Published 26 July 2021, The Daily Tribune
Following the recent case of Kolin Electronics Co. Inc. vs Kolin Philippines International Inc., GR 228165, 9 February 2021, which abandoned the Holistic Test, the Supreme Court applied the dominancy test in resolving the issue of confusing similarity between LEVI’S vs. LIVE’S, both trademarks for jeans.
In Levi Strauss & Co. vs Sevilla, GR 219744, 1 March 2021, the petitioner is the foreign corporation Levi Strauss & Co., which owns the foreign brand “Levi’s,” and which granted Levi Strauss Phils. Inc. (LSPI), a non-exclusive license to use its foreign brand here in the Philippines. Meanwhile, Antonio Sevilla (Sevilla) and Antonio L. Guevarra (together, the “respondents”) are the registered owners of the trademark LIVE’S.
LSPI then commissioned a consumer survey codenamed “Project Cherokee 5” to determine if the general public had mistaken marks used by other entities (such as LIVE’s mark) for that of petitioner’s marks.
The Final Report on Project Cherokee 5 confirmed that the public indeed strongly identified the “LEVI’S” mark with that of respondents’ mark, further revealing that 86 percent of the survey participants associated the “LIVE’S” mark with “LEVI’S;” and 90 percent of said survey participants read the stylized “LIVE’S” mark, i.e., as “LEVI’S.”
Consequently, petitioner filed before the then-Bureau of Patents, Trademarks and Technology Transfer (BPTTT, now the Intellectual Property Office) a Petition for Cancellation of the trademark LIVE’S essentially on the ground that it is confusingly similar with petitioner’s “LEVI’S” mark. Respondents countered that there are sufficient differences between the subject marks and that the purchasers of goods give due attention when they are purchasing.
The IPO-BLA and IPO-DG denied the petition for cancellation finding no confusing similarity between the two marks. Aggrieved, the petitioner elevated the case before the Court of Appeals (CA).
The CA dismissed the petition for being moot and academic as the respondents have assigned their rights over the LIVE’S mark to a third person.
Applying the Dominancy Test in the case at bar, the Supreme Court reversed the ruling of the CA and granted the petition for cancellation of the trademark LIVE’S, where it ratiocinated, that seeing the dominant features of the two marks which both comprise of word marks and stylized marks, there is likelihood of confusion between petitioner’s “LEVI’S” marks and respondents’ mark.
From the foregoing, it is thus readily apparent that although petitioner’s and respondents’ marks are neither spelled identically nor pronounced in the same way, nor possess the same meaning, they both begin with the same letter and are in the possessive form as denoted by the apostrophe before the letter “S” at the end, with only the second and fourth letters rearranged.
Simply put, respondents’ mark is but a mere anagram of petitioner’s “LEVI’S” marks. It would not be far-fetched to imagine that a buyer, when confronted with such striking similarity would be led to confuse one over the other.
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