G.R. No. 139300. March 14, 2001.

* jurisdiction, they are in a better position to pass judgment thereon;

thus, their findings of fact in that regard are generally accorded
AMIGO MANUFACTURING, INC., petitioner, vs. CLUETT PEABODY great respect, if not finality, by the courts. The findings of fact of an
CO., INC., respondent. administrative agency must be respected as long as they are
supported by substantial evidence, even if such evidence might not
be overwhelming or even preponderant. It is not the task of an
Trademarks and Tradenames; Infringement; Unfair Competition; A appellate court to weigh once more the evidence submitted before
certificate of registration of a mark or tradename is prima facie the administrative body and to substitute its own judgment for that
evidence of the validity of the registration, the registrant’s of the administrative agency in respect of sufficiency of evidence.”
ownership of the mark or tradename, and of the registrant’s
exclusive right to use the same in connection with the goods, Same; Same; Same; Tests to Determine Whether Trademarks are
business or services specified in the certificate, subject to any Confusingly Similar; Words and Phrases; “Dominancy Test” and
conditions and limitations stated therein.—The registration of the “Holistic Test,” Explained; The test of dominancy focuses on the
above marks in favor of respondent constitutes prima facie similarity of the prevalent features of the competing trademarks
evidence, which petitioner failed to overturn satisfactorily, of which might cause confusion or deception and thus constitutes
respondent’s ownership of those marks, the dates of appropriation infringement, while the holistic test mandates that the entirety of
and the validity of other pertinent facts stated therein. Indeed, the marks in question must be considered in determining confusing
Section 20 of Republic Act 166 provides as follows: “Sec. 20. similarity.—In Emerald Garment Manufacturing Corporation v.
Certificate of registration prima facie evidence of validity.—A Court of Appeals, this Court stated that in determining whether
certificate of registration of a mark or tradename shall be prima trademarks are confusingly similar, jurisprudence has developed
facie evidence of the validity of the registration, the registrant’s two kinds of tests, the Dominancy Test and the Holistic Test. In its
ownership of the mark or tradename, and of the registrant’s words: “In determining whether colorable imitation exists,
exclusive right to use the same in connection with the goods, jurisprudence has developed two kinds of tests—the Dominancy
business or services specified in the certificate, subject to any Test applied in Asia Brewery, Inc. v. Court of Appeals and other
conditions and limitations stated therein.” cases and the Holistic Test developed in Del Monte Corporation v.
Court of Appeals and its proponent cases. As its title implies, the
Same; Same; Same; The fact that the marks were indeed registered test of dominancy focuses on the similarity of the prevalent
by a party shows that it did use them on the date indicated in the features of the competing trademarks which might cause confusion
Certificate of Registration.—Section 5-A of Republic Act No. 166 or deception and thus constitutes infringement, x x x x x x x x x . . .
states that an applicant for a trademark or tradename shall, among If the competing trademark contains the main or essential or
others, state the date of first use. The fact that the marks were dominant features of another, and confusion and deception is likely
indeed registered by respondent shows that it did use them on the to result, infringement takes place. Duplication or imitation is not
date indicated in the Certificate of Registration. necessary; nor is it necessary that the infringing label should
suggest an effort to imitate. [C. Neilman Brewing Co. v.
Same; Same; Same; Registration with the supplemental register Independent Brewing Co., 191 F., 489, 495, citing Eagle White Lead
gives no presumption of ownership of the trademark.— Co., vs. Pflugh (CC) 180 Fed. 579]. The question at issue in cases of
Furthermore, petitioner registered its trademark only with the infringement of trademarks is whether the use of the marks
supplemental register. In La Chemise Lacoste v. Fernandez, the involved would be likely to cause confusion or mistakes in the mind
Court held that registration with the supplemental register gives no of the public or deceive purchasers. (Auburn Rubber Corporation
presumption of ownership of the trademark. Said the Court: “The vs. Hanover Rubber Co., 107 F. 2d 588; x x x.) x x x x x x x x x On the
registration of a mark upon the supplemental register is not, as in other side of the spectrum, the holistic test mandates that the
the case of the principal register, prima facie evidence of (1) the entirety of the marks in question must be considered in
validity of registration; (2) registrant’s ownership of the mark; and determining confusing similarity.”
(3) registrant’s exclusive right to use the mark. It is not subject to
opposition, although it may be cancelled after its issuance. Neither Same; Same; Same; Intellectual Property Law; Due Process; Duly
may it be the subject of interference proceedings. Registration [i]n registered trademarks are protected by law as intellectual
the supplemental register is not constructive notice of registrant’s properties and cannot be appropriated by others without violating
claim of ownership. A supplemental register is provided for the the due process clause.—Let it be remembered that duly registered
registration because of some defects (conversely, defects which trademarks are protected by law as intellectual properties and
make a mark unregistrable on the principal register, yet do not bar cannot be appropriated by others without violating the due process
them from the supplemental register.)’ (Agbayani, II Commercial clause. An infringement of intellectual rights is no less vicious and
Laws of the Philippines, 1978, p. 514, citing Uy Hong Mo v. Titay & condemnable as theft of material property, whether personal or
Co., et al., Dec. No. 254 of Director of Patents, Apr. 30, 1968.” real.

Same; Same; Same; Administrative Law; Evidence; Administrative Same; Same; Same; Conflict of Laws; Paris Convention; A foreign-
agencies’ findings of fact in matters falling under their jurisdiction based trademark owner, whose country of domicile is a party to an
are generally accorded great respect, if not finality.—In any case, international convention relating to protection of trademarks, is
absent any clear showing to the contrary, this Court accepts the accorded protection against infringement or any unfair
finding of the Bureau of Patents that it was respondent which had competition.—Thus, applicable is the Union Convention for the
prior use of its trademark, as shown in the various Certificates of Protection of Industrial Property adopted in Paris on March 20,
Registration issued in its favor. Verily, administrative agencies’ 1883, otherwise known as the Paris Convention, of which the
findings of fact in matters falling under their jurisdiction are Philippines and the United States are members. Respondent is
generally accorded respect, if not finality. Thus, the Court has held: domiciled in the United States and is the registered owner of the
“x x x. By reason of the special knowledge and expertise of said “Gold Toe” trademark. Hence, it is entitled to the protection of the
administrative agencies over matters falling under their Convention. A foreign-based trademark owner, whose country of
domicile is a party to an international convention relating to b) DEVICE, representation of a sock and
protection of trademarks, is accorded protection against magnifying glass on the toe of a sock, under
infringement or any unfair competition as provided in Section 37 of Certificate of Registration No. 13465 dated
Republic Act 166, the Trademark Law which was the law in force at January 25, 1968;
the time this case was instituted.
c) DEVICE, consisting of a 'plurality of gold
colored lines arranged in parallel relation
within a triangular area of toe of the stocking
and spread from each other by lines of
PANGANIBAN, J.: contrasting color of the major part of the
stocking' under Certificate of Registration No.
The findings of the Bureau of Patents that two trademarks are 13887 dated May 9, 1968; and
confusingly and deceptively similar to each other are binding upon
the courts, absent any sufficient evidence to the contrary. In the d) LINENIZED, under Certificate of Registration
present case, the Bureau considered the totality of the similarities No. 15440 dated April 13, 1970.
between the two sets of marks and found that they were of such
degree, number and quality as to give the overall impression that
the two products are confusingly if not deceptively the same. On the other hand, [petitioner's] trademark and device
'GOLD TOP, Linenized for Extra Wear' has the dominant
color 'white' at the center and a 'blackish brown'
Statement of the Case background with a magnified design of the sock's garter,
and is labeled 'Amigo Manufacturing Inc., Mandaluyong,
Petitioner Amigo Manufacturing Inc. challenges, under Rule 45 of Metro Manila, Made in the Philippines'.
the Rules of Court, the January 14, 1999 Resolution of the Court of
Appeals (CA) in CA-GR SP No. 22792, which reversed, on In the Patent Office, this case was heard by no less than
reconsideration, its own September 29, 1998 Decision. The six Hearing Officers: Attys. Rodolfo Gilbang, Rustico Casia,
dispositive portion of the assailed Resolution reads as follows: M. Yadao, Fabian Rufina, Neptali Bulilan and Pausi Sapak.
The last named officer drafted the decision under appeal
"WHEREFORE, the Motion for Reconsideration is which was in due court signed and issued by the Director
GRANTED, and the Decision dated September 29, 1998 of Patents (who never presided over any hearing)
REVERSED. Consequently, the decision rendered by the adversely against the respondent Amigo Manufacturing,
Director of Patents dated September 3, 1990 is hereby Inc. as heretofore mentioned (supra, p.1).
AFFIRMED."
The decision pivots on two point: the application of the
The Decision of the Director of Patents, referred to by the rule of idem sonans and the existence of a confusing
CA, disposed as follows: similarity in appearance between two trademarks (Rollo,
p. 33)."4
"WHEREFORE, the Petition is GRANTED. Consequently,
Certificate of Registration No. SR-2206 issued to Ruling of the Court of Appeals
Respondent-Registrant [herein petitioner] is hereby
cancelled. In its assailed Resolution, the CA held as follows:

"Let the records of this case be remanded to the "After a careful consideration of [respondent's]
Patent/Trademark Registry and EDP Division for arguments and a re-appreciation of the records of this
appropriate action in accordance with this Decision." case, we find [respondent's] motion for reconsideration
meritorious. As shown by the records, and as correctly
Petitioner also seeks the reversal of the June 30, 1999 CA held by the Director of Patents, there is hardly any
Resolution3 denying its own Motion for Reconsideration. variance in the appearance of the marks 'GOLD TOP' and
'GOLD TOE' since both show a representation of a man's
The Facts foot wearing a sock, and the marks are printed in identical
lettering. Section 4(d) of R.A. No. 166 declares to be
unregistrable, 'a mark which consists or comprises a mark
The facts, which are undisputed, are summarized by the Court of
or trademark which so resembles a mark or tradename
Appeals in its original Decision, as follows:
registered in the Philippines of tradename previously
used in the Philippines by another and not abandoned, as
"The source of the controversy that precipitated the filing to be likely, when applied to or used in connection with
by [herein Respondent] Cluett Peabody Co., Inc. (a New the goods, business or services of the applicant, to cause
York corporation) of the present case against [herein confusion or mistake or to deceive the purchasers.
Petitioner] Amigo Manufacturing Inc. (a Philippine [Petitioner]'s mark is a combination of the different
corporation) for cancellation of trademark is registered marks owned by [respondent]. As held in Del
[respondent's] claim of exclusive ownership (as successor Monte Corporation v. Court of Appeals, 181 SCRA 410
in interest of Great American Knitting Mills, Inc.) of the (1990), the question is not whether the two articles are
following trademark and devices, as used on men's socks: distinguishable by their label when set aside but whether
the general confusion made by the article upon the eye
a) GOLD TOE, under Certificate of Registration of the casual purchaser who is unsuspicious and off his
No. 6797 dated September 22, 1958; guard, is such as to likely result in confounding it with the
original. As held by the Court in the same decision, 'The
most successful form of copying is to employ enough
 points of similarity to confuse the public with enough into consideration the absence of actual use in the
points of difference to confuse the courts.' Furthermore, Philippines."
[petitioner]'s mark is only registered with the
Supplemental Registry which gives no right of exclusivity In the main, the Court will resolve three issues: (1) the date of actual
to the owner and cannot overturn the presumption of use of the two trademarks; (2) their confusing similarities, and (3)
validity and exclusivity given to a registered mark. the applicability of the Paris Convention.

"Finally, the Philippines and the United States The Court's Ruling
are parties to the Union Convention for the
Protection of Industrial Property adopted in
The Petition has no merit.
Paris on March 20, 1883, otherwise known as
the Paris Convention. (Puma
Sportschuhfabriken Rudolf Dassler K.G. v. First Issue:
Intermediate Appellate Court, 158 SCRA 233). Dates of First Use of Trademark and Devices
[Respondent] is domiciled in the United States
of America and is the lawful owner of several Petitioner claims that it started the actual use of the trademark
trademark registrations in the United States for "Gold Top and Device" in September 1956, while respondent began
the mark 'GOLD TOE'. using the trademark "Gold Toe" only on May 15, 1962. It contends
that the claim of respondent that it had been using the "Gold Toe"
xxx xxx x x x' trademark at an earlier date was not substantiated. The latter's
witnesses supposedly contradicted themselves as to the date of
first actual use of their trademark, coming up with different dates
By virtue of the Philippines' membership to the Paris
such as 1952, 1947 and 1938.
Union, trademark rights in favor of the [respondent] were
created. The object of the Convention is to accord a
national of a member nation extensive protection against We do not agree. Based on the evidence presented, this Court
infringement and other types of unfair competition. concurs in the findings of the Bureau of Patents that respondent
(Puma Sportschuhfabriken Rudolf Dassler K.G. v. had actually used the trademark and the devices in question prior
Intermediate Appellate Court, 158 SCRA 233; La Chemise to petitioner's use of its own. During the hearing at the Bureau of
Lacoste, S.A. v. Fernandez, 129 SCRA 373)"5 Patents, respondent presented Bureau registrations indicating the
dates of first use in the Philippines of the trademark and the devices
as follows: a) March 16, 1954, Gold Toe; b) February 1, 1952, the
Hence, this Petition.6
Representation of a Sock and a Magnifying Glass; c) January 30,
1932, the Gold Toe Representation; and d) February 28, 1952,
Issues "Linenized."

In its Memorandum, petitioner raises the following issues for the The registration of the above marks in favor of respondent
consideration of this Court: constitutes prima facie evidence, which petitioner failed to
overturn satisfactorily, of respondent's ownership of those marks,
"I the dates of appropriation and the validity of other pertinent facts
stated therein. Indeed, Section 20 of Republic Act 166 provides as
Whether or not the Court of Appeals overlooked that follows:
petitioner's trademark was used in commerce in the
Philippines earlier than respondent's actual use of its "Sec. 20. Certificate of registration prima facie evidence
trademarks, hence the Court of Appeals erred in affirming of validity. - A certificate of registration of a mark or
the Decision of the Director of Patents dated September trade-name shall be prima facie evidence of the validity
3, 1990. of the registration, the registrant's ownership of the mark
or trade-name, and of the registrant's exclusive right to
II use the same in connection with the goods, business or
services specified in the certificate, subject to any
conditions and limitations stated therein."9
Since the petitioner's actual use of its trademark was
ahead of the respondent, whether or not the Court of
Appeals erred in cancelling the registration of petitioner's Moreover, the validity of the Certificates of Registration was not
trademark instead of cancelling the trademark of the questioned. Neither did petitioner present any evidence to indicate
respondent. that they were fraudulently issued. Consequently, the claimed
dates of respondent's first use of the marks are presumed valid.
Clearly, they were ahead of petitioner's claimed date of first use of
III
"Gold Top and Device" in 1958.

Whether or not the Court of Appeals erred in affirming

Section 5-A of Republic Act No. 166 states that an applicant for a
the findings of the Director of Patents that petitioner's
trademark or trade name shall, among others, state the date of first
trademark [was] confusingly similar to respondent's
use. The fact that the marks were indeed registered by respondent
trademarks.
shows that it did use them on the date indicated in the Certificate
of Registration.
IV
On the other hand, petitioner failed to present proof of the date of
Whether or not the Court of Appeals erred in applying the alleged first use of the trademark "Gold Top and Device". Thus,
Paris Convention in holding that respondent had an even assuming that respondent started using it only on May 15,
exclusive right to the trademark 'gold toe' without taking
1962, we can make no finding that petitioner had started using it The arguments of petitioner are incorrect. True, it would not be
ahead of respondent. guilty of infringement on the basis alone of the similarity in the
sound of petitioner's "Gold Top" with that of respondent's "Gold
Furthermore, petitioner registered its trademark only with the Toe." Admittedly, the pronunciations of the two do not, by
supplemental register. In La Chemise Lacoste v. Fernandez, the themselves, create confusion.
Court held that registration with the supplemental register gives no
presumption of ownership of the trademark. Said the Court: The Bureau of Patents, however, did not rely on the idem sonans
test alone in arriving at its conclusion. This fact is shown in the
"The registration of a mark upon the supplemental following portion of its Decision:
register is not, as in the case of the principal register,
prima facie evidence of (1) the validity of registration; (2) "As shown by the drawings and labels on file, the mark
registrant's ownership of the mark; and (3) registrant's registered by Respondent-Registrant under Registration
exclusive right to use the mark. It is not subject to No. SR-2206 is a combination of the abovementioned
opposition, although it may be cancelled after its trademarks registered separately by the petitioner in the
issuance. Neither may it be the subject of interference Philippines and the United States.
proceedings. Registration [i]n the supplemental register
is not constructive notice of registrant's claim of "With respect to the issue of confusing similarity between
ownership. A supplemental register is provided for the the marks of the petitioner and that of the respondent-
registration because of some defects (conversely, defects registrant applying the tests of idem sonans, the mark
which make a mark unregistrable on the principal 'GOLD TOP & DEVICE' is confusingly similar with the mark
register, yet do not bar them from the supplemental 'GOLD TOE'. The difference in sound occurs only in the
register.)' (Agbayani, II Commercial Laws of the final letter at the end of the marks. For the same reason,
Philippines, 1978, p. 514, citing Uy Hong Mo v. Titay & hardly is there any variance in their appearance. 'GOLD
Co., et al., Dec. No. 254 of Director of Patents, Apr. 30, TOE' and 'GOLD TOP' are printed in identical lettering.
1968." Both show [a] representation of a man's foot wearing a
sock. 'GOLD TOP' blatantly incorporates petitioner's
As to the actual date of first use by respondent of the four marks it 'LINENIZED' which by itself is a registered mark."13
registered, the seeming confusion may have stemmed from the fact
that the marks have different dates of first use. Clearly, however, The Bureau considered the drawings and the labels, the
these dates are indicated in the Certificates of Registration. appearance of the labels, the lettering, and the representation of a
man's foot wearing a sock. Obviously, its conclusion is based on the
In any case, absent any clear showing to the contrary, this Court totality of the similarities between the parties' trademarks and not
accepts the finding of the Bureau of Patents that it was respondent on their sounds alone.
which had prior use of its trademark, as shown in the various
Certificates of Registration issued in its favor. Verily, administrative In Emerald Garment Manufacturing Corporation v. Court of
agencies' findings of fact in matters falling under their jurisdiction Appeals,14 this Court stated that in determining whether
are generally accorded great respect, if not finality. Thus, the Court trademarks are confusingly similar, jurisprudence has developed
has held: two kinds of tests, the Dominancy Test 15 and the Holistic Test.16 In
its words:
"x x x. By reason of the special knowledge and expertise
of said administrative agencies over matters falling under "In determining whether colorable imitation exists,
their jurisdiction, they are in a better position to pass jurisprudence has developed two kinds of tests – the
judgment thereon; thus, their findings of fact in that Dominancy Test applied in Asia Brewery, Inc. v. Court of
regard are generally accorded great respect, if not Appeals and other cases and the Holistic Test developed
finality, by the courts. The findings of fact of an in Del Monte Corporation v. Court of Appeals and its
administrative agency must be respected as long as they proponent cases.
are supported by substantial evidence, even if such
evidence might not be overwhelming or even
As its title implies, the test of dominancy focuses on the
preponderant. It is not the task of an appellate court to
similarity of the prevalent features of the competing
weigh once more the evidence submitted before the
trademarks which might cause confusion or deception
administrative body and to substitute its own judgment
and thus constitutes infringement.
for that of the administrative agency in respect of
sufficiency of evidence."
xxx xxx xxx
Second Issue:
Similarity of Trademarks . . . . If the competing trademark contains the main or
essential or dominant features of another, and confusion
and deception is likely to result, infringement takes place.
Citing various differences between the two sets of marks, petitioner
Duplication or imitation is not necessary; nor is it
assails the finding of the director of patents that its trademark is
necessary that the infringing label should suggest an
confusingly similar to that of respondent. Petitioner points out that
effort to imitate. [C. Neilman Brewing Co. v. Independent
the director of patents erred in its application of the idem sonans
Brewing Co., 191 F., 489, 495, citing Eagle White Lead Co.,
rule, claiming that the two trademarks "Gold Toe" and "Gold Top"
vs. Pflugh (CC) 180 Fed. 579]. The question at issue in
do not sound alike and are pronounced differently. It avers that
cases of infringement of trademarks is whether the use
since the words gold and toe are generic, respondent has no right
of the marks involved would be likely to cause confusion
to their exclusive use.
or mistakes in the mind of the public or deceive
purchasers. (Auburn Rubber Corporation vs. Hanover
Rubber Co., 107 F. 2d 588; x x x.)
 xxx xxx xxx known as the Paris Convention, of which the Philippines and the
United States are members. Respondent is domiciled in the United
On the other side of the spectrum, the holistic test States and is the registered owner of the "Gold Toe" trademark.
mandates that the entirety of the marks in question must Hence, it is entitled to the protection of the Convention. A foreign-
be considered in determining confusing similarity." based trademark owner, whose country of domicile is a party to an
international convention relating to protection of trademarks, is
accorded protection against infringement or any unfair
In the present case, a resort to either the Dominancy Test or the
competition as provided in Section 37 of Republic Act 166, the
Holistic Test shows that colorable imitation exists between
Trademark Law which was the law in force at the time this case was
respondent's "Gold Toe" and petitioner's "Gold Top." A glance at
instituted.
petitioner's mark shows that it definitely has a lot of similarities and
in fact looks like a combination of the trademark and devices that
respondent has already registered; namely, "Gold Toe," the In sum, petitioner has failed to show any reversible error on the
representation of a sock with a magnifying glass, the "Gold Toe" part of the Court of Appeals. Hence, its Petition must fail.
representation and "linenized."
WHEREFORE, the Petition is hereby DENIED and the assailed
Admittedly, there are some minor differences between the two Resolution AFFIRMED. Costs against petitioner.
sets of marks. The similarities, however, are of such degree,
number and quality that the overall impression given is that the two SO ORDERED.
brands of socks are deceptively the same, or at least very similar to
each another. An examination of the products in question shows
that their dominant features are gold checkered lines against a
predominantly black background and a representation of a sock
with a magnifying glass. In addition, both products use the same
type of lettering. Both also include a representation of a man's foot
wearing a sock and the word "linenized" with arrows printed on the
label. Lastly, the names of the brands are similar -- "Gold Top" and
"Gold Toe." Moreover, it must also be considered that petitioner
and respondent are engaged in the same line of business.

Petitioner cannot therefore ignore the fact that, when compared,

most of the features of its trademark are strikingly similar to those
of respondent. In addition, these representations are at the same
location, either in the sock itself or on the label. Petitioner presents
no explanation why it chose those representations, considering
that these were the exact symbols used in respondent's marks.
Thus, the overall impression created is that the two products are
deceptively and confusingly similar to each other. Clearly,
petitioner violated the applicable trademark provisions during that
time.

Let it be remembered that duly registered trademarks are

protected by law as intellectual properties and cannot be
appropriated by others without violating the due process clause. An
infringement of intellectual rights is no less vicious and
condemnable as theft of material property, whether personal or
real.

Third Issue:
The Paris Convention

Petitioner claims that the Court of Appeals erred in applying the

Paris Convention. Although respondent registered its trademark
ahead, petitioner argues that the actual use of the said mark is
necessary in order to be entitled to the protection of the rights
acquired through registration.

As already discussed, respondent registered its trademarks under

the principal register, which means that the requirement of prior
use had already been fulfilled. To emphasize, Section 5-A of
Republic Act 166 requires the date of first use to be specified in the
application for registration. Since the trademark was successfully
registered, there exists a prima facie presumption of the
correctness of the contents thereof, including the date of first use.
Petitioner has failed to rebut this presumption.

Thus, applicable is the Union Convention for the Protection of

Industrial Property adopted in Paris on March 20, 1883, otherwise