levi strauss v. clinton apparelle (ip report)
DESCRIPTION
IPTRANSCRIPT
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LEVI STRAUSS & CO., & LEVI STRAUSS (PHILS.), INC. vs.
CLINTON APPARELLE, INC.
G.R. No. 138900 September 20, 2005
BY: JOHN JOEL B. FUENTES LLB 3B
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PARTIES
• LEVI STRAUSS & CO. - foreign corporation duly organized and existing under the laws of the State of Delaware, U.S.A., and engaged in the apparel business and the owner by prior adoption and use since 1986 of the "Dockers and Design" trademark.
• LEVI STRAUSS (PHILS.), INC. - a domestic corporation engaged in the manufacture, sale and distribution of various products bearing trademarks owned by LS & Co. To date, LSPI continues to manufacture and sell Dockers Pants with the "Dockers and Design" trademark.
• CLINTON APPARELLE, INC. – manufacturer of local market of jeans and other apparel under the brand name "Paddocks"
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FACTS• LS & Co. and LSPI filed a complaint for Trademark Infringement, TRO and/or Writ of Preliminary Injunction and Damages against Clinton Apparelle, Inc.* (Clinton Aparelle) together with an alternative defendant, Olympian Garments, Inc. (Olympian Garments), before the Regional Trial Court after they discovered the presence in the local market of jeans under the brand name "Paddocks" which they alleged, using a device which is substantially, if not exactly, similar to the "Dockers and Design" trademark owned by and registered in the name of LS & Co., without its consent.
• A TRO was issued which was neither attended during the hearing by Clinton Apparelle nor Olympian Garments and which Clinton Apparelle claimed that it was not notified of such hearing and that only Olympian Garments allegedly had been issued with summons.
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• The RTC then issued an order granting the writ of preliminary injunction which was opposed by Clinton Apparelle by filing a Motion to Dismiss and a Motion for Reconsideration of the Order granting the writ of preliminary injunction which was subsequently denied by the RTC.
• Clinton Apparelle filed with the Court of Appeals a petition for certiorari, prohibition and mandamus which was granted by the CA.
• The CA said that the TRO had been improperly issued* and that the issuance of the writ of preliminary injunction is questionable.*
• With the denial of Motion for Reconsideration, LS & Co. and LSPI filed a petition for review on certiorari before the SC.
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ISSUE
• WON the issuance of the writ of preliminary injunction by the trial court was proper as regards to the alleged infringement of "Dockers and Design" trademark owned and registered by LS & Co.
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HELD
• NO. SC find that there was scant justification for the issuance of the writ of preliminary injunction.
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• Section 1, Rule 58 of the Rules of Court defines a preliminary injunction as an order granted at any stage of an action prior to the judgment or final order requiring a party or a court, agency or a person to refrain from a particular act or acts.
• Injunction is accepted as the strong arm of equity or a transcendent remedy to be used cautiously as it affects the respective rights of the parties, and only upon full conviction on the part of the court of its extreme necessity.
• An extraordinary remedy, injunction is designed to preserve or maintain the status quo of things and is generally availed of to prevent actual or threatened acts until the merits of the case can be heard.
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• SC further cited Section 3, Rule 58, of the Rules of Court which enumerates the grounds for the issuance of a preliminary injunction:
SEC. 3. Grounds for issuance of preliminary injunction. – A preliminary injunction may be granted when it is established:
• (a) That the applicant is entitled to the relief demanded, and the whole or part of such relief consists in restraining the commission or continuance of the act or acts complained of, or in requiring the performance of an act or acts, either for a limited period or perpetually;
• (b) That the commission, continuance, or non-performance of the act or acts complained of during the litigation would probably work injustice to the applicant; or
• (c) That a party, court, agency or a person is doing, threatening, or is attempting to do, or is procuring or suffering to be done, some act or acts probably in violation of the rights of the applicant respecting the subject of the action or proceeding, and tending to render the judgment ineffectual.
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• A clear and positive right especially calling for judicial protection must be shown.
• Injunction is not a remedy to protect or enforce contingent, abstract, or future rights; it will not issue to protect a right not existing and which may never arise, or to restrain an act which does not give rise to a cause of action. There must exist an actual right. There must be a patent showing by the complaint that there exists a right to be protected and that the acts against which the writ is to be directed are violative of said right.
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• Note the fact that LS & Company’s registered trademark consists of two elements: (1) the word mark "Dockers" and (2) the wing-shaped design or logo. Notably, there is only one registration for both features of the trademark giving the impression that the two should be considered as a single unit.
• Clinton Apparelle’s trademark, on the other hand, uses the "Paddocks" word mark on top of a logo. The two trademarks apparently differ in their word marks ("Dockers" and "Paddocks").
• It could thus be said that Clinton Apparelle only "appropriates" petitioners’ logo and not the word mark "Dockers"; it uses only a portion of the registered trademark and not the whole.
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• Given the single registration of the trademark "Dockers and Design" and considering that Clinton Apparelle only uses the assailed device but a different word mark, the right to prevent the latter from using the challenged "Paddocks" device is far from clear.
• It is not evident whether the single registration of the trademark "Dockers and Design" confers on the owner the right to prevent the use of a fraction in the course of trade. It is also unclear whether the use without the owner’s consent of a portion of a trademark registered in its entirety constitutes material or substantial invasion of the owner’s right.
• It is likewise not settled whether the wing-shaped logo, as opposed to the word mark, is the dominant or central feature of LS & Co. and LSPI’s trademark—the feature that prevails or is retained in the minds of the public—an imitation of which creates the likelihood of deceiving the public and constitutes trademark infringement.
• SC in conclusion held that there are vital matters which have yet and may only be established through a full-blown trial.
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• SC held that petitioners’ right to injunctive relief has not been clearly and unmistakably demonstrated. The right has yet to be determined. LS & Co. and LSPI also failed to show proof that there is material and substantial invasion of their right to warrant the issuance of an injunctive writ. Neither they were able to show any urgent and permanent necessity for the writ to prevent serious damage and that the damages LS & Co. and LSPI had suffered or continue to suffer may be compensated in terms of monetary consideration.
• SC held also that the issued injunctive writ, if allowed, would dispose of the case on the merits as it would effectively enjoin the use of the "Paddocks" device without proof that there is basis for such action. In fact, the assailed injunction if sustained would bring about the result desired by LS & Co. without a trial on the merits.*
• SC found that petitioners did not adequately prove their entitlement to the injunctive writ. In the absence of proof of a legal right and the injury sustained by the applicant, an order of the trial court granting the issuance of an injunctive writ will be set aside for having been issued with grave abuse of discretion. SC DENIED the petition.
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Concept of Trademark Dilution
• LS & Co. and LSPI raised to the Court the urgent necessity for injunctive relief, urging that the erosion or dilution of their trademark is protectable. They assert that a trademark owner does not have to wait until the mark loses its distinctiveness to obtain injunctive relief, and that the mere use by an infringer of a registered mark is already actionable even if he has not yet profited thereby or has damaged the trademark owner.
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• Trademark dilution is the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of: (1) competition between the owner of the famous mark and other parties; or (2) likelihood of confusion, mistake or deception.
• Subject to the principles of equity, the owner of a famous mark is entitled to an injunction "against another person’s commercial use in commerce of a mark or trade name, if such use begins after the mark has become famous and causes dilution of the distinctive quality of the mark." This is intended to protect famous marks from subsequent uses that blur distinctiveness of the mark or tarnish or disparage it.
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Applying this to the present case, to be eligible for protection from dilution, there has to be a finding that: (1) the trademark sought to be protected is famous and distinctive; (2) the use by respondent of "Paddocks and Design" began after the petitioners’ mark became famous; and (3) such subsequent use defames petitioners’ mark.
In the present case, LS & Co. and LSPI have yet to establish whether "Dockers and Design" has acquired a strong degree of distinctiveness and whether the other two elements are present for their cause to fall within the ambit of the invoked protection. The Trends MBL Survey Report which LS & Co. and LSPI presented in a bid to establish that there was confusing similarity between two marks is not sufficient proof of any dilution that the trial court must enjoin.