Levi Strauss & Co. v. Antonio Sevilla and Antonio L. Guevarra: A Case on Trademark Cancellation and Confusing Similarity in the Philippines
### Facts:
Levi Strauss & Co. (Petitioner), renowned for its “LEVI’S” trademark since 1946 particularly in Class 25 goods, contested the registration of the “LIVE’S” mark owned by Antonio Sevilla and later assigned to Antonio L. Guevarra. The issue originated from a 1995 survey revealing public confusion between “LEVI’S” and “LIVE’S,” leading to a petition for cancellation against the respondents’ mark on the grounds of confusing similarity. Despite successive denials at various levels—the Intellectual Property Office Bureau of Legal Affairs (IPO-BLA), the IPO Director General (IPO-DG), and the Court of Appeals (CA) on mootness and res judicata bases—Petitioner escalated the matter to the Supreme Court, questioning both the procedural dismissals and the substantive issue of confusing similarity.
### Issues:
1. Whether the CA erred in deeming the case moot and academic and if G.R. No. 162311 constituted res judicata.
2. Whether there exists a confusing similarity between Petitioner’s “LEVI’S” mark and respondents’ “LIVE’S” mark warranting cancellation.
### Court’s Decision:
1. **On Mootness and Res Judicata:** The Supreme Court found CA’s dismissals on mootness (due to assignment of rights during the case’s pendency) and res judicata (reliance on G.R. No. 162311) as erroneous. Dale Sy’s assumption of the LIVE’S mark as a transferee pendente lite did not moot the case, and G.R. No. 162311, stemming from an inconclusive preliminary investigation, couldn’t establish res judicata.
2. **On Confusing Similarity:** Applying the Dominancy Test over the now-abandoned Holistic Test, the Court observed substantial similarity predominantly in the visual, aural, and overall presentation of the marks, deeming respondents’ LIVE’S mark confusingly similar to Petitioner’s “LEVI’S” marks, justifying cancellation.
### Doctrine:
The decision underscored the Dominancy Test as the prevailing method to determine confusing similarity between trademarks in the Philippines, emphasizing the reliance on the overall impression created by the marks on the average consumer, and the explicit legislative choice encapsulated within Section 155 of Republic Act No. 8293 (Intellectual Property Code of the Philippines).
### Class Notes:
– Trademark Law: Utilizes the Dominancy Test to evaluate confusing similarity, where the focus is on the dominant features of competing marks and their impact on consumer perception.
– Confusing Similarity: Established not only through direct comparison but considering the broader marketplace context—pricing, packaging, and overall presentation.
– Legal Procedure: Appeals on decisions by quasi-judicial bodies like the Intellectual Property Office must carefully navigate issues of mootness, res judicata, and the appropriate evidentiary standards.
– Res Judicata: Requires a final judgment by a court of competent jurisdiction on the merits, which was not fulfilled by G.R. No. 162311, an administrative resolution of a criminal complaint.
### Historical Background:
The case reflects the evolving standards in Philippines trademark law, particularly the shift from the Holistic to the Dominancy Test, underscoring a more focused analysis on consumer perception and potential confusion in the market. This transition aligns with global trends emphasizing consumer experience and the immediate impression created by trademarks, illustrating the dynamic nature of intellectual property jurisprudence within the Philippines’ legal landscape.
Leave a Reply