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

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

G.R. No. L-26557

February 18, 1970

REYES, J.B.L., J.

FACTS:

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 29 March 1962.

The American Wire and Cable Co., Inc.(AWCC) authorized user since 10 April 1958 of the registered trade mark DURAFLEX and Globe representation, for electric wires, apparatus, machines and supplies, class 20, opposed the application on the ground that applicant's use of the trade mark DYNAFLEX would cause confusion or result in mistake to purchasers intending to buy DURAFLEX electric wires and goods since the mark practically has the same spelling, pronunciation and sound; and covering the same good, as that of the AWCC. AWCC likewise contends that there has been no continuous use in commerce of the Central Banahaw's mark.

ISSUE: WON the mark DYNAFLEX and Device is registrable considering that the trademark DURAFLEX and Globe has been registered more than 4 years earlier.

RULING: NO. 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.

           

In the present case, the similarity between DURAFLEX and DYNAFLEX, is apparent. Not only are the initial letters and the last half of the appellations identical, but the difference exists only in two out of the eight literal elements of the designations. Coupled with the fact that both marks cover insulated flexible wires under class 20; that both products are contained in boxes of the same material, color, shape and size; that the dominant elements of the front designs are a red circle and a diagonal zigzag commonly related to a spark or flash of electricity; that the back of both boxes show similar circles of broken lines with arrows at the center pointing outward, with the identical legend "Cut Out Ring""Draw From Inside Circle", no difficulty is experienced in reaching the conclusion that there is a deceptive similarity that would lead the purchaser to confuse one product with the other. 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.

Truly, there are some differences in the mark on the front portion of the box. But they pale into insignificance in view of the close resemblance in the general appearance of the box and the tradenames of the articles. Indeed, measured against the dominant-feature standard, applicant's mark must be disallowed. For, undeniably, the dominant and essential feature of the article is the trademark itself. Unlike in the case of commodities that are ordinarily picked up by the purchaser himself from the grocery or market counters, electric wires are purchased not by their appearance but by the size (voltage) and length and, most importantly, by brand. It is even within layman's knowledge that different brands of wire have different characteristics and properties; and for an essential building item as electric wires and supplies, the owner of the building would not dare risk his property, perhaps his life, on an unknown or untested brand. He would only demand for what is recognized to be the best.