Case Digest (G.R. No. 164321)
Facts:
Skechers, U.S.A., Inc. v. Inter Pacific Industrial Trading Corp., G.R. No. 164321, November 30, 2006, Supreme Court First Division, Chico‑Nazario, J., writing for the Court. Petitioner Skechers, U.S.A., Inc. (a foreign corporation not doing business in the Philippines) and petitioner‑intervenor Trendworks International Corporation sought review of appellate and trial court orders quashing a search warrant and ordering return of items seized by the National Bureau of Investigation (NBI). The controversy arose from petitioner Skechers' registered trademarks (including the word mark SKECHERS and an S within an oval design) and a complaint that respondents — principally Inter Pacific Industrial Trading Corporation (operating as Strongshoes/Strong Fashion Shoes Trading) and its proprietors/agents — were importing, distributing and selling rubber shoes bearing the Strong name and an S logo that allegedly infringed Skechers' marks under Republic Act No. 8293 (Intellectual Property Code), Secs. 155 and 170.In March–May 2002 petitioner engaged Zetetic Far East, Inc. to investigate. Zetetic personnel purchased sample shoes from respondents' warehouse and outlet that bore the word Strong and an S logo. On 11 June 2002 NBI Special Investigator Carlos N. Borromeo III, with the Zetetic witness, applied ex parte to Branch 24, Regional Trial Court (RTC), Manila for search warrants for respondents' warehouse and outlet for trademark infringement. The RTC examined the applicant and witness and issued Search Warrant Nos. 02‑2827 and 02‑2828 the same day; the NBI executed the warrants that afternoon and seized thousands of pairs of shoes and business documents.
Respondents filed motions to quash and, after a hearing in which sample shoes were compared, the trial court (Judge Antonio M. Eugenio, Jr.) issued an order dated 7 November 2002 quashing Search Warrant No. 02‑2827 and directing the NBI to return the seized items; the court found that an ordinary prudent purchaser would not likely be confused because of conspicuous differences (e.g., no oval enclosing the S, the presence of the word Strong on tags and insoles, and price differentials) and applied a holistic test. The RTC denied petitioner’s motion for reconsideration on 6 March 2003.
Petitioner filed a petition for certiorari under Rule 65 with the Court of Appeals (challenging the RTC’s quashal as grave abuse), which the Court of Appeals denied on 17 November 2003 (CA‑G.R. SP No. 77269), agreeing with the RTC that the holistic...(Subscriber-Only)
Issues:
- Did the Court of Appeals commit grave abuse of discretion in denying the petition and affirming the RTC’s quashal of the search warrant?
- Was there probable cause to issue and to retain Search Warrant No. 02‑2827 for trademark infringement under Sections 155 and 170 of R.A. No. 8293 (i.e., did respondents’ Strong shoes constitute a colorable imitation of petitioner’s ...(Subscriber-Only)
Ruling:
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Ratio:
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Doctrine:
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