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    Levi Strauss v. Clinton

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    gailacd
    The Supreme Court ruled that an injunction was not a valid remedy in this trademark infringement case. While Levi Strauss alleged that Clinton Apparelle infringed on its "Dockers and Design" trademark by manufacturing jeans under the similar "Paddocks" brand, the Court found that Levi Strauss did not clearly demonstrate its rights. There were uncertainties regarding whether the registration covered use of just the logo alone and whether this created a likelihood of confusion. Levi Strauss also did not prove that an injunction was urgently needed to prevent serious harm, or that the trademark had acquired distinctiveness necessary to claim dilution. The issues required determination at a full trial, so an injunction was not justified.

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    Levi Strauss v. Clinton

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    gailacd
    157 views3 pages
    The Supreme Court ruled that an injunction was not a valid remedy in this trademark infringement case. While Levi Strauss alleged that Clinton Apparelle infringed on its "Dockers and Design" trademark by manufacturing jeans under the similar "Paddocks" brand, the Court found that Levi Strauss did not clearly demonstrate its rights. There were uncertainties regarding whether the registration covered use of just the logo alone and whether this created a likelihood of confusion. Levi Strauss also did not prove that an injunction was urgently needed to prevent serious harm, or that the trademark had acquired distinctiveness necessary to claim dilution. The issues required determination at a full trial, so an injunction was not justified.

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    The Supreme Court ruled that an injunction was not a valid remedy in this trademark infringement case. While Levi Strauss alleged that Clinton Apparelle infringed on its "Dockers and Design" trademark by manufacturing jeans under the similar "Paddocks" brand, the Court found that Levi Strauss did not clearly demonstrate its rights. There were uncertainties regarding whether the registration covered use of just the logo alone and whether this created a likelihood of confusion. Levi Strauss also did not prove that an injunction was urgently needed to prevent serious harm, or that the trademark had acquired distinctiveness necessary to claim dilution. The issues required determination at a full trial, so an injunction was not justified.

    Copyright:

    © All Rights Reserved
    Download as DOCX, PDF, TXT or read online from Scribd
    Download as docx, pdf, or txt
    157 views3 pages

    Levi Strauss v. Clinton

    Uploaded by

    gailacd
    The Supreme Court ruled that an injunction was not a valid remedy in this trademark infringement case. While Levi Strauss alleged that Clinton Apparelle infringed on its "Dockers and Design" trademark by manufacturing jeans under the similar "Paddocks" brand, the Court found that Levi Strauss did not clearly demonstrate its rights. There were uncertainties regarding whether the registration covered use of just the logo alone and whether this created a likelihood of confusion. Levi Strauss also did not prove that an injunction was urgently needed to prevent serious harm, or that the trademark had acquired distinctiveness necessary to claim dilution. The issues required determination at a full trial, so an injunction was not justified.

    Copyright:

    © All Rights Reserved
    Download as DOCX, PDF, TXT or read online from Scribd
    Download as docx, pdf, or txt
    of 3

    LEVI STRAUSS & CO., & LEVI STRAUSS (PHILS.) v. CLINTON APPARELLE, INC.

    ,
    G.R. No. 138900, September 20, 2005
    NAZARIO, JJ.

    Levi Strauss & Co (L.S. & Co) and Levi Strauss Philippines (Levi) filed a complaint for
    Trademark Infringement, Injunction and Damages against Clinton Apparelle (Clinton) and
    Olympian Garments (Olympian) alleging that the defendants manufacture in the local market
    jeans under the brand name “Paddocks” using a device which is substantially, if not exactly,
    similar to their “Dockers and Design” trademark which was owned and registered with the
    petitioners, without their consent. The petitioners’ ownership of the trademark is evidenced by its
    valid and existing registrations in various member countries of the Paris Convention including its
    registration in the Philippines.

    For the absence and/or failure of Clinton and Olympian to attend the hearing for the case, the
    trial court issued a TRO in favor of Levi. Thereafter, the issuance of a writ of preliminary
    injunction was granted in favor of Levi. However, the Court of Appeals reversed the decision of
    the trial court and granted the petition of Clinton for certiorari, prohibition and mandamus with
    prayer for the issuance of a temporary restraining order and/or writ of preliminary injunction.

    For its defense, Clinton maintain that it was not validly served with summons since the same was
    only served upon Olympian, hence the TRO was void. It likewise contented that there was no
    confusion between the two marks and that the erosion of petitioners’ trademark may not be
    protected by injuction.

    ISSUE:
    Whether or not injunction is a valid remedy in the case at bar.

    RULING:
    NO. For an injunction to lie, 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 in esse 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.

    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. It may be
    resorted to only by a litigant for the preservation or protection of his rights or interests and for no
    other purpose during the pendency of the principal action. It is resorted to only when there is a
    pressing necessity to avoid injurious consequences, which cannot be remedied under any
    standard compensation.
    In the case at bar, petitioners 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 Apparelles 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. It could thus be said that 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. Stated otherwise, 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. 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 owners right.
     
    It is likewise not settled whether the wing-shaped logo, as opposed to the word mark, is the
    dominant or central feature of petitioners’ 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. In sum, there are vital matters which have yet and may only
    be established through a full-blown trial.
     
    From the above discussion, we find that petitioners right to injunctive relief has not been clearly
    and unmistakably demonstrated. The right has yet to be determined. Petitioners also failed to
    show proof that there is material and substantial invasion of their right to warrant the issuance of
    an injunctive writ. Neither were petitioners able to show any urgent and permanent necessity for
    the writ to prevent serious damage.

    The issue of Trademark Dilution was also discussed in the case.

    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 persons 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.
     
    Based on the foregoing, 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 Trends MBL Survey
    Report which petitioners 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.

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