Skechers, U.S.A. vs.

Inter Pacific Industrial Trading Corporation, (ito

ung case na may morales sa title muchy ko about infringement din)
FACTS: Petitioner
Skechers
USA
has registered the
trademark "Skechers" and the trademark"S" (with an oval design)
with the IPO. Pursuant to a search warrant, more than 6,000 pairs of
shoes bearing the "S" logo were seized. Respondents moved to
quash the search warrant arguing that there was no confusing
similarity between petitioner's "Skechers" rubber shoes and its
"Strong" rubber shoes. RTC applying the Holistic Test ordered the
quashing of the warrant which was affirmed by the CA. RTC noted
the following differences: 1) the mark "S" is not enclosed in an oval
design; 2) the hang tags and labels bear the word "Strong" for
respondent and "Skechers USA" for petitioner; 3) Strong shoes are
modestly priced compared to Skechers shoes.

ISSUE: Whether or not respondents are guilty of 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 higly likely. Registeredtrademark 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.
Q: What constitutes infringement of patent?

A:1.Making, using, offering for sale, selling or importing a patented

product or a product obtained directly or indirectly from a patented
process; or
2.Use of a patented process without authorization of the owner of
the patent (Sec. 76, IPC)
Q: What are the tests in patent infringement?
A: 1. Literal infringement Test Resort must be had, in the first
instance, to words of the claim. If the accused matter clearly falls
within the claim, infringement is committed.
Minor modifications are sufficient to put the item beyond literal
infringement. (Godines v. CA, G.R. No. L97343, Sept. 13, 1993)
2. Doctrine of Equivalents There is infringement where a device
appropriates a prior invention by incorporating its innovative
concept and, although with some modification and change, performs
substantially the same function in substantially the same way to
achieve substantially the same result. (Ibid.)
3. Economic interest test when the processdiscoverers economic
interest are compromised, i.e., when others can import the products
that result from the process, such an act is said to be prohibited.
Q: What are the remedies of the owner of the patent against
infringers?
A: 1. Civil action for infringement The owner may bring a civil
action with the appropriate Regional Trial Court to recover from
infringer the damages sustained by the former, plus attorneys fees
and other litigation expenses, and to secure an injunction for the
protection of his rights.
2. Criminal action for infringement If the infringement is repeated,
the infringer shall be criminally liable and upon conviction, shall
suffer imprisonment of not less than six (6) months but not more
than three (3) years and/or a fine not less than P100,000.00 but not
more than P300,000.00
3. Administrative remedy Where the amount of damages claimed
is not less than P200,000.00, the patentee may choose to file an
administrative action against the infringer with the Bureau of Legal
Affairs (BLA). The BLA can issue injunctions, direct infringer to pay
patentee damages, but unlike regular courts, the BLA may not issue
search and seizure warrants or warrants of arrest.
Q: What are the defenses in an action for infringement?
A: 1. Invalidity of the patent; (Sec. 81, IPC);
2. Any of the grounds for cancellation of patents:
a. That what is claimed as the invention is not new or patentable
b. That the patent does not disclose the invention in a manner
sufficiently clear and complete for it to be carried out by any person
skilled in the art; or

c. That the patent is contrary to public order or morality. (Sec. 61,

IPC)
Q: What is a voyage charter?
A: A voyage charter is a contract wherein the ship was leased for a
single voyage for the conveyance of goods, in consideration of the
payment of freight. The shipowner retains the possession, command
and navigation of the ship, the charterer merely having use of the
space in the vessel in return for his payment of freight. An owner
who retains possession of the ship remains liable as carrier and
must answer for loss or nondelivery of the goods received for
transportation. (Cebu Salvage Corp. vs. Philippine Home
Assurance Corp., G.R. No. 150403, Jan. 25, 2007

Q: Who is the shipowner of a vessel?

A: The person in possession, management, control over the vessel,
and the right to direct her navigation. While in their possession, the
ship owners also receive freight earned and paid.
Q: Who is a ship agent?
A: The person entrusted with provisioning or representing the vessel
in the port in which it may be found. Hence, whether acting as agent
of the owner of the vessel or as agent of the charterer, he will be
considered as the ship agent and may be held liable as such, as long
as he is the one that provisions or represents the vessel.
(Macondray & Co., Inc. v. Provident Insurance Corp, G.R. No. 154305,
Dec. 9, 2004)
Cram Down Priciple
The court may confirm the plan, notwithstanding the rejection of the
rehabilitation plan, if all the following circumstances are present:
(1) the Rehabilitation Receiver recommends its confirmation;
(2) the Shareholders or owners of the Debtor lose at least their
controlling
interest as a result of the Rehabilitation Plan; and
(3) the Rehabilitation Plan would likely provide the objecting class of
Creditors with compensation which has a net present value greater
than that which they would have received if under Liquidation.
5. Out-of-Court or Informal Restructuring Agreements or
Rehabilitation
Plans