AMERICAN WIRE & CABLE COMPANY, PETITIONER, VS. DIRECTOR OF PATENTS AND CENTRAL BANAHAW INDUSTRIES, RESPONDENTS.

Appeal filed by the American Wire & Cable Company, owner of
the registered trademark DURAFLEX for electric wires, questioning the cor­rectness
of the decision of the Director of Patents (in Inter Partes
Case No. 290) holding that the label DYNAFLEX and Device for electric wires,
sought to be registered by the Central Banahaw
Industries, Inc., is not similar to herein appellant’s patented mark.

On 2 June 1962,
Central Banahaw Industries, Inc., applied with the
Director of Patents for registration of the trademark DYNAFLEX and Device to be
used in connection with electric wires, class 20, which mark applicant
allegedly had been using since 29
March 1962.  The American
Wire and Cable Co., Inc., another domestic corporation and authorized user
since 10 April 1958 of the registered trade mark DURAFLEX and Globe
representation, for electric wires, apparatus, machines and supplies, class 20,
opposed the application on the ground that applicant’s use of the trademark
DYNAFLEX would cause con­fusion or result in mistakes to purchasers intending
to buy DURAFLEX electric wires and goods,
the mark being registered allegedly having practically the same spelling,
pronunciation and sound, and covering the same goods, as that of the opposer. Besides, opposer
contended that there has been no continuous use in commerce of the applicant’s
mark.

After due hearing, the Director of Patents rendered decision
holding the applicant’s mark DYNAFLEX not to be similar to the previously
registered trademark, DURAFLEX. 
Consequently, the application of Central Banahaw
Industries for registration of DYNAFLEX was given due course and the opposition
thereto by Ameri­can Wire & Cable Company dismissed.  The latter interposed the present appeal.

The issue to be resolved in this proceeding is simple:  whether or not the mark DYNAFLEX and Device
is registrable as label for electric wires, class 20,
considering that the trademark DURAFLEX and Globe representation, also for electric wires, machines and
supplies under class 20, has been registered more than 4 years earlier.

In ruling in favor of the
herein application, the Director of
Patents said:

“x
x x x
The applicant’s trademark is a
composite mark consisting of the word DYNAFLEX printed in small letters of the
English alphabet except that letter ‘D’ is capitalized, within a fanciful
device, on top of which is the encircled ini­tials, in downward sequence, of
the Respondent’s corporate name, and Jutting out on two sides of the circle are
bolts of lightning, symbolic of elec­tricity.

“On the other hand, Opposer’s
trademark is DURAFLEX in Capitalized print, except that one crosspiece of the
letter X is in the form of a bolt of
lightning.  The word slants slightly
upward, traversing the center of a figure of the earth or globe.

“Resorting now to the semantics of the words, it is clear that both
marks are suffixed by the word FLEX.  The
word appears in any dictionary having as common meaning ‘to bend’.  In Webster’s Interna­tional Dictionary, it is
used by the British on electric cord. However, one mark (Respondent’s) is
prefixed with DYNA suggesting power.  It
is not in itself a rootword but it has been commonly
associa­ted with any source of power.  At
most, it could have been derived from the Greek word ‘Dynamis‘
and, generally, the root words commonly
derived therefrom are ‘dynam‘
and ‘dynamo’.  The other (Opposer’s) is prefixed with DURA, suggesting durability,
strength and endurance.

“Based on the
foregoing comparisons, the trademarks of the parties are different in ap­pearance,
meaning, sound and connotation and hence, are not confusingly similar.”

The pertinent law, Republic Act 166, as amended, on registrability of trademarks,
prescribes:

“SEC. 4. – The owner of a trademark,
trade-name or service-mark used to distinguish his goods, business or services
from the goods, business or services of others shall have the right to register
the same, unless it:

xxxxx xxxxx   xxxxx

“(d) Consists
of or comprises a mark or trade name which so resembles a mark or trade-name
registered in the Philippines by another and not abandoned, as to be likely, when applied to or used in connection
with the goods, business or services of the applicant, to cause confusion or mistake or to deceive
purchasers.” (Underlining
supplied)

It is clear from the above-quoted provision that the
determinative factor in a contest involving registration of trade mark is not
whether the challenged mark would actually cause confusion or deception of the
purchasers but whether the use of such mark would likely cause confusion
or mistake on the part of the buying public. 
In short, to constitute an infringement of an existing trademark patent
and warrant a denial of an application for registration, the law does not
require that the competing trademarks
must be so identical as to produce actual error or mistake; it would be
sufficient, for purposes of the law, that the similarity between the two labels
is such that there is a possibility or likelihood of the purchaser of the older
brand mistaking the newer brand for it.

The question is, when is a trademark
likely to confuse or cause the public to mistake one for another?   Earlier rulings of the Court seem to
indicate its reliance on the dominancy test or the assessment of the
essential or dominant features in the competing labels to deter­mine
whether they are confusingly similar.^[1]
On this matter, the Court said:

“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.  (C. Neilman
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 mistakes in the mind of the public or deceive
purchasers.”  (Go Tiong vs. Director of Patents, 95 Phil. 1, cited in Lim Hoa vs. Director of Patents, 100 Phil. 214).^[2]

In fact, even their similarity in sound is taken into
consideration, where the marks refer to merchandise of the same descriptive
proper­ties, for the reason that trade idem sonans
constitutes a violation of trade mark patents.^[3]
Thus, in the case of Marvex Commercial Co.
vs. Hawpia & Co.,^[4]
the registration of the trademark “Lionpas”
for medicated plaster was denied for being confusingly similar in sound with
“Salonpas“, a registered mark also for
medicated plaster, the Court saying:

“Two letters of ‘SALONPAS’ are missing in ‘LIONPAS’, the first
letter a and the letter s.  Be
that as it may, when the two words are pronounced, the sound effects are
confusingly similar.  And where goods are
advertised over the radio, similarity in sound is of especial sig­nificance (Co
Tiong Sa vs. Director of Patents, 95 Phil. 1, citing Nims, The Law of Unfair Competition and Trademarks, 4th ed., vol. 2, pp. 678-679).  ‘The importance of this rule is emphasized by
the increase of radio advertising in which we are deprived of help of our eyes
and must depend entirely on the ear’ (Operators, Inc. vs. Director of Patents, supra.)”

Along the same line are the rulings
denying registration of a mark containing the picture of a fish (Bangus), as label for
soy sauce, for being similar to another registered brand of soy sauce
that bears the picture of the fish carp;^[5]
or that of the mark bearing the picture of two roosters with the word
“Bantam”, as label for food seasoning
(vetsin), which would confuse the purchasers of the
same article bearing the registered mark “Hen Brand” that features
the picture of a hen.^[6]

The present case is governed by the principles laid down in the
preceding cases.  The similarity between
the competing trademarks, DURAFLEX and DYNAFLEX, is apparent.  Not only are the initial letters and the last
half of the appellations identical, but the difference exists only in two out
of the eight literal elements of the designations.  Coupled with the fact that both marks cover
insulated flexible wires under class 20; that both products are contained in
boxes of the same material, color, shape and size; that the dominant elements
of the front designs are a red circle and a diagonal zigzag commonly related to
a spark or flash of electricity; that the back of both boxes show similar
circles of broken lines with arrows at the center pointing outward, with the identical
legend “Cut Out Ring” “Draw From Inside Circle”, no
difficulty is experienced in reaching the conclusion that there is a deceptive
similarity that would lead the purchaser to confuse one product with the other.

The Director of Patents has predicated his decision mostly on the
semantic difference and connotation of the prefixes “Dura”
and “Dyna” of the competing trademarks,
unfortunately forgetting that the buyers are less concerned with the etymology
of the words as with their sound and the dominant features of the design.

Of course, as pointed out in the decision now on appeal, there
are some differences in the mark on the front portion of the box.  But they pale into insignificance in view of
the close resemblance in the general appearance of the box and the tradenames of the articles. 
Indeed, measured against the dominant-feature standard, applicant’s mark
must be disallowed.  For, undeniably, the
dominant and essen­tial feature of the article is the trademark itself.  Unlike in the case of commodities that are
ordinarily picked up by the purchaser himself from the grocery or market
counters, electric wires are purchased not by their appearance but by the size
(voltage) and length and, most importantly, by brand.  It is even within layman’s knowledge that
different brands of wire have different characteristics and properties; and for
an essential building item as electric wires and supplies, the owner of the
building would not dare risk his property, perhaps his life, on an unknown or
untested brand.  He would only demand for
what is re­cognized to be the best.

Relying on the doctrine enunciated in the Etepha
case^[7]
and the earlier ruling in Lim Hoa vs. Director of
Patents,^[8]
applicant-appellee contends that the DYNAFLEX mark would not confuse or deceive the
buyers and subscribers of the DURAFLEX brand, because electrical wires are of
great value and the pur­chasers thereof are generally intelligent – the
architects, engineers and building contractors. 
It must be realized, however, that except perhaps in big constructions,
the designing architect or engineer, or the contractor who will undertake the
work of building, does not himself purchase or place the order for the purchase
of the materials to be used therein.  The
task is oftentimes delegated to another. 
Nor are said technical men the ones personally laying down the wiring
system in the building that they could possibly check on whether or not the
correct wires are being used.  So that
even if the engineer or contractor will specify in the bill of materials the
parti­cular brand of wires needed, there is no certainty that the desired product will be acquired.  For, unlike the pharmacists or druggists, the
dispensers of hardware or electrical supplies are not generally known to pay as
much concern to the brand of articles asked for by the customer and of a person
who knows the name of the brand but is not acquainted with its appearance, the
likelihood of the DYNAFLEX product being mistaken for DURAFLEX is not remote.

Of course, as in all other cases of colorable imitations, the unanswered riddle is
why, of the millions of terms and combinations
of letters and designs available, the appellee
had to choose those so closely similar to another’s trademark if there was no
intent to take advantage of the goodwill generated by the other mark.

FOR THE FOREGOING CONSIDERATIONS, the decision appealed
from is hereby set aside, and the application for registration of the trademark
DYNAFLEX for electric wires, class 20, is ordered denied. No costs.

Concepcion, C.J., Dizon,
Makalintal, Zaldivar,
Sanchez, Ruiz Castro, Fernando, Barredo, and Villamor, JJ., concur.

Teehankee, J., took no part.

^[1]
Parke, Davis & Co. vs. Kiu Foo & Co., Ltd., 60 Phil. 928; Sapolin
Co., Inc. vs. Balmaceda, 67 Phil. 705.

^[2]
Also Chua Che vs. Phil. Patent Office,
L-18337, 30 January 1965,
13 SCRA 60; Operators, Inc. vs. Director of Patents, L-17901, 29 Oct. 1965.

^[3]
Sapolin
Co., Inc. vs. Balmaceda, supra.

^[4]
L-19297, 22 December 1966, 18 SCRA
1178.

^[5]
Chuanchow Soy & Canning Co. vs. Director,
L-13947, 30 June 1960.

^[6]
Lim Hoa vs. Director of Patents, 100 Phil.
214.

^[7]
Etepha A. G. vs. Director of Patents, L-20635,
31 March 1966, 16 SCRA 495.

^[8]
Lim Hoa vs. Director of Patents, 100 Phil.
214.