Republic
of the
Supreme Court
THIRD DIVISION
LEVI STRAUSS (PHILS.), INC., G.R. No. 162311
Petitioner,
Present:
YNARES-SANTIAGO, J.,
Chairperson,
-
versus - AUSTRIA-MARTINEZ,
CHICO-NAZARIO,
NACHURA, and
REYES, JJ.
Promulgated:
TONY LIM,
Respondent. December 4, 2008
x - -
- - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - -
- - - - - - - - x
D E C I S I O N
REYES, R.T., J.:
THE remedy of a party desiring to elevate
to the appellate court an adverse resolution of the Secretary of Justice is a
petition for certiorari under Rule
65. A Rule 43 petition for review is a
wrong mode of appeal.[1]
During preliminary investigation, the
prosecutor is vested with authority and discretion to determine if there is
sufficient evidence to justify the filing of an information. If he finds probable cause to indict the
respondent for a criminal offense, it is his duty to file the corresponding
information in court. However, it is
equally his duty not to prosecute when after an investigation, the evidence
adduced is not sufficient to establish a prima
facie case.[2]
Before
the Court is a petition for review on certiorari[3] of
the Decision[4] and
Resolution[5] of
the Court of Appeals (CA), affirming the resolutions of the Department of
Justice (DOJ) finding that there is no probable cause to indict respondent Tony
Lim, a.k.a. Antonio Guevarra, for unfair competition.
The Facts
Petitioner Levi Strauss (Phils.),
Inc. is a duly-registered domestic corporation. It is a wholly-owned subsidiary of Levi
Strauss & Co. (LS & Co.) a
In 1972, LS & Co. granted
petitioner a non-exclusive license to use its registered trademarks and trade
names[6]
for the manufacture and sale of various garment products, primarily pants,
jackets, and shirts, in the Philippines.[7] Presently, it is the only company that has
authority to manufacture, distribute, and sell products bearing the LEVI’S
trademarks or to use such trademarks in the
in over 130 countries, including the
Sometime in 1995, petitioner lodged a
complaint[10] before
the Inter-Agency Committee on Intellectual Property Rights, alleging that a certain establishment in Metro Manila was
manufacturing garments using colorable imitations of the LEVI’S trademarks.[11] Thus, surveillance was conducted on the
premises of respondent Tony Lim, doing business under the name Vogue Traders
Clothing Company.[12] The investigation revealed that respondent was
engaged in the manufacture, sale, and distribution of products similar to those
of petitioner and under the brand name “LIVE’S.”[13]
On
The
In his counter-affidavit,[21]
respondent alleged, among others, that (1) his products bearing the LIVE’S brand
name are not fake LEVI’S garments; (2) “LIVE’S” is a registered trademark,[22]
while the patch pocket design for “LIVE’S” pants has copyright registration,[23]
thus conferring legal protection on his own intellectual property rights, which
stand on equal footing as “LEVI’S”; (3) confusing similarity, the central issue
in the trademark cancellation proceedings[24]
lodged by petitioner, is a prejudicial question that complainant, the police,
and the court that issued the search warrants cannot determine without denial
of due process or encroachment on the jurisdiction of the agencies concerned;
and (4) his goods are not clothed with an appearance which is likely to deceive
the ordinary purchaser exercising ordinary care.[25]
In its reply-affidavit, petitioner
maintained that there is likelihood of confusion between the competing products
because: (1) a slavish imitation of petitioner’s “arcuate” trademark has been
stitched on the backpocket of “LIVE’S” jeans; (2) the appearance of the mark
“105” on respondent’s product is obviously a play on petitioner’s “501”
trademark; (3) the appearance of the word/phrase “LIVE’S” and “LIVE’S ORIGINAL
JEANS” is confusingly similar to petitioner’s “LEVI’S” trademark; (4) a red
tab, made of fabric, attached at the left seam of the right backpocket of
petitioner’s standard five-pocket jeans, also appears at the same place on
“LIVE’S” jeans; (5) the patch used on “LIVE’S” jeans (depicting three men on
each side attempting to pull apart a pair of jeans) obviously thrives on
petitioner’s own patch showing two horses being whipped by two men in an
attempt to tear apart a pair of jeans; and (6) “LEVI’S” jeans are packaged and
sold with carton tickets, which are slavishly copied by respondent in his own
carton ticket bearing the marks “LIVE’S,” “105,” the horse mark, and basic
features of petitioner’s ticket designs, such as two red arrows curving and
pointing outward, the arcuate stitching pattern, and a rectangular portion with
intricate border orientation.[26]
DOJ Rulings
On
On appeal, then DOJ Secretary
Teofisto Guingona affirmed the prosecutor’s dismissal of the complaint on
In the case at bar, complainant has not shown that anyone
was actually deceived by respondent. Respondent’s product, which bears the
trademark LIVE’s, has an entirely different spelling and meaning with
the trademark owned by complainant which is LEVI’s. Complainant’s trademark
comes from a Jewish name while that of respondent is merely an adjective word.
Both, when read and pronounced, would resonate different sounds. While
respondent’s “LIVE’s” trademark may appear similar, such could not have been
intended by the respondent to deceive since he had the same registered with the
appropriate government agencies. Granting arguendo,
that respondent’s trademark or products possessed similar characteristics with
the trademark and products of complainant, on that score alone, without
evidence or proof that such was a device of respondent to deceive the public to
the damage of complainant no unfair competition is committed.[29]
On
On
WHEREFORE,
our resolution dated
Secretary Bello reasoned that under
Article 189 of the Revised Penal Code, as amended, exact similarity of the
competing products is not required. However, Justice Guingona’s resolution incorrectly dwelt on the
specific differences in the details of the products.[33] Secretary Bello’s own factual findings
revealed:
x x x [I]t
is not difficult to discern that respondent gave his products the general
appearance as that of the product of the complainant. This was established by the respondent’s use
of the complainant’s arcuate backpocket design trademark; the 105 mark which
apparently is a spin-off of the 501 mark of the complainant; the patch which
was clearly patterned after that of the complainant’s two horse patch design
trademark; the red tab on the right backpocket; the wordings which were crafted
to look similar with the Levis trademark of the complainant; and even the
packaging. In appropriating himself the
general appearance of the product of the complainant, the respondent clearly
intended to deceive the buying public. Verily, any person who shall employ
deception or any other means contrary to good faith by which he shall pass of
the goods manufactured by him or in which he deals, or his business, or
services for those of the one having established good will shall guilty of
unfair competition.
Respondent’s
registration of his trademark can not afford him any remedy. Unfair competition
may still be prosecuted despite such registration.[34] (Citation omitted)
Respondent
then filed his own motion for reconsideration of the
CA Disposition
Dissatisfied
with the DOJ rulings, petitioner sought recourse with the CA via a petition for
review under Rule 43 of the 1997 Rules of Civil Procedure. On
WHEREFORE, premises considered, the petition for review is DENIED and is
accordingly DISMISSED for lack of merit.
SO ORDERED.[36]
The CA pointed out that to determine
the likelihood of confusion, mistake or deception, all relevant factors and
circumstances should be taken into consideration, such as the circumstances
under which the goods are
sold, the class of purchasers, and the actual occurrence or absence of
confusion.[37]
Thus, the existence of some
similarities between LIVE’S jeans and LEVI’S garments would not ipso facto equate to fraudulent intent
on the part of respondent. The CA noted that respondent used affirmative and
precautionary distinguishing features in his products for differentiation. The appellate court considered the spelling
and pronunciation of the marks; the difference in the designs of the back
pockets; the dissimilarity between the carton tickets; and the pricing and sale
of petitioner’s products in upscale exclusive specialty shops. The CA also disregarded the theory of
post-sale confusion propounded by petitioner, relying instead on the view that
the probability of deception must be determined at the point of sale.[38]
Issues
Petitioner
submits that the CA committed the following errors:
I.
THE COURT OF APPEALS GRAVELY
ERRED IN RULING THAT ACTUAL CONFUSION IS NECESSARY TO SUSTAIN A CHARGE
OF UNFAIR COMPETITION,
II.
THE COURT OF APPEALS GRAVELY
ERRED IN RULING THAT RESPONDENT’S LIVE’S JEANS DO NOT UNFAIRLY COMPETE
WITH LEVI’S ® JEANS
THE COURT OF APPEALS GRAVELY
ERRED IN DISREGARDING THE EVIDENCE ON RECORD, CONSISTING OF THE
SCIENTIFICALLY CONDUCTED MARKET SURVEY
IV.
THE COURT OF APPEALS GRAVELY
ERRED IN RULING THAT THE ISSUE OF CONFUSION SHOULD ONLY BE DETERMINED AT THE
POINT OF
V.
THE COURT OF APPEALS GRAVELY
ERRED IN FAILING TO DIRECT THE SECRETARY OF JUSTICE TO CAUSE THE FILING
OF THE APPROPRIATE INFORMATION IN COURT AGAINST THE RESPONDENT.[39] (Underscoring supplied)
Our Ruling
In
essence, petitioner asks this Court to determine if probable cause exists to
charge respondent with the crime of unfair competition under Article 189(1) of
the Revised Penal Code, prior to its repeal by Section 239 of RA No. 8293.
However, that is a factual issue[40]
the resolution of which is improper in a Rule 45 petition.[41] The only legal issue left for the Court to
determine is whether the issue of confusion should be determined
only at the point of
sale.
Nonetheless, there is sufficient
reason for this Court to dismiss this petition merely by looking at the
procedural avenue petitioner used to have the DOJ resolutions reviewed by the
CA.
Petitioner filed with the CA a
petition for review under Rule 43 of the 1997 Rules of Civil Procedure.[42] Rule 43 governs all appeals from [the Court of
Tax Appeals and] quasi-judicial bodies to the CA. Its Section 1 provides:
Section 1. Scope. – This Rule shall apply to appeals from [judgments
or final orders of the Court of Tax Appeals and from] awards, judgments, final
orders or resolutions of or authorized by any quasi-judicial agency in the
exercise of its quasi-judicial functions. Among these agencies are the Civil
Service Commission, Central Board of Assessment Appeals, Securities and
Exchange Commission, Office of the President, Land Registration Authority, Social
Security Commission, Civil Aeronautics Board, Bureau of Patents, Trademarks and
Technology Transfer, National Electrification Administration, Energy Regulatory
Board, National Telecommunications Commission, Department of Agrarian Reform
under Republic Act No. 6657, Government Service Insurance System, Employees
Compensation Commission, Agricultural Inventions Board, Insurance Commission,
Philippine Atomic Energy Commission, Board of Investments, Construction
Industry Arbitration Commission, and voluntary arbitrators authorized by law.[43]
Clearly,
the DOJ is not one of the agencies enumerated in Section 1 of Rule 43 whose
awards, judgments, final orders, or resolutions may be appealed to the CA.
The Court has consistently ruled that
the filing with the CA of a petition for
review under Rule 43 to question the Justice Secretary’s resolution
regarding the determination of probable cause is an improper remedy.[44]
Under the 1993 Revised Rules on
Appeals from Resolutions in Preliminary Investigations or Reinvestigations,[45]
the resolution of the investigating prosecutor is subject to appeal to the
Justice Secretary[46]
who, under the Revised Administrative Code, exercises the power of control and
supervision over said Investigating Prosecutor; and who may affirm, nullify,
reverse, or modify the ruling of such prosecutor.[47] If the appeal is dismissed, and after the
subsequent motion for reconsideration is resolved, a party has no more appeal
or other remedy available in the ordinary course of law.[48] Thus, the Resolution of the Justice Secretary
affirming, modifying or reversing the resolution of the Investigating
Prosecutor is final.[49]
There being no more appeal or other
remedy available in the ordinary course of law, the remedy of the aggrieved
party is to file a petition for certiorari
under Rule 65. Thus, while the CA may
review the resolution of the Justice Secretary, it may do so only in
a petition for certiorari
under Rule 65 of the 1997 Rules of Civil
Procedure, solely on the ground that
the Secretary of Justice committed grave abuse of discretion amounting to
excess or lack of jurisdiction.[50]
Verily, when respondent filed a
petition for review under Rule 43 instead of a petition for certiorari under Rule 65, the CA should
have dismissed it outright. However, the appellate court chose to
determine if DOJ Secretaries Guingona and Cuevas correctly determined the
absence of probable cause.
Now, even if We brush aside
technicalities and consider the petition for review filed with the CA as one
under Rule 65, the petition must fail just the same.
While the resolution of the Justice Secretary may be reviewed by the Court,
it is not empowered to substitute its judgment for that of the executive branch
when there is no grave abuse of
discretion.[51]
Courts are without power to directly
decide matters over which full discretionary authority has been delegated to
the legislative or executive branch of the government.[52] The determination of probable cause is one
such matter because that authority has been given to the executive branch,
through the DOJ.[53]
It bears stressing that the main
function of a government prosecutor is to determine the existence of probable
cause and to file the corresponding information should he find it to be so. [54] Thus, the decision whether or not to dismiss
the criminal complaint against respondent is necessarily dependent on the sound
discretion of the investigating prosecutor and ultimately, that of the
Secretary of Justice.[55]
A prosecutor, by the nature of his
office, is under no compulsion to file a particular criminal information where
he is not convinced that he has evidence to prop up its averments, or that the
evidence at hand points to a different conclusion. This is not to discount the
possibility of the commission of abuses on the part of the prosecutor. But this Court must recognize that a prosecutor
should not be unduly compelled to work against his conviction. Although the power and prerogative of the
prosecutor to determine whether or not the evidence at hand is sufficient to
form a reasonable belief that a person committed an offense is not absolute but
subject to judicial review, it would be embarrassing for him to be compelled to
prosecute a case when he is in no position to do so, because in his opinion he
does not have the necessary evidence to secure a conviction, or he is not
convinced of the merits of the case.[56]
In finding that respondent’s goods
were not clothed with an appearance which is likely to deceive the ordinary
purchaser exercising ordinary care, the investigating prosecutor exercised the
discretion lodged in him by law. He found
that:
First, the LIVE’S
mark of the respondent’s goods is spelled and pronounced differently from the
LEVI’S mark of the complainant.
Second, the backpocket design allegedly
copied by the respondent from the registered arcuate design of the complainant,
appears to be different in view of the longer curved arms that stretch deep
downward to a point of convergence where the stitches form a rectangle. The
arcuate design for complainant LEVI’s jeans form a diamond instead. And
assuming arguendo that there is
similarity in the design of backpockets between the respondent’s goods and that
of the complainant, this alone does not establish that respondent’s jeans were
intended to copy the complainant’s goods and pass them off as the latter’s
products as this design is simple and may not be said to be strikingly distinct
absent the other LEVI’S trademark such as the prints on the button, rivets,
tags and the like. x x x Further, the presence of accessories bearing Levi’s
trademark was not established as there were no such accessories seized from the
respondent and instead genuine LIVE’S hangtags, button and patches were
confiscated during the search of latter’s premises.
Second, the design of the patches attached to
the backpockets of the respondent’s goods depicts three men on either side of a
pair of jeans attempting to pull apart said jeans, while the goods manufactured
by complainant with patches also attached at the right backpockets depicts two
horses being whipped by two men in an attempt to tear apart a pair of jeans. It is very clear therefore that the design of
the backpocket patches by the respondent is different from that of the
complainant, in the former the men were trying to pull apart the pants while in
the latter horses are the ones doing the job. Obviously, there is a great difference between
a man and a horse and this will naturally not escape the eyes of an ordinary
purchaser.
Third, the manner by which Levi’s jeans are
packed and sold with carton tickets attached to the products cannot be
appropriated solely by complainant to the exclusion of all other manufacturers
of same class. It frequently happens
that goods of a particular class are labeled by all manufacturer[s] in a common
manner. In cases of that sort, no manufacturer may appropriate for himself the
method of labeling or packaging [of] his merchandise and then enjoin other
merchants from using it. x x x.
Fourth, evidence shows that there is a
copyright registration issued by the National Library over the backpocket
design of the respondent. And this copyright registration gives the respondent
the right to use the same in his goods x x x.[57]
The determination of probable cause
is part of the discretion granted to the investigating prosecutor and
ultimately, the Secretary of Justice. Courts
are not empowered to substitute their own judgment for that of the executive
branch.[58]
The court’s duty in an appropriate
case is confined to a determination of whether the assailed executive or
judicial determination of probable cause was done without or in excess of
jurisdiction or with grave abuse of discretion amounting to want of
jurisdiction.[59] For grave abuse of discretion to prosper as a
ground for certiorari, it must be
demonstrated that the lower court or tribunal has exercised its power in an
arbitrary and despotic manner, by reason of passion or personal hostility, and
it must be patent and gross as would amount to an evasion or to a unilateral
refusal to perform the duty enjoined or to act in contemplation of law.[60]
In the case at bar, no grave abuse of
discretion on the part of the DOJ was shown. Petitioner merely harps on the error committed
by the DOJ and the CA in arriving at their factual finding that there is no
confusing similarity between petitioner’s and respondent’s products. While it
is possible that the investigating prosecutor and Secretaries Guingona and
Cuevas erroneously exercised their
discretion when they found that unfair competition was not committed, this by
itself does not render their acts amenable to correction and annulment by the
extraordinary remedy of certiorari. There must be a showing of grave abuse of discretion amounting to
lack or excess of jurisdiction.[61]
We are disinclined to find that grave of abuse of discretion was
committed when records show that the finding of no probable cause is supported
by the evidence, law, and jurisprudence.
Generally, unfair competition
consists in employing deception or any other means contrary to good faith by
which any person shall pass off the goods manufactured by him or in which he
deals, or his business, or services
for those of the one having established goodwill, or committing any acts
calculated to produce such result.[62]
The elements of unfair competition
under Article 189(1)[63]
of the Revised Penal Code are:
(a) That the offender gives his goods the general appearance of the goods
of another manufacturer or dealer;
(b) That the general appearance is shown in the (1) goods themselves, or in
the (2) wrapping of their packages, or in the (3) device or words therein, or
in (4) any other feature of their appearance;
(c) That the offender offers to sell or sells those goods or gives other
persons a chance or opportunity to do the same with a like purpose; and
(d) That there is actual intent to deceive the public or defraud a competitor.[64]
All these elements must be proven.[65] In finding that probable cause for unfair
competition does not exist, the investigating prosecutor and Secretaries
Guingona and Cuevas arrived at the same conclusion that there is insufficient
evidence to prove all the elements of the crime that would allow them to secure
a conviction.
Secretary Guingona discounted the
element of actual intent to deceive by taking into consideration the
differences in spelling, meaning, and phonetics between “LIVE’S” and “LEVI’S,”
as well as the fact that
respondent had registered his own mark.[66] While it is true that there may be unfair
competition even if the competing mark is registered in the Intellectual
Property Office, it is equally true that the same may show prima facie good faith.[67] Indeed, registration does not
negate unfair competition where the
goods are packed or offered for sale and passed off as those of complainant.[68] However, the mark’s registration, coupled with
the stark differences between the competing marks, negate the existence of
actual intent to deceive, in this particular case.
For his part, Justice Cuevas failed
to find the possibility of confusion and of intent to deceive the public,
relying on Emerald Garment Manufacturing
Corporation v. Court of Appeals.[69] In Emerald,
the Court explained that since maong pants or jeans
are not inexpensive,
the casual buyer is more cautious and discerning and would prefer to mull over
his purchase, making confusion and deception less likely.
We cannot subscribe to petitioner’s
stance that Emerald Garment cannot
apply because there was only one point of comparison, i.e., “
The rule laid down in Emerald Garment and Del Monte is consistent with Asia
Brewery, Inc. v. Court of Appeals,[71] where
the Court held that in resolving cases of infringement and unfair competition,
the courts should take into consideration several
factors which would affect its conclusion, to wit: the age, training and
education of the usual purchaser, the nature and cost of the article, whether
the article is bought for immediate consumption and also the conditions under
which it is usually purchased.[72]
Petitioner argues that the element of
intent to deceive may be inferred from the similarity of the goods or their
appearance.[73] The argument is specious on two fronts. First,
where the similarity in the appearance of the goods as packed and offered for
sale is so striking, intent to
deceive may be inferred.[74] However, as found by the investigating
prosecutor and the DOJ Secretaries, striking similarity between the competing
goods is not present.
Second, the
confusing similarity of the goods was precisely in issue during the preliminary
investigation. As such, the element of
intent to deceive could not arise
without the investigating
prosecutor’s or the DOJ Secretary’s finding
that such confusing
similarity exists. Since confusing
similarity was not found, the element of fraud or deception could not be
inferred.
We cannot sustain Secretary Bello’s
opinion that to establish probable cause, “it is enough that the respondent
gave to his product the general appearance of the product”[75]
of petitioner. It bears stressing that
that is only one element of unfair competition. All others must be shown to exist. More importantly, the likelihood of confusion
exists not only if there is confusing similarity. It should also be likely to cause confusion or
mistake or deceive purchasers.[76] Thus, the CA correctly ruled that the mere
fact that some resemblance can be pointed out between the marks used does not
in itself prove unfair competition.[77] To reiterate, the resemblance must be such as
is likely to deceive the ordinary purchaser exercising ordinary care.[78]
The consumer survey alone does not
equate to actual confusion. We note that
the survey was made by showing the interviewees actual samples of petitioner’s
and respondent’s respective products, approximately
five feet away from them. From that distance,
they were asked to identify the jeans’ brand and state the reasons for thinking so.[79] This method discounted the possibility that
the ordinary intelligent buyer would be able to closely scrutinize, and even
fit, the jeans to determine if they were “LEVI’S” or not. It also ignored that a consumer would consider
the price of the competing goods when choosing a brand of jeans. It is undisputed that “LIVE’S” jeans are
priced much lower than “LEVI’S.”
The Court’s observations in Emerald Garment are illuminating on this
score:
First, the products involved in the case at
bar are, in the main, various kinds of jeans. x x x Maong pants or jeans are not inexpensive. Accordingly,
the casual buyer is predisposed to be more cautious and discriminating in and
would prefer to mull over his purchase. Confusion and deception, then, is less likely.
In Del
Monte Corporation v. Court of Appeals, we noted that:
… Among
these, what essentially determines the attitudes of the purchaser, specifically
his inclination to be cautious, is the cost of the goods. To be sure, a person who buys a box of candies
will not exercise as much care as one who buys an expensive watch. As a general
rule, an ordinary buyer does not exercise as much prudence in buying an article
for which he pays a few centavos as he does in purchasing a more valuable
thing. Expensive and valuable items are normally bought only after deliberate,
comparative and analytical investigation. But mass products, low priced articles in wide
use, and matters of everyday purchase requiring frequent replacement are bought
by the casual consumer without great care.[80] (Emphasis supplied)
We find
no reason to go beyond the point of sale to determine if there is probable
cause for unfair competition. The CA observations along this line are worth
restating:
We also
find no basis to give weight to petitioner’s contention that the “post sale
confusion” that might be triggered by the perceived similarities between the
two products must be considered in the action for unfair competition against
respondent.
No
inflexible rule can be laid down as to what will constitute unfair competition.
Each case is, in the measure,
a law unto itself. Unfair competition is always a question of fact. The question to be determined in every case is
whether or not, as a matter of fact, the
name or mark used by the defendant has previously come to indicate
and designate plaintiff’s goods, or, to state it in another way, whether
defendant, as a matter of fact, is, by his conduct, passing off defendant’s
goods as plaintiff’s goods or his business as plaintiff’s business. The universal test question is whether the
public is likely to be deceived.
In the case
before us, we are of the view that the probability of deception must be tested
at the point of sale since it is at this point that the ordinary purchaser
mulls upon the product and is likely to buy the same under the belief that he
is buying another. The test of fraudulent simulation is to be found in the
likelihood of deception, or the possibility of deception of some persons in
some measure acquainted with an established design and desirous of purchasing
the commodity with which that design has been associated.[81]
In sum, absent a grave abuse of
discretion on the part of the executive branch tasked with the determination of
probable cause during preliminary investigation, We cannot nullify acts done in
the exercise of the executive officers’ discretion. Otherwise, We shall violate
the principle that the purpose of a preliminary investigation is to secure the
innocent against hasty, malicious and oppressive prosecution, and to protect
him from an open and public accusation of crime, from the trouble, expense and
anxiety of a public trial, and also to protect the State from useless and
expensive trials.[82]
WHEREFORE, the
petition is DENIED and the appealed
Decision of the Court of Appeals AFFIRMED.
SO ORDERED.
RUBEN T. REYES
Associate Justice
WE CONCUR:
CONSUELO
YNARES-SANTIAGO
Associate Justice
Chairperson
MA. ALICIA AUSTRIA-MARTINEZ MINITA V.
CHICO-NAZARIO
Associate Justice
Associate
Justice
ANTONIO EDUARDO
B. NACHURA
Associate Justice
I
attest that the conclusions in the above Decision had been reached in
consultation before the case was assigned to the writer of the opinion of the
Court’s Division.
CONSUELO
YNARES-SANTIAGO
Associate Justice
Chairperson
Pursuant to Section 13, Article VIII of the
Constitution and the Division Chairperson’s Attestation, I certify that the
conclusions in the above Decision had been reached in consultation before the
case was assigned to the writer of the opinion of the Court’s Division.
REYNATO S. PUNO
Chief Justice
[1] Alcaraz
v. Gonzalez, G.R. No. 164715,
[2] Monfort
[3] Under Rule 45 of the 1997 Rules of Civil
Procedure.
[4] Rollo, pp. 95-103. Dated
[5]
[6] LS & Co.’s registered trademarks and trade
names in the
1.
“Levi’s” issued on
2.
“Levi Strauss &
3.
“Arcuate Stitching Design” issued on
4.
“Two Horse Design” issued on
5.
“Two Horse Patch” issued on
6.
“Two Horse Label with Patterned Arcuate
Design” issued on
7.
“Tab Design” issued on
8.
“Composite Mark (Arcuate, Tab, Two Horse
Patch)” issued on
9.
“501” issued on
10. “Levi’s Salmon Ticket & Design” issued on
11. “Levi’s and Device” issued on
[7] Rollo, pp.
25-26.
[8]
[9]
[10]
[11]
[12]
[13]
CA rollo, pp. 71-72.
[14]
Now the Criminal Investigation and Detection Group (CIDG).
[15]
Search Warrant No. 95-757 dated
[16] Pursuant to Search Warrant No. 95-757 implemented at
100 Sacks of Live’s pants (20
pants/sack);
1 Box containing 500 sets of
Live’s buttons;
12 Sacks of Live’s Hangtags (2,000/sack);
2 Sewing Machines; and
2 Riveter Machines.
Pursuant to Search Warrant No. 95-758
implemented at
151 pcs. of unfinished pants with arcuate design;
160 pcs. of finished Westside jeans with arcuate
design;
725 pcs. of Live’s Patches;
520 pcs. of Live’s Buttons;
900 pcs. of
Live’s Rivets;
261 pcs. of
back pocket with arcuate design;
1 Singer
Sewing Machine with SN-U4884707342;
1 Singer
Sewing Machine with SN-U86400783;
1 Juki
Sewing Machine with SN-A555-59278;
1 Juki
Sewing Machine with SN-A555-2-24344;
1 Juki
Sewing Machine with SN-A227-03839;
1 Juki
Sewing Machine with SN-D555-38961; and
1 Riveter.
[17] Rollo, pp. 222-223.
[18]
Through a letter dated
[19]
Entitled
[20]
The Intellectual Property Code of the
[21] Rollo, pp. 282-285.
[22]
Under Certificate of Registration No. 53918 dated
[23]
Covered by Certificate of Copyright Registration No. I-3838 dated
[24]
IPC Case Nos. 4216 and 4217, Bureau of Patents, Trademarks, and Technology
Transfer; and Civil Case No. 96-76944,
[25] Rollo, pp. 282-283.
[26]
[27]
[28]
CA rollo, pp. 4-7. Resolution No. 052, Series of 1998.
[29]
[30] Rollo, pp. 375-404.
[31]
[32]
[33]
[34]
[35]
CA rollo, pp. 8-12.
[36] Rollo, p. 15.
[37]
[38]
[39]
[40] Asia Brewery, Inc. v. Court of Appeals, G.R.
No. 103543,
[41] See Cosmos Bottling Corporation v. National Labor Relations Commission, G.R. No. 146397,
[42]
CA rollo, p. 19.
[43]
As amended by Section 11 of Republic Act No. 9282 entitled “An Act Expanding
the Jurisdiction of the Court of Tax Appeals (
[44] Alcaraz v. Gonzalez, supra note 1, at
529; Orosa v. Roa, G.R. No. 140423,
[45]
Now the 2000 National Prosecution Service Rules on Appeals.
[46] Filadams Pharma, Inc. v. Court of Appeals, G.R.
No. 132422,
[47] Alcaraz v. Gonzalez, supra note 1, at
529.
[48]
See Filadams Pharma, Inc. v. Court of
Appeals, supra note 46.
[49] Alcaraz v. Gonzalez, supra note 1, at
529.
[50]
[51] Public Utilities Department v. Guingona,
Jr., 417 Phil. 798, 805 (2001).
[52]
[53]
See Buan v. Matugas, G.R. No. 161179,
[54] R.R. Paredes v. Calilung, G.R. No.
156055,
[55] Alcaraz v. Gonzalez, supra note 1, at
529.
[56] R.R. Paredes v. Calilung, supra at
395-396.
[57] Rollo, pp. 224-225.
[58] Alcaraz v. Gonzalez, supra note 1, at
529.
[59] First Women’s Credit Corporation v. Baybay, G.R.
No. 166888,
[60] R.R. Paredes v. Calilung, supra note 54,
at 397, citing Sarigumba v.
Sandiganbayan, G.R. Nos. 154239-41,
[61] See
R.R. Paredes v. Calilung, supra note 54,
at 396-397.
[62] Reyes, L., The Revised Penal Code, Book II, 13th ed., p. 264.
[63] Art. 189. Unfair competition, fraudulent registration of trade-mark,
trade-name or service mark, fraudulent designation of origin, and false
description. – The penalty provided in the next proceeding article shall be imposed upon:
1. Any
person who, in unfair competition and for the purposes of deceiving or
defrauding another of his legitimate trade or the public in general, shall sell
his goods giving them the general appearance of goods of another manufacturer
or dealer, either as to the goods themselves, or in the wrapping of the packages in which they are
contained or the device or words thereon or in any other features of their
appearance which would be likely to induce the public to believe that the goods
offered are those of a manufacturer or dealer other than the actual
manufacturer or dealer or shall give other persons a chance or opportunity to
do the same with a like purpose.
[64] Sony Computer Entertainment, Inc. v.
Supergreen, Incorporated, G.R. No. 161823,
[65] Mendoza-Arce v. Office of the Ombudsman
(Visayas), G.R. No. 149148,
[66] CA rollo, p. 73.
[67] Agpalo,
The Law on Trademark, Infringement and Unfair Competition, 2000 ed., pp.
189-190, citing R.F. Alexander & Co.
v. Ang, 97 Phil. 157 (1955); Parke
Davis & Co. v. Kim Foo & Co., 60 Phil. 928 (1934).
[68]
[69]
G.R. No. 100098,
[70]
G.R. No. 78325,
[71] G.R.
No. 103543,
[72]
[73] Rollo, pp. 51-52.
[74]
See note 67, at 190, citing Rueda
Hermanos & Co. v. Felix Paglinawan & Co., 33 Phil. 196 (1916); U.S. v. Gaw Chiong, 23 Phil. 138 (1912);
Inchausti & Co. v. Song Fo & Co.,
21 Phil. 278 (1912).
[75]
CA rollo, p. 459.
[76]
See Societe Des Produits Nestlé, S.A. v.
Court of Appeals, G.R. No. 112012,
[77] Rollo, p. 100.
[78] Pro Line Sports Center, Inc. v. Court of
Appeals, G.R. No. 118192,
[79]
[80] Emerald Garment Manufacturing Corporation v.
Court of Appeals, supra note 69.
[81] Rollo, pp. 101-102.
[82] R.R. Paredes v. Calilung, supra note 54,
at 395.