In 1995 Levi Strauss (Philippines) Inc filed a criminal complaint on unfair competition against Tony Lim, which went all the way up to the Supreme Court as case GR no 162311. The Supreme Court issued its decision on December 4 2008, holding that the trade mark Levi's is not confusingly similar to Live's and that the elements of unfair competition were not proven. On the procedural aspect, the case was also dismissible because the remedy chosen by Levi Strauss was the wrong mode of appeal.

During the preliminary investigation, Tony Lim alleged that his products bearing the Live's brand name are not fake Levi's garments; that Live's is a registered trade mark, while the patch pocket design for Live's jeans has copyright registration, and his goods are not clothed with an appearance which is likely to deceive the ordinary purchaser exercising ordinary care. Levi Strauss maintained that there is likelihood of confusion between the competing products because a slavish imitation of their curved trade mark has been stitched on the back pocket of Live's jeans, the appearance of the mark 105 on the respondent's product is obviously a play on their 501 trade mark, the appearance of the phrases Live's and Live's Original Jeans is confusingly similar to their Levi's trade mark, and a red tab, made of fabric, attached at the left seam of the right back pocket of the petitioner's standard five-pocket jeans, also appears at the same place on Live's jeans. Levi's also argued that the patch used on Live's jeans (depicting three men on each side attempting to pull apart a pair of jeans) is obviously similar to Levi's own patch showing two horses being whipped by two men in an attempt to tear apart a pair of jeans.

The Department of Justice ruled that Levi Strauss has not shown that anyone was actually deceived by Tony Lim. Lim's product, which bears the trade mark Live's, has an entirely different spelling and meaning from Levi's. While Tony Lim's Live's trade mark may appear similar, it could not have been intended to deceive since he had registered the mark with the appropriate government agencies.

The main issue addressed by the Supreme Court was to determine if probable cause exists to charge Tony Lim with the crime of unfair competition under Article 189(1) of the Revised Penal Code, prior to its repeal by Section 239 of RA no 8293. Brushing aside technicalities and assuming that the petition was filed properly, the Supreme Court sustained the finding of the public prosecutor that there is no unfair competition.

It bears stressing that the main function of a government prosecutor is to determine the existence of probable cause and to file the corresponding information should he find it to be so. Thus, the decision whether or not to dismiss the criminal complaint against the respondent is necessarily dependent on the sound discretion of the investigating prosecutor and, ultimately, that of the Secretary of Justice.

A prosecutor, by the nature of his office, is under no compulsion to file particular criminal information where he is not convinced that he has evidence to prop up its assertions, or that the evidence at hand points to a different conclusion. This is not to discount the possibility of abuses on the part of the prosecutor. But the Supreme Court recognised that a prosecutor should not be unduly compelled to work against his conviction. Although the power and prerogative of the prosecutor to determine whether or not the evidence at hand is sufficient to form a reasonable belief that a person committed an offence is not absolute but subject to judicial review, it would be embarrassing for him to be compelled to prosecute a case when he is in no position to do so, because in his opinion he does not have the necessary evidence to secure a conviction, or he is not convinced of the merits of the case.

In finding that respondent's goods were not clothed with an appearance which is likely to deceive the ordinary purchaser exercising ordinary care, the investigating prosecutor exercised the discretion given to him by law. Some major findings of the prosecutor to dismiss the unfair competition complaint are: he found that the Live's mark of the respondent's goods is spelled and pronounced differently from the Levi's mark of the complainant. Second, the back pocket design of Tony Lim is different in view of the longer curved arms while the curved design of Levi's jeans form a diamond instead. And even assuming that there is similarity in the design of back pockets this alone does not establish that the Live's jeans were intended to copy Levi's and pass them off as the latter's products as this design is simple and may not be said to be strikingly distinct absent the other Levi's trade mark such as the prints on the button, rivets, tags and the like.

Editha R Hechanova

Hechanova Bugay & Vilchez
GF Chemphil Building Antonio Arnaiz Ave
Makati City 1223
Philippines
Tel: +63 2 888 4293
Fax: +63 2 888 4290
editharh@info.com.ph