Dominancy Test Prevails in Philippine Trademark Infringement Cases

The Supreme Court's 2011 ruling in Skechers U.S.A., Inc. v. Inter Pacific Industrial Trading Corp. (G.R. No. 164321) clarifies how Philippine courts should determine confusing similarity in trademark infringement cases. The decision reaffirms the dominancy test as the proper standard, focusing on the dominant features of a mark rather than comparing every detail of competing products. This matters for businesses because it means that copying a distinctive element of a registered trademark—even with other differences—can constitute infringement.

The Facts of the Case

Skechers U.S.A., Inc. held registered trademarks for the "SKECHERS" name and a stylized "S" within an oval design with the Intellectual Property Office. After obtaining search warrants against respondents' outlet and warehouse, authorities seized over 6,000 pairs of shoes bearing an "S" logo. The respondents moved to quash the warrants, arguing their "Strong" brand shoes bore no confusing similarity to Skechers products.

The Regional Trial Court quashed the search warrants, and the Court of Appeals affirmed, applying the holistic test and finding the shoes had itself—not the oval design surrounding it. Since respondents used the same stylized "S" without the oval, this already constituted infringement. The Court observed that the stylized "S" used by respondents appeared to be the very same distinctive letter used by Skechers, making confusion likely.

Colorable Imitation and Overall Similarity

The Court also rejected the lower courts' reliance on dissimilarities such as price differences, the absence of an oval design, and the presence of the word "Strong" on labels. Comparing the actual shoes, the Court noted striking similarities: the same blue, white, and gray color scheme, nearly identical midsole and outer sole designs, the stylized "S" placed in the same location, and even the same number of ridges on the soles.

Citing Converse Rubber Corporation v. Jacinto Rubber & Plastic Co., Inc. (186 Phil. 85), the Court emphasized that even if not all details are identical, the general appearance of products can deceive an ordinary purchaser. The Court also referenced McDonald's Corporation v. L.C. Big Mak Burger, Inc. (480 Phil. 402) to note that price differences do not defeat an infringement claim, as consumers might believe the trademark owner expanded into a lower market segment.

The Court observed that infringers rarely copy exactly—they make colorable changes, employing enough similarities to confuse the public and enough differences to confuse the courts.

Practical Takeaways

• The dominancy test governs trademark infringement disputes in the Philippines. Courts focus on dominant features of a mark, not the entirety of competing products.
• Copying a distinctive element is enough. Using a registered mark's dominant feature—even without other elements like an oval design—can constitute infringement.
• Differences do not automatically defeat a claim. Price points, labels, and minor design variations are not complete defenses when overall similarity creates confusion.
• Colorable imitation is still infringement. Making slight changes to a protected design or mark does not avoid liability if the general appearance deceives ordinary purchasers.
• Protection extends to consumer confusion about source. Consumers might reasonably believe a cheaper product bearing similar features comes from or is connected to the trademark owner.

This article is general information and not legal advice. For your specific situation, consult a lawyer or ask ASG Legal AI.