G.R. No.

L-26557 February 18, 1970

AMERICAN WIRE & CABLE COMPANY, petitioner,
vs.
DIRECTOR OF PATENTS and CENTRAL BANAHAW INDUSTRIES, respondents.

Facts: On 2 June 1962, Central Banahaw Industries, Inc., applied with the Director of Patents for registration of the trademark
DYNAFLEX and Device to be used in connection with electric wires, class 20, which mark applicant allegedly had been using since
March 29 1962. The Petitioner, the authorized user since April 10, 1958 of the registered trademark DURAFLEX and Globe
representation, for electric wires, apparatus, machines and supplies, class 20, opposed the application on the ground the trademark
DYNAFLEX would cause confusion or result in mistake to purchasers intending to buy DURAFLEX electric wires and goods. Ruling
in favor of the application, the Director of Patents said:

xxx , the trademarks of the parties are different in appearance, meaning, sound and connotation and hence, are not
confusingly similar.xxx

Hence, this present appeal.

Issue: WON the decision of the Director of Patents is correct.
Held: No. The Director of Patents has predicated his decision mostly on the semantic difference and connotation of the prefixes
"Dura" and "Dyna" of the competing trademarks, unfortunately forgetting that the buyers are less concerned with the etymology of
the words as with their sound and the dominant features of the design.
The determinative factor in a contest involving registration of trade mark is not whether the challenged mark would actually cause
confusion or deception of the purchasers but whether the use of such mark would likely cause confusion or mistake on the part of
the buying public. In short, to constitute an infringement of an existing trademark patent and warrant a denial of an application for
registration, the law does not require that the competing trademarks must be so identical as to produce actual error or mistake; it
would be sufficient, for purposes of the law, that the similarity between the two labels is such that there is a possibility or likelihood of
the purchaser of the older brand mistaking the newer brand for it.
The pertinent law, Republic Act 166, as amended, on registrability of trademarks, prescribes:
SEC. 4. — The owner of a trademark, 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, unless it:
xxx xxx xxx
(d) Consists of or comprises a mark or trade name which so resembles a mark or trade-name registered 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.
(Emphasis supplied)
The likelihood of the DYNAFLEX product being mistaken for DURAFLEX is not remote.
When is a trademark likely to confuse or cause the public to mistake one for another? Earlier rulings of the Court seem to indicate its
reliance on the dominancy test or the assessment of the essential or dominant features in the competing labels to determine
whether they are confusingly similar.
The question of infringement of a trademark is to be determined by the test of dominancy. Similarity in size, form, and color, while
relevant, is not conclusive. If the competing trademark contains the main or essential or dominant features of another, and confusion
and deception is likely to result, infringement takes place. Duplication or imitation is not necessary, nor is it necessary that the
infringing label should suggest an effort to imitate (C. Neilman Brewing Co. vs. Independent Brewing Co., 191 F. 489, 495, citing
Eagle White Lead Co. vs. Pflugh [CC] 180 Fed. 579).
The question at issue in cases of infringement of trademarks is whether the use of the marks involved would be likely to cause
confusion or mistakes in the mind of the public or deceive purchasers." (Go Tiong vs. Director of Patents, 95 Phil. 1, cited in Lim
Hoa vs. Director of Patents, 100 Phil. 214).
The decision appealed from is hereby set aside, and the application for registration of the trademark DYNAFLEX for electric wires,
class 20, is ordered denied.