Case Digest (G.R. No. 162311)
Facts:
Levi Strauss (Phils.), Inc. v. Tony Lim, G.R. No. 162311, December 04, 2008, Supreme Court Third Division, Reyes, R.T., J., writing for the Court.
Petitioner Levi Strauss (Phils.), Inc. (petitioner) is the Philippine licensee and sole authorized manufacturer/distributor of garments bearing Levi’s trademarks in the Philippines. In 1995 petitioner complained that respondent Tony Lim, doing business as Vogue Traders Clothing Company, was manufacturing and selling denim garments under the mark “LIVE’S”, which petitioner alleged were colorable imitations of several of its registered marks (including the arcuate stitching design, two-horse patch, red tab, and the “501” mark).
Police surveillance led to the issuance and execution of two search warrants (December 1995) at respondent’s Tondo, Manila premises, resulting in seizure of large quantities of garments, hangtags, buttons, patches, and sewing equipment bearing “LIVE’S” indicia. The PNP Criminal Investigation Command forwarded a complaint to the Department of Justice (DOJ) charging respondent with unfair competition under then Article 189 of the Revised Penal Code (before its repeal by Section 239 of RA No. 8293).
During preliminary investigation respondent denied intention to deceive, asserted registration of the “LIVE’S” mark (Certificate of Registration No. 53918) and a copyright on a patch design, and argued that confusing similarity was a matter for the intellectual property and civil tribunals. Petitioner replied, pointing to multiple similarities (arcuate stitching imitation, “105” vs “501”, red tab placement, similar patch and carton ticket designs) and submitted a consumer survey.
At the DOJ level, Prosecutor Florencio D. Dela Cruz recommended dismissal on October 8, 1996; Assistant Chief State Prosecutor approved. Secretary of Justice Teofisto Guingona affirmed the dismissal on January 9, 1998, finding lack of proof any person was actually deceived and emphasizing differences in spelling/pronunciation and respondent’s trademark registration. Petitioner moved for reconsideration and submitted the consumer survey.
On June 5, 1998, Secretary Silvestre Bello III reversed Guingona and directed the filing of an information for unfair competition against respondent, finding respondent appropriated the general appearance of petitioner’s goods and intended to deceive. Respondent moved for reconsideration; on May 7, 1999, Secretary Serafin Cuevas granted the motion and ordered dismissal.
Dissatisfied, petitioner filed a petition for review with the Court of Appeals (CA) under Rule 43 of the Rules of Court. The CA, by Decision dated October 17, 2003 (and Resolution Feb. 20, 2004), affirmed the dismissal: it held that the question of likelihood of confusion must consider all relevant circumstances (price, class of purchasers, manner of sale), found distinguishing features between the marks and packaging, and rejected petitioner’s post‑sale confusion theory, applying the point‑of‑sale test.
Petitioner elevated the case to the Supreme Co...(Subscriber-Only)
Issues:
- Was the petition filed in the Court of Appeals under Rule 43 the proper recourse to challenge the DOJ Secretary’s resolution on probable cause, or was certiorari under Rule 65 (and review under Rule 45 to the Supreme Court) the proper remedy?
- Should the determination of likelihood of confusion in an unfair competition case be limited to the point of sale, or may post‑sale confusion and other circumstances be considered in the prelimina...(Subscriber-Only)
Ruling:
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Ratio:
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Doctrine:
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