Wilton Dy Vs Philipps

G.R. No.
186088
WILTON DY and/or PHILITES ELECTRONIC & LIGHTING

PRODUCTS, Petitioner
vs
KONINKLIJKE PHILIPS ELECTRONICS, N.V., Respondent
Facts:
1. On 12 April 2000, petitioner PHILITES filed a trademark application

(Application Serial Number 4-2000-002937) covering its fluorescent bulb,
incandescent light, starter and ballast.
2. After publication, respondent Koninklijke Philips Electronics, N .V.

("PHILIPS") filed a Verified Notice of Opposition on 17 March 2006.
INTELLECTUAL PROPERTY OFFICE- BUREAU OF LEGAL AFFAIRS:
ARGUMENTS:
3. Philipps Electronics:
a. The approval of Application Serial No. 4-2000-002937 is contrary
to the following provisions of Republic Act No. [RAJ 8293 or the
Intellectual Property Code of the Philippines (IP Code): Sections
123.l(d), (i) and (iii), 123.l(e), 147, and 168.
b. The approval of Application Serial No. 4-2000-002937 will cause

grave and irreparable damage and injury to oppose.
c. The use and registration of the applied for mark by [petitioner] will
mislead the public as to the origin, nature, quality, and
characteristic of the goods on which it is affixed
d. Philites’ application for registration is tantamount to fraud as it

seeks to register and obtain legal protection for an identical or
confusingly similar mark that clearly infringes upon the
established rights of the [respondent] over its registered and
internationally well-known mark.
e. The registration of the trademark PHILITES & LETTER P DEVICE

in the name of the PHILITES’ will violate the proprietary rights and
interests, business reputation and goodwill of the [respondent] over
its trademark, considering that the distinctiveness of the
trademark PHILIPS will be diluted.
f. The registration of the applied for mark will not only prejudice the
Opposer, but will also cause PHILITES’ to unfairly profit
commercially from the goodwill, fame and notoriety of Opposer's
trademark and reputation.
g. PHILITES’ registration and use of the applied for mark in

connection with goods under Class 11 will weaken the unique and
distinctive significance of mark PHILIPS and will tarnish, degrade
or dilute the distinctive quality of Opposer's trademark and will
result in the gradual attenuation or whittling away of the value of
Opposer's trademark, in violation of Opposer's proprietary rights.
4. PHILITES:
a. stating that its PHILITES & LETTER P DEVICE trademark and
respondent's PHILIPS have vast dissimilarities in terms of spelling,
sound and meaning.
5. Decision of IPO-BLA: Opposition of Philipps is denied.
6. Rationale:
a. here should have been prior determination of whether or not the
mark under application for registration was "identical with, or
confusingly similar to, or constitutes a translation of such well-
known mark in order that the owner of the well-known mark can
prevent its registration
b. From the evidence presented, the IPP-BLA concluded that the

PHILIPS and PHILITES marks were so unlike, both visually and
aurally. It held that no confusion was likely to occur, despite their
contemporaneous use,
7. IPO-Director General: Affirmed the BLA Director Ruling
8. Rationale:
a. [t]he dominant feature of the [respondent's] trademark is 'PHILIPS'
while that of the [petitioner's] trademark is 'PHILITES.' While the
first syllables of the marks are identical - 'PHI' - the second
syllables are not.
b. there were "glaring differences and dissimilarities in the design

and general appearance of the Philips shield emblem mark and the
letter 'P' of Philites mark.
c. even if the [petitioner's] products bearing the trademark PHILIPS

are placed side by side with other brands, the purchaser would not
be confused to pick up the [petitioner's] product if this is his choice
or preference, unless the resemblance in the appearance of the
trademarks is so glaring which [it] is not in this case.
9. Court of Appeals: Reverse the ruling of IPO-Director General
10. Rationale:
a. drawing of the trademark submitted by [petitioner] has a different
appearance from that of [petitioner's] actual wrapper or packaging
that contain the light bulbs, which We find confusingly similar
with that of [respondent's] registered trademark and packaging.
b. self-serving [petitioner's] asseveration that the mark 'PHILITES' is a

coined or arbitrary mark from the words 'Philippines' and 'lights.'
Of all the marks that [petitioner] could possibly think of for his
light bulbs, it is odd that [petitioner] chose a mark with the letters
'PHILI,' which are the same prevalent or dominant five letters
found in [respondent's] trademark 'PHILIPS' for the same products,
light bulbs.
c. petitioner had intended to ride on the long-established reputation

and goodwill of respondent's trademark.
11. Issues:
a. Whether or not respondent's mark is a registered and well-known
mark in the Philippines
b. Whether or not the mark applied for by petitioner is identical or

confusingly similar with that of respondent.
12. SUPREME COURT Ruling: For Philipps
13. 1st Issue:

Respondent's mark is a registered and well-known mark in the
Philippines. Hence, a mark which is considered by the competent
authority of the Philippines to be well-known internationally and in the
Philippines, whether or not it is registered here,' cannot be registered by
another in the Philippines.
14. 2nd issue:

Petitioner seeks to register a mark nearly resembling that of respondent,
which may likely to deceive or cause confusion among consumers.
Applying the dominancy test to this case requires us to look only at the
mark submitted by petitioner in its application, while we give importance
to the aural and visual impressions the mark is likely to create in the
minds of the buyers. We agree with the findings of the CA that the mark
"PHILITES" bears an uncanny resemblance or confusing similarity with
respondent's mark "PHILIPS,
The confusing similarity becomes even more prominent when we examine

the entirety of the marks used by petitioner and respondent, including
the way the products are packaged. In using the holistic test, we find
that there is a confusing similarity between the registered marks PHILIPS
and PHILITES, and note that the mark petitioner seeks to register is
vastly different from that which it actually uses in the packaging of its
products.

Wilton Dy Vs Philipps

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G.R. No.

WILTON DY and/or PHILITES ELECTRONIC & LIGHTING

1. On 12 April 2000, petitioner PHILITES filed a trademark application

2. After publication, respondent Koninklijke Philips Electronics, N .V.

INTELLECTUAL PROPERTY OFFICE- BUREAU OF LEGAL AFFAIRS:

b. The approval of Application Serial No. 4-2000-002937 will cause

d. Philites’ application for registration is tantamount to fraud as it

e. The registration of the trademark PHILITES & LETTER P DEVICE

g. PHILITES’ registration and use of the applied for mark in

5. Decision of IPO-BLA: Opposition of Philipps is denied.

b. From the evidence presented, the IPP-BLA concluded that the

7. IPO-Director General: Affirmed the BLA Director Ruling

b. there were "glaring differences and dissimilarities in the design

c. even if the [petitioner's] products bearing the trademark PHILIPS

9. Court of Appeals: Reverse the ruling of IPO-Director General

b. self-serving [petitioner's] asseveration that the mark 'PHILITES' is a

c. petitioner had intended to ride on the long-established reputation

b. Whether or not the mark applied for by petitioner is identical or

13. 1st Issue:

14. 2nd issue:

The confusing similarity becomes even more prominent when we examine

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