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G.R. No. 164321 March 23, 2011

SKECHERS, U.S.A., INC. vs. INTER PACIFIC INDUSTRIAL TRADING CORP.

Petitioners claim: Skechers, USA contend that respondents are guilty of

trademark infringement of their registered trademark S (within an oval design).

Respondents claim: they argued that there was no confusing similarity between
petitioners "Skechers" rubber shoes and its "Strong" rubber shoes

Facts: Petitioner filed an application for the issuance of search warrants against an
outlet and warehouse operated by respondents for infringement of trademark under
Section 155, in relation to Section 170 of Republic Act No. 8293, IP Code of the
Philippines. In the course of its business, petitioner has registered the trademark
"SKECHERS" and the trademark "S" (within an oval design) with the IPO. Two search
warrants were issued and more than 6,000 pairs of shoes bearing the S logo were
seized. Respondents moved to quash the warrants arguing that there was no
confusing similarity between petitioners "Skechers" rubber shoes and its "Strong"
rubber shoes. RTC granted the motion and quashed the search warrants. Petitioner
filed a petition for certiorari with the CA which affirmed the decision of the RTC.
Thus, petitioner filed the present petition with the SC assailing that the CA
committed grave abuse of discretion when it considered matters of defense in a
criminal trial for trademark infringement in passing upon the validity of the search
warrant when it should have limited itself to a determination of whether the trial
court committed grave abuse of discretion in quashing the warrants. And that it
committed grave abuse of discretion in finding that respondents are not guilty of
trademark infringement in the case where the sole triable issue is the existence of
probable cause to issue a search warrant.

Issue: whether or not respondent is guilty of trademark 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 highly 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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