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

The source of the company that precipitated the filing by Cluett Peabody, Inc.
(a New York corporation)of the present case against Amigo Manufacturing, Inc. (a
Philippine corporation) for cancellation of trademark is Cluetts claim of exclusive
ownership (as successor in interest of Great American knitting Mills, Inc.) of the
following trademark and devices, as used on mens socks:

GOLD TOE, under Certificate of Registration No. 6797 dated September 22,
DEVICE, representation of a sock and magnifying glass on the toe of a sock,
under Certificate of Registration No. 13465 dated January 25, 1968;
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 contrasting color of the major part of stocking under;
Certificate of Registration No. 13887 dated May 9, 1968; and
LINENIZED, under Certificate of Registration No. 15440 dated April 13, 1970.

On the other hand, petitioners trademark and device GOLD TOP, Linenized for
Extra Wear has the dominant color white at the center and a blackish brown
background with a magnified design of the socks garter, and is labeled Amigo
Manufacturing Inc., Mandaluyong, Metro Manila, made in the Philippines.
The Patent Office ruled in favor of Cluett because of idem sonans and the
existence of a confusing similarity in appearance between two trademarks.
The Court of Appeals upheld the ruling of the patent office by stating the

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 and that it cannot be allowed
to be registered because it runs counter to the Section 4 of Republic Act 166.
Amigos mark 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 a registered mark.
The Philippines and the United States are parties to the Paris Convention. The
object of the Convention is to accord a national of a member nation extensive
protection against infringement and other types of unfair competition.

1. Who among the parties had first actual use over the trademark?
2. Are confusing similarities on the trademark and device of the parties?
3. Does the Paris Convention apply in the given case?

The Petition of Amigo has no permit.

1. The respondent were able to present with the 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 30, 1952, the
Representation of a Sock and a Magnifying Glass; c) January 30, 1932, the
Gold Toe Representation; and d) February 28, 1952 Linenized. The
registration of these marks in favor of respondent constitutes prima facie
evidence, which petitioner failed to overturn satisfactorily, of respondents
ownership of those marks, the dates of appropriation and the validity of
other pertinent facts stated therein which is specifically mandated by
Section 20 of Republic Act 166.
Furthermore, petitioner registered its trademark only with the
supplemental register. It is already settled that registration with the
supplemental register gives no presumption of ownership of the
2. The Bureau of Patents, did not rely on the idem sonans test alone in
arriving at its conclusion. The Bureau considered the drawings and the
labels, the appearance of the labels, the lettering, and the representation
of a mans foot wearing a sock. Obviously its conclusion is based on the
totality of the similarities between the parties trademarks and not on
their sounds alone.
As its title implies, the test of dominancy focuses on the similarity of
the prevalent features of the competing trademarks which might cause
confusion or deception and thus constitutes infringement. If the trademark
contains the main or essential or dominant features of another, and
confusion and deception is likely to result, infringement takes place.
Duplication or imitation is not necessary; nor is it necessary that the
infringing label should suggest an effort to imitate. The question at issue
in cases of infringement of trademarks is whether the use of the marks
involved would be likely to cause confusion or mistakes in the mind of the
public or deceive purchasers.
The holistic test mandates that the entirely of the marks in question
must be considered in determining confusing similarity.
In the present case, a resort to either the Dominancy Test or the
Holistic Test shows that colorable imitation exists between respondents
Gold Toe and petitioners Gold Top Both tests apply.
An examination of the products would show the following similarities:

Dominant features are gold checkered lines against a predominantly

black background.
Both have a representation of a sock with a magnifying glass.
Both products use the same type of lettering.
Both also include a representation of a mans foot wearing a sock and
the word linenized with arrows printed on the label.

The names of the brands are similar Gold Top and Gold Toe.
That petitioner and respondent are engaged in the same line of

3. Cluett registered its trademarks under the principal register, which means
that the requirement of prior use had already been fulfilled. 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.
A foreign 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 competition as
provided in Section 37 of Republic Act 166, the Trademark Law which was
the law in force at the time this case was instituted.

246 CORPORATION, doing business under the name and style of ROLEX MUSIC
LOUNGE VS. HON. REYNALDO B. DAWAY, in his capacity as Presiding Judge of Branch
In 1998, Montres Rolex SA and Rolex Centre Phil, Ltd., owners and proprietors
of Rolex and crown Device failed against 246 Corporation, doing business as Rolex
Music Lounge, a suit for trademark infringement and damages. In 2000, 246 Corp.
filed a motion for preliminary hearing on its affirmative defense; which the court
thereafter issued a subpoena ad testificandum to Atty. Atienza. Montres Rolex
opposed, and the trial court quashed the subpoena. 246 Corp. filed a petition for
certiorari before the Court of Appeals, which was dismissed. Hence, the petition for
review on certiorari.
Whether or not the junior use of a registered mark on entirely different goods
The rule, that there is no infringement in the use of a junior user of the
registered mark on the entirely different goods, has been modified by Section 123.1
(f) of RA 8293 (Intellectual Property Code). His use is precluded when that the mark
is well known internationally and in the Philippines, the use of the mark would
indicate a connection or relationship between the user and the registrant, and that
the interests of the well known mark are likely to be damaged. The Court, however
cannot resolve the merits considering the facts as to the existence/absence of the
requisites should be addressed in a full-blown hearing and not on a mere
preliminary hearing.


Summary: Petition granted, RTC ruling upheld- liable for trademark infringement and
unfair competition.
Dominancy Test applied. Respondents use of the Big Mak mark results in
likelihood of confusion.
First, Big Mak sounds exactly the same as Big Mac.
Second, the first word in Big Mak is exactly the same as the first word in
Big Mac.
Third, the first two letters in Mak the same as the first two letters in Mac.
Fourth, the last letter in Mak while a k sounds the same as c when the
word Mac is pronounces.
Fifth, In Filipino, the letter k replaces c in spelling, thus Caloocan is
spelled Kalookan.
The Court finds that petitioners have duly established McDonalds exclusive
ownership of the Big Mac mark. Obviously, the Justices have at some point eaten
at McDo.
To establish trademark infringement, the following elements must be shown:
(1) The validity of plaintiffs mark;
(2) The plaintiffs ownership of the mark; and
(3) The use of the mark of its colorable imitation by the alleged infringer
results in likelihood of confusion.
Of these, it is the element of likelihood of confusion that is the graveness of
trademark infringement.
A mark is valid if it is distinctive and thus not barred from registration under
Section 4 of RA 166 (Section 4). However, once registered, not only the marks
validity but also the registrants ownership of the mark is prima facie presumed.
The Big Mac mark, which should be treated in its entirety and not dissected
word for word, is neither generic nor descriptive. Generic marks are commonly used
as the name or description of kind of goods, such as Lite for beer or chocolate
Fudge for chocolate soda drink. Descriptive marks, on the other hand, convey the

characteristics, functions, qualities or ingredients of a product to one who has never

seen it or does not know it exists, such as Arthriticare for arthritis medication. On
the contrary, Big Mac falls under the class of fanciful or arbitrary marks as it bears
no logical relation to the actual characteristics of the product it represents. As such,
it is highly distinctive and thus valid. Significantly, the trademark Little Debbie for
snack cakes was found arbitrary or fanciful.
While there is confusion of goods when the products are competing,
confusion of business exists when the products are non-competing but related
enough to produce confusion of affiliation. Section 22 covers two types of confusion
arising from the use of similar or colorable imitation marks, namely, confusion of
goods (product confusion) and confusion of business (source or origin confusion).