Cited Laws
accordingly, gave due course to Crocodile's trademark application. Applying both the Dominancy and Holistic Tests, the IPO-BLA ruled that there is no confusing similarity between Lacoste's and Crocodile's marks, finding that since Crocodile's mark is a composite mark, considering the word "Crocodile" in stylized font placed on top of the "saurian" figure, it has striking differences when compared to Lacoste's mark. The IPO-BLA likewise did not lend credence to "The Project Copy Cat" due to its questionable credibility on account that the same was privately commissioned by Lacoste to determine the existence of confusion between the contending marks. [32] Furthermore, the IPO-BLA also pointed out that the Mutual Co-Existence Agreement, the judicial decisions in other jurisdictions, and Lacoste's letters to Crocodile buttress the conclusion that there is indeed no confusing similarity between Lacoste's and Crocodile's marks. [33] Finally, the IPO-BLA opined that the Doctrine of Trademark Dilution advanced by Lacoste has no application in this case, considering that it failed to adduce evidence that Crocodile obtained its "CROCODILE AND DEVICE" mark in bad faith or by means of fraud. Appositely, Crocodile, with an applied mark derived from its firm name, proved to be a legitimate business firm, identifying its mark in the public with its goods from those of others, thus, acquiring property rights not only in the symbols or devices but also in the reputation or goodwill generated thereby. [34] Aggrieved, Lacoste moved for reconsideration. [35] During the pendency of the same, Lacoste manifested to the IPO-BLA the Award [36] rendered by the Tribunal in an Ad Hoc Arbitration Proceeding between Lacoste and Crocodile concerning the interpretation of the geographical scope of the parties' 1983 Mutual Co-Existence Agreement. In that arbitration proceeding, it was declared that said Agreement is limited only to Taiwan, Singapore, Indonesia, Malaysia, and Brunei and that the parties are not bound by said agreement outside those five countries. [37] In a Resolution [38] dated June 21, 2013, the IPO-BLA denied Lacoste's Motion for Reconsideration. In so denying, the IPO-BLA reiterated that the word "Crocodile" prominently written in stylized format on top of the "saurian" figure in Crocodile's mark makes it easily distinguishable from Lacoste's mark. The IPO-BLA explained that when a mark consists of a word and device, and both are prominently represented, consumers would not only decide to buy just by looking at the device, as they also read the word component. Therefore, the consumers confronted with the conspicuous "Crocodile" word would not have a hard time discerning that the goods bearing such mark do not emanate from Lacoste. [39] Hence, the IPO-BLA found that Lacoste failed to establish that Crocodile merely counterfeited the former's mark, nor had the intent to do so. In this regard, the IPO-BLA also pointed out that Lacoste's and Crocodile's marks ar