Skechers, USA, Inc., petitioner, v. Inter Pacific Industrial Trading Corp.

and/or Inter Pacific Trading

Corp., et.al., respondents/Trendworks International Corporation, petitioner-intervenor v. Inter
Pacific Industrial Trading Corp. and/or Inter Pacific Trading Corp., et.al., respondents
Facts: This is a twin motions for reconsideration filed by petitioner and petitioner-intervenor from the
decision rendered in favour of respondents. The controversy arose when Skechers USA, Inc. filed with
Branch 24 of the Manila RTC an application for the issuance of search warrants against an outlet and
warehouse operated by Inter Pacific Industrial Trading Corp. for infringement of trademark under Section
155, in relation to Section 170 of RA 8293 (Intellectual Property Code of the Philippines). In the course of
its business, Skechers USA, Inc. has registered the trademark SKECHERS and the trademark S
(within an oval design) with the Intellectual Property Office (IPO). RTC agreed with the respondents that
Skechers rubber shoes and Strong rubber shoes have glaring differences such that an ordinary prudent
purchaser would not likely be misled or confused in purchasing. The Court of Appeals affirmed the ruling
of the RTC, upon filing a petition for certiorari by the petitioner; thus, elevated it to the Supreme Court.
Trendworks International Corporation filed a petition-in-intervention with the SC claiming to be the sole
licensed distributor of Skechers products in the Philippines. The court, in 2006, rendered a decision
dismissing the petition. Both petitioner and petitioner-intervenor filed their separate motions for
reconsideration with the Supreme Court.
Issue: Whether or not, the respondent is guilty of trademark infringement.
Decision: The motion for reconsideration is granted and the prior decision of SC dated in 2006 is set
aside. The basic law on trademark, infringement and unfair competition is RA 8293. Specifically, under
Section 155 of RA 8293, any person who, without the consent of the owner of the registered mark, use in
commerce, among others, colorable imitation of a registered mark or the same container or a dominant
feature thereof, with which such use is likely to cause confusion, or to cause mistake or to deceive shall
be held liable in a civil action for infringement. According to the Supreme Court, the essential element of
infringement under RA 8293 is that the infringing mark is likely to cause confusion. In determining
similarity and likelihood of confusion, jurisprudence has developed the Dominancy Test, which focuses on
the similarity of the prevalent or dominant features of the competing trademarks and where duplication
or imitation is not necessary, and the Totality Test, which necessitates a consideration of the entirety of the
marks as applied to the products including the labels and packaging. By applying the Dominancy Test, the
court found that the use of the stylized S by respondent in some of its rubber shoes infringes on the
mark already registered by petitioner with the IPO.