Respondent Universal Rubber applied for the registration of the trademark ‘Universal Converse and Device’ used on its rubber shoes and rubber slippers. Petitioner Converse opposed on the ground that the trademark sought to be registered is confusingly similar to the word ‘Converse’ which is part of its corporate name ‘Converse Rubber Corporation’ and will likely deceive purchasers and cause irreparable injury to its reputation and goodwill in the Philippines. Respondent argued that the trademarks petitioner uses on its rubber shoes are ‘Chuck Taylor’ and ‘All Star Device.’ The Director of Patents gave due course to respondent’s application. MR was denied.
Whether or not there is confusing similarity between the two trademarks.
The trademark of respondent “UNIVERSAL CONVERSE and DEVICE” is imprinted in a circular manner on the side of its rubber shoes. In the same manner, the trademark of petitioner which reads “CONVERSE CHUCK TAYLOR” is imprinted on a circular base attached to the side of its rubber shoes. The determinative factor in ascertaining whether or not marks are confusingly similar to each other “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. 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 new brand for it.” Even if not all the details just mentioned were identical, with the general appearance alone of the two products, any ordinary, or even perhaps even [sic] a not too perceptive and discriminating customer could be deceived … “
But even assuming, arguendo, that the trademark sought to be registered by respondent is distinctively dissimilar from those of the petitioner, the likelihood of confusion would still subsists, not on the purchaser’s perception of the goods but on the origins thereof. By appropriating the word “CONVERSE,” respondent’s products are likely to be mistaken as having been produced by petitioner. “The risk of damage is not limited to a possible confusion of goods but also includes confusion of reputation if the public could reasonably assume that the goods of the parties originated from the same source.