Autophil Zone Sales Corporation vs. Director of Bureau of Trademarks

At the trademark application stage, an IPOPHL trademark examiner is not required to support a finding of likelihood of confusion with substantial evidence; that requirement applies only when private parties other than the applicant are involved. Registration may be denied under Section 123.1(d) of the Intellectual Property Code where the applicant's mark is confusingly similar to prior registered marks under the Dominancy Test, especially where the dominant feature is identical and the goods are related.

Autophil Zone Sales Corporation is a domestic corporation engaged in the importation and distribution of automotive spare parts; the Director of the Bureau of Trademarks is the respondent in the review of the IPOPHL's refusal to register its mark. The dispute is governed by Republic Act No. 8293, which establishes the IPOPHL's examination process and bars registration of marks that are identical or confusingly similar to registered marks for the same or closely related goods or services. The IPOPHL's Bureau of Trademarks examines applications, and its decisions may be appealed to the Director General and thereafter to the Court of Appeals. The case also implicates the 2020 Revised Rules of Procedure for Intellectual Property Rights Cases and the ASEAN Common Guidelines for the Substantive Examination of Trademarks, which supply the framework for assessing likelihood of confusion.

Autophil Zone Sales Corporation, a domestic corporation engaged in the importation and distribution of automotive spare parts, filed an application to register the mark "FUJI METAL STYLIZED." On September 27, 2017, Examiner Ana Maida J. Zamora issued a Registrability Report denying the application because the mark resembled a previously registered mark "FUJI" under Terrence Santos and a mark then pending registration, also using the word "FUJI," under Leo Tire Manufacturing Corporation. Autophil, through counsel, responded that its mark was not similar to those of Santos and Leo Tire because of its distinctive design and stylized lettering; the sole similarity was the use of the word "FUJI." It also asserted that "FUJI" had been diluted by its incorporation in several registered trademarks in the Philippines and that confusion was unlikely because buyers of vehicles and automotive parts are particularly intelligent and capable of distinguishing its products from those sold by other owners of "FUJI" marks.

On July 11, 2019, Examiner Zamora issued a Refusal reiterating the denial. She explained that despite the distinctive elements of Autophil's mark, they fell short of curing the likelihood of confusion. A side-by-side comparison of the goods showed that they covered the same class of goods and catered to the same channels of trade and class of consumers. Autophil appealed to the Director of the Bureau of Trademarks.

On December 16, 2020, Director Leny B. Raz affirmed the denial. She ruled that Autophil's mark and the cited marks of Santos and Leo Tire nearly resemble each other in appearance and overall impression due to the word "FUJI" as the dominant feature. By merely looking at the marks, consumers would likely be confused as they would recall the name "FUJI," not the distinctive elements raised by Autophil. The goods of the subject marks were also closely related, all involving automotive parts. Autophil appealed to the Office of the Director General.

On December 13, 2022, the Office of the Director General dismissed the appeal and sustained the findings of Director Raz. Invoking the Dominancy Test, it held that the dominant feature of Autophil's mark and the other cited marks, "FUJI," was unmistakable and would most likely cause consumer confusion. It would not be inclined to register a mark with a dominant feature similar to existing registered marks. Autophil then elevated the case to the Court of Appeals via a Petition for Review under Rule 43.

The Court of Appeals denied the Petition and affirmed the Office of the Director General. It affirmed the factual findings and expertise of the IPOPHL and concurred that Autophil's mark could not be registered for being a colorable imitation of other marks that would most likely lead to confusion of ordinary purchasers. Applying the Dominancy Test, the Court of Appeals observed that the meaning and overall impression of the marks showed no stark difference, as the prevalent features of Autophil's mark were phonetically and aurally the same as those of Santos and Leo Tire. The likelihood of confusion was further bolstered by the similarity of the goods covered by the marks.

The records showed that Autophil's application covered automotive parts and fittings, namely leaf spring, U-bolt and radiator, pinion ring gear, and crank shaft. Santos's registered mark covered automobile parts such as wiper linkage, wiper motor, transmission filters, collar and lock rings, flywheel ring gears, main drive retainer assembly, main shaft assembly, synchronizer assembly, counter gear assembly, counter gear shaft, counter gear pilot bearing, counter gear thrust washer, doorlock, timing belt, timing belt idler bearing, and timing belt idler bearing with bracket assembly, among others. Leo Tire's registered mark covered motorcycle, bicycle, and automobile tires and interior. The word "FUJI" appeared in plain block upper case letters in all three marks; Santos's mark enclosed the word in a colored rectangle, while Autophil's and Leo Tire's marks were not laid out against any shape or color. The word "METAL" was generic and descriptive of automobile spare parts.

• Equal Treatment and Prior Registrations: Autophil argued that although "FUJI" appears as the dominant feature in its mark, it should not bar registrability, as doing otherwise would deny equal treatment and protection; the IPOPHL had previously allowed multiple and various trademark registrations incorporating "FUJI" as a dominant element, and the same treatment should be extended to its mark.
• Dilution and Non-Distinctiveness: Autophil maintained that because several registered trademarks used the word "FUJI," the word had ceased to be distinctive; ordinary consumers would be less likely to be confused when goods bearing the same word are found in the market.
• Distinctive Design and Sophisticated Buyers: In response to the examiner, Autophil contended that its mark was not similar to those of Santos and Leo Tire because of its distinctive design and stylized lettering; the sole similarity was the word "FUJI"; and buyers of vehicles and automotive parts are particularly intelligent and capable of distinguishing its products from those of other "FUJI" mark owners.

• Procedural Propriety: The Office of the Solicitor General, on behalf of the Director of the Bureau of Trademarks, maintained that the Court of Appeals correctly upheld the Office of the Director General Decision; it also interposed that in a petition for review on certiorari only questions of law may be raised, while likelihood of confusion is a question of fact.
• Likelihood of Confusion: Applying the Dominancy Test, the OSG argued that Autophil's mark was visually and aurally identical to the other registered marks containing "FUJI"; consumers could reasonably assume the marks originate from a common source or mistake one for the other; the denial of registration should be sustained.

• Procedural Propriety: Whether the issue of likelihood of confusion is a question of fact that cannot be raised in a petition for review on certiorari.
• Substantial Evidence at Application Stage: Whether trademark examiners at the IPOPHL are required to prove a finding of likelihood of confusion by substantial evidence during the trademark application stage.
• Registrability / Likelihood of Confusion: Whether Autophil is entitled to register "FUJI METAL STYLIZED" given that the mark could cause confusion with prior registered "FUJI" marks.

• Procedural Propriety: No. Only questions of law may be raised in a petition for review on certiorari; likelihood of confusion is a question of fact requiring reexamination of evidence, and none of the recognized exceptions applies.
• Substantial Evidence at Application Stage: No. The onus to present substantial evidence to prove likelihood of confusion arises only when private parties other than the applicant are involved; trademark examiners at the application stage are not required to prove their findings by substantial evidence.
• Registrability / Likelihood of Confusion: No. The mark is confusingly similar under the Dominancy Test because "FUJI" is the dominant feature of all marks; "METAL" is generic and descriptive and cannot distinguish the mark; and the goods are related automotive parts, barring registration under Section 123.1(d).

• Procedural Propriety: In a petition for review on certiorari, only questions of law may be raised; questions of fact are not a proper subject of appeal by certiorari. Whether the denial of Autophil's application was proper due to likelihood of confusion is a question of fact because it requires independent analysis by reexamining the evidence previously passed upon. The Court is not duty-bound to review facts, and while jurisprudence recognizes exceptions, none obtained in this case. Nonetheless, the Court found no reason to disturb the findings of the Court of Appeals, which were made in accordance with law and jurisprudence.
• Substantial Evidence at Application Stage: The Court distinguished the adversarial setting in Innolab Industries, Inc. vs. Unilab Laboratories, Inc., where the Court required substantial evidence to prove likelihood of confusion, from the trademark application stage. The onus to present substantial evidence arises only when private parties other than the applicant are involved. At the application stage, trademark examiners of the IPOPHL are not required to prove their findings by substantial evidence; they are guided by jurisprudence, existing rules, and the ASEAN Common Guidelines for the Substantive Examination of Trademarks. The IPOPHL acts as a specialized regulatory body tasked to protect the buying public from being deceived or confused. Section 133 of Republic Act No. 8293 empowers the Office to examine whether the mark is registrable under Section 123. Thus, Examiner Zamora's findings were not required to be supported by substantial evidence.
• Registrability / Likelihood of Confusion: A trademark is any distinctive word, name, symbol, emblem, sign, or device, or any combination thereof, adopted and used by a manufacturer or merchant on goods to identify and distinguish them from those manufactured, sold, or dealt by others. Protection is warranted because trademarks indicate origin or ownership, guarantee quality, and advertise the articles they symbolize. Section 147 of Republic Act No. 8293 grants the owner of a registered mark the exclusive right to prevent third parties from using identical or similar signs for identical or similar goods or services where such use would result in likelihood of confusion. Section 123.1(d) bars registration of a mark that is identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or priority date in respect of the same goods or services, closely related goods or services, or if it nearly resembles such a mark as to be likely to deceive or cause confusion. Confusion may be confusion of goods or confusion of business, and it arises when the goods or services covered by the allegedly similar marks are identical, similar, or related in some manner. Rule 18, Section 5 of the 2020 Revised Rules of Procedure for Intellectual Property Rights Cases instructs courts to consider the general impression of the ordinary purchaser and visual, aural, and connotative comparisons; the multifactor test includes the strength of the plaintiff's mark, degree of similarity, proximity of products or services, likelihood of bridging the gap, evidence of actual confusion, good faith, quality, and sophistication of buyers. Kolin identified resemblance of marks and relatedness of goods or services as particularly relevant. On resemblance, the Court applies the Dominancy Test, not the Holistic Test, which Kolin abandoned. The word "FUJI," written in plain block upper case letters, was the prevalent feature of all three marks. Santos's colored rectangle made no perceptible difference in appearance, sound, connotation, or overall impression. Autophil's addition of "METAL" did not negate confusion because "METAL" is generic and descriptive of automobile spare parts and cannot be considered or used as a determining factor to distinguish the mark. On relatedness, the Court abandoned product classification and applied the Mighty Corporation factors, including business and location, class of product, quality, quantity, size, packaging, nature and cost, descriptive properties, purpose, whether bought for immediate consumption, fields of manufacture, conditions of purchase, and channels of trade. The goods all involved automotive parts, belonged to the same class of products, served the same purpose, flowed through the same channels of trade, and appealed to the same purchasers. Complementarity also supported relatedness because the goods may be used for the same purpose, namely, for automobiles and other vehicles. The Court found no cogent reason to cast doubt on Examiner Zamora's findings and upheld the denial of registration.

• Dominancy Test — In determining confusing similarity, focus is on the prevalent or dominant features of the competing trademarks that might cause confusion, mistake, and deception in the mind of the purchasing public; duplication or imitation is not necessary, and greater weight is given to the aural and visual impressions created by the marks, with little weight to prices, quality, sales outlets, and market segments. The Court held that the Holistic or Totality Test has been abandoned and the Dominancy Test is explicitly incorporated in Republic Act No. 8293; applying it, "FUJI" was the dominant feature of all marks, and minor differences such as Santos's colored rectangle and Autophil's "METAL" did not negate confusion.
• Likelihood of Confusion — Confusion may be confusion of goods, where the ordinarily prudent purchaser would be induced to purchase one product in the belief that he was purchasing the other, or confusion of business, where despite the difference in the goods of the parties, the product of one may be reasonably assumed to originate from the other. It arises when the goods or services covered by the allegedly similar marks are identical, similar, or related in some manner. Under Rule 18, Section 5, courts consider the general impression of the ordinary purchaser and visual, aural, and connotative comparisons; the multifactor test includes (a) the strength of plaintiff's mark, (b) the degree of similarity between the marks, (c) the proximity of the products or services, (d) the likelihood that the plaintiff will bridge the gap, (e) evidence of actual confusion, (f) the defendant's good faith in adopting the mark, (g) the quality of defendant's product or service, and (h) the sophistication of the buyers. The Court found the mark likely to confuse because of resemblance and relatedness.
• Substantial Evidence at Trademark Application Stage — The requirement to prove likelihood of confusion by substantial evidence applies only when private parties other than the applicant are involved. During the trademark application stage, IPOPHL examiners are not required to prove their findings by substantial evidence; they are guided by jurisprudence, existing rules, and the ASEAN Common Guidelines. The Court applied this to uphold the examiner's refusal without requiring substantial evidence.
• Generic or Descriptive Terms — Generic terms are the common descriptive name of an article or substance or refer to the basic nature of the wares or services; they are part of the public domain and cannot be exclusively appropriated or registered. In assessing registrability, a generic word cannot be considered in determining distinctiveness. The Court held "METAL" generic and descriptive of automobile spare parts and thus incapable of distinguishing Autophil's mark.
• Relatedness of Goods or Services — Product or service classification is not a factor in determining relatedness because it serves an administrative purpose. The Court applies the Mighty Corporation factors: (a) the business and its location to which the goods belong, (b) the class of product to which the goods belong, (c) the product's quality, quantity, or size, including packaging, (d) the nature and cost of the articles, (e) the descriptive properties, physical attributes, or essential characteristics, (f) the purpose of the goods, (g) whether the article is bought for immediate consumption, (h) the fields of manufacture, (i) the conditions under which the article is usually purchased, and (j) the channels of trade through which the goods flow. Complementarity is also a basis for relatedness. The Court found the goods all automotive parts, same purpose, channels, and purchasers, and complementary.
• Administrative Expertise — Findings of fact of the IPOPHL, as an administrative agency with specialized knowledge in intellectual property, are generally accorded great respect, if not finality, so long as supported by substantial evidence. The Court found no cogent reason to cast doubt on Examiner Zamora's findings.

• "The requirement to prove the likelihood of confusion through substantial evidence only applies when private parties are involved other than the applicant themselves. Verily, during the trademark application stage, trademark examiners of the Intellectual Property Office of the Philippines are not required to prove that their findings were anchored on substantial evidence, as examiners are guided not only by jurisprudence and existing rules, to make a well-informed conclusion to determine the likelihood of confusion." — This passage states the Court's key procedural and evidentiary rule distinguishing adversarial intellectual property litigation from the trademark application stage.
• "Considering the adoption of the Dominancy Test and the abandonment of the Holistic Test, as confirmed by the provisions of the IP Code and the legislative deliberations, the Court hereby makes it crystal clear that the use of the Holistic Test in determining the resemblance of marks has been abandoned." — This is the Court's canonical formulation abandoning the Holistic Test and confirming the Dominancy Test as the governing standard for resemblance of marks.
• "In the instant case, it is plain that the word "METAL" is not subject to registration for being generic and descriptive of the goods that it seeks to identify—in this case, automobile spare parts. Effectually, neither may it be considered nor even used as a determining factor to distinguish petitioner's mark in relation to that of Santos and Leo Tire." — This passage explains why the addition of "METAL" could not cure the likelihood of confusion between Autophil's mark and the prior "FUJI" marks.
• "Taken together, it is plain that the goods all involve automotive parts, and, thus, belong to the same class of products and serve the same purpose. More, it may be found in the same channels of trade, and may appeal to the same purchasers. It is therefore not difficult to imagine that ordinary purchasers would safely presume that these goods come from the same business or source." — This passage applies the relatedness factors and supports the finding that the goods covered by the marks are related.

• Kolin Electronics Co., Inc. vs. Kolin Philippines International, Inc., 896 Phil. 190 (2021) — Controlling precedent; the Court abandoned the Holistic Test, adopted the Dominancy Test, identified resemblance and relatedness as particularly relevant factors, abandoned product classification for relatedness, and recognized complementarity.
• McDonald's Corp. vs. L.C. Big Mak Burger, Inc., 480 Phil. 402 (2004) — Explained that the Dominancy Test is explicitly incorporated in Section 155.1 of the Intellectual Property Code and that the legislative intent was to abandon the Holistic Test.
• Dy vs. Court of Appeals, 807 Phil. 819 (2017) — Expounded the Dominancy Test and the Holistic or Totality Test.
• Societe Des Produits, Nestle, S.A. vs. Puregold Price Club, Inc., 817 Phil. 1030 (2017) — Held that generic and descriptive words cannot be considered in determining distinctiveness; applied to "METAL."
• Mighty Corporation vs. E. & J. Gallo Winery, 478 Phil. 615 (2004) — Supplied the factors for determining relatedness of goods or services.
• Innolab Industries, Inc. vs. Unilab Laboratories, Inc., G.R. No. 257075, August 5, 2025 — Required substantial evidence for likelihood of confusion in adversarial proceedings and called for evidence-based standards; distinguished because the present case is at the application stage.
• Dermaline, Inc. vs. Myra Pharmaceuticals, Inc., 642 Phil. 503 (2010) — Defined trademark as a distinctive word, name, symbol, emblem, sign, or device adopted and used to identify and distinguish goods.
• Philip Morris, Inc. vs. Fortune Tobacco Corp., 526 Phil. 300 (2006) — Explained the rationale for trademark protection as recognition of the psychological function of symbols.
• Zulueta vs. CYMA Greek Taverna Co., 934 Phil. 34 (2023) — Stated that trademarks are protected to safeguard the public as consumers against confusion.
• Berris Agricultural Co., Inc. vs. Abyadang, 647 Phil. 517 (2010) — Held that administrative findings of fact are generally accorded great respect, if not finality, when supported by substantial evidence.

• Section 123.1(d), Republic Act No. 8293 (Intellectual Property Code of the Philippines) — A mark cannot be registered if it is identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or priority date in respect of the same goods or services, closely related goods or services, or if it nearly resembles such a mark as to be likely to deceive or cause confusion. Applied to deny Autophil's application.
• Section 123.1(h), Republic Act No. 8293 — A mark cannot be registered if it consists exclusively of signs that are generic for the goods or services it seeks to identify. Applied to "METAL."
• Section 147, Republic Act No. 8293 — The owner of a registered mark has the exclusive right to prevent third parties from using identical or similar signs for identical or similar goods or services where such use would result in likelihood of confusion. Cited to explain the protection granted to registered marks.
• Section 133, Republic Act No. 8293 — The Office examines whether the application meets the requirements of Section 124 and whether the mark is registrable under Section 123; if not entitled to registration, the Office advises the applicant and the final refusal is appealable to the Director General. Cited to establish the examiner's authority and the application-stage procedure.
• Rule 18, Section 5, 2020 Revised Rules of Procedure for Intellectual Property Rights Cases (A.M. No. 10-3-10-SC) — In determining likelihood of confusion, courts consider the general impression of the ordinary purchaser and visual, aural, and connotative comparisons; the multifactor test includes the strength of the mark, degree of similarity, proximity of products or services, likelihood of bridging the gap, evidence of actual confusion, good faith, quality, and sophistication of buyers. Applied in the analysis.

• Justice Leonen: Concurred in the result; commended the ponencia's recognition of evidence-based standards but maintained that likelihood-of-confusion analysis should have empirical or scientific basis, such as testimonies of stringently qualified witnesses or market surveys; noted that substantial evidence is not required at the application stage but non-adversarial proceedings may still benefit from empirical bases.
• Justice Caguioa: Concurred; clarified that Innolab's substantial-evidence requirement does not apply at the trademark application stage because the IPOPHL acts as a specialized regulatory body and examiners have objective standards through the Common Guidelines; requiring substantial evidence would be absurd and would effectively require the IPOPHL to assert private rights.
• Justice Hernando: Concurred; stated that the quantum of proof in administrative proceedings such as trademark registration is substantial evidence; a side-by-side facial examination sufficed to show the marks nearly resemble each other and the goods are closely related; IPO findings should be given great weight.
• Justice Lazaro-Javier: Concurred in full; emphasized the IPOPHL's special knowledge and expertise; agreed that the Dominancy Test was correctly applied and that Autophil was not similarly situated to Santos and Leo Tire because the circumstances surrounding its registration were different.
• Other concurring justices: Chief Justice Gesmundo, Justices Inting, Zalameda, Gaerlan, Rosario, Dimaampao, Marquez, Kho, Jr., and Villanueva concurred. Justice Singh was on leave.