Case Summary (G.R. No. 219744)
Procedural History Through IPO Decisions
The IPO Bureau of Legal Affairs denied the cancellation petition in January 2009, finding no confusing similarity based on pronunciation, design, and market factors, and relying on Levi Strauss (Phils.) Inc. v. Lim (G.R. No. 162311). The IPO Director General affirmed in August 2012 for similar reasons.
Court of Appeals Ruling
In September 2014, the CA dismissed petitioner’s Rule 43 review as moot—due to respondents’ assignment of the “LIVE’S” registration to Dale Sy—and as barred by res judicata, citing G.R. No. 162311. Reconsideration was denied in July 2015.
Issues on Review
- Whether the CA correctly held the case moot and barred by res judicata.
- Whether the “LIVE’S” mark should be cancelled for confusing similarity with “LEVI’S.”
Mootness and Transferee Pendente Lite
The Supreme Court held that assignment to Dale Sy did not moot the controversy. Registration No. 53918 remained valid until 2022, and as a transferee pendente lite, Dale Sy stands in respondents’ shoes and is bound by the outcome.
Res Judicata Analysis
G.R. No. 162311 stemmed from a preliminary investigation into unfair competition, resulting in a DOJ dismissal for lack of probable cause. The Court reiterated that preliminary investigations are administrative and do not produce final judgments on the merits. Hence, they cannot invoke res judicata in subsequent quasi-judicial or judicial proceedings.
Merits: Trademark Confusion Test
Under the 2011 and 2020 Rules for Intellectual Property Rights Cases, confusing similarity is assessed by the Dominancy Test, focusing on the dominant features of each mark and their overall aural, visual, and connotative impressions on the ordinary purchaser.
Application of the Dominancy Test
Both “LEVI’S” and “LIVE’S” comprise the letters L-E-V-I-S with an apostrophe before the “S,” differing only by transposition of “I” and “E.” Respondents’ mark is essentially an anagram of petitioner’s. Even absent identical spelling or pronunciation, the dominant similarity in structure and form creates a high likelihood of consumer confusion.
Evidence of Colorable Imitation and Actual Confusion
The labels share a similar color scheme, border, fringe banners, and packaging style. Respondents jux
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Facts
- Petitioner Levi Strauss & Co., a foreign corporation, owns the “LEVI’S” word mark since 1946 for Class 25 goods under the Nice Classification.
- In 1972, Levi Strauss Phils., Inc. (LSPI) was granted a non-exclusive Philippine license to use petitioner’s “LEVI’S” trademarks.
- Antonio Sevilla originally registered the “LIVE’S” mark (Reg. No. 53918) for Class 25 goods and later assigned it to Antonio L. Guevarra (a.k.a. Tony Lim, Vogue Traders Clothing Company).
- In 1995, LSPI commissioned “Project Cherokee 5,” a consumer survey showing 86% of participants associated “LIVE’S” with “LEVI’S” and 90% read stylized LIVE’S as LEVI’S.
- On December 13, 1995, petitioner filed a Petition for Cancellation of LIVE’S with the BPTTT (now IPO), alleging confusing similarity with “LEVI’S.”
- Respondents argued against confusing similarity, citing differences in spelling, pronunciation, price points, trade channels, product tags, and prior long use.
Procedural History
- IPO-BLA Decision (Jan. 29, 2009): Denied cancellation; found no confusing similarity based on differences in pronunciation, spelling, designs, prices, and trade channels; cited Levi Strauss (Phils.) Inc. v. Lim (G.R. No. 162311).
- IPO-DG Decision (Aug. 13, 2012): Affirmed IPO-BLA; likewise relied on G.R. No. 162311.
- CA Decision (Sept. 26, 2014) in CA-G.R. SP No. 126316: Dismissed petition for review as moot (assignment pendente lite to Dale Sy) and res judicata (G.R. No. 162311).
- CA Resolution (July 28, 2015): Denied reconsideration.
- Supreme Court petition for review on certiorari (G.R. No. 219744, filed March 1, 2021).
Issues
- Did the CA correctly dismiss the case as moot and academic due to the assignment pendente lite of Reg. No. 53918?
- Does G.R. No. 162311 operate as res judicata to bar the present cancellation petition?
- Should the “LIVE’S” mar