Where there is no trademark infringement

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Persida Acosta

Persida Acosta

Dear PAO,
I have been a tailor since 20 years ago and have been known for making tailor-fit jeans. This is my passion. I have registered my business and the LEJI Sewn logo with a local “kalabaw” watermark, considering that I use the said animal’s skin for the back patch of my jeans. Lately, one of my customer’s friend, who happened to accompany the former in my shop, said I can be sued by a popular jeans company due to the similarity of our names and logos. I was alarmed, because I never intended to imitate the said brand as my name is really Leji and Sewn is just a mark I want to put after my name. Likewise, the “kalabaw” watermark is just to symbolize that the maker of the jeans (product) is a Filipino, since the same is one of our national symbols.

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My jeans are way cheaper than the products made by the popular company. I distribute mine mostly in bazaars or “tiangge”. I am too afraid to be implicated in a trademark suit, especially now that I have distributed many of my products in bazaars nationwide due to the holiday season. May I be held liable for trademark infringement as said by my customer’s friend?

Sincerely yours,
LJ

Dear LJ,
A situation similar to yours had already been ruled upon by the Supreme Court speaking through the Honorable Associate Justice Lucas P. Bersamin in the case of Victorio Diaz v. People of the Philippines and Levi Strauss (Phils.) Inc. (G.R. No. 180677, 18 February 2013), where the alleged infringer was acquitted using the holistic test and by analyzing, thus:

First, the products involved in the case at bar are, in the main, various kinds of jeans. These are not your ordinary household items like catsup, soy sauce or soap which are of minimal cost. Maong pants or jeans are not inexpensive. Accordingly, the casual buyer is predisposed to be more cautious and discriminating in and would prefer to mull over his purchase. Confusion and deception, then, is less likely. In Del Monte Corporation v. Court of Appeals, we noted that:

….Among these, what essentially determines the attitudes of the purchaser, specifically his inclination to be cautious, is the cost of the goods. To be sure, a person who buys a box of candies will not exercise as much care as one who buys an expensive watch. As a general rule, an ordinary buyer does not exercise as much prudence in buying an article for which he pays a few centavos as he does in purchasing a more valuable thing. Expensive and valuable items are normally bought only after deliberate, comparative and analytical investigation. But mass products, low priced articles in wide use, and matters of everyday purchase requiring frequent replacement are bought by the casual consumer without great care….

Second, like his beer, the average Filipino consumer generally buys his jeans by brand. He does not ask the sales clerk for generic jeans but for, say, a Levis, Guess, Wrangler or even an Armani. He is, therefore, more or less knowledgeable and familiar with his preference and will not easily be distracted.

Finally, in line with the foregoing discussions, more credit should be given to the “ordinary purchaser.” Cast in this particular controversy, the ordinary purchaser is not the “completely unwary consumer” but is the “ordinarily intelligent buyer” considering the type of product involved.

The Supreme Court likewise added:

The definition laid down in Dy Buncio v. Tan Tiao Bok is better suited to the present case. There, the “ordinary purchaser” was defined as one “accustomed to buy, and therefore to some extent familiar with, the goods in question. The test of fraudulent simulation is to be found in the likelihood of the deception of some persons in some measure acquainted with an established design and desirous of purchasing the commodity with which that design has been associated. The test is not found in the deception, or the possibility of deception, of the person who knows nothing about the design which has been counterfeited, and who must be indifferent between that and the other. The simulation, in order to be objectionable, must be such as appears likely to mislead the ordinary intelligent buyer who has a need to supply and is familiar with the article that he seeks to purchase.

Thus, in your situation, the fact that your markings in the jeans you have manufactured, including the price you have it sold for, are far different than that of the popular jeans company, it is less likely that you will be held liable for trademark infringement. Hence, for as long as you do not intend to water down the sales of the said company by riding on its popularity and that you do not deceive others through the use of your logo which should not be similar to the high-end ones, you may not have any liability and/or violation under the Trademark Infringement Law for pursuing your passion.

Again, we find it necessary to mention that this opinion is solely based on the facts you have narrated and our appreciation of the same. The opinion may vary when the facts are changed or elaborated.

We hope that we were able to enlighten you on the matter.

Editor’s note: Dear PAO is a daily column of the Public Attorney’s Office. Questions for Chief Acosta may be sent to dearpao@manilatimes.net.

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