lRepublic of tbe ~bilippine1'

~upreme ~ourt
~anila

SECOND DIVISION

LACOSTE S.A., G.R. No. 223270

Petitioner,

- versus - Present:
LEONEN, S.A.J., Chairperson,*
CROCODILE LAZARO-JAVIER,
INTERNATIONAL PTE LTD., Acting Chairperson,
Respondent. LOPEZ, M.,
LOPEZ, J., and
KHO, JR., JJ.

Promulgated:

x-----------------------

DECISION

KHO, JR., J.:

Assailed in this Petition for Review on Certiorari 1 under Rule 45 of the

Rules of Court are the Decision2 dated September 8, 2015 and the Resolution3
dated February 29, 2016 of the Court of Appeals (CA) in CA-G.R. SP No.
137801 affirming: (a) the Decision4 dated October 7, 2014 of the Intellectual

• On official business.
1 Rollo, vol. 1, pp.21-63.
2 Id. at 12-19. Penned by Associate Justice Socorro B. Inting and concurred in by Associate Justices
Remedios A. Salazar-Fernando and Priscilla J. Baltazar-Padilla ('t; a former Member of this Court) of
the Second Division, Court of Appeals, Manila.
3 Id. at 9-10.
4
Rollo, vol. 4, pp. 1899--1905. Penned by Director General Ricardo R. Blancatlor.
Decision 2 G.R. No. 223270

Property Office-Director General (IPO-DG); and (b) the Decision5 dated

December 21, 2009 and the Resolution6 dated June 21, 2013 of the IPO-
Bureau of Legal Affairs (]PO-BLA), which denied the trademark opposition
filed by petitioner Lacoste: S.A. (Lacoste) against respondent Crocodile
International Pte. Ltd. (Crocodile).

The Facts

Lacoste, a limited liability company organized under the laws of-the

Republic of France,7 is the registered owner of the mark "CROCODILE
DEVICE" in the Philippines under Trademark Registration No. 64239 for
goods and services covered by Classes 1 to 42 of the Nice Classification
(NCL). 8 Lacoste commenced using the said mark in the Philippines as early
as 1963 when its clothing apparel was first marketed in the country. 9 The
depiction of the "CROCODILE D EVICE" mark covered by Trademark
Registration No. 64239 is found below:

Figure I - CROCODILE DEVICE of Lacoste

Meanwhile, Crocodile is a corporation duly organized under the laws

of Singapore which is a party to the Paris Convention, the TRIPS Agreement,
and other international conventions to which the Philippines also adheres. 10 It
was first registered in 1949 in Singapore' 1 and started exporting to the
Philippines in 2002. 12 Crocodile is engaged in substantially the same line of
business as Lacoste. 13

On December 27, 1996, Crocodile filed before the Bureau of Patents,

Trademarks, and Technology Transfer (the IPO 's predecessor) Trademark
Application No. 4-1996-116672 for the mark "CROCODILE AND DEVICE"
for goods covered by Class 25 of the NCL. 14 Crocodile's mark is depicted
below:

5 Rollo, vo l. 2, pp. 578- 600. Penned by Bureau of Legal Affairs Director Estrellita Beltran-Abelardo.
6 Id. at 765- 769. Penned by Bureau of Legal Affairs Director lV Atty. Nathanie l S. Arevalo.
1 Rollo, vol. I, p. 152.
R Rollo, vol. 4, p. I 907.
9 Rollo , vol. I , p. 25.
10
id. at 245.
11 Rollo, vol. 4, p. 202 1.
12
id. at 2025.
13
Id. at 1908.
14
Rollo, vol. I. p. 12- 13 .
Decision 3 G.R. No. 223270

Figure 2- CROCODILE AND DEVICE of Crocodile

On August 18, 2004 Lacoste filed a verified Notice of Opposition 15

alleging that it would be greatly damaged by the registration of Crocodile's
"CROCODILE AND DEVICE" mark which is confusingly similar or
identical to the former's own "CROCODILE DEVICE" mark. As the
registered owner of the "CROCODILE DEVICE" mark in the Philippines, it
has the exclusive right to use the same to the exclusion of others. 16

In defense, Crocodile argued that its mark and that of Lacoste have
substantial differences in appearance and overall impression as shown by the
fact that while Lacoste' s mark is only a crocodile device facing the right,
Crocodile's composite mark consists of the stylized word mark "Crocodile"
above the representation of a crocodile facing the left. According to Crocodile,
such substantial differences in appearance and overall commercial
impressions between the marks preclude any possibility of consumer
confusion as to the origin or affiliation of the goods on which the marks are
used.

Furthermore, Crocodile pointed out that its own "CROCODILE AND

DEVICE" mark -and Lacoste's "CROCODILE DEVICE" mark are
concurrently registered in other jurisdictions including Afghanistan,
Bangladesh, Brunei, Cambodia, China, India, Indonesia, Japan, Kazakhstan,
Laos, Malaysia, Mongolia, Morocco, Myanmar, Nepal, North Korea,
Pakistan, Singapore, Sabah, Sarawak, South Korea, Sri Lanka, Turkmenistan,
Taiwan and Uganda-thus, further belying Lacoste's claim that there is
confusing similarity between Lacoste' s and Crocodile's respective marks. In
further support of this assertion, Crocodile also manifested that: (a) the Osaka
District Court in Japan declared in a Judgment 17 on February 24, 1971 that
Lacoste' s and Crocodile's marks are not confusingly similar to one another;
(b) the Divisional Court in Yangon, Myanmar made a similar Judgment; 18 (c)
in separate letters to Crocodile dated July 30, 1980, 19 June 1, 1982,20 and
January 21, 1983 ,21 Lacoste expressly admitted that their respective marks are
not confusingly similar and that they can co-exist; and (d) on June 17, 1983,
Lacoste and Crocodile executed a Mutual Co-Existence Agreement22 wherein
they agreed, among others, that the agreement was executed to end all law

15 Rollo, vol. 2, pp. 780-785.

16
Rollo, vol. l, pp. 155-156.
17 Id. at 277-324.
18
Id. at 325--354.
19
Id. at 355-356.
20 Id. at 357-358.
21
Id. at 359-360.
22 Id. at 361-369.
Decision 4 G.R. No. 223270

suits, legal actions, controversies, disputes and claims between them, that they
would develop their respective businesses, that they would fight third party
infringers, and that they would acknowledge and recognize the other's marks
and that their respective marks can validly and peacefully co-exist. 23

In its Reply, 24 Lacoste reiterated its argument that Crocodile's mark is

confusingly similar with its own. It maintained that the distinction as to which
side the crocodile device faces is too minute to be noticed by ordinary
consumers from afar, and even argued that Crocodile's mark is a mere mirror
image of its own mark. 25 Furthermore, Lacoste vehemently denied
Crocodile's claim of peaceful co-existence in other countries, and that the
Mutual Co-Existence Agreement mentioned by Crocodile does not apply in
the Philippines. As to the letters allegedly containing admissions on the
absence of confusing similarity between the contending marks, Lacoste
posited that the same are premised on the acknowledgement of "long
concurrent use" of both marks in other jurisdictions which resulted in each
mark acquiring its distinctiveness. In the Philippine setting, however, said
"long concurrent use" is not obtaining. 26

Lacoste later filed a Supplemental Opposition27 dated November 30,

2005 bringing upon the IPO's notice the applicability of the principle of
trademark dilution laid down in Levi Strauss & Co. v. Clinton Apparelle, Inc. 28
According to Lacoste, the use of Crocodile's "CROCODILE AND DEVICE"
mark in the Philippines will likely cause a dilution of the distinctive quality
of Lacoste's "CROCODILE DEVICE" mark because it will lessen the
capacity of Lacoste's mark to identify or distinguish its products. 29

Trial ensued and Lacoste presented, among others,. Shalimar Sunshine

Salvino-Feldia (Salvino-Feldia) of Consumer Vibe Asia, Inc. as expert
witness who then delivered a presentation before the IPO hearing officer of
"Project Copy Cat," a logo test conducted for Lacoste and Crocodile, finding
the "saurian" figure the distinctive feature of the two contending marks. 30

The IPO-BLA Ruling

In a Decision31 dated December 21, 2009, the IPO-BLA denied

Lacoste's opposition, and accordingly, gave due course to Crocodile's
trademark application.

23
Id.at 249-251.
24
Id.at 370--378.
25 Id.at 372.
26
Id.at 375-376.
27
Id.at 383-387.
28 507 Phil. 238 (2005) [Per J. Tinga, Second Division].
29 Rollo, vol. 1, p. 385.
30
Rollo, vol. 4, pp. 1701-1742.
31
Rollo, vol. 2, pp. 578-600.
Decision 5 G.R. No. 223270

Applying both the Dominancy and Holistic Tests, the IPO-BLA ruled
that there is no confusing similarity between Lacoste' s and Crocodile's marks,
finding that since Crocodile's mark is a composite mark, considering the word
"Crocodile" in stylized font placed on top of the "saurian" figure, it has
striking differences when compared to Lacoste's mark. The IPO-BLA
likewise did not lend credence to "The Project Copy Cat" due to its
questionable credibility on account that the same was privately commissioned
by Lacoste to determine the existence of confusion between the contending
marks. 32 Furthermore, the IPO-BLA also pointed out that the Mutual Co-
Existence Agreement, the judicial decisions in other jurisdictions, and
Lacoste's letters to Crocodile buttress the conclusion that there is indeed no
confusing similarity between Lacoste' s and Crocodile's marks. 33

Finally, the IPO-BLA opined that the Doctrine of Trademark Dilution

advanced by Lacoste has no application in this case, considering that it failed
to adduce evidence that Crocodile obtained its "CROCODILE AND
DEVICE" mark in bad faith or by means of fraud. Appositely, Crocodile, with
an applied mark derived from its firm name, prqved to be a legitimate business
firm, identifying its mark in the public with its goods from those of others,
thus, acquiring property rights not only in the symbols or devices but also in
the reputation or goodwill generated thereby. 34

Aggrieved, Lacoste moved for reconsideration. 35

During the pendency of the same, Lacoste manifested to the IPO-BLA

the Award36 rendered by the Tribunal in an Ad Hoc Arbitration Proceeding
between Lacoste and Crocodile concerning the interpretation of the
geographical scope of the parties' 1983 Mutual Co-Existence Agreement. In
that arbitration proceeding, it was declared that said Agreement is limited only
to Taiwan, Singapore, Indonesia, Malaysia, and Brunei and that the parties are
not bound by said agreement outside those five countries. 37

In a Resolution38 dated June 21, 2013, the IPO-BLA denied Lacoste's

Motion for Reconsideration. In so denying, the IPO-BLA reiterated that the
word "Crocodile" prominently written in stylized format on top of the
"saurian" figure in Crocodile's mark makes it easily distinguishable from
Lacoste's mark. The IPO-BLA explained that when a mark consists of a word
and device, and both are prominently represented, consumers would not only

32
Id. at 595-596.
33
Id. at 597.
34
Id. at 598.
35 Rollo, vol. 4, pp. 1448-1505.
36 Rollo, vol. 2, pp. 607-672. Signed by Co-arbitrators Mr. Peter Leaver QC and Professor Michael Pry]es,
and Chairman Mr. Michael Lee.
37
Id. at 67 I.
38 Id. at 765-769.
Decision 6 G.R. No. 223270

decide to buy just by looking at the device, as they also read the word
component. Therefore, the consumers confronted with the conspicuous
"Crocodile" word would not have a hard time discerning that the goods
bearing such mark do not emanate from Lacoste. 39 Hence, the IPO-BLA found
that Lacoste failed to establish that Crocodile merely counterfeited the
former' s mark, nor had the intent to do so. In this regard, the IPO-BLA also
pointed out that Lacoste' s and Crocodile's marks are registered concurrently
in other jurisdictions.40

Aggrieved, Lacoste appealed41 to the IPO-DG.

The IPO-DG Ruling

In a Decision42 dated October 7, 2014, the IPO-DG affirmed the IPO-

BLA ruling. Essentially, the IPO-DG affirmed the IPO-BLA's finding that
there is no confusing similarity between Lacoste's and Crocodile's marks
which would prevent the registration of the latter. The IPO-DG held that there
is no dispute that both Lacoste and Crocodile had been using their respective
marks - which have noticeable differences from each other - for a long
time already, as in fact, they have been allowed to co-exist in various
jurisdictions. Hence, goods which have Lacoste' s marks can be easily
associated with Lacoste, while goods having Crocodile's marks can also be
easily associated with Crocodile. Given these circumstances, the IPO-DG
concluded that it is farfetched that the purchasing public -which is credited
with at least a modicum of intelligence - would be confused as to the source
of origin of Lacoste' s and Crocodile's goods which carry their respective
distinctive marks. As such, there is no cogent reason as to why Crocodile's
trademark application should not be given due course. 43

Dissatisfied, Lacoste filed a Rule 43 Petition for Review44 dated

November 3, 2014 before the CA, essentially alleging that the IPO-BLA and
IPO-DG committed grave errors in issuing their respective rulings.

The CA Ruling

In a Decision45 dated September 8, 2015, the CA affirmed the IPO-DG

ruling. The CA, applying both the Dominancy Test and Holistic Test, held
that while both marks indeed use the "saurian" figure, such fact, per se, is not
enough to prove confusing similarity between Lacoste' s and Crocodile's
marks because there is also a need to compare the same as they appear in the

39 Id. at 762.
40
ld. at 768.
41
Not attached to the rollo.
42 Rollo, vol. 4, pp. 1899-1905.
43 Id. at 1900-1905.
44 Id. at 1906-1974.
45
Rollo, vol. 2, p. 12-19.
Decision 7 G.R. No. 223270

respective labels and hang tags of the goods bearing such marks. Moreover,
as regards the description of the contending marks, the CA pointed out that
Lacoste's goods have the word "Lacoste" below the "saurian" figure, 46 while
Crocodile's goods have the word "Crocodile" above such "saurian" figure.
Verily, the appearances of the "saurian" figure, as well as the fonts, styles,
and sizes used in the accompanying words as described above lead to the
conclusion that there is no confusing similarity between Lacoste's and
Crocodile's marks. Finally, the CA noted that the products involved are
expensive and not mereiy ordinary household items which are of minimal
cost. Thus, the ordinary intelligent buyer would closely scrutinize the goods
that [they] are purchasing. 47

Undaunted, Lacoste moved for reconsideration48 which was, however,

denied in a Resolution 49 dated February 29, 2016. Hence, this petition. 50

The Issue Before the Court

The issue for the Court's resolution is whether the CA correctly

affirmed the rulings of the IPO-BLA and the IPO-DG which held that there is
no confusing similarity between Lacoste's and Crocodile's marks; hence,
Lacoste's Opposition should be denied, and Crocodile's trademark
application should be given due course.

The Court's Ruling

The Petition lacks merit.

At the outset, the Court notes that as aptly pointed out by the IPO-DG:
(a) Crocodile filed Trademark Application No. 4-1996-116672 on December
27, 1996, or before the enactment of Republic Act (R.A.) No. 8293, othen~rise
known as the "Intellectual Property Code of the Philippines;" and (b)
Crocodile manifested that the prosecution of its application be evaluated under
the provisions of the old trademark law, i.e., R.A. No. 166,51 as amended.

46 Here, the CA refers to another mark of Lacoste which has a pending application status before the IPO,
depicted below:

~
LACOSTE
47 Rollo, vol. I, pp. 4- 6.
48 id. at 8- 104.
49 Jd.at9- l0.
50 Id. at21- 64.
51 Entitled "An Act to Provide fo r the Registration and Protection of Trade-Marks, Trade-Names and
Service-Marks, De fining Unfair Compet:tion and False Marking and Prov iding Remedies Against the
Same, and for Other Purposes," approved on Jur.c 20, 1947.

~
Decision 8 G.R. No. 223270

Section 38 of R.A, No. 166, as amended defines "trademark" as "any

word, name, symbol, emblem, sign or device or any combination thereof
adopted and used by a manufacturer or merchant to identify his goods and
distinguish them from those manufactured, sold or dealt in by others."
Relatedly, "the function of a trademark is to point out distinctly the origin or
ownership of the goods [or services] to which it is affixed; to secure to him,
who has been instrumental in bringing into the market a superior article of
merchandise, the fruit of his industry and skill; to assure the public that they
are procuring the genuine article; to prevent fraud and imposition; and to
protect the manufacturer against substitution and sale of an inferior and
different article as his product. " 52

Given such function of trademarks, R.A. No. 166 prohibits the

registration of another mark if it, among others, "consists of or comprises a
mark or trade-name which so resembles a mark or trade-name registered in
the Philippines or a mark or trade-name previously used 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."53 Otherwise stated, an
application for trademark registration shall be denied if the mark sought to be
registered is confusingly similar to, or a colorable imitation of, a previously-
registered mark belonging to another.

In this regard, the Philippine jurisdiction used to have two tests to aid
the Court in ascertaining the existence of similarity and likelihood of
confusion, namely, the Dominancy Test and the Holistic or Totality Test.
However, in Kolin Electronics Co. Inc. v. Kolin Philippines International,
Inc., 54 the Court En Banc categorically abandoned the use of the Holistic or
Totality Test in favor of the Dominancy T~st.

Verily, ''the dominancy test focuses on 'the similarity of the prevalent

or dominant features of the competing trademarks that might cause confusion,

52 Ecole De Cuisine Manille, Inc. v. Renaud Cointreau & Cie, et al., 710 Phil. 305, 316 (2013) [Per J.
Perlas-Bernabe, Second Division], citing Mirpuri v. Court ofAppeals, 376 Phil. 628,645 (1999) [Per J.
Puno, First Division].
53 See Section 4(d) of Republic Act No. 166, as amended, which reads:

SEC. 4. Registration of trade-marks, trade-names and service-marks on the

principal register. -There is hereby established a register of trade-mark, trade-names and
service-marks which shall be known as the principal register. The owner of a trade-mark,
a 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 on the
principal register, unless it:

(d) Consists of or comprises a mark or trade-name which so resembles a mark or

trade-name registered in the Philippines or a mark or trade-name previously used in the
Philippines by another and not abandoned. as to be likely, when applied to or used !n
connection with the goods, business or services of the applicant, to cause confusion or
mistake or to deceive purchasers[.]
54 G.R. No. 228165, February 9, 2021 [Per J. Caguioa, E:11 Banc].

ffi
Decision 9 G.R. No. 223270

mistake, and deception in the mind of the purchasing public. Duplication or

imitation is not necessary; neither is it required that the mark sought to be
registered suggests an effort to imitate. Given more consideration are 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. "'55 Thus, the Dominancy Test is applied "when the trademark
sought to be registered contains the main, essential and dominant
featu res of the earlier registered trademark, and confusion or deception
is likely to result. " 56

Relatedly, there are no set rules in determining what constitutes a

dominant feature in trademarks. Instead, the Court takes into account the
signs, color, design, peculiar shape or name, or some special, easily
remembered earmarks of the brand that readily attracts and catches the
attention of the ordinary consumer. 57

Given the foregoing, and further considering the jurisprudential

development mentioned above, the Court shall now use the Dominancy Test
in determining if there exists a_ confusing similarity between Lacoste' s and
Crocodile's marks.

A side-by-side comparison of Lacoste and Crocodile's marks is found

below for easy reference:

Figure 3 - Side-by-side comparison of Lacoste's "CROCODILE DEVICE" mark and Crocodile's

"CROCODILE AND DEVICE" mark

Apparent from the figures above, both marks depict the "saurian" figure
and this was uniformly pointed out by the IPO-BLA, the IPO-DG, and the
CA.

In Lacoste' s mark, it is beyond dispute that the "saurian" figure is the

dominant feature, not only because it is the special and easily remembered

55 Levi Strauss & Co. v. Sevilla, G.R. No. 219744, March 1, 2021 [Per J. Perlas-Bernabe, Second Division],
citing Dy, et al. v. CA, et al., 807 Phil. 819, 830-831 (2017) [Per C.J. Sereno, First Division].
56 Dermaline, Inc. v. Mayra Pharmaceuticals, Inc., 642 Phil. 503, 511 (2010) [Per J. Nachura, Second
Division].
51 Id. at 513.
Decision G.R. No. 223270

earmark of the brand, but more importantly, because Lacoste' s mark contains
this sole component-Le., the Crocodile Device.

Meanwhile, Crocodile's mark is noticeably a composite mark, which

refers to trademarks which "may consist of a word or words combined with a
design or designs; it may consist solely of words, when there are separable
word elements; or it may consist solely of separable design elements. " 58 Here,
the entirety of Crocodile's mark contains both a word element (the word
"Crocodile" in stylized format) and a design element (the "saurian" figure).
However, following the Dominancy Test, only the design element or the
"saurian" figure, which comprise Crocodile's CROCODILE AND DEVICE
mark, should be considered in determining the existence of confusing
similarity in this case.

On this point, the Court holds that there are pronounced differences
between Lacoste's and Crocodile's marks, which resultantly, make them
distinguishable from one another as will be discussed below.

Lacoste's "saurian" figure is facing to the right, meaning the head is at

the right side while the tail is at the left side, and is aligned horizontally. On
the other hand, Crocodile's "saurian" figure, is facing to the left, meaning the
head is at the left side while the tail is at the right side. Furthermore, both the
"saurian" figure and the word "Crocodile" in stylized format on top of it are
tilted in that the right side's alignment is higher than the left side. More
significantly, the "saurian" figures in both marks are easily distinguishable
from one another, considering that in Lacoste' s mark, the "saurian" figure is
solid, except for the crocodile scutes 59 found on the body and the base of the
tail which are depicted in white inverted triangles. There are also crocodile
scutes protruding from the tail of Lacoste's "saurian" figure. Meanwhile, the
"saurian" figure in Crocodile's mark is not solid, b1;1t rather, more like a
drawing. Further, unlike Lacoste's "saurian" figure, Crocodile's "saurian"
figure does not have crocodile scutes, whether protruding or not; and instead,
is depicted with various scale patterns from the base of the head up to the tail.

In light of this, it may be reasonably concluded that there exist distinct

visual differences both in appearance and overall commercial impression
between Lacoste' s and Crocodile's marks which makes likelihood of
confusion between them nil. The form, arrangement, general appearance, and
overall presentation of their marks are evidently dissimilar, thus, the

58 See Section 1213.02 of the Trademark Manual of Examining Procedure of the United States Patent and
Trade1Tiark Office. Available at <https://tmep.uspto.gov/RDMS/TMEP/Apr2016#/Apr2016/TMEP-
1200dle1184Lhtml> (last accessed on June 23, 2022). See also J. Leonen's Dissenting Opinion in
Prose/ Pharmaceuticals & Distributors, Inc. v. Tynor Drug House, Inc., 886 Phil. 916 (2020) [Per J.
Carandang, Third Division], citing The East Pacific Merchandising Corp. v. Director of Patents, 110
Phil. 443 (I 960) [Per J. J.B.L. Reyes, Second. Division].
59 A scute is defined as "an external bony or horny plate or large scale." See <https://www.merriam-
webster.com/dictionary/scute#:~:text-=Definition%20of%20scute,horny%20plate%20or%20large%20s
cale> (last accessed on June 23, 2022).
Decision 11 G.R. No. 223270

propensity to mistake one for the other is very low. This conclusion is further
buttressed by the fact of the parties' actual co-existence in other jurisdictions,
and even rulings in other jurisdictions, such as in Japan and Myanmar,
declaring that there is indeed no confusing similarity between Lacoste' s and
Crocodile's marks.

In insisting that there is a confusing similarity between the

aforementioned marks, Lacoste invokes, among others: (a) the IPO-BLA's
Decision No. 2002-38 60 dated December 26, 2002 in Inter Partes Case No. 14-
2000-00003 entitled "La Chemise Lacoste S.A. v. Siam Pan Trading Co. Ltd."
wherein the IPO-BLA considered therein applicant's m·ark as confusingly
similar to Lacoste' s mark; and (b) the doctrine of trademark dilution as
pronounced in the Court's ruling in Levi Strauss & Co. v. Clinton Apparelle,
Inc. 61

Lacoste's insistence is untenable.

As regards the first argument, suffice it to say that Siam Pan cannot be
deemed as a binding precedent in this case simply because it is only a ruling
of the IPO-BLA and not the Court; hence, it has no stare decisis effect in this
case. 62 On a more basic level, the factual circumstances in Siam Pan and the
instant case are different. As aptly put by the IPO-DG, "[i]n trademark cases,
particularly in ascertaining whether one trademark is confusingly similar to or
is a colorable imitation of another, no set of rules can be deduced. Each case
is decided on its own merits. As the likelihood of confusion of goods or
business is a relative concept, to be determined only according to the
particular, and sometimes peculiar, circumstances of each case, the
complexities attendant to an accurate assessment of likelihood of such
confusion requires that the entire panoply of elements constituting the relevant
factual landscape be comprehensively examined. " 63 Thus, Crocodile correctly
contended that Siam Pan is not a principle of law but merely a finding of facts
applicable to the peculiar and unique circumstances of said case and which
cannot be applied on all fours hereto. 64

As regards the second argument, Levi Strauss instructs that trademark

dilution has been defined as "the lessening of the capacity of a famous mark
to identify and distinguish goods or services, regardless of the presence or
absence of: (1) competition between the owner of the famous mark and other

60 Rollo, vol. 3, pp. 1100-1107. Penned by Bureau of Legal Affairs Director Estrellita Beltran-Abelardo.
61 507 Phil. 238 (2005) [Per J. Tinga, Second Division].
62 "The doctrine of stare decisis enjoins adherence to judicial precedents. It requires courts in a country
to follow the rule established in a decision of the Supreme Court thereof. That decision becomes a
judicial precedent to be followed in subsequent cases by all courts in the land. The doctrine of stare
decisis is based on the principle that once a question oflaw has been examined and decided, it should be
deemed settled and closed to further argument." Laza tin v. Desierto, 606 Phil. 271, 282 (2009) [Per J.
Peralta, Third Division], citing Fermin v. People, 573 Phil. 278, 287 (2008) [Per J. Nachura, Third
Division]).
63 Rollo, vol. 4. p. 1902. (Citations omitted)
64 Id. at 2099.
Decision 12 G.R. No. 223270

parties; or (2) likelihood of confusion, mistake or deception." 65 Levi Strauss

further· elucidates that trademarks are eligible for protection upon finding that:
(1) the trademark sought to be protected is famous and distinctive; (2) the use
by Crocodile of the mark began after the Lacoste's mark became famous; and
(3) such subsequent use defames Lacoste' s mark. 66

A careful perusal of the records of this case reveals that Lacoste's

allegation of trademark dilution is merely speculative for lack of sufficient
basis. While it is true that: (a) Lacoste' s mark is considered as an
internationally well-known mark; and (b) Lacoste had first used its mark in
the global market in 1933, or years before Crocodile introduced its own mark
in 1949, there is no showing that Crocodile in any way-at least on the basis
of the evidence presented by Lacoste --defamed or disparaged Lacoste's
mark. As a matter of fact, in adherence to their Mutual Co-Existence
Agreement, Crocodile even facilitated the registration of Lacoste's mark in
different jurisdictions by giving consent to Lacoste's entry in countries where
Crocodile first registered its mark. It is further not amiss for the Court to point
out that like Lacoste, Crocodile has taken great pains to acquire goodwill in
favor of its mark through its long-established use and intensive promotion in
different countries. The Court even sees no intent on the part of Crocodile to
ride on the goodwill of Lacoste by reason of their long-standing co-existence
with one another in different countries worldwide. All told, evidence is
wanting as to Crocodile's capacity to tarnish Lacoste's mark or even an intent
on its part to do so. Neither does Crocodile's mark falsely suggest a
connection with Lacoste's mark so as to blur the distinctive quality of the
latter.

At this juncture, the Court deems it relevant, though not raised in the
Petition, to settle the issue on the admissibility of The Project Copy Cat, as
consumer survey evidence, in view of its jurisprudential value.

In the recent case of Ginebra v. Tanduay, 61 the Court declared the

importance of survey evidence in establishing likelihood of confusion in
trademark disputes. It explained that "[a] consumer survey that 1neasures
consumer confusion is an effective way to ensure that trademark infringement
cases are decided based on empirical facts about likely consumer confusion
instead of on judicial assumptions about how consumers are likely to respond.
Indeed, survey evidence can measure whether an appreciable number of
relevant consumers are likely to be confused by a mark that may or may not
already be in the marketplace and offers an economical and systematic way to
gather information and draw inferences ·about a large number of
individuals. " 68

65 507 Phil. 238~ 254 (2005) [Per J. Tinga, Second Division].

66
Id. at 255.
67 G.R. Nos. 196372, 210224, 216104 & 219632, August 9, 2022 [PerC.J. Gesmundo, En Banc].
68 Id.
Decision 13 G.R. No. 223270

Ginebra further expounded on the probative value of consumer survey

evidence in light of its hearsay character. 69 There, the Court, guided by the
leading U.S. case of Zippo lv{fg. Co. v. Rogers Imps., .lnc.,10 laid down "two
technically distinct bases" to justify the admissibility of survey evidence viz.:
necessity and trustworthiness.

As regards necessity, Ginebra, citing Zippo, explained that "[n]ecessity

. requires a comparison of the probative value of the survey with the
evidence, if any, which as a practical matter could be used if the survey were
excluded. If the survey is more valuable, then necessity exists for the survey,
i.e., it is the inability to get 'evidence of the same value' which makes the
hearsay statement necessary. " 71

Pursuant to this pronouncement, the Court finds for the necessity of

consumer survey evidence in this case. Notably, to determine the presence of
actual confusion, it is imperative to resort to the relevant consuming public's
perception of the contending marks. This perception, however, may only be
captured through conduct of survey done and analyzed in accordance with
scientifically accepted procedure. Indeed, the Court finds no other practical
means of determining the existence of actual confusion, than to get a
representative sample of the population and personally elicit from them their
perception of the marks.

Anent trustworthiness, the Court, in Ginebra, citing the Manual for

Complex Litigation72 of the Federal Judicial Center73 elucidated the factors
that should be considered in determining the reliability of consumer survey
evidence, to wit:

1. The universe was properly defined;

2. A representative sample of that universe was selected;
3. The questions to be asked of interviewees were framed in a clear,
precise and non-leading manner;
4. Sound interview procedures were followed by competent interviewers
who had no knowledge of the litigation or the purpose for which the
survey was conducted;
5. The data gathered was accurately reported;
6. The data was analyzed in accordance with accepted statistical
principles; and
7. Objectivity of the entire process was assured. 74 (Emphasis supplied)

69 In Ginebra, the Court explained that "[i]nitially, survey evidence was deemed inadmissible in court
proceedings because it was treated as hearsay since the respondents who answered the survey are not
presented during trial; it is only the survey-supervisor who testifies as an expert witness during trial."
70 216 F. Supp. 670 (1963).
71 G.R. Nos. 196372, 210224, 216104 & 219632, August 9, 2022 [Per C.J. Gesmundo, En Banc].
72 Manual for Complex Litigation, § I 1.493., p. 103 (Federal Judicial Center 4th ed. 2004).
73 The Federal Judicial Center is the research and education agency of the judicial branch of the U.S.
government. See Federal Judicial Center https://www.fjc.gov/ (last accessed on May 26, 2022).
74 G.R. Nos. 196372, 210224, 216104 & 219632, August 9, 2022 [Per C.J. Gesmundo, En Banc].
Decision 14 G.R. No. 223270

Guided by the foregoing considerations, the Court holds that the

requisite factor of trustworthiness, as instructed by Zippo, was not established
by Lacoste. Hence, The Project Copy Cat cannot be given probative weight in
this case.

First, in the testimony of Salvino-Feldia of Consumer Vibe Asia, Inc.,

an expert witness who delivered a presentation of The Project Copy Cat before
the IPO, she discussed that said survey was "'conducted in OMA among 450
respondents[,]" without, however, clearly identifying the population size from
which the representative sample of 450 respondents were selected. Instead,
Salvino-Feldia merely defined the general criteria it set for choosing the 450
survey respondents, to wit: (a)- ma]e/female from ABCD socio-economic
classes; (b) 18 to 60 years old; and (c) those who purchase apparel and/or
accessories at least once every three months. These criteria, notwithstanding,
the records remain silent as to the extent of this population, or to be exact,
how many consist this population. Notably, this information is necessary as
this would be determinative of whether the sample tested would be reflective
of the view of the relevant market, depending on the margin of error set for
the survey.

Second, .while Salvino-Feldia indicated the samp]e size of 450

respondents, there was no discussion, however, whether this number is
numerically representative of the relevant consuming public or.if the same is
"sufficiently large to contain a wide spectrum of personal attributes and
behavior within the universe. "75 Again, this cannot be determined if the
population, and its extent, were not clearly defined in the first place.
Moreover, Salvino-Feldia's presentation neither explained how the sample
was distributed, nor stated the procedure used in determining its size, within
the areas in the Grea~er Manila Area. Relative to this, the case of Ginebra,
through the expert witness presented therein, defined a representative sample
as '"a number of people randomly selected following accepted scientific
sampling procedures." Here, there was no mention of such procedure or
whether one was adopted to begin with.

Finally, Salvino-Feldia testified that the survey entailed a face-to-face

interview_ using a structured questionnaire. While some of these questions
were mentioned in a scattered manner throughout Salvino-Feldia's
presentation, no list of all these questions, or even a copy of the questionnaire,
was given for the IPO or the Court's scrutiny. Hence, it cannot be definitively
determined if the same were indeed framed or asked in a nonleading mam1er.

75 In the case of Ginebra, the expert witness therdn explained how the sample size in their survey was
considered.representative of their target market. H was mentioned that "[t]he size of the sample used for
[their project was] sufficiently large to contain a wide spectrum of personal attributes and behavior
within the universe," which phrase, due to its relevance, was borrowed here.
Decision 15 G.R. No. 223270

Consequently, the Cowt holds that, regardless of the conclusion drawn

from The Project Copy Cat, said survey remains without probative value for
its failure to establish its trustworthiness based on the factors discussed above.

In light of the foregoing discussions, the Court finds no cogent reason

to reverse .the uniform rulings of the IPO-BLA, the IPO-DG, and the CA in
denying Lacoste's opposition to Crocodile's Trademark Application No. 4-
1996-116672 for the mark "CROCODILE AND DEVICE" for goods covered
by Class 25 of the NCL. Hence, such application must be given due course.

As a final note, the Court quotes with approval Senior Associate Justice
Marvic M.V.F. Leonen's Separate Concurring Opinion in Asia Pacific
Resources International Holdings, Ltd. v. Paperone, Inc., 16 where it is said
that "[e]ven if products are found to be in the same market, in all cases of
unfair competition, competitioi;i should be presumed. Courts should take
care not to interfere in a free and fair market, or to foster monopolistic
practices. Instead, they should confine themselves to prevent fraud and
misrepresentation· on the public. " 77 Thus,. absent showing of fraud and
misrepresentation to the public, the Court should allow enterprises, such as
Crocodi]e in this case, to enter the Philippine market through, among others,
the registration of their trademarks.

ACCORDINGLY, the Petition is DENIED. The Decision of the Court

of Appeals dated September 8, 2015 and the Resolution dated February 29,
2016 in CA-G.R. SP No. 137801 are hereby AFFIRMED.

SO ORDERED.

~ rAssociate
.K o ~-,
Justice

76 845 Phil. 85 (2018) [Per .T. Gesmundo, Third Division].

77 Dissenting Opinion of J. Leonen; id. at I 08.
Decision .16 G.R. No. 223270

WE CONCUR:

On official business
MARVIC i\1.V;F. LEONEN
Senior Associate Justice
,,

'.A.RO-JAVIER
Justice
Acting Chairperson

.JHOSF:~OPEZ
Assqciatc Justi(;e

ATTESTATiON

I attest that the conclusions in the above Deci8ton had been reached in
consultation before the case was assigned to the w~iter of the opmion of the
Court's Diviskm.

A • 0-J-AVIER
ssociate Justice
Acting Chairperson, Second Di vision

CERTI.FiCATION

Pursuant to Article VIII, Section 13 of the Constitution and the Division

Acting Chairperson's Attestation, I certify that the conclusions in the above
Dedsion had been reached in consultaticn before th~ case was assigned to the
writtr of the opinion of the Court's Divisio.t

Justice