Respondent Central Banahaw Industries applied for the registration of its trademark ‘Dynaflex’ to be used in electric wires. Petitioner American Wire, authorized user of the mark ‘Duraflex’ placed also on electric wires, opposed on the ground that the registration of the mark would cause confusion or result in mistake to purchasers intending to buy their products. The Director of Patents gave due course to the application holding that the two marks were not similar.
Whether or not the two trademarks are confusingly similar.
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 similarity between the competing trademarks, 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.
*Relying on the doctrine enunciated in the Etepha case and the earlier ruling in Lim Hoa vs. Director of Patents, applicant-appellee contends that the DYNAFLEX mark would not confuse or deceive the buyers and subscribers of the DURAFLEX brand, because electrical wires are of great value and the purchasers thereof are generally intelligent — the architects, engineers and building contractors. It must be realized, however, that except perhaps in big constructions, the designing architect or engineer, or the contractor who will undertake the work of building, does not himself purchase or place the order for the purchase of the materials to be used therein. The task is oftentimes delegated to another. Nor are said technical men the ones personally laying down the wiring system in the building that they could possibly check on whether or not the correct wires are being used. So that even if the engineer or contractor will specify in the bill of materials the particular brand of wires needed, there is no certainty that the desired product will be acquired. For, unlike the pharmacists or druggists, the dispensers of hardware or electrical supplies are not generally known to pay as much concern to the brand of articles asked for by the customer and of a person who knows the name of the brand but is not acquainted with it is appearance, the likelihood of the DYNAFLEX product being mistaken for DURAFLEX is not remote. (JBL Reyes’ wisdom)