LEVI STRAUSS (PHILS.), INC., petitioners, vs.

VOGUE TRADERS
CLOTHING COMPANY, repsondents.
G.R. No. 132993. June 29, 2005.
DOCTRINE: The earlier filing of a petition to cancel the mark before the
BPTTT does not constitute a prejudicial question which must be resolved
before an action to enforce rights to the same registered mark before regular
courts may be filed.
FACTS: Petitioner Levi Strauss obtained certificates of registration for several
trademarks such as LEVIS, 501, Two Horse Design, Arcuate Design,
Two Horse Patch, Arcuate and Tab.
Petitioner later discovered the existence of registrations before the BPTTT
belonging to respondent Vogue Traders, which were confusingly similar to its
own trademarks. Vogue Traders owned certificates of registration over the
trademarks LIVES, LIVES Label Mark and copyright registrations over the
LIVES original jeans pocket design and hand tag. Levi Strauss thus filed a
complaint for the cancellation of Vogue Traders certificate of registration.
A search and seizure was held and some products of Vogue Traders were
confiscated. Criminal charges were also filed against Tony Lim, owner of
Vogue Traders. The same was however dismissed and the seized items were
released.
Consequently, Vogue Traders filed a complaint for damages before the RTC
Manila. In its Answer, Levi Strauss maintained that the LIVES brand infringed
upon its licensed brand LEVIS.
RTC Manila: Vogue Traders clearly intended to appropriate, copy and imitate
LEVIs brand to ride on its goodwill and confuse the public as the LEVIs
trademark is already well-known. In addition, the backpocket design of a jean
is not copyrightable since it is neither an original work nor a novel design.

CA: Vogue Traders appeal was granted. RTC Manila decision is set aside and
the case was remanded back to BPTTT.
ISSUE: WON a case for cancellation of trademark filed at BPTTT can be held
simulatenously with a case for cancellation of copyright.
HELD: YES.
The earlier filing of a petition to cancel the mark before the BPTTT does not
constitute a prejudicial question which must be resolved before an action to
enforce rights to the same registered mark before regular courts may be
filed.
An action for infringement or unfair competition, in regular courts can
proceed independently and simultaneously with an action for administrative
cancellation of a registered trademark before the BPTTT.
Thus, the case filed in the BPTTT does not preclude LEVIs from filing a
counterclaim of copyright infringement in the case of damages before the
RTC filed by Vogue.
Section 151.2. Notwithstanding the foregoing provisions, the court or
the administrative agency vested with jurisdiction to hear and
adjudicate any action to enforce the rights to a registered mark shall
likewise exercise jurisdiction to determine whether the registration of
said mark may be cancelled in accordance with this Act. The filing of a
suit to enforce the registered mark with the proper court or agency
shall exclude any other court or agency from assuming jurisdiction
over a subsequently filed petition to cancel the same mark. On the
other hand, the earlier filing of petition to cancel the mark with the
Bureau of Legal Affairs {formerly BPTTT] shall not constitute a
prejudicial question that must be resolved before an action to enforce
the rights to same registered mark may be decided. (Sec. 17, R.A. No.

166a)
Wherefore, petition is GRANTED.