AMERICAN WIRE AND CABLE CO. vs. DIRECTOR OF PATENTS

 

G.R. No. L-26557; February 18, 1970

FACTS:

• Petitioner American Wire and Cable Company (American) is the owner of the registered trademark DURAFLEX and Device for electric wires. 
  
  
• On June 1962, private respondent/applicant Central Banahaw (Central) sought to register the label DYNAFLEX for electric wires.
  
  
• Petitioner opposed on the ground that Central’s use of the trademark DYNAFLEX would confuse purchasers looking for DURAFLEX.  The mark sought to be registered allegedly having practically the same spelling, pronunciation and sound, and covering the same good, but had not been in use continuously, unlike DURAFLEX  which was in use since 1958.
  
  
• Director of Patents held that DYNAFLEX was not similar to DURAFLEX, since the logo design was dissimilar, the DURAFLEX logo being in all caps while DYNAFLEX was in miniscule, and thus gave Central’s application to trademark DYNAFLEX due course.

ISSUE:

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.

HELD:

NO, the mark sought to be registered failed to “dominancy test”

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:

xxx xxx xxx

(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. (Emphasis supplied)

It is clear from the above-quoted provision that the determinative factor in a contest involving the registration of trademark is whether the use of such mark would likely cause confusion or mistake on the part of the buying public. The test of “likelihood” is the “dominancy test” or the assessment of the essential or dominant features in the competing labels to determine whether they are confusingly similar.  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.

The court found:

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.

The court further explained that "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 it is appearance, the likelihood of the DYNAFLEX product being mistaken for DURAFLEX is not remote."

Thus the request to register this trademark must be denied.