In trademark disputes, priority of use and the likelihood of consumer confusion are critical. The Supreme Court has affirmed that the Bureau of Patents’ findings on trademark similarity are binding unless proven otherwise. This ruling underscores the importance of establishing prior use and demonstrates how similarities in trademarks are assessed to prevent consumer deception, thus protecting legitimate trademark owners and the public from confusion in the marketplace.

From ‘Gold Toe’ to ‘Gold Top’: When Sock Trademarks Cause Legal Foot Faults

This case revolves around a trademark dispute between Amigo Manufacturing, Inc. (petitioner) and Cluett Peabody Co., Inc. (respondent), concerning the trademarks “GOLD TOP” and “GOLD TOE,” both used on men’s socks. Cluett Peabody, as the successor in interest of Great American Knitting Mills, Inc., claimed exclusive ownership of several trademarks and devices, including “GOLD TOE” and related designs. Amigo Manufacturing, on the other hand, used the trademark “GOLD TOP, Linenized for Extra Wear.” The central issue was whether Amigo’s trademark was confusingly similar to Cluett Peabody’s registered trademarks, warranting the cancellation of Amigo’s trademark registration.

The Court of Appeals (CA) initially ruled in favor of Amigo but reversed its decision upon reconsideration, affirming the Director of Patents’ decision to cancel Amigo’s Certificate of Registration No. SR-2206. The CA held that the marks “GOLD TOP” and “GOLD TOE” were confusingly similar in appearance, given the representation of a man’s foot wearing a sock and the identical lettering used. The appellate court also emphasized that Amigo’s mark was registered only in the Supplemental Registry, which does not grant the same presumption of ownership as registration in the Principal Register. Moreover, the CA cited the Paris Convention, which protects trademark rights for foreign entities like Cluett Peabody, domiciled in the United States.

The Supreme Court (SC) addressed three main issues: the dates of actual use of the trademarks, their confusing similarity, and the applicability of the Paris Convention. The SC sided with Cluett Peabody, finding that Cluett Peabody had established prior use of its trademarks through Bureau of Patents registrations. These registrations served as prima facie evidence of ownership and the validity of the claimed dates of first use, which Amigo failed to effectively challenge. Section 20 of Republic Act 166 (now substantially reproduced in Section 138 of RA 8293, the “Intellectual Property Code of the Philippines”) underscores this point:

“Sec. 20. Certificate of registration prima facie evidence of validity. – A certificate of registration of a mark or trade-name shall be prima facie evidence of the validity of the registration, the registrant’s ownership of the mark or trade-name, and of the registrant’s exclusive right to use the same in connection with the goods, business or services specified in the certificate, subject to any conditions and limitations stated therein.”

Furthermore, Amigo’s registration in the supplemental register did not grant it the same legal presumptions of ownership as a principal registration. This distinction proved crucial in the Court’s assessment of the parties’ rights. The court reiterated that administrative agencies’ findings of fact, especially those requiring special knowledge and expertise, are typically given significant weight.

Regarding the similarity of the trademarks, the SC dismissed Amigo’s argument that the Director of Patents erred in applying the idem sonans rule, which considers the similarity in sound between trademarks. The Court clarified that the Bureau of Patents did not rely solely on the sound of the marks but considered the totality of the similarities between them. This included the drawings, labels, lettering, and representation of a man’s foot wearing a sock.

The SC referenced the Dominancy Test and the Holistic Test, both used to determine whether trademarks are confusingly similar. The Dominancy Test focuses on the similarity of the dominant features of the trademarks that might cause confusion or deception. The Holistic Test requires consideration of the entirety of the marks in question. Using either test, the Court found that Amigo’s trademark was indeed a colorable imitation of Cluett Peabody’s.

“In determining whether colorable imitation exists, jurisprudence has developed two kinds of tests – the Dominancy Test applied in Asia Brewery, Inc. v. Court of Appeals and other cases and the Holistic Test developed in Del Monte Corporation v. Court of Appeals and its proponent cases.”

The Court noted the striking similarities in the gold checkered lines, black background, representation of a sock with a magnifying glass, and the use of the word “linenized” with arrows on the label. Given these similarities and the fact that both companies were in the same line of business, the Court concluded that the overall impression created was one of deceptive and confusing similarity.

Elements	Cluett Peabody (“Gold Toe”)	Amigo (“Gold Top”)
Dominant Colors	Gold and Black	Gold and Black
Sock Representation	Man’s foot wearing a sock	Man’s foot wearing a sock
Additional Elements	Linenized Label	Linenized Label
Overall Impression	Distinct brand of socks	Deceptively similar brand

The Court underscored that duly registered trademarks are protected by law and cannot be appropriated by others without violating due process. Infringement of intellectual property rights is akin to theft of material property. Addressing the applicability of the Paris Convention, the SC reiterated that because Cluett Peabody registered its trademarks under the principal register, it had already met the requirement of prior use. As a U.S.-domiciled company and registered owner of the “Gold Toe” trademark, Cluett Peabody was entitled to the protection of the Paris Convention, which both the Philippines and the United States are parties to.

FAQs

What was the central issue in the Amigo Manufacturing, Inc. v. Cluett Peabody Co., Inc. case?	The central issue was whether the trademark “GOLD TOP” used by Amigo Manufacturing was confusingly similar to the trademark “GOLD TOE” owned by Cluett Peabody, warranting the cancellation of Amigo’s trademark registration.
What is the significance of registering a trademark in the Principal Register versus the Supplemental Register?	Registration in the Principal Register provides prima facie evidence of the validity of the registration, ownership of the mark, and the exclusive right to use it, while registration in the Supplemental Register does not carry the same presumptions.
What are the Dominancy and Holistic Tests used in determining trademark similarity?	The Dominancy Test focuses on the similarity of the dominant features of competing trademarks that could cause confusion, whereas the Holistic Test requires considering the entirety of the marks in question.
How does the Paris Convention protect trademark owners in international disputes?	The Paris Convention provides protection to trademark owners who are nationals of or have business establishments in member countries, ensuring they receive protection against infringement and unfair competition in other member countries.
What is the effect of a Certificate of Registration of a trademark?	A Certificate of Registration serves as 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 same in connection with the goods, business or services specified in the certificate.
What does the term “idem sonans” mean in the context of trademark law?	“Idem sonans” refers to the similarity in sound between two trademarks, which can be a factor in determining whether there is a likelihood of confusion among consumers. However, similarity in sound alone is not always determinative.
What is the role of the Bureau of Patents in trademark disputes?	The Bureau of Patents is responsible for determining whether trademarks are confusingly similar. The bureau’s findings are generally accorded great respect, if not finality, by the courts due to their special knowledge and expertise.
What is “colorable imitation” in trademark law?	Colorable imitation refers to the act of copying or imitating a trademark to such an extent that it deceives or is likely to deceive ordinary purchasers into believing that the goods are those of the original trademark owner.

This case highlights the importance of securing trademark rights through proper registration and diligent enforcement. The ruling reinforces the protection afforded to trademark owners and serves as a reminder to businesses to conduct thorough trademark searches before adopting a mark to avoid potential infringement issues. The decision emphasizes that similarity is evaluated holistically, considering all aspects of the marks in question.

For inquiries regarding the application of this ruling to specific circumstances, please contact ASG Law through contact or via email at frontdesk@asglawpartners.com.

Disclaimer: This analysis is provided for informational purposes only and does not constitute legal advice. For specific legal guidance tailored to your situation, please consult with a qualified attorney.
Source: Amigo Manufacturing, Inc. vs. Cluett Peabody Co., Inc., G.R. No. 139300, March 14, 2001