SERI V ORALE

SERI v ORALE
GR 188996, 2017
Petitioner Seri Somboonsakdikul filed an application for registration of the mark LOLANE
with the Intellectual Property Office (IPO) for goods classiffied as personal care products.
Respondet Orlane S.A. filed an opposition to petitioner's application on the ground that
ORLANE is entitled to protection under RA 8293 since it is registered with the IPO with
proof of actual use. It has established in the world and in the Philippines an image and
reputation for manufacturing and selling quality beauty products. Its products have been
sold in the market for 61 years and have been used in the Philippines since 1972. Thus,
to allow petitioner's application would unduly prejudice respondent's right over its
registered trademark.
On the other hand, Petitioner mantained that both LOLANE and ORLANE are plain word
marks which are devoid of features that will likely make the most impression on the
ordinary viewer. If at all, the very word marks themselves, LOLANE and ORLANE are each
to be regarded as dominant features. Moreover, the suffix LANE is a weak mark, being
"in common use by many other sellers in the market.” Thus, LANE is also used in the
marks SHELLANE and GIN LANE, the latter covering goods under Class 3. Moreover, the
two marks are aurally different since respondent's products originate from France and is
read as "OR-LAN" and not “OR-LEYN."
Whether there is confusing similarity between ORLANE and LOLANE which

would bar the registration of LOLANE before the IPO.
None. In determining colorable imitation, either the dominancy test or the holistic or
totality test is used. The dominancy test considers the similarity of the prevalent or
dominant features of the competing trademarks that might cause confusion, mistake,
and deception in the mind of the purchasing public. More consideration is given on the
aural and visual impressions created by the marks on the buyers of goods, giving little
weight to factors like process, quality, sales outlets, and market segments. On the other
hand, the holistic test considers the entirety of the marks as applied to the products,
including the labels and packaging, in determining confusing similarity. The focus is not
only on the predominant words but also on the other features appearing on the labels.
Based on the distinct visual and aural differences between LOLANE and ORLANE using
the dominancy test, there is no confusing similarity between the two marks. The suffix
LANE is not the dominant feature of petitioner's mark. Neither can it be considered as
the dominant feature of ORLANE which would make the two marks confusingly similar.
First, an examination of the appearance of the marks would show that there are
noticeable differences in the way they are written or printed. The mark ORLANE is in plain
block upper case letters while the mark LOLANE was rendered in stylized word with the
second letter L and the letter A co-joined. Second, as to the aural aspect of the marks,
LOLANE and ORLANE do not sound alike. The first syllables of each mark, i.e., OR and LO
do not sound alike, while the proper pronunciation of the last syllable LANE — "LEYN" for
LOLANE and "LAN" for ORLANE, being of French origin, also differ. While there is possible
aural similarity when certain sectors of the market would pronounce ORLANE as
"ORLEYN," it is not also impossible that some would also be aware of the proper
pronunciation — especially since, as respondent claims, its trademark ORLANE has been
sold in the market for more than 60 years and in the Philippines, for more than 40 years.
Respondent failed to show proof that the suffix LANE has registered in the mind of
consumers that such suffix is exclusively or even predominantly associated with ORLANE
products. The IPO previously allowed the registration of the mark GIN LANE for goods
also falling under Class 3, i.e., perfume, cologne, skin care preparations, hair care
preparations and toiletries.
The essential element in determining likelihood of confusion, i.e., colorable imitation by

LOLANE of the mark ORLANE, is absent in this case. Thus, the mark LOLANE is entitled
to registration.

SERI V ORALE

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SERI V ORALE

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SERI v ORALE

Whether there is confusing similarity between ORLANE and LOLANE which

The essential element in determining likelihood of confusion, i.e., colorable imitation by

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