
two trademarks should be adjudged as confusingly similar; (3) in
holding that the word “FREEDOM” and “FREEMAN” convey the same general
impression, hence must be adjudged to be confusingly similar; (4) in
holding that if the word “FREEDOM” is allowed to be registered as
trademark, although no confusion and deception will actually take
place, the oppositor will nevertheless be damaged; and (5) in holding
that the oppositor is not required to introduce testimony to
substantiate the claim made in its opposition.

The first four assignments of error are related to each other and
may be considered together. There is no question that if the details of
the two trademarks are to be considered, many differences would be
noted that would enable a careful and scrutinizing eye to distinguish
one trademark from the other. Thus, we have the vignette of a man
wearing a tophat, which would distinguish the oppositor’s label from
the triangle with the letter “F” on the right hand corner of
applicant’s label. Then we also have the rectangle enclosing the
applicant’s mark, which rectangle is absent in that of the oppositor’s.
But differences of variations in the details of one trademark and of
another are not the legally accepted tests of similarity in trademarks.
It has been consistently held that the question of infringement of a
trademark is to be determined by the test of dominancy. Similarity in
size, form, and color, While relevant, is not conclusive. If the
competing trademark contains the main or essential or dominant features
of another, and confusion and 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. (G. Heilman Brewing Co. vs. Independent Brewing Co., 191
F., 489, 495, citing Eagle White Lead Co. vs. Pflugh (CC) 180 Fed.
579.) The question at issue in cases of infringement of trademarks is
whether the use of the marks involved would be likely to cause confusion or mistake in the mind of the public or to deceive purchasers.
(Auburn Rubber Corporation vs. Honover Rubber Co., 107 F. 2d, 588,
citing Procter and Gamble Co. vs. J. L. Prescott Co., 49 F. 2d, 959, 18
CCPA, Patent, 1433; Pepsodent Co. vs. Comfort Manufacturing Co., 83 F.
2d, 906, 23 CCPA, Patents, 1224.)

When would a trademark cause confusion in the mind of the public or
in those unwary customers or purchasers? It must be remembered that
infringement of a trademark is a form of unfair competition (Clarke vs.
Manila Candy Co., 36 Phil, 100), and unfair competition is always a
question of fact. The universal test has been said to be whether the
public is likely to be deceived. (Alhambra Cigar & Cigarette Co.
vs. Mojica, 27 Phil., 266.)

When a person sees an object, a central or dominant idea or picture
thereof is formed in his mind. This dominant picture or idea is
retained in the mind, and the decorations or details are forgotten.
When one sees the city hall of Baguio, the dominant characteristics
which are likely to be retained in the mind are the portico in the
middle of the building, the tower thereon, the four columns supporting
it, and the wings on both sides. The features that are retained are the
peculiar, dominant features. When one sees the Legislative Building in
Manila, the picture that is retained is that of a majestic low building
with concrete columns all around. In this mind-picture the slight or
minor decorations are lost sight of, and the central figure only is
retained. So is it with a customer or purchaser who sees a label. He
retains in his mind the dominant characteristics or features or central
idea in the label, and does not retain or forgets the attendant
decorations, flourishes, or variations. The ordinary customer does not
scrutinize the details of the label; he forgets or overlooks these, but
retains a general impression, or a central figure, or a dominant
characteristic. The reason for the above has been explained in the
following manner:

* * * This rule has a basis in experience. The
average person usually will not, and often can not, take in at a casual
glance all, or even a large part of the details of what he looks at.
What part or parts of two trademarks which are alleged to be similar
does the average ordinary buyer see when he looks at them? What
features of them are remembered by the average buyer? We do not really
hear all that is spoken in our hearing. Far from all we see or hear
casually is retained sufficiently clearly or insufficient detail for us
to get a lasting impression of it which we can remember when we
encounter the mark again. The importance of this rule is emphasized by
the increase of radio advertising in which we are deprived of the help
of our eyes and must depend entirely on the ear.

The average
buyer usually seeks a sign, some special, easily remembered earmarks:
of the brand he has in mind. It may be the color, sound, design, or a
peculiar shape or name. Once his eyes see that or his ear hears it, he
is satisfied. An unfair competitor need not copy the entire mark to
accomplish his fraudulent purpose. It is enough if he takes the one
feature which the average buyer is likely to remember. (Nims, The Law
of Unfair Competition and Trademarks, 4th ed., Vol. 2, pp. 678-679).

The
question of infringement is to be determined by the test of dominancy.
The dissimilarity in size, form and color of the label and the place
where applied are not conclusive. If the competing label contains the
trademark of another, and confusion or deception is likely to result,
infringement takes place, regardless of the fact that the accessories
are dissimilar. Duplication or exact imitation is not necessary; nor is
it necessary that the infringing label should suggest an effort to
imitate. (G. Heilman Brewing Co. vs. Independent Brewing Co., 191 F.,
489, citing Eagle Co. vs. Pflugh (C.C.) 180 F., 579.)

In
order to constitute infringement, it is not necessary that the
trademark be literally copied. * * *. Neither is it necessary that
every word be appropriated. There may be infringement where the
substantial and distinctive part of the trademark is copied or imitated
* * *. Dissimilarity in size, form and color of the label and place
where it is applied are not conclusive against infringement. * * *. The
resemblances may so far dominate the differences as to be likely to
deceive ordinary purchasers. (Queen Mfg. Co. vs. Isaac Ginsberg Bros.
Co., 25 F 2d, 284, 287. See also Finchley, Inc. vs. George Hess Co.,
Inc., et al, 24 F., Supp. 94.)

Upon examination of the trademark of the oppositor-respondent, one
will readily see that the dominant feature is the word “FREEMAN” written
in a peculiar print, slightly slanting to the right, with a peculiarly
written capital letters “FF” These dominant features or characteristics
of oppositor’s trademarks are reproduced or imitated in applicant’s
trademark. In the first place, the word “FREEDOM” conveys a similar
idea as the word “FREEMAN”. In the second place, the style in which
both capital “F” are written are similar. The print and slant of the
letters are also similar. An ordinary purchaser or an unsuspecting
customer who has seen the oppositor’s label sometime before will not
recognize the difference between that label and applicant’s label. He
may notice some variations, but he will ignore these, believing that
they are variations of the same trademark to distinguish one kind or
quality of goods from another.

For purposes of illustration, the following words have been held to
have the same significance or to have the same appearance and meaning.

“CELDURA” and “COBDURA”.—That both marks considered
as a whole are similar in meaning and appearance can not be doubted.
When spoken as written they sound very much alike. Similarity of sound
alone, under such circumstances, is sufficient to cause the marks to be
regarded as confusingly similar when applied to merchandise of the same
descriptive properties. (Celanes Corporation of America vs. E. I. Du
Pont de Nemours & Co. (1946), 154 F. 2d 146 148.)

“SKOAL” and “SKOL”, “SKOAL” was held identical in sound and meaning to “Skol”. (Skol Co., Inc., vs. Olson, 151 F. 2d, 200.)

In this jurisdiction we have held that the name “Lusolin” is an
infringement of the trademark “Sapolin,” as the sound of the two names
is almost the same, and the labels of containers being almost the same
in respect to color, size, and other characteristics. (Sapolin Co, vs.
Balmeceda and Germann & Co., 67 Phil., 705.)

In the case of La Insular vs. Jao Oge, 47 Phil., 75, plaintiff’s
label represented an European female, while defendant’s was a Filipino,
but both labels exhibited a matron seated on a platform with a view of
Manila Bay looking towards Mariveles at sunset. In spite of the fact
that the posture and coloring were slightly different, defendant’s
labels were declared to constitute an infringement of plaintiff’s
labels.

After a careful study, we find that the dominant characteristic of
oppositor’s trademark “FREEMAN” has been imitated in applicants’s
trademark “Freedom,” such as to confuse the public and unwary customers
and purchasers, and to deceive them into believing that the articles
bearing one label are similar or produced by the same manufacturer as
those carrying the other label. The decision of the Director of Patents
sustaining the opposition and denying the application must, therefore,
be affirmed.

With respect to the fifth assignment of error (first in petitioner’s
brief), it must be remembered that the question of similarity or
dissimilarity, while it is a question of opinion, is to be determined
by the court mainly on the basis of the facsimiles or labels or
pictures submitted to the Director of Patents. In the case at bar,
innumerable exhibits were presented to show the similarity. Similarity
or dissimilarity can be determined by the Director of Patents, or by
this Court on appeal, by a mere examination and comparison of the
competing trademarks. Failure on the part of the oppositor to submit
the testimony of witnesses, who are to give opinions on the alleged
similarity or dissimilarity, can not, therefore, be a ground for a
dismissal of an opposition. We hold that the Director of Patents did
not err in denying the motion for dismissal presented by the applicant
upon the failure of the oppositor to submit witnesses to sustain his
opposition.

Finding no error in the decision appealed from, the same is hereby
affirmed, with costs against the applicant-petitioner Co Tiong Sa.

Paras, C. J., Pablo, Bengzon, Montemayor, Reyes, A.,Jugo, Bautista Angelo, and Concepcion, JJ., concur.