The elements of the offense of trademark infringement under the
Intellectual Property Code are the following:
1. The trademark being infringed is registered in the Intellectual
Property Office;
2. The trademark is reproduced, counterfeited, copied, or
colorably imitated by the infringer;
3. The infringing mark is used in connection with the sale,
offering for sale, or advertising of any goods, business or services; or the
infringing mark is applied to labels, signs, prints, packages, wrappers,
receptacles or advertisements intended to be used upon or in connection with
such goods, business or services;
4. The use or application of the infringing mark is likely
to cause confusion or mistake or to deceive purchasers or others as to the
goods or services themselves or as to the source or origin of such goods or
services or the identity of such business; and
5. The use or application of the infringing mark is without
the consent of the trademark owner or the assignee thereof.
As can be seen, the likelihood of confusion is the gravamen of
the offense of trademark infringement. There are two tests to determine
likelihood of confusion, namely: the dominancy test, and the holistic test.
The dominancy test focuses on the similarity of the main,
prevalent or essential features of the competing trademarks that might cause
confusion. Infringement takes place when the competing trademark contains the
essential features of another. Imitation or an effort to imitate is
unnecessary. The question is whether the use of the marks is likely to cause confusion
or deceive purchasers. The holistic test considers the entirety of the marks,
including 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.
In trademark cases, particularly in ascertaining whether one
trademark is confusingly similar to another, no set rules can be deduced
because each case must be decided on its merits. In such cases, even more than
in any other litigation, precedent must be studied in the light of the facts of
the particular case. That is the reason why in trademark cases, jurisprudential
precedents should be applied only to a case if they are specifically in point.
In resolving the present infringement case between LS Jeans
Tailoring and Levi’s 501, the Supreme Court adopted the “holistic test” as
previously applied in a similar trademark infringement case also involving
maong pants or jeans (between the foreign brand “Lee jeans” and local bran
“Stylistic Mr. Lee”). As in the earlier case, the Court found no infringement
primarily because the element of “likelihood of confusion” is absent.
Thus, it held:
Diaz [accused] used the
trademark “LS JEANS TAILORING” for the jeans he produced and sold in his
tailoring shops. His trademark was visually and aurally different from the
trademark “LEVI STRAUSS & CO” appearing on the patch of original jeans
under the trademark LEVI’S 501. The word “LS” could not be confused as a derivative
from “LEVI STRAUSS” by virtue of the “LS” being connected to the word
“TAILORING”, thereby openly suggesting that the jeans bearing the trademark “LS
JEANS TAILORING” came or were bought from the tailoring shops of Diaz, not from
the malls or boutiques selling original LEVI’S 501 jeans to the consuming
public.
There were other
remarkable differences between the two trademarks that the consuming public
would easily perceive. Diaz aptly noted such differences, as follows:
The prosecution also
alleged that the accused copied the “two horse design” of the
petitioner-private complainant but the evidence will show that there was no
such design in the seized jeans. Instead, what is shown is “buffalo design.”
Again, a horse and a buffalo are two different animals which an ordinary
customer can easily distinguish. x x x.
The prosecution further
alleged that the red tab was copied by the accused. However, evidence will show
that the red tab used by the private complainant indicates the word “LEVI’S”
while that of the accused indicates the letters “LSJT” which means LS JEANS
TAILORING. Again, even an ordinary customer can distinguish the word LEVI’S
from the letters LSJT.
In terms of classes of
customers and channels of trade, the jeans products of the private complainant
and the accused cater to different classes of customers and flow through the
different channels of trade. The customers of the private complainant are mall
goers belonging to class A and B market group – while that of the accused are
those who belong to class D and E market who can only afford Php 300 for a pair
of made-toorder pants. xxxx
xxxx Moreover, based on the
certificate issued by the Intellectual Property Office, “LS JEANS TAILORING”
was a registered trademark of Diaz. He had registered his trademark prior to
the filing of the present cases. The Intellectual Property Office would
certainly not have allowed the registration had Diaz’s trademark been
confusingly similar with the registered trademark for LEVI’S 501 jeans.
Given the foregoing, it
should be plain that there was no likelihood of confusion between the
trademarks involved. Thereby, the evidence of guilt did not satisfy the quantum
of proof required for a criminal conviction, which is proof beyond reasonable
doubt. (VICTORINO DIAZ vs. PEOPLE OF THE PHILIPPINES, G .R. No. 180677,
February 18, 2013)
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