Amigo Manufacturing, Inc. vs. Cluett Peabody Co., Inc.

The factual findings of the Bureau of Patents on the confusing similarity of trademarks are binding upon the courts, absent sufficient evidence to the contrary. In determining such similarity, both the Dominancy Test and the Holistic Test are employed; where the dominant features or the overall impression created by the competing marks are deceptively and confusingly similar, the later mark may be cancelled. A registration on the supplemental register confers no presumption of ownership or exclusive right, whereas a principal registration constitutes prima facie evidence of validity, ownership, and the date of first use.

Cluett Peabody Co., Inc., a New York corporation, was the successor-in-interest to several Philippine trademark registrations on the principal register for marks used on men’s socks: "Gold Toe" (registered 1958, first use March 16, 1954), a device showing a sock and magnifying glass (registered 1968, first use February 1, 1952), a "Gold Toe Representation" consisting of gold parallel lines within a triangular toe area (registered 1968, first use January 30, 1932), and "Linenized" (registered 1970, first use February 28, 1952). Amigo Manufacturing Inc., a Philippine corporation, registered "Gold Top, Linenized for Extra Wear" and a device on the supplemental register, and sold men’s socks under that label. Cluett Peabody petitioned the Bureau of Patents to cancel Amigo’s supplemental registration, alleging that the mark was a confusingly similar combination of its protected marks.

• Nature of the Action: Suit for cancellation of trademark registration before the Bureau of Patents. Respondent Cluett Peabody sought cancellation of petitioner Amigo’s Certificate of Registration No. SR-2206 (Supplemental Register) for the mark “GOLD TOP & DEVICE” used on men’s socks.
• Respondent’s Marks: Cluett Peabody owned four registrations on the principal register, all for men’s socks: Certificate of Registration No. 6797 for “GOLD TOE” (first use in the Philippines: March 16, 1954); Certificate No. 13465 for a device showing a sock and magnifying glass (first use: February 1, 1952); Certificate No. 13887 for a “Gold Toe Representation” — gold colored parallel lines within a triangular toe area (first use: January 30, 1932); and Certificate No. 15440 for “LINENIZED” (first use: February 28, 1952).
• Petitioner’s Mark: Amigo’s “GOLD TOP, Linenized for Extra Wear” label featured the dominant color white at the center, a blackish-brown background, a magnified design of the sock’s garter, and the imprint “Amigo Manufacturing Inc., Mandaluyong, Metro Manila, Made in the Philippines.” It was registered only on the supplemental register.
• Bureau Proceedings: The case was heard by six successive hearing officers; the decision was drafted by the last officer and signed by the Director of Patents, who had not personally presided over any hearing. The Director based the decision on idem sonans and the confusing similarity in appearance between the two labels. The Bureau found that petitioner’s mark was a combination of respondent’s separately registered marks, printed in identical lettering, both depicting a man’s foot wearing a sock, and incorporating “LINENIZED.”
• No Independent Evidence of Earlier Use by Petitioner: Petitioner claimed first use in September 1956 (later 1958 in its arguments) but presented no proof of that date. Respondent’s certificates of registration indicated earlier dates of first use; these were not impeached.

• Prior Actual Use: Petitioner maintained that it began actual use of “Gold Top and Device” in September 1956, ahead of respondent’s claimed first use on May 15, 1962. Respondent’s witnesses contradicted each other by stating different dates (1952, 1947, 1938).
• Lack of Confusing Similarity: Petitioner argued that the marks “Gold Toe” and “Gold Top” do not sound alike and are pronounced differently, thus the Director of Patents erred in applying the idem sonans rule. The words “gold” and “toe” are generic, so respondent cannot claim exclusivity over them.
• Misapplication of Paris Convention: Petitioner contended that the Court of Appeals erred in applying the Paris Convention because actual use of the mark in the Philippines, not mere registration, is necessary to acquire protectable rights.

• Prima Facie Validity of Registrations: Respondent countered that its four principal-register certificates constitute prima facie evidence of ownership, validity, and the dates of first use. Petitioner failed to present any evidence that the registrations were fraudulently issued or that its own use was earlier.
• Confusing Similarity: Respondent argued that petitioner’s mark was a deliberate combination of several marks respondent had already registered; the overall appearance, lettering, and representational elements were deceptively similar to respondent’s marks, causing likelihood of confusion.
• Protection Under International Convention: Respondent, as a US corporation, is entitled to protection under the Paris Convention to which both the Philippines and the United States are parties. Such protection extends to its trademark rights and remedies against infringement and unfair competition under Section 37 of Republic Act No. 166.

• Priority of Use: Whether the Court of Appeals overlooked that petitioner’s trademark was used in Philippine commerce earlier than respondent’s actual use, thereby warranting reversal of the cancellation.
• Confusing Similarity: Whether the Court of Appeals erred in affirming the Director of Patents’ finding that petitioner’s “Gold Top & Device” was confusingly similar to respondent’s “Gold Toe” and associated device marks.
• Applicability of the Paris Convention: Whether the Court of Appeals erred in applying the Paris Convention to hold that respondent had an exclusive right to the “Gold Toe” trademark without proof of actual use in the Philippines.

• Priority of Use: Petitioner failed to prove earlier actual use. Respondent’s certificates of registration on the principal register are prima facie evidence of validity, ownership, and the dates of first use stated therein. Petitioner presented no evidence to rebut that presumption or to show the certificates were fraudulently issued. Furthermore, petitioner’s registration on the supplemental register carries no presumption of ownership or exclusive right, nor does it constitute constructive notice of any claim of ownership. The purported discrepancies in respondent’s witnesses’ testimony about the date of first use were explained by the fact that the several registered marks had different dates of first use. The Bureau of Patents’ factual finding that respondent had prior use was accorded great respect and finality, being supported by substantial evidence.
• Confusing Similarity: The Bureau of Patents did not rely solely on the idem sonans rule. It considered the totality of similarities — drawings, labels, lettering, and the representation of a man’s foot wearing a sock — and found that petitioner’s mark was a combination of respondent’s separately registered marks. Under both the Dominancy Test and the Holistic Test, colorable imitation existed. The dominant features (gold checkered lines against a predominantly black background, a sock with a magnifying glass, identical lettering, and the word “linenized”) are strikingly similar in location and appearance. The overall impression given is that the two products are deceptively or confusingly similar. That petitioner and respondent are in the same line of business reinforces the likelihood of confusion.
• Applicability of the Paris Convention: The Court of Appeals correctly applied the Paris Convention. Respondent’s principal-register registrations carried a prima facie presumption that the requirement of prior use had been fulfilled. Since the Philippines and the United States are parties to the Paris Convention, and respondent is domiciled in the United States, respondent is entitled to protection against infringement and unfair competition under Section 37 of Republic Act No. 166, the trademark law then in force.

• Prima Facie Effect of Principal Registration — A certificate of registration of a mark on the principal register is prima facie evidence of the validity of the registration, the registrant’s ownership of the mark, and the registrant’s exclusive right to use the mark in connection with the goods, business, or services specified, subject to any stated conditions and limitations (Section 20, R.A. 166). The burden shifts to the challenger to rebut that presumption.
• Effect of Supplemental Registration — Registration on the supplemental register gives no presumption of ownership of the trademark. It is not prima facie evidence of validity of registration, registrant’s ownership, or exclusive right to use the mark; it is not subject to opposition, though it may be cancelled; it does not constitute constructive notice of registrant’s claim of ownership. (See La Chemise Lacoste v. Fernandez, 129 SCRA 373.)
• Dominancy Test and Holistic Test — Two tests determine confusing similarity between trademarks. The Dominancy Test focuses on the similarity of the prevalent or dominant features of the competing marks which might cause confusion or deception, even if duplication is not exact. The Holistic Test mandates that the entirety of the marks be considered in determining confusing similarity. If either test shows that colorable imitation exists and confusion is likely, infringement or cancellation is warranted. (See Emerald Garment Manufacturing Corp. v. Court of Appeals, 251 SCRA 600.)
• Idem Sonans Not Dispositive in Isolation — The similarity in sound of trademarks (idem sonans) is not the sole basis for finding confusing similarity; the overall visual and aural impression produced by the totality of the marks is controlling.
• Deference to Administrative Findings of Fact — The factual findings of the Bureau of Patents (now the Intellectual Property Office) on matters within its special knowledge and expertise are accorded great respect, if not finality, and are binding upon the courts absent sufficient evidence to the contrary. They will not be disturbed so long as they are supported by substantial evidence.
• Paris Convention Protection — Under Section 37 of R.A. 166, a foreign national whose country of domicile is a party to an international convention for the protection of industrial property (such as the Paris Convention) is entitled to protection against trademark infringement and unfair competition in the Philippines. A prior principal registration carries a presumption of prior actual use that fulfills the Convention’s requirements.

• “The findings of the Bureau of Patents that two trademarks are confusingly and deceptively similar to each other are binding upon the courts, absent any sufficient evidence to the contrary.” — The Court articulates the standard of review for administrative findings of confusing similarity.
• “The most successful form of copying is to employ enough points of similarity to confuse the public with enough points of difference to confuse the courts.” — Quoted from Del Monte Corporation v. Court of Appeals, 181 SCRA 410, this passage underscores how minor differences do not defeat a finding of infringement when the overall impression is one of deceptive similarity.
• “An infringement of intellectual rights is no less vicious and condemnable as theft of material property, whether personal or real.” — The Court equates trademark infringement with theft of property, emphasizing the seriousness of the violation.
• “In the present case, a resort to either the Dominancy Test or the Holistic Test shows that colorable imitation exists between respondent’s ‘Gold Toe’ and petitioner’s ‘Gold Top.’” — The conclusion that both tests yield the same result, reinforcing the finding of confusing similarity.

• Emerald Garment Manufacturing Corporation v. Court of Appeals, 251 SCRA 600 (1995) — Distinguished and applied; the Court relied on this case for the formulation and application of both the Dominancy Test and the Holistic Test in determining confusing similarity.
• Del Monte Corporation v. Court of Appeals, 181 SCRA 410 (1990) — Applied; the Court cited this decision for the principle that the question is not whether articles are distinguishable when set side by side, but the general impression on the casual, unsuspicious purchaser. Also the source of the “most successful form of copying” language.
• La Chemise Lacoste, S.A. v. Fernandez, 129 SCRA 373 (1984) — Applied; the Court relied on this case for the rule that registration on the supplemental register gives no presumption of ownership, validity, or exclusive right, and does not constitute constructive notice.
• Puma Sportschuhfabriken Rudolf Dassler K.G. v. Intermediate Appellate Court, 158 SCRA 233 — Applied; cited by the Court of Appeals for the proposition that the Philippines’ membership in the Paris Union creates trademark rights and the object of the Convention is to accord extensive protection against infringement and unfair competition.
• Villaflor v. Court of Appeals, 280 SCRA 297 (1997) — Applied; cited as authority for the rule that administrative findings of fact, supported by substantial evidence, are accorded great respect if not finality, and courts will not substitute their judgment for that of the administrative agency.

• Section 4(d), Republic Act No. 166 (Trademark Law) — Prohibits registration of a mark that so resembles a registered mark or trade name as to be likely, when applied to the goods of the applicant, to cause confusion, mistake, or deception of purchasers. Applied by the Director of Patents and the Court of Appeals in finding “Gold Top” unregistrable due to its resemblance to “Gold Toe.”
• Section 5-A, Republic Act No. 166 — Requires the applicant for trademark registration to state the date of first use of the mark in commerce. The successful registration of respondent’s marks constituted a presumption that the stated dates of first use were correct.
• Section 20, Republic Act No. 166 — Declares that a certificate of registration on the principal register is prima facie evidence of the validity of the registration, the registrant’s ownership, and the registrant’s exclusive right to use the mark. This provision shifted the burden onto petitioner to prove otherwise, which it failed to do.
• Section 37, Republic Act No. 166 — Grants benefits to foreign nationals domiciled in a country that is a party to an international convention on marks or unfair competition to which the Philippines is also a party, to the extent necessary to give effect to such convention. This provision, together with the Paris Convention, justified respondent’s entitlement to protection despite being a foreign corporation.
• Paris Convention for the Protection of Industrial Property (1883) — The Philippines and the United States are member states. The Convention accords to nationals of member states extensive protection against trademark infringement and unfair competition, and was relied upon to uphold respondent’s rights.

Melo, Vitug, Gonzaga-Reyes, and Sandoval-Gutierrez, JJ., concurred.

N/A — The decision was unanimous; no dissenting opinion was recorded.