Sambar - v - Levi Strauss and Co.

Facts:

1.       In 1987, respondents demanded that CVS Garment Enterprises (CVSGE) desist from using their stitched arcuate design on the Europress jeans which CVSGE advertised in the Manila Bulletin.

2.       Atty. Gruba, (counsel of CVSGE), replied that the arcuate design on the back pockets of Europress jeans was different from the design on the back pockets of Levis jeans and that his client had a copyright on the design it was using.

3.       Respondents filed a complaint against Sambar, doing business under the name and style of CVSGE and impleaded the Director of the National Library. 

4.       Atty. Gruba claimed that he erroneously received the original summons as he mistook it as addressed to his client – CVSGIC (which took over the premises when CVSGE stopped operation) and that he did not know the whereabouts of Sambar.

5.       Respondents amended their complaint to include CVSGIC and revived the case when they learned the whereabouts of Sambar. They alleged:

a.        Levi Strauss and Co. (LS&Co.), an internationally known clothing manufacturer, owns the arcuate design trademark which was registered under U.S. Trademark Registration in 1943, and in the Principal Register of trademarks with the Philippine Patent Office in 1973

b.       That through a Trademark Technical Data and Technical Assistance Agreement with Levi Strauss (Phil.) Inc. (LSPI) in 1972, LS&Co. granted LSPI a non-exclusive license to use the arcuate trademark in its manufacture and sale of Levis pants, jackets and shirts in the Philippines;

c.        In 1983, LS&Co. appointed LSPI as its agent and attorney-in-fact to protect its trademark in the Philippines

d.       In 1987, CVSGIC and Venancio Sambar, without their consent and authority and in infringement and unfair competition, sold and advertised, and despite demands to cease and desist, continued to manufacture, sell and advertise denim pants under the brand name Europress with back pockets bearing a design similar to the arcuate trademark of private respondents, thereby causing confusion on the buying public, prejudicial to private respondents goodwill and property right.

6.       CVSGIC admitted manufacturing and selling denim pants under the brand name of Europress but denied that there was infringement or unfair competition because:

a.        the display rooms of department stores where Levis and Europress jeans were sold, were distinctively segregated by billboards and other modes of advertisement

b.       public would not be confused on the ownership of such known trademark as Levis, Jag, Europress, etc. 

c.        CVSGIC had its own original arcuate design, as evidenced by Copyright Registration No. 1-1998, which was very different and distinct from Levis design

7.       Petitioner Sambar filed a separate answer:

a.        denied he was connected with CVSGIC,

b.       admitted that Copyright Registration No. 1-1998 was issued to him but he denied using it.

c.        he did not authorize anyone to use the copyrighted design.

8.       RTC ruled in favor of respondents and the ruling was affirmed by the CA.

9.       Hence, this petition.

Issue: Whether or not petitioner infringed on respondent’s arcuate design.

Held: Court affirms decision of CA but modified on damages.

Arguments in the CA:

Petitioner

Respondent

-          no colorable imitation which deceived or confused the public -          the public was not confused because Levis jeans had other marks not found in Europress -          Levis long history and popularity made its trademark easily identifiable by the public

-          backpocket design of Europress jeans, a double arc intersecting in the middle was the same as Levis mark, also a double arc intersecting at the center -          infringement of trademark did not require exact similarity -          Colorable imitation enough to cause confusion among the public, was sufficient for a trademark to be infringed -          in a market research with 600 respondents, the result showed that the public was confused by Europress trademark vis the Levis trademark

-          The first issue raised by petitioner is factual. The basic rule is that factual questions are beyond the province of the SC in a petition for review. Although there are exceptions to this rule, this case is not one of them. No reason to disturb the findings of the CA that Europress use of the arcuate design was an infringement of the Levis design.

Notes (other relevant issue):

Whether or not respondents are entitled to nominal, temperate and exemplary damages and cancellation of petitioners copyright.

-          Lower courts found that there was infringement and Levis was entitled to damages based on Sections 22 and 23 of RA No. 166 otherwise known as the Trade Mark Law, as amended, which was the law then governing.

-          Said sections define infringement and prescribe the remedies therefor.

-          While there may be no direct proof that they suffered a decline in sales, damages may still be measured based on a reasonable percentage of the gross sales of the respondents, pursuant to Section 23 of the Trademark law.

-          Both the RTC and the CA found there was infringement. Thus, the award of damages and cancellation of petitioners copyright are appropriate. Award of damages is clearly provided in Section 23, while cancellation of petitioners copyright finds basis on the fact that the design was a mere copy of that of respondents trademark. 

-          To be entitled to copyright, the thing being copyrighted must be original, created by the author through his own skill, labor and judgment, without directly copying or evasively imitating the work of another.

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