B0E: Diaz v. People of The Philippines and Levi Strauss (Phils.), Inc., GR 180677, 18 February 2013, First Division, Bersamin (J)

B0E: Diaz v. People of the Philippines and Levi Strauss (Phils.), Inc.
,
GR 180677, 18 February 2013, First Division, Bersamin [J]
FACTS: The Department of Justice filed 2 Informations in the RTC in Las Piñas City charging Victorio Diaz
with violation of Sec. 155, in relation to Sec. 179 of R.A. No. 8293 (Intellectual Property Code) for
infringement of the registered trademarks particularly LEVI’S 501 jeans. Diaz was alleged to have reproduced,
counterfeited, copied and colorably imitated Levi’s registered trademarks or dominant features thereof such as
the actuate design, two horse brand, two horse patch, two horse label with patterned arcuate design, tab and
composite actuate/tab/two horse patch and sold, offered to sale, manufactured, distributed counterfeit patches
and jeans, including other preparatory steps necessary to carry out the sale of said patches and jeans, which
likely caused confusion, mistake, and/or deceived the general consuming public, without the consent, permit or
authority of the registered owner, Levi’s, thus depriving and defrauding the latter of its right to the exclusive use
of its trademarks and legitimate trade, to the damage and prejudice of Levi’s.
Levi Strauss Philippines, Inc. is a licensee of Levi’s. After receiving information that Diaz was selling
counterfeit Levi’s 501 jeans in his tailoring shops in Almanza and Talon, Las Piñas City, Levi’s Philippines
hired a private investigation group to verify the information. Surveillance and the purchase of jeans from the
tailoring shops of Diaz established that the jeans bought from the tailoring shops of Diaz were counterfeit or
imitations of Levi’s 501. Armed with search warrants, NBI agents searched the tailoring shops of Diaz and
seized several fake Levi’s 501 jeans from them. Levi’s Philippines claimed that it did not authorize the making
and selling of the seized jeans; that each of the jeans were colorable imitations of genuine Levi’s 501 jeans by
each of them bearing the registered trademarks, like the arcuate design, the tab, and the leather patch; and that
the seized jeans could be mistaken for original Levi’s 501 jeans due to the placement of the arcuate, tab, and
two-horse leather patch.
On his part, Diaz admitted being the owner of the shops searched, but he denied any criminal liability. Diaz
stated that he did not manufacture Levi’s jeans, and that he used the label “LS Jeans Tailoring” in the jeans that
he made and sold; that the label “LS Jeans Tailoring” was registered with the Intellectual Property Office; that
his shops received clothes for sewing or repair; that his shops offered made-to-order jeans, whose styles or
designs were done in accordance with instructions of the customers; that since the time his shops began
operating in 1992, he had received no notice or warning regarding his operations; that the jeans he produced
were easily recognizable because the label “LS Jeans Tailoring,” and the names of the customers were placed
inside the pockets, and each of the jeans had an “LSJT” red tab; that “LS” stood for “Latest Style;” and that the
leather patch on his jeans had two buffaloes, not two horses.
ISSUE(S): Whether there exists a likelihood of confusion between the trademarks of Levi’s and Diaz.
RULING: NO. The Court held, through the application of the holistic test, that there was no likelihood of
confusion between the trademarks involved. Accordingly, the jeans trademarks of Levi’s Philippines and Diaz
must be considered as a whole in determining the likelihood of confusion between them. The maongpants or
jeans made and sold by Levi’s Philippines, which included LEVI’S 501, were very popular in the Philippines.
The consuming public knew that the original LEVI’S 501 jeans were under a foreign brand and quite expensive.
Such jeans could be purchased only in malls or boutiques as ready-to-wear items, and were not available in
tailoring shops like those of Diaz’s as well as not acquired on a “made-to-order” basis. Under the
circumstances, the consuming public could easily discern if the jeans were original or fake LEVI’S 501, or were
manufactured by other brands of jeans.
Diaz used the trademark “LS Jeans Tailoring” for the jeans he produced and sold in his tailoring shops. His
trademark was visually and aurally different from the trademark “LEVI STRAUSS & CO” appearing on the
patch of original jeans under the trademark LEVI’S 501. The word “LS” could not be confused as a derivative
from “LEVI STRAUSS” by virtue of the “LS” being connected to the word “tailoring”, thereby openly
suggesting that the jeans bearing the trademark “LS Jeans Tailoring” came or were bought from the tailoring
shops of Diaz, not from the malls or boutiques selling original LEVI’S 501 jeans to the consuming public.
The prosecution also alleged that the accused copied the “two horse design” of the petitioner-private
complainant but the evidence will show that there was no such design in the seized jeans. Instead, what is
shown is “buffalo design.” Again, a horse and a buffalo are 2 different animals which an ordinary customer can
easily distinguish.
The prosecution further alleged that the red tab was copied by the accused. However, evidence will show that
the red tab used by the private complainant indicates the word “LEVI’S” while that of the accused indicates the
letters “LSJT” which means LS Jeans Tailoring. Again, even an ordinary customer can distinguish the word
LEVI’S from the letters LSJT.
In terms of classes of customers and channels of trade, the jeans products of the private complainant and the
accused cater to different classes of customers and flow through the different channels of trade. The customers
of the private complainant are mall goers belonging to class A and B market group – while that of the accused
are those who belong to class D and E market who can only afford Php 300.00 for a pair of made-to-order
pants.
Moreover, based on the certificate issued by the Intellectual Property Office, “LS Jeans Tailoring” was a
registered trademark of Diaz. He had registered his trademark prior to the filing of the present cases. The
IPOPHL would certainly not have allowed the registration had Diaz’s trademark been confusingly similar with
the registered trademark for LEVI’s “501” jeans.
Thus, the Supreme Court acquitted as there is no likelihood of confusion between the expensive boutique brand
as against the locally cheaper custom-made denims of the supposed copycat.

B0E: Diaz v. People of The Philippines and Levi Strauss (Phils.), Inc., GR 180677, 18 February 2013, First Division, Bersamin (J)

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