Skechers USA v.

Inter Pacific Industrial Trading Corp (2011)

Facts
Skechers already registered the trademark Skechers and the trademark S with an oval design.
Skechers filed an application for the issuance of search warrants against an outlet and warehouse
operated by respondents for infringement of trademark under Sec 155 in relation to Sec. 170 of RA 8293.
RTC issued 2 search warrants.
As a result of the raid, more than 6,000 pairs of shoes bearing the S logo were seized.
Inter Pacifics contention: no confusing similarity between petitioners Skechers rubber shoes and its
Strong rubber shoes.
2002: RTC quashed warrants and returned the seized items -> there were glaring differences such that an
ordinary prudent purchaser would not likely be misled or confused in purchasing the wrong article.
CA: affirmed -> S is not highly identifiable to the products of Skechers alone because its popularly used
like in Superman, the S is enclosed by an inverted triangle.
Both RTC and CA, using the Holistic Test, found that:
o 1. The mark S found in Strong Shoes is not enclosed in an oval design.
o 2. The word Strong is conspicuously placed at the backside and insoles.
o 3. The hang tags and labels attached to the shoes bears the word Strong for respondent and
Skechers U.S.A. for private complainant;
o 4. Strong shoes are modestly priced compared to the costs of Skechers Shoes.

Issue
WON respondents committed trademark infringement. YES

Ratio
The essential element of infringement under R.A. No. 8293 is that the infringing mark is likely to cause
confusion. In determining similarity and likelihood of confusion, jurisprudence has developed tests: the
Dominancy Test and the Holistic or Totality Test.
o The Dominancy Test focuses on the similarity of the prevalent or dominant features of the
competing trademarks that might cause confusion, mistake, and deception in the mind of the
purchasing public. Duplication or imitation is not necessary; neither is it required that the mark
sought to be registered suggests an effort to imitate. Given more consideration are the aural and
visual impressions created by the marks on the buyers of goods, giving little weight to factors like
prices, quality, sales outlets, and market segments.
o The Holistic or Totality Test necessitates a consideration of the entirety of the marks as applied
to the products, including the labels and packaging, in determining confusing similarity. The
discerning eye of the observer must focus not only on the predominant words, but also on the
other features appearing on both labels so that the observer may draw conclusion on whether
one is confusingly similar to the other.
The case of McDonalds Corporation v. L.C. Big Mak Burger, Inc noted two (2) types of confusion, viz.:
o (1) confusion of goods (product confusion), where the ordinarily prudent purchaser would be
induced to purchase one product in the belief that he was purchasing the other; and
o (2) confusion of business (source or origin confusion), where, although the goods of the parties
are different, the product, the mark of which registration is applied for by one party, is such as
might reasonably be assumed to originate with the registrant of an earlier product, and the
public would then be deceived either into that belief or into the belief that there is some
connection between the two parties, though inexistent.
IN THIS CASE: SC applied Dominancy Test -> the use of the stylized S by respondent in its Strong rubber
shoes infringes on the mark already registered by petitioner with the IPO. While it is undisputed that
petitioners stylized S is within an oval design, the dominant feature of the trademark is the stylized S
as it is precisely the stylized S which catches the eye of the purchaser. Thus, even if respondent did not
 use an oval design, the mere fact that it used the same stylized S, the same being the dominant feature
of petitioners trademark, already constitutes infringement.
Re: CAs decision - respondent had used a stylized S which is the same stylized S which petitioner has
a registered trademark for. The letter S used in the Superman logo, on the other hand, has a block-like
tip on the upper portion and a round elongated tip on the lower portion. Accordingly, the comparison
made by the CA of the letter S used in the Superman trademark with petitioners stylized S is not
appropriate to the case at bar.
As can be readily observed by simply comparing petitioners Energy model and respondents Strong
rubber shoes, respondent also used the color scheme of blue, white and gray utilized by petitioner. Even
the design and wavelike pattern of the midsole and outer sole of respondent shoes are very similar to
petitioners shoes, if not exact patterns thereof. At the side of the midsole near the heel of both shoes are
two elongated designs in practically the same location. Even the outer soles of both shoes have the same
number of ridges, five at the back and six in front. On the side of respondents shoes, near the upper part,
appears the stylized S, placed in the exact location as that of the stylized S on petitioners shoes. On
top of the tongue of both shoes appears the stylized S in practically the same location and size.
Moreover, at the back of petitioners shoes, near the heel counter, appears Skechers Sport Trail written
in white lettering. However, on respondents shoes appears Strong Sport Trail noticeably written in the
same white lettering, font size, direction and orientation as that of petitioners shoes. On top of the heel
collar of petitioners shoes are two grayish-white semi-transparent circles. Not surprisingly, respondents
shoes also have two grayish-white semi- transparent circles in the exact same location.
In Converse Rubber Corp. v. Jacinto Rubber & Plastic, if not all the details are identical, as long as the
general appearance of the two products are such that any ordinary purchaser would be deceived, the
imitator should be liable
Withal, the protection of trademarks as intellectual property is intended not only to preserve the goodwill
and reputation of the business established on the goods bearing the mark through actual use over a
period of time, but also to safeguard the public as consumers against confusion on these goods.