160. Levi Strauss & Co. v. Clinton Apparelle, Inc.

GR No. 138900, September 20, 2005

DOCTRINE

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 began after the petitioners’ mark became famous; and (3) such
subsequent use defames petitioners’ mark. 

FACTS

 LS & Co., a foreign corporation organized under the laws of the State of Delaware, U.S.A., and engaged in the
apparel business, is the owner since 1986 of the internationally famous "Dockers and Design" trademark. This
ownership is evidenced by its valid and existing registrations in various member countries of the Paris Convention.
 In the Philippines, it has a Certificate of Registration in the Principal Register for use of said trademark on pants,
shirts, blouses, skirts, shorts, sweatshirts and jackets under Class 25.
 The "Dockers and Design" trademark was first used in the Philippines in or about May 1988, by LSPI, a domestic
corporation engaged in the manufacture, sale and distribution of various products bearing trademarks owned by LS
& Co. LSPI continues to manufacture and sell Dockers Pants with the "Dockers and Design" trademark.
 LS & Co. and LSPI alleged that they discovered the presence in the local market of jeans under the brand name
"Paddocks" 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.
 Clinton Apparelle manufactured and continues to manufacture such "Paddocks" jeans and other apparel.
 Levi’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 which according
to petitioners is a slavish imitation of the "Dockers" design.
 The two trademarks apparently differ in their word marks ("Dockers" and "Paddocks"), but again according to
petitioners, they employ similar or identical logos.

ISSUE WON there was infringement

HELD No

Respondent only "appropriates" petitioners’ logo and not the word mark "Dockers"; it uses only a portion of the
registered trademark and not the whole. Given the single registration of the trademark "Dockers and Design" and
considering that respondent 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 thereof in the course of
trade.

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.

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 case at bar, petitioners 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 petitioners failed to establish such fact.