LOLANE vs ORLANE: When Trademark Similarity Does Not Mean Confusion

The Supreme Court recently clarified when two trademarks are considered "confusingly similar" — and when they are not — in a case involving the marks LOLANE and ORLANE. The ruling is a helpful guide for businesses deciding whether a proposed mark can coexist with an existing one.

The Case

A Thai businessman applied to register the mark LOLANE for personal care products under Class 3 of the International Classification of Goods. Orlane S.A., a French cosmetics company, opposed the application. Orlane claimed that LOLANE was confusingly similar to its own registered mark, ORLANE, which it had used since 1948 and registered in the Philippines in 1967.

The Intellectual Property Office (IPO) and the Court of Appeals (CA) both sided with Orlane. They applied the "dominancy test," which looks at the dominant features of competing marks. Both agencies found that the suffix "LANE" was the dominant feature of both marks, making them visually and aurally similar.

The Issue

The sole question before the Supreme Court: Is there confusing similarity between ORLANE and LOLANE that would bar registration of LOLANE?

The Ruling

The Supreme Court reversed the CA and allowed the registration of LOLANE. The Court held that there was no colorable imitation between the two marks.

What the Court considered:

1. Visual differences. ORLANE appears in plain block uppercase letters, while LOLANE is rendered in a stylized word with the second letter "L" and the letter "A" co-joined. These are noticeable differences in how the marks are written.

2. Aural differences. The Court cited an earlier case, Etepha v. Director of Patents, which held that in a word combination, the part that comes first is the most pronounced. The first syllables "OR" and "LO" do not sound alike. The Court also rejected the IPO's assumption that Filipinos would invariably pronounce ORLANE as "OR-LEYN." Since Orlane claimed its mark had been sold in the Philippines for over 40 years, some consumers would likely know the proper French pronunciation, "OR-LAN."

3. The suffix "LANE" is not exclusively associated with ORLANE. The Court noted that the IPO had previously allowed registration of the mark GIN LANE for goods also under Class 3. Orlane failed to prove that consumers associate the suffix "LANE" predominantly with its products.

The Legal Framework

The registrability of trademarks is governed by the Intellectual Property Code, Republic Act No. 8293. The law provides that a mark cannot be registered if it is identical with, or nearly resembles, a registered mark belonging to a different proprietor as to be likely to deceive or cause confusion. The exact text of the relevant provision is not reproduced here, but the principle is well-established in Philippine trademark law.

The Court reaffirmed that the "dominancy test" is the preferred method for determining confusing similarity, as it considers the aural, visual, and connotative impressions created by the marks. However, the Court applied the test and reached a different conclusion than the lower tribunals. The essential element — colorable imitation — was absent.

Practical takeaways

• The first syllable matters. In aural comparison, the part of a word that comes first is the most pronounced. Marks that share only a common suffix may not be confusingly similar.
• Visual presentation counts. Stylized lettering and other visual features can distinguish a mark from an existing one, even if the words share letters.
• Common suffixes are weak. A suffix that is used by other sellers in the same class of goods is less likely to be considered the dominant feature of a mark.
• Administrative findings are not absolute. Courts may review IPO findings of fact when they are unsupported by evidence or arrived at arbitrarily.
• Foreign judgments are not precedents. Decisions of foreign trademark offices do not bind Philippine courts, though they may be persuasive.

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