In a 23-page decision penned by Justice Adolfo Azcuna, the High Court’s First division reversed and set aside the Court of Appeals Aug. 13, 1997 and March 5, 1998 resolutions which enjoined the Makati RTC Branch 1 from proceeding with civil case 96-76944 until the Bureau of Patents, Trademarks and Technology Tranfer (BPTTT) resolved the two cases that Levis had filed before it.
Levis Phils. Inc., filed the cases against Vogue Traders Clothing Co. (Vogues) seeking the cancellation of Vogues trademark registration for Lives and the Lives Label Mark.
Levis Phils. Inc., claimed that Vogues trademark registrations were confusingly similar to Levis trademarks.
In its decision, the SC said that an action for infringement or unfair competition in the regular courts can proceed independently of or simultaneously with an action for the administrative cancellation of a registered trademark in the Bureau of Patents, Trademarks and Technology Transfer,
The High Court said the CA should have outrightly dismissed Vogues petition for certiorari due to its defective certification of non-forum shopping.
The High Court said the CA erred in finding that Vogue deemed to have waived its right to present evidence due to the non-appearance of its counsel on the scheduled hearing date and in considering the matter submitted for resolution based on Levis evidence.
Respondent cannot find solace in its lame excuse of honest mistake which was, in fact, negligence and lack of vigilance the High Court said.
The High Court said the writ of preliminary injunction issued by the trial court did not have the effect of prejuding or disposing of the merits of the case, but merely enjoined Vogues acts of manufacturing, distributing, selling or offering for sale denims or jeans with a design that was substantially, if not exactly, similar to Levis.
The SC also said that Levis act of filing cases against Vogue before the Bureau of Patents, Trademarks and Technology Transfer did not preclude Levis right to include a counterclaim for infringement with a prayer for the issuance of a writ of preliminary injunction in its answer to Vogues complaint for damages.
Court records showed that in February 1996, Vogue filed a complaint for damages against Levis before the Manila RTC Branch 50 following the seizure of its (Vogues) goods by virtue of a search warrant issued by another Manila RTC upon Levis request.
Levis then filed a counterclaim, claiming that Vogues Lives brand infringed upon is licensed brand name.
Upon Levis motion, the case was re-raffled to Manila RTC Branch 1, which was among the courts designated as special courts to try and decide cases involving violations of Intellectual Property Rights.
In December 1996, the Manila RTC found that Vogue intended to appropriate, copy and slavishly imitate the genuine appearance of authentic Levis jeans and pass off its Lives jeans as genuine Levis jeans.
The Manila RTC then issued a writ of preliminary injunction against Vogue.