Friday, January 15, 2016

Skechers, U.S.A. vs. Inter Pacific Industrial Trading Corporation, [GR No. 164321, March 23, 2011]

FACTS: Petitioner Skechers USA has registered the trademark "Skechers" and the trademark "S" (with an oval design) with the IPO. Pursuant to a search warrant, more than 6,000 pairs of shoes bearing the "S" logo were seized. Respondents moved to quash the search warrant arguing that there was no confusing similarity between petitioner's "Skechers" rubber shoes and its "Strong" rubber shoes. RTC applying the Holistic Test ordered the quashing of the warrant which was affirmed by the CA. RTC noted the following differences: 1) the mark "S" is not enclosed in an oval design; 2) the hang tags and labels bear the word "Strong" for respondent and "Skechers USA" for petitioner; 3) Strong shoes are modestly priced compared to Skechers shoes.

ISSUE: Whether or not respondents are guilty of Infringement

RULING: Yes. Applying the Dominancy Test, even if respondents did not use the oval design, the mere fact that it used the same stylized "S" (same font and size of the lettering) the same being the dominant feature of petitioner's trademark constitutes infringement. Applying the Holistic Test, the dissimilarities between the shoes are too trifling and frivolous that it is indubitable that respondent's products will cause confusion and mistakes in the eyes of the public. Respondent's shoes may not be an exact replica of the petitioner's shoes, but the features and overall design are so similar and alike that confusion is higly likely. Registered trademark owner may use its mark on the same or similar products, in different segments of the market, and at different price levels depending on variations of the products for specific segments of the market. The purchasing public might be mistaken in thinking that petitioner had ventured into a lower market segment which scenario is plausible especially since both petitioner and respondent manufacture rubber shoes.

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