2014 (Commercial Law) Bar Exam Questions: Question 18

[Answer / discuss the question below. Or see 2014 bar exam Commercial Law Instructions; 2014 Commercial Law essay and multiple choice Questions: 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28 and 29; See also 2014 Bar Exam: Information, Discussions, Tips, Questions and Results]

XVIII.

Skechers Corporation sued Inter-Pacific for trademark infringement, claiming that Inter-Pacific used Skechers’ registered “S” logo mark on Inter-Pacific’s shoe products without its consent. Skechers has registered the trademark “SKECHERS” and the trademark “S” (with an oval design) with the Intellectual Property Office (IPO).

In its complaint, Skechers points out the following similarities: the color scheme of the blue, white and gray utilized by Skechers. Even the design and “wave-like” pattern of the mid-sole and outer sole of Inter- Pacific’s shoes are very similar to Skechers’ shoes, if not exact patterns thereof. On the side of Inter-Pacific’s shoes, near the upper part, appears the stylized “S” placed in the exact location as that of the stylized “S” the Skechers shoes. On top of the “tongue” of both shoes, appears the stylized “S” in practically the same location and size.

In its defense, Inter-Pacific claims that under the Holistic Test, the following dissimilarities are present: the mark “S” found in Strong shoes is not enclosed in an “oval design”; the word “Strong” is conspicuously placed at the backside and insoles; the hang tags labels attached to the shoes bear the word “Strong” for Inter-Pacific and “Skechers U.S.A.” for Skechers; and, Strong shoes are modestly priced compared to the costs of Skechers shoes.

Under the foregoing circumstances, which is the proper test to be applied – Holistic or Dominancy Test? Decide. (4%)

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