AMIGO MANUFACTURING, INC. v. CLUETT PEABODY CO., INC.

G.R. No. 139300, 14 March 2001; Panganiban, J.

FACTS:
Petitioner Amigo Manufacturing, Inc. challenges, under Rule 45 of the Rules of Court,
the decision of the Court of Appeals upholding the judgment of the trial court in favor
of respondpent Cluett Peabody Co., Inc.
Amigo, a Philippine-based company and a successor-in-interest of Great American
Knitting Mills, Inc., sought the cancellation of the trademark and devices Cluett, a USbased company, was using on mens socks and claimed exclusive ownership over it.
Amigo vs. Cluett
Amigo
Cluett
Brand name: GOLD TOE
Brand name: GOLD TOP
DEVICE: representation of a sock and DEVICE: has dominant color white at the
magnifying glass on the toe of a sock center and a blackish brown background
consisting of a plurality of gold colored with a magnified design of the socks
lines arranged in parallel relation within garter,
and
is
labeled
Amigo
triangular are of toe of the stocking and Manufacturing Inc., Mandaluyong, Metro
spread from each other by lines of Manila, Made in the Philippines
contrasting color of the major part of the
stocking
Linenized
Linenized

The trial court rendered decision in favor of Cluett Peabody Co., Inc,.
The Court of Appeals affirmed the decision of the trial court:
a. There is hardly any variance in the appearance of the marks GOLD TOP and
GOLD TOE since both show a representation of a mans foot wearing a sock, and
the marks are printed in identical lettering.
b. The finding of the Bureau of Patents that the two trademarks are confusingly and
deceptively similar to each other are binding upon the courts, absent any sufficient
evidence to the contrary.
c. Amigos version is only registered with the Supplemental Registry which gives no
right of exclusivity to the owner and cannot overturn the presumption of validity
and exclusivity given to the registered mark, whereas, Cluett was able to present
Certificates of Registration.
d. The Philippines and the United States are parties to the Paris Convention and by
virtue of Philippines membership, trademark rights in favor of the respondent were
created.

ISSUES:
1. The date of actual use of the two trademarks;
2. Their confusing similarities; and
3. The applicability of the Paris Convention.
RULING: Petition has no merit.

1. Absent any clear showing to the contrary, the finding of the Bureau of Patents
that it was Cluett which had prior use of the trademark as shown in the various
Certificates of Registration issued in its favor.
The registration of a mark upon the supplemental register is not, as in the case of
the principal register, prima facie evidence of (a) the validity of registration, (2)
registrants ownership of the mark, and (3) registrants exclusive right to use the
mark.
Section 20, RA 166. A certificate of registration of a mark or tradename shall be
prima facie evidence of the validity of the registration, the registrants ownership of
the mark or tradename, and of the registrants exclusive right to use the same
subject to any conditions and limitations stated therein.
Thus, it was Cluett, which first validly registered the trademarks and was able to
present proof of registration that first used the trademark and device in question.
2. Findings of the Director of the Bureau of Patents was accorded great respect
on its used of Dominancy Test and the Holistic Test. Amigo presented no
explanation why it chose the representation or marks almost similar to that of
Cluetts, which trademark was validly registered on its name.
Emerald Garment Manufacturing Corp. v. Court of Appeals stated that in
determining whether trademarks are confusingly similar, jurisprudence has
developed two kinds of tests, the Dominancy Test and the Holistic Test.
a. Dominancy Test focuses on the similarity of the prevalent features of the
competing trademarks which might cause confusion or deception, and thus
constitutes infringement.
b. Holistic Test the entirety of the marks in question must be considered in
determining confusing similarity.
Applying the two tests, there are some minor differences between the two sets of
marks. The similarities are of such degree, the number and quality that the overall
impression given is that the two brands of socks are deceptively the same, or at
least very similar to each other:
a. Both products used the same type of lettering. Both also included a
representation of mans foot wearing a sock and the word linenized with arrows
printed on label;
b. The names of the brands are similar: Gold Top and Gold Toe;
c. Petitioner and respondent are engaged in the same line of business.
Since Amigo did not present any explanation why it chose the representation, it is
so far from claiming ownership over the trademark and device. Hence, violating
the applicable trademark provision at that time.
3. The Philippines and the United States are members of the Paris Convention,
thus entitling them to the international protection provided therein relating to
protection of trademarks.