LEVI STRAUSS & CO. v.
ANTONIO SEVILLA & clear that the Holistic Test in determining trademark
ANTONIO GUEVARRA resemblance has been abandoned.
G.R. No. 219744 | March 1, 2021
Second Division | Perlas-Bernabe, J. Hence, the Dominancy Test must be used in
determining the existence of confusing similarity
FACTS: Levi Strauss & Co. is the owner of the word between the "LEVI'S" and LIVE'S marks.
mark “LEVI’S” since 1946. Levi Strauss & Co. granted
Levi Strauss Phils., Inc. (LSPI) a non-exclusive license to IN THIS CASE: The dominant feature of Levi Strauss &
use its registered trademarks for the manufacture and Co.'s "LEVI'S" marks is the word "levi's" composed of
sale of goods in the Philippines. five (5) letters, namely "L", "E", "V", "I", and "S" with an
apostrophe separating the fourth and fifth letters.
On the other hand, Sevilla was the original registrant of Notably, for Levi Strauss & Co.’s stylized marks, the
the mark “LIVE’S.” Later, Sevilla assigned his rights letter "E" is in lowercase format with the rest in
over the “LIVE’S” mark to Guevarra, doing business uppercase format.
under the name and style “Vogue Traders Clothing
Company.” On the other hand, the dominant feature of Sevilla &
Guevarra's LIVE'S stylized mark is the word "live's" also
LSPI commissioned a consumer survey codenamed composed of the same five (5) letters; and its only
“Project Cherokee 5” in order to determine if the difference with Levi Strauss & Co's marks is that the
general public had mistook marks used by other positioning of the letters "E" and "I" are interchanged.
entities for that of Levi Strauss & Co.’s marks. The Final Furthermore, Sevilla & Guevarra's mark also depicts
Report on the said survey confirmed that the public the letter "E" in lowercase format with the rest in
indeed strongly identified Levi Strauss & Co.’s mark uppercase format.
with that of Sevilla & Guevarra’s “LIVE’S” mark.
From the foregoing, it is thus readily apparent that
Levi Strauss & Co. filed before the Bureau of Patents, although Levi Strauss & Co. and Sevilla & Guevarra’s'
Trademarks, and Technology Transfer (BPTTT, now the marks are neither spelled identically nor pronounced in
IPO) a Petition for Cancellation of the trademark the same way, nor possess the same meaning, they
“LIVE’S” on the ground that “LIVE’S is confusingly both begin with the same letter and are in the
similar with Levi Strauss & Co.’s “LEVI’S” mark. possessive form as denoted by the apostrophe before
the letter "S" at the end, with only the second and
ISSUE: Whether Guevarra’s “LIVE’S” mark is fourth letters rearranged.
confusingly similar with Levi Strauss & Co.’s “LEVI’S”
mark. Simply put, Sevilla & Guevarra’s LIVE'S mark is but a
mere anagram of Levi Strauss & Co.'s "LEVI'S" marks. It
RULING: YES. Sevilla & Guevarra’s “LIVE’S” mark is would not be farfetched to imagine that a buyer, when
confusingly similar with Levi Strauss & Co.’s “LEVI’S” confronted with such striking similarity would be led to
marks; and hence must be ordered cancelled. confuse one over the other.
Jurisprudence has developed two (2) tests to aid the Thus, by simply applying the Dominancy Test, it can
Court in ascertaining the existence of similarity and already be concluded that there is a likelihood of
likelihood of confusion, namely, the Dominancy Test , confusion between the "LEVI'S" marks and the “LIVE'S
and the Holistic or Totality Test. mark.”
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. xxx 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."
On the other hand, 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."
However, in the recent En Banc ruling of the Court in
Kolin Electronics Co., Inc. v. Kolin Philippines
International, Inc. (2021), the Court made it crystal
