an affirmative defense, which is not a denial of an essential

. ingredient in the plaintiff’s cause of action, but is one

364 SUPREME COURT REPORTS which, if established, will be a good defense—i.e., an
“avoidance” of the claim, which prima facie, the
ANNOTATED ______________
Sambar vs. Levi Strauss & Co.
G.R. No. 132604. March 6, 2002. *
*
SECOND DIVISION.
VENANCIO SAMBAR, doing business under the name 365
and style of CVS Garment Enterprises,
petitioner, vs. LEVI STRAUSS & CO., and LEVI VOL. 378, MARCH 6, 2002
STRAUSS (PHIL.), INC., respondents. 65
Sambar vs. Levi Strauss & Co.
Appeals; The basic rule is that factual questions are
plaintiff already has because of the defendant’s own
beyond the province of the Supreme Court in a petition for
admissions in the pleadings. Petitioner’s defense in this
review.—We find that the first issue raised by petitioner is
case was an affirmative defense. He did not deny that
factual. The basic rule is that factual questions are beyond
private respondents owned the arcuate trademark nor that
the province of this Court in a petition for review. Although
CVSGIC used on its products a similar arcuate design.
there are exceptions to this rule, this case is not one of
What he averred was that although he owned the copyright
them. Hence, we find no reason to disturb the findings of
on the Europress arcuate design, he did not allow CVSGIC
the Court of Appeals that Europress’ use of the arcuate
to use it. He also said he was not connected with CVSGIC.
design was an infringement of the Levi’s design.
These were not alleged by private respondents in their
Evidence; Burden of Proof; In civil cases, the burden of
pleadings, and petitioner therefore had the burden to prove
proof may be on either the plaintiff or the defendant, and it
these.
is on the latter if, in his answer, he alleges an affirmative
Intellectual Property; Trademarks; Copyright; To be
defense, which is not a denial of an essential ingredient in
entitled to copyright, the thing being copyrighted must be
the plaintiff’s cause of action, but is one which, if
original, created by the author through his own skill, labor
established, will be a good defense—i.e., an “avoidance” of
and judgment, without directly copying or evasively
the claim, which prima facie, the plaintiff already has
imitating the work of another.—From the foregoing
because of the defendant’s own admissions in the pleadings.
discussion, it is clear that the matters raised by petitioner
—Pertinent is Section 1, Rule 131 of the Rules of Court
in relation to the last issue are purely factual, except the
which provides that the burden of proof is the duty of a
matter of nominal and temperate damages. Petitioner
party to prove the truth of his claim or defense, or any fact
claims that damages are not due private respondents and
in issue by the amount of evidence required by law. In civil
his copyright should not be cancelled because he had not
cases, the burden of proof may be on either the plaintiff or
infringed on Levi’s trademark. Both the trial court and the
the defendant. It is on the latter, if in his answer he alleges

1 | Page
Court of Appeals found there was infringement. Thus, the Tan, Acut & Lopez for petitioner.
award of damages and cancellation of petitioner’s copyright Poblador, Bautista & Reyes for respondents.
are appropriate. Award of damages is clearly provided in
Section 23, while cancellation of petitioner’s copyright finds QUISUMBING, J.:
basis on the fact that the design was a mere copy of that of
private respondents’ trademark. To be entitled to copyright, This petition for review on certiorari prays for the
the thing being copyrighted must be original, created by the reversal of the decision dated January 30, 1998, of the
author through his own skill, labor and judgment, without Court of Appeals in CA-G.R. CV No. 51553. That
directly copying or evasively imitating the work of another.
decision affirmed the decision in Civil Case No. 88-
Same; Same; Infringement; The fact that there was an
2220 of the Regional Trial Court, Branch 66, Makati
infringement means that the trademark owner suffered
losses for which it is entitled to moderate damages.— City, making permanent the writ of preliminary
However, we agree with petitioner that it was error for the injunction, ordering CVS Garment and Industrial
Court of Appeals to affirm the award of nominal damages Company (CVSGIC) and petitioner Venancio Sambar
combined with temperate damages by the Regional Trial to pay private respondents jointly and solidarily the
Court of Makati. What respondents are entitled to is an sum of P50,000 as temperate and nominal damages,
award for temperate damages, not nominal damages. For P10,000 as exemplary damages, and P25,000 as
although the exact amount of damage or loss can not be attorney’s fees and litigation costs, and ordering the
determined with reasonable certainty, the fact that there Director of the National Library to cancel Copyright
was infringement means they suffered losses for which they Registration No. 1-1998 in the name of Venaricio
are entitled to moderate damages. We find that the award
Sambar.
of P50,000.00 as temperate damages fair and reasonable,
The facts are as follows:
considering the circumstances herein as well as the global
coverage and reputation of private respondents Levi On September 28, 1987, private respondents,
Strauss & Company and Levi Strauss (Phil.), Inc. through a letter from their legal officer, demanded
that CVS Garment Enterprises (CVSGE) desist front
PETITION for review on certiorari of a decision of the using their stitched arcuate design on the Europress
Court of Appeals. jeans which CVSGE advertised in the Manila Bulletin.
Atty. Benjamin Gruba, counsel of CVSGE, replied
366 that the arcuate design on the back pockets of
366 SUPREME COURT REPORTS Europress jeans was different from the design on the
ANNOTATED back pockets of Levi’s jeans. He further asserted that
Sambar vs. Levi Strauss & Co. his client had a copyright on the design it was using.
The facts are stated in the opinion of the Court.

2 | Page
 Thereafter, private respondents filed a complaint Assistance Agreement with Levi Strauss (Phil.) Inc.
against Sambar, doing business under the name and (LSPI) in 1972, LS&Co, granted LSPI a non-exclusive
style of CVSGE. Private respondents also impleaded license to use the arcuate trademark in its
the Director of the National Library. Summons was manufacture and sale of Levi’s pants, jackets and
sent to Sambar in his business address at 161-B Iriga shirts in the Philippines; that in 1983, LS&Co. also
corner Retiro, La Loma, Quezon City. appointed LSPI as its agent and attorney-in-fact to
Atty. Gruba claimed that he erroneously received protect its trademark in the Philippines; and that
the original summons as he mistook it as addressed to sometime in 1987, CVSGIC and Venancio Sambar,
his client, CVSGIC. He returned the summons and the without the consent and authority of private
pleadings and manifested in court that CVSGE, which respondents and in infringement and unfair
was formerly doing business in the premises, already competition, sold and advertised, and despite demands
stopped operation and CVSGIC took over CVSGE’s to cease and desist, continued to manufacture, sell and
occupa- advertise denim pants under the brand name
367 “Europress” with back pockets bearing a design similar
VOL. 378, MARCH 6, 2002 367 to the arcuate trademark of private respondents,
Sambar vs. Levi Strauss & Co. thereby causing confusion on the buying public,
tion of the premises. He also claimed he did not know prejudicial to private respondents’ goodwill and
the whereabouts of Sambar, the alleged owner of property right.
CVSGE. In its answer, CVSGIC admitted it manufactured,
Thereafter, private respondents amended their sold and advertised and was still manufacturing and
complaint to include CVSGIC. When private selling denim pants under the brand name of
respondents learned the whereabouts of Sambar and “Europress,” bearing a backpocket design of two double
CVSGE, the case was revived. arcs meeting in the middle. However, it denied that
Private respondents alleged in their complaint that there was infringement or unfair competition because
Levi Strauss and Co. (LS&Co.), an internationally the display rooms of department stores where Levi’s
known clothing manufacturer, owns the arcuate design and Europress jeans were sold, were distinctively
trademark which was registered under U.S. segregated by billboards and other modes of
Trademark Registration No. 404, 248 on November 16, advertisement. CVSGIC avers that the public would
1943, and in the Principal Register of trademarks with not be confused on the ownership of such known
the Philippine Patent Office under Certificate of trademark as Levi’s, Jag, Europress, etc.. Also,
Registration No. 20240 issued on October 8, 1973; that CVSGIC claimed that it had its own original arcuate
through a Trademark Technical Data and Technical design, as evidenced by Copyright Registration No. 1-

3 | Page
1998, which was very different and distinct from Levi’s the plaintiffs jointly and solidarily the sum of
design. CVSGIC P50,000.00 as temperate and nominal damages, the
368 sum of P10,000.00 as exemplary damages, and the
368 SUPREME COURT REPORTS sum of P25,000.00 as attorney’s fees and litigation
ANNOTATED expenses and to pay the costs.
Sambar vs. Levi Strauss & Co.
SO ORDERED. 1

prayed for actual, moral and exemplary damages by

way of counterclaim. Private respondents moved for a reconsideration
Petitioner Venancio Sambar filed a separate praying for the cancellation of petitioner’s copyright
answer. He denied he was connected with CVSGIC. He registration. The trial court granted reconsideration in
admitted that Copyright Registration No. 1-1998 was its July 14, 1995 order, thus:
issued to him, but he denied using it. He also said he IN VIEW OF THE FOREGOING, judgment is hereby
did not authorize anyone to use the copyrighted rendered:
design. He counterclaimed for moral and exemplary
damages and payment of attorney’s fees. 1. a)making the writ of preliminary injunction
After hearing, the trial court issued a writ of permanent;
preliminary injunction enjoining CVSGIC and 2. b)ordering the defendants CVS Garment and
petitioner from manufacturing, advertising and selling Industrial Company and Venancio Sambar to pay
the plaintiffs jointly and solidarily the sum of
pants with the arcuate design on their back pockets.
P50,000.00 as temperate and nominal damages, the
CVSGIC and petitioner did not appear during the sum of
October 13 and 27, 1993 hearings, when they were to
present evidence. Consequently, the trial court ruled ______________
that they waived their right to present evidence.
On May 3, 1995, the trial court rendered its
1
RTC Records, p. 260.

decision. The dispositive portion reads: 369

IN VIEW OF THE FOREGOING, judgment is hereby VOL. 378, MARCH 6, 2002 369
rendered:
Sambar vs. Levi Strauss & Co.
1. a)making the writ of preliminary injunction
1. P10,000.00 as exemplary damages, and the sum of
permanent;
P25,000.00 as attorney’s fees and litigation
2. b)ordering the defendants CVS Garment and
expenses and to pay the costs;
Industrial Company and Venancio Sambar to pay

4 | Page
 2. c)ordering the Director of the National Library to 2. 2.Must we hold petitioner solidarity liable with
cancel the Copyright Registration No. 1-1998 CVS Garments Industrial Corporation?
issued in the name of Venancio Sambar. 2
3. 3.Are private respondents entitled to nominal,
temperate and exemplary damages and
Petitioner appealed to the Court of Appeals which on cancellation of petitioner’s copyright?
January 30, 1998 decided in favor of private
respondents as follows: On the first issue, petitioner claims that he did not
WHEREFORE, the judgment appealed from is AFFIRMED infringe on private respondents’ arcuate design
in toto.
because there was no colorable
SO ORDERED. 3

______________

In this instant petition, petitioner avers that the Court 2

Id., at 274-275.
of Appeals erred in: 3
Rollo, p. 20.
4
Id., at 34.
1. I.. . . RULING THAT THERE WAS AN
370
INFRINGEMENT OF RESPONDENT’S ARCUATE
MARK.
370 SUPREME COURT REPORTS
2. II.. . . RULING THAT PETITIONER IS JOINTLY ANNOTATED
AND SOLIDARILY LIABLE WITH CVS Sambar vs. Levi Strauss & Co.
GARMENTS INDUSTRIAL CORPORATION FOR imitation which deceived or confused the public. He
INFRINGEMENT OF RESPONDENT’S ARCUATE cites Emerald Garment Manufacturing Corporation vs.
MARK. Court of Appeals, G.R. No. 100098, 251 SCRA
3. III.. . . IN ORDERING, THERE BEING NO 600 (1995), as authority. He disagreed with the Court
INFRINGEMENT OR UNFAIR COMPETITION, of Appeals that there were confusing similarities
THE AWARD OF DAMAGES AND
between Levi’s and Europress’ arcuate designs, despite
CANCELLATION OF COPYRIGHT
REGISTRATION NO. 1-1998 ISSUED IN THE
the trial court’s observation of differences in them.
NAME OF PETITIONER. 4
Petitioner maintains that although the backpocket
designs had similarities, the public was not confused
Briefly, we are asked to resolve the following issues: because Levi’s jeans had other marks not found in
Europress jeans. Further, he says Levi’s long history
1. 1.Did petitioner infringe on private and popularity made its trademark easily identifiable
respondents’ arcuate design? by the public.

5 | Page
 In its comment, private respondents aver that the ______________
Court of Appeals did not err in ruling that there was 5
Salcedo vs. People, G.R. No. 137143, 347 SCRA 499, 504-505
infringement in this case. The backpocket design of (2000).
Europress jeans, a double arc intersecting in the 6
Id., at 1.
middle was the same as Levi’s’ mark, also a double arc
371
intersecting at the center. Although the trial court
VOL. 378, MARCH 6, 2002 371
found differences in the two designs, these differences
were not noticeable. Further, private respondents said, Sambar vs. Levi Strauss & Co.
infringement of trademark did not require exact had a copyright over Europress’ arcuate design and
similarity. Colorable imitation enough to cause that he consented to the use of said design by CVSGIC.
confusion among the public, was sufficient for a We are bound by this finding, especially in the absence
trademark to be infringed. Private respondents of a showing that it was tainted with arbitrariness or
explained that in a market research they conducted palpable error. It must be stressed that it was
7

with 600 respondents, the result showed that the immaterial whether or not petitioner was connected
public was confused by Europress trademark vis the with CVSGIC. What is relevant is that petitioner had
Levi’s trademark. a copyright over the design and that he allowed the
We find that the first issue raised by petitioner is use of the same by CVSGIC.
factual. The basic rule is that factual questions are Petitioner also contends that the Court of Appeals
beyond the province of this Court in a petition for erred when it said that he had the burden to prove
review. Although there are exceptions to this rule, this that he was not connected with CVSGIC and that he
case is not one of them. Hence, we find no reason to
5
did not authorize anyone to use his copyrighted design.
disturb the findings of the Court of Appeals that According to petitioner, these are important elements
Europress’ use of the arcuate design was an of private respondents’ cause of action against him,
infringement of the Levi’s design. hence, private respondents had the ultimate burden of
On the second issue, petitioner claims that private proof.
respondents did not show that he was connected with Pertinent is Section 1, Rule 131 of the Rules of
CVSGIC, nor did they prove his specific acts of Court which provides that the burden of proof is the
8

infringement to make him liable for damages. Again, duty of a party to prove the truth of his claim or
this is a factual matter and factual findings of the trial defense, or any fact in issue by the amount of evidence
court, concurred in by the Court of Appeals, are final required by law. In civil cases, the burden of proof may
and binding on this Court. Both the courts below
6
be on either the plaintiff or the defendant. It is on the
found that petitioner latter, if in his answer he alleges an affirmative

6 | Page
defense, which is not a denial of an essential Petitioner insists that he had not infringed on the
ingredient in the plaintiff’s cause of action, but is one arcuate trademark, hence, there was no basis for
which, if established, will be a good defense—i.e., an nominal and temperate damages. Also, an award of
“avoidance” of the claim, which prima facie, the nominal damages precludes an award of temperate
plaintiff already has because of the defendant’s own damages. He cites Ventanilla vs. Centeno, G.R. No. L-
admissions in the pleadings. 9
14333, 1 SCRA 215 (1961) on this. Thus, he contends,
Petitioner’s defense in this case was an affirmative assuming arguendo that there was infringement, the
defense. He did not deny that private respondents Court of Appeals still erred in awarding both nominal
owned the arcuate trademark nor that CVSGIC used and temperate damages.
on its products a similar arcuate design. What he Petitioner likewise said that the grant of exemplary
averred was that although he owned the copyright on damages was inconsistent with the trial court’s finding
the Europress arcuate design, he did not allow that the design of Europress jeans was not similar to
CVSGIC to use it. He also said he was not connected Levi’s design and that no pecuniary loss was suffered
with CVSGIC. These were not alleged by private by respondents to entitle them to such damages.
respondents in their pleadings, and petitioner Lastly, petitioner maintains that as Europress’
therefore had the burden to prove these. arcuate design is not a copy of that of Levi’s, citing the
______________ trial court’s findings that although there are
similarities, there are also differences in the two
7
David vs. Manila Bulletin Publishing Company, Inc., G.R. No.
139272, 347 SCRA 68, 69 (2000). designs, cancellation of his copyright was not justified.
8
Section 1, Rule 131: Burden of Proof.—Burden of proof is the On this matter, private respondents assert that the
duty of a party to present evidence on the facts in issue necessary to lower courts found that there was infringement and
establish his claim or defense by the amount of evidence required by
law.
Levi’s was entitled to damages based on Sections 22
9
Paras, Rules of Court 448 (Third Edition, 2000). and 23 of RA No. 166 otherwise known as the Trade
Mark Law, as amended, which was the law then
10

372 ______________
372 SUPREME COURT REPORTS
ANNOTATED
10
Section 22. Infringement, what constitutes.—Any person who
shall use, without the consent of the registrant, any reproduction,
Sambar vs. Levi Strauss & Co. counterfeit, copy or colorable imitation of any registered mark or
Lastly, are private respondents entitled to nominal, trade-name in connection with the sale, offering for sale, or
temperate and exemplary damages and cancellation of advertising of any goods, business or services on or in connection
with which such use is likely to cause confusion or mistake or to
petitioner’s copyright? deceive purchasers or others as to the source of such business; or
reproduce, counterfeit, copy or colorably imitate any such mark or

7 | Page
trade-name and apply such reproduction, counterfeit, copy, or was similarity. The cancellation of petitioner’s
colorable imitation to labels, signs, prints, packages, wrappers,
receptacles or advertisements intended to be used upon or in
copyright was justified because petitioner’s copyright
connection with such goods, business or services, shall be liable to a can not prevail over respondents’ registration in the
civil action by the registrant for any or all the remedies herein Principal Register of Bureau of Patents, Trademarks,
provided. and Technology Transfer. According to private
Section 23. Actions, and damages and injunction for infringement.
—Any person entitled to the exclusive use of a registered mark or
respondents, the essence of copyright registration is
trade-name may recover damages in a civil action from any person originality and a copied design is inherently non-
who infringes his rights, and the measure of the damages suffered copyrightable. They insist that registration does not
shall be confer originality upon a copycat version of a prior
373 design.
______________
VOL. 378, MARCH 6, 2002 373
Sambar vs. Levi Strauss & Co. either the reasonable profit which the complaining party would have
governing. Said sections define infringement and made, had the defendant not infringed his said rights, or the profit
which the defendant actually made out of the infringement, or in the
prescribe the remedies therefor. Further, private
event such measure of damages cannot be readily ascertained with
respondents aver it was misleading for petitioner to reasonable certainty, then the court may award as damages a
claim that the trial court ruled that private reasonable percentage based upon the amount of gross sales of the
respondents did not suffer pecuniary loss, suggesting defendant of the value of the services in connection with which the
mark or trade-name was used in the infringement of the rights of the
that the award of damages was improper. According to complaining party. In cases where actual intent to mislead the public
the private respondents, the trial court did not make or to defraud the complaining party shall be shown, in the discretion
any such ruling. It simply stated that there was no of the court, the damages may be doubled.
evidence that Levi’s had suffered decline in its sales The complaining party, upon proper showing, may also be
granted injunction.
because of the use of the arcuate design by Europress 11
Ibid.
jeans. They offer that while there may be no direct
proof that they suffered a decline in sales, damages 374
may still be measured based on a reasonable 374 SUPREME COURT REPORTS
percentage of the gross sales of the respondents, ANNOTATED
pursuant to Section 23 of the Trademark law. 11
Sambar vs. Levi Strauss & Co.
Finally, regarding the cancellation of petitioner’s From the foregoing discussion, it is clear that the
copyright, private respondents deny that the trial matters raised by petitioner in relation to the last
court ruled that the arcuate design of Europress jeans issue are purely factual, except the matter of nominal
was not the same as Levi’s arcuate design jeans. On and temperate damages. Petitioner claims that
the contrary, the trial court expressly ruled that there
8 | Page
damages are not due private respondents and his 51553 AFFIRMING the judgment of the Regional Trial
copyright should not be cancelled because he had not Court of Makati, Branch 66, dated
infringed on Levi’s trademark. Both the trial court and ______________
the Court of Appeals found there was infringement. 12
Heirs of Crisanta Y. Gabriel-Almoradie vs. Court of
Thus, the award of damages and cancellation of Appeals, G.R. No. 91385, 229 SCRA 15, 30 & 34 (1994).
petitioner’s copyright are appropriate. Award of
12 13
See note 10.
damages is clearly provided in Section 23, while 13
14
Hoffman vs. Le Traunik, 209 Federal Reporter 375, 379 (1913).
15
Ventanilla vs. Centeno, No. L-14333, 1 SCRA 215, 216 (1961).
cancellation of petitioner’s copyright finds basis on the 16
Art. 2224, Civil Code: Temperate or moderate damages, which
fact that the design was a mere copy of that of private are more than nominal but less than compensatory damages, may be
respondents’ trademark. To be entitled to copyright, recovered where the court finds that some pecuniary loss has been
the thing being copyrighted must be original, created suffered but its amount can not, from the nature of the case, be
proved with certainty.
by the author through his own skill, labor and
judgment, without directly copying or evasively 375
imitating the work of another. 14
VOL. 378, MARCH 6, 2002 375
However, we agree with petitioner that it was error Sambar vs. Levi Strauss & Co.
for the Court of Appeals to affirm the award of July 14, 1995, is hereby MODIFIED so that nominal
nominal damages combined with temperate damages are deleted but the amount of P50,000 is
damages by the Regional Trial Court of Makati. What
15
hereby awarded only as TEMPERATE DAMAGES. In
respondents are entitled to is an award for temperate all other respects, said judgment is hereby
damages, not nominal damages. For although the AFFIRMED, to wit:
exact amount of damage or loss can not be determined
with reasonable certainty, the fact that there was 1. a)the writ of preliminary injunction is made
infringement means they suffered losses for which permanent;
they are entitled to moderate damages. We find that
16
2. b)the defendants CVS Garment and Industrial
the award of P50,000.00 as temperate damages fair Company and Venancio Sambar are ordered
and reasonable, considering the circumstances herein also to pay the plaintiffs jointly and solidarily
as well as the global coverage and reputation of the sum of P10,000.00 as exemplary damages,
private respondents Levi Strauss & Company and Levi and the sum of P25,000.00 as attorney’s fees
Strauss (Phil.), Inc. and litigation expenses, and to pay the costs;
WHEREFORE, the decision dated January 30, and
1998, of the Court of Appeals, in CA-G.R. CV No. 3. c)the Director of the National Library is
ordered to cancel the Copyright Registration

9 | Page
 No. 1-1998 issued in the name of Venancio
Sambar.

SO ORDERED.
Bellosillo (Chairman), Mendoza, Buena and D
e Leon, Jr., JJ., concur.

Judgment modified.
Notes.—While an application for the
administrative cancellation of a registered trademark
on any of the grounds enumerated in Section 17 of R.A.
166 falls under the exclusive cognizance of the Bureau
of Patents, Trademarks and Technology Transfer
(BPTTT), an action for infringement or unfair
competition, as well as the remedy of injunction and
relief for damages, is explicitly and unquestionably
within the competence and jurisdiction of ordinary
courts. (Conrad and Company, Inc. vs. Court of
Appeals, 246 SCRA 691 [1995])
While it is a general rule that factual issues are not
within the province of the Supreme Court, such rule
does not apply where there are conflicting findings of
facts of the trial court and the Court of Appeals. (Jison
vs. Court of Appeals, 286 SCRA 286 [1998])

——o0o——

376
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