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Skechers USA, Inc. v. Inter Pacific Industrial Trading Corp.


Herein petitioners, Skechers USA, filed a criminal case for trademark infringement
against several store-owners that were selling shoes branded as Strong and bearing a similar
S logo, which is a letter S wrapped around an oval-like structure. The Regional Trial Court
(RTC) issued search warrants, allowing the National Bureau of Investigation (NBI) to raid the
stores and confiscate 6,000 pairs of shoes. The accused moved to quash the warrants, saying that
there was no confusing similarity between the Skechers and the Strong brands logos. The
RTC granted the motion to quash and ordered the NBI to return the seized goods. The court said
that the two brands had glaring differences and that an ordinary prudent consumer would not
mistake one for the other. On certiorari, the Court of Appeals (CA) affirmed the RTC ruling. The
matter was then elevated to the Supreme Court (SC) for final judgment and clarifications.

Whether or not the respondents committed copyright infringement.

The Court ruled that the accused has indeed committed copyright infringement. The
Intellectual Property Code (I.P. Code) states that Infringement is committed when: Any person
who shall, without the consent of the owner of the registered mark: 155.1. Use in commerce any
reproduction, counterfeit, copy, or colorable imitation of a registered mark or the same container
or a dominant feature thereof in connection with the sale, offering for sale, distribution,
advertising of any goods or services including other preparatory steps necessary to carry out the
sale of any goods or services on or in connection with which such use is likely to cause
confusion, or to cause mistake, or to deceive; or 155.2. Reproduce, counterfeit, copy or
colorfully imitate a registered mark or a dominant feature thereof and apply such reproduction,
counterfeit, copy or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or
advertisements intended to be used in commerce upon or in connection with the sale, offering for
sale, distribution, or advertising of goods or services on or in connection with which such use is
likely to cause confusion, or to cause mistake, or to deceive, shall be liable in a civil action for
infringement by the registrant for the remedies hereinafter set forth: Provided, That the
infringement takes place at the moment any of the acts stated in Subsection 155.1 or this
subsection are committed regardless of whether there is actual sale of goods or services using the
infringing material. Trademark law does not only protect the owners reputation and goodwill, it
also protects the consumers from fraud and confusion. In this case, it is clear that there was an
attempt to copy the trademark owners mark and product design. In trademark infringement
cases, you do not need to copy another's mark or product exactly. Colorable imitation is enough.

Levi Strauss & Co. v. Clinton Apparel (2)

Petitioners Levi Strauss, Co. filed a complaint for Trademark Infringement against herein
respondents Clinton Apparel before the RTC. The complaint alleges that the petitioners, are the
rightful and sole owners of the famous Dockers and Design Trademark. Such ownership is
evidenced by its existing registrations in various countries included in the Paris Convention. The
design is also registered under Philippine laws, specifically, under the Principal Register labeled
as Certificate of Registration No. 46619. The Dockers and Design trademark was first used in the
Philippines by LSPI, a domestic corporation engaged in the manufacture, sale, and distribution of
merchandise of Levi Strauss Co. LSPI then discovered that one brand of clothing was using their
Dockers and Design trademark. Paddocks Jeans was said to have used the disputed trademark.
The brand was represented by herein respondents, Clinton Apparel. The petitioners prayed for a
Temporary Restraining Order against the respondents to avoid the further use of the trademarked
branding. The RTC then issued the TRO along with a writ of preliminary injunction. However,
the Court of Appeals claims that the RTC erred in issuing the TRO stating that the respondents
were not properly notified. Such lack of notification deems the TRO to have been improperly
issued. Along with the TRO, the Writ of Preliminary Injunction was questioned too for lacking

Whether or not the setting aside by the CA of the TRO and the writ of preliminary
injunction is justified.
The Court ruled that the issuance of the TRO and the writ of preliminary injunction is
unjustified. According to Sec. 1 of Rule 58 of the Rules of Civil Procedure: A preliminary
injunction is an order granted at any stage of an action or proceeding prior to the judgment or
final order, requiring a party or a court, agency or a person to refrain from a particular act or
acts. The issuance of the aforementioned orders rests upon one thing, and that is to avoid further
injurious consequences inflicted by the very same thing that is sought to be restrained. Sec. 3 of
Rule 58 enumerates the grounds for the issuance of a writ of preliminary injunction: A
preliminary injunction may be granted when it is established: (a) That the applicant is entitled to
the relief demanded, and the whole or part of such relief consists in restraining the commission
or continuance of the act or acts complained of, or in requiring the performance of an act or acts
either for a limited period or perpetually; (b) That the commission, continuance or non-
performance of the act or acts complained of during the litigation would probably work injustice
to the applicant; or (c) That a party, court, agency or a person is doing, threatening, or is
attempting to do, or is procuring or suffering to be done some act or acts probably in violation of
the rights of the applicant respecting the subject of the action or proceeding, and tending to
render the judgment ineffectual. According to the Court of Appeals, none of the aforementioned
grounds were to be seen in the case of Levi Strauss, Co. Therefore, the issuance of the orders by
the RTC is deemed unjustified and is therefore void.

La Chemis Lacoste v. Fernandez (3)

Petitioner La Chemise Lacoste is a foreign corporation and the actual owner of the
trademarks Lacoste, Chemise Lacoste, and Crocodile Device used on clothing and other
goods that are sold in many parts of the world. Herein respondent Hemadas & Co., a domestic
firm, applied and was granted registration of the mark Chemise Lacoste and Crocodile Device
for its garment products. Sometime later, petitioner applied for the registration of its mark
Crocodile Device and Lacoste but was opposed by herein respondent. Later, petitioner filed a
letter-complaint of unfair competition before the NBI which led to the issuance of search
warrants and the seizure of goods of respondent Hemadas. Respondent moved to quash the
warrants alleging that its trademark was different from petitioners trademark. Respondent court
ruled to set aside the warrants and to return the seized goods.

Whether or not the petitioners trademark is protected by the Paris Convention.

The Court ruled that the petitioners brand is protected under the Paris Convention. The
Court further recognizes its duty to protect the rights of foreign states under the aforementioned
convention for the protection of Industrial Property. It is to be noted that the Philippines, as well
as France, the country of origin of the brand La Chemise Lacoste, are signatories and parties to
the Paris Convention. Pursuant to this obligation, the Ministry of Trade issued a memorandum
addressed to the Director of the Patents Office directing the latter to reject all pending
applications for Philippine registration of signature and other world famous trademarks by
applicants other than its original owners or users. The conflicting claims over internationally
known trademarks involve such name brands as Lacoste, et. al. It is further directed that, in cases
where warranted, Philippine registrants of such trademarks should be asked to surrender their
certificates of registration, if any, to avoid suits for damages and other legal action by the
trademarks foreign or local owners or original users. In the case of La Chemise Lacoste S.A. v.
Sadhwani the IAC sustained the power of the Minister of Trade to issue the implementing
memorandum and declared La Chemise Lacoste S.A. the owner of the disputed trademark, by
stating: In the case at bar, the Minister of Trade, as the competent authority of the country of
registration, has found that among other well-known trademarks Lacoste is the subject of
conflicting claims. For this reason, applications for its registration must be rejected or refused,
pursuant to the treaty obligation of the Philippines.

Joaquin v. Drilon (4)

Petitioner BJ Productions, Inc. (BJPI) is the holder / grantee of Certificate of Copyright
No. M922, dated January 28, 1971, of Rhoda and Me, a dating game show aired from 1970 to
1977. On June 28, 1973, petitioner BJPI submitted to the National Library an addendum to its
certificate of copyright specifying the shows format and style of presentation. Upon complaint
of petitioners, information for violation of PD No. 49 was filed against private respondent Zosa
together with certain officers of RPN 9 for airing Its a Date. It was assigned to Branch 104 of
RTC Quezon City. Zosa sought review of the resolution of the Assistant City Prosecutor before
the Department of Justice. On August 12, 1992, respondent Secretary of Justice Franklin M.
Drilon reversed the Assistant City Prosecutors findings and directed him to move for the
dismissal of the case against private respondents. Petitioner Joaquin filed motion for
reconsideration but such was denied.

Whether or not the order of Drilon finding no probable cause is valid.

The Court ruled that the order issued by herein respondent, Drilon, is valid. Rhe essence
of copyright infringement is the copying, in whole or in part, of copyrightable materials as
defined and enumerated in Section 2 of PD. No. 49 (Copyright Law). Apart from the manner in
which it is actually expressed, however, the idea of a dating game show is a non-copyrightable
material. Ideas, concepts, formats, or schemes in their abstract form clearly do not fall within the
class of works or materials susceptible of copyright registration as provided in PD. No. 49. What
is covered by BJPIs copyright is the specific episodes of the show Rhoda and Me. Further, BJPI
should have presented the master videotape of the show in order to show the linkage between the
copyright show (Rhoda and Me) and the infringing show (Its a Date). This is based on the ruling
in 20th Century Fox vs CA (though this has been qualified by Columbia Pictures vs CA, this is
still good law). Though BJPI did provide a lot of written evidence and description to show the
linkage between the shows, the same were not enough. A television show includes more than
mere words can describe because it involves a whole spectrum of visuals and effects, video and
audio, such that no similarity or dissimilarity may be found by merely describing the general
copyright/format of both dating game shows.