SECOND DIVISION

G.R. No. 192294 November 21, 2012

GREAT WHITE SHARK ENTERPRISES, INC., Petitioner,

vs.
DANILO M. CARALDE, JR., Respondent.

DECISION

PERLAS-BERNABE, J.:

Assailed in this Petition for Review on Certiorari under Rule 45 of the Rules of Court is the
December 14, 2009 Decision of the Court of Appeals (CA) in CA-G.R. SP No. 105787, which
1

reversed and set aside the October 6, 2008 Decision of the Director General of the Intellectual
2

Property Office (IPO), and directed him to grant the application for the mark "SHARK & LOGO" filed
by respondent Danilo M. Caralde, Jr. (Caralde).

The Factual Antecedents

On July 31, 2002, Caralde filed before the Bureau of Legal Affairs (BLA), IPO a trademark
application seeking to register the mark "SHARK & LOGO" for his manufactured goods under Class
25, such as slippers, shoes and sandals. Petitioner Great White Shark Enterprises, Inc. (Great White
Shark), a foreign corporation domiciled in Florida, USA, opposed the application claiming to be the
3

owner of the mark consisting of a representation of a shark in color, known as "GREG NORMAN
LOGO" (associated with apparel worn and promoted by Australian golfer Greg Norman). It alleged
that, being a world famous mark which is pending registration before the BLA since February 19,
2002, the confusing similarity between the two (2) marks is likely to deceive or confuse the
4

purchasing public into believing that Caralde's goods are produced by or originated from it, or are
under its sponsorship, to its damage and prejudice.

In his Answer, Caralde explained that the subject marks are distinctively different from one another
5

and easily distinguishable. When compared, the only similarity in the marks is in the word "shark"
alone, differing in other factors such as appearance, style, shape, size, format, color, ideas counted
by marks, and even in the goods carried by the parties.

Pending the inter partes proceedings, Great White Shark’s trademark application was granted and it
was issued Certificate of Registration No. 4-2002-001478 on October 23, 2006 for clothing,
headgear and footwear, including socks, shoes and its components. 6

The Ruling of the BLA Director

On June 14, 2007, the BLA Director rendered a Decision rejecting Caralde's application,
7

ratiocinating, as follows:

Prominent in both competing marks is the illustration of a shark. The dominant feature in opposer's
1âwphi1

mark is the illustration of a shark drawn plainly. On the other hand, the dominant feature in
respondent's mark is a depiction of shark shaded darkly, with its body designed in a way to contain
the letters "A" and "R" with the tail suggestive of the letter "K." Admittedly, there are some
differences between the competing marks. Respondent's mark contains additional features which
are absent in opposer's mark. Their dominant features, i.e., that of an illustration of a shark,
however, are of such degree that the overall impression it create [sic] is that the two competing
marks are at least strikingly similar to each another [sic], hence, the likelihood of confusion of goods
is likely to occur. x x x x

Moreover, the goods of the competing marks falls [sic] under the same Class 25. Opposer's mark
GREG NORMAN LOGO, which was applied for registration on February 19, 2002, pertains to
clothing apparel particularly hats, shirts and pants. Respondent, on the other hand, later applied for
the registration of the mark SHARK & LOGO on July 3, 2002 (should be July 31, 2002) for footwear
products particularly slippers, shoes, sandals. Clearly, the goods to which the parties use their marks
belong to the same class and are related to each other." (Italics ours)
8

The BLA Director, however, found no merit in Great White Shark's claim that its mark was famous
and well-known for insufficiency of evidence.

The Ruling of the IPO Director General

On appeal, the IPO Director General affirmed the final rejection of Caralde's application, ruling that
9

the competing marks are indeed confusingly similar. Great White Shark's mark is used in clothing
and footwear, among others, while Caralde's mark is used on similar goods like shoes and slippers.
Moreover, Great White Shark was first in applying for registration of the mark on February 19, 2002,
followed by Caralde on July 31, 2002. Furthermore, Great White Shark’s mark consisted of an
illustration of a shark while Caralde's mark had a composite figure forming a silhouette of a shark.
Thus, as to content, word, sound and meaning, both marks are similar, barring the registration of
Caralde's mark under Section 123.1(d) of Republic Act No. 8293, otherwise known as the Intellectual
Property Code (IP Code). Nonetheless, while Great White Shark submitted evidence of the
registration of its mark in several other countries, the IPO Director General considered its mark as
not well-known for failing to meet the other criteria laid down under Rule 102 of the Rules and
10

Regulations on Trademarks, Service Marks, Trade Names and Marked or Stamped Containers.

The Ruling of the Court of Appeals

However, on petition for review, the CA reversed and set aside the foregoing Decision and directed
the IPO to grant Caralde's application for registration of the mark "SHARK & LOGO." The CA found
no confusing similarity between the subject marks notwithstanding that both contained the shape of
a shark as their dominant feature. It observed that Caralde's mark is more fanciful and colorful, and
contains several elements which are easily distinguishable from that of the Great White Shark. It
further opined that considering their price disparity, there is no likelihood of confusion as they travel
in different channels of trade. 11

Issues Before The Court

THE COURT OF APPEALS ERRED IN RULING THAT THE RESPONDENT'S MARK SUBJECT OF
THE APPLICATION BEING OPPOSED BY THE PETITIONER IS NOT CONFUSINGLY SIMILAR
TO PETITIONER'S REGISTERED MARK THE COURT OF APPEALS ERRED IN RULING THAT
THE COST OF GOODS COULD NEGATE LIKELIHOOD OF CONFUSION THE COURT OF
APPEALS ERRED IN REVERSING THE PREVIOUS RESOLUTIONS OF THE DIRECTOR
GENERAL AND THE BLA 12

The Court's Ruling

In the instant petition for review on certiorari, Great White Shark maintains that the two (2)
competing marks are confusingly similar in appearance, shape and color scheme because of the
dominant feature of a shark which is likely to deceive or cause confusion to the purchasing public,
suggesting an intention on Caralde's part to pass-off his goods as that of Great White Shark and to
ride on its goodwill. This, notwithstanding the price difference, targets market and channels of trade
between the competing products. Hence, the CA erred in reversing the rulings of the IPO Director
General and the BLA Director who are the experts in the implementation of the IP Code.

The petition lacks merit.

A trademark device is susceptible to registration if it is crafted fancifully or arbitrarily and is capable

of identifying and distinguishing the goods of one manufacturer or seller from those of another. Apart
from its commercial utility, the benchmark of trademark registrability is distinctiveness. Thus, a
13

generic figure, as that of a shark in this case, if employed and designed in a distinctive manner, can
be a registrable trademark device, subject to the provisions of the IP Code.

Corollarily, Section 123.1(d) of the IP Code provides that a mark cannot be registered if it is identical
with a registered mark belonging to a different proprietor with an earlier filing or priority date, with
respect to the same or closely related goods or services, or has a near resemblance to such mark as
to likely deceive or cause confusion.

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 dominant
features of the competing trademarks that might cause confusion, mistake, and deception in the
mind of the ordinary purchaser, and gives more consideration to 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
14

purchaser" refers to one "accustomed to buy, and therefore to some extent familiar with, the goods
in question."15

Irrespective of both tests, the Court finds no confusing similarity between the subject marks. While
both marks use the shape of a shark, the Court noted distinct visual and aural differences between
them. In Great White Shark's "GREG NORMAN LOGO," there is an outline of a shark formed with
the use of green, yellow, blue and red lines/strokes, to wit:
16

In contrast, the shark in Caralde's "SHARK & LOGO" mark is illustrated in l et t er s outlined in the
17

form of a shark with the letter "S" forming the head, the letter "H" forming the fins, the letters "A" and
"R" forming the body, and the letter "K" forming the tail. In addition, the latter mark includes several
more elements such as the word "SHARK" in a different font underneath the shark outline, layers of
waves, and a tree on the right side, and liberally used the color blue with some parts in red, yellow,
green and white. The whole design is enclosed in an elliptical shape with two linings, thus:
18

As may be gleaned from the foregoing, the visual dissimilarities between the two (2) marks are
evident and significant, negating the possibility of confusion in the minds of the ordinary purchaser,
especially considering the distinct aural difference between the marks.

Finally, there being no confusing similarity between the subject marks, the matter of whether Great
White Shark’s mark has gained recognition and acquired becomes unnecessary. Besides, both the
19

BLA Director and the IPO Director General have ruled that Great White Shark failed to meet the
criteria under Rule 102 of the Rules and Regulations on Trademarks, Service Marks, Trade Names
and Marked or Stamped Containers to establish that its mark is well-known, and the latter failed to
show otherwise.

WHEREFORE, the Court resolves to DENY the instant petition and AFFIRM the assailed December
14, 2009 Decision of the Court of Appeals (CA) for failure to show that the CA committed reversible
error in setting aside the Decision of the IPO Director General and allowing the registration of the
mark "SHARK & LOGO" by respondent Danilo M. Caralde, Jr.

SO ORDERED.

ESTELA M. PERLAS-BERNABE
Associate Justice