AMIGO MANUFACTURING, Inc., petitioner, vs. CLUETT PEABODY CO., INC., respondent. DECISION PANGANIBAN, J.

: 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. In the present case, the Bureau considered the totality of the similarities 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.

Statement of the Ca e

Petitioner Amigo anufacturing Inc. challenges, under !ule "# of the !ules of $ourt, the %anuary &", &''' !esolution(&) of the $ourt of Appeals *$A+ in $A,-! .P /o. 001'0, which reversed, on reconsideration, its own .eptember 0', &''2 3ecision. (0) The dispositive portion of the assailed !esolution reads as follows4 5678!89:!8, the otion for !econsideration is -!A/T83, and the 3ecision dated .eptember 0', &''2 !8;8!.83. $onsequently, the decision rendered by the 3irector of Patents dated .eptember <, &''= is hereby A99I! 83.> The 3ecision of the 3irector of Patents, referred to by the $A, disposed as follows4 5678!89:!8, the Petition is -!A/T83. $onsequently, $ertificate of !egistration /o. .!,00=? issued to !espondent,!egistrant (herein petitioner) is hereby cancelled. 5@et the records of this case be remanded to the PatentATrademark !egistry and 83P 3ivision for appropriate action in accordance with this 3ecision.> Petitioner also seeks the reversal of the %une <=, &''' $A !esolution (<) denying its own !econsideration. otion for

The Fact

The facts, which are undisputed, are summariBed by the $ourt of Appeals in its original 3ecision, as follows4 5The source of the controversy that precipitated the filing by (herein !espondent) $luett Peabody $o., Inc. *a /ew Cork corporation+ of the present case against (herein Petitioner) Amigo anufacturing Inc. *a Philippine corporation+ for cancellation of trademark is (respondentDs) claim of eEclusive ownership *as successor in interest of -reat American Fnitting ills, Inc.+ of the following trademark and devices, as used on menDs socks4 a+ b+ -:@3 T:8, under $ertificate of !egistration /o. ?1'1 dated .eptember 00, &'#2G 38;I$8, representation of a sock and magnifying glass on the toe of a sock, under $ertificate of !egistration /o. &<"?# dated %anuary 0#, &'?2G

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38;I$8, consisting of a Hplurality 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 maIor part of the stockingD under $ertificate of !egistration /o. &<221 dated ay ', &'?2G and @I/8/IJ83, under $ertificate of !egistration /o. &#""= dated April &<, &'1=.

d+

:n the other hand, (petitionerDs) trademark and device H-:@3 T:P, @ineniBed for 8Etra 6earD has the dominant color HwhiteD at the center and a Hblackish brownD background with a magnified design of the sockDs garter, and is labeled HAmigo anufacturing Inc., andaluyong, etro anila, ade in the PhilippinesD. In the Patent :ffice, this case was heard by no less than siE 7earing :fficers4 Attys. !odolfo -ilbang, !ustico $asia, . Cadao, 9abian !ufina, /eptali Bulilan and Pausi .apak. The last named officer drafted the decision under appeal which was in due court signed and issued by the 3irector of Patents *who never presided over any hearing+ adversely against the respondent Amigo anufacturing, Inc. as heretofore mentioned *supra, p.&+. The decision pivots on two point4 the application of the rule of idem sonans and the eEistence of a confusing similarity in appearance between two trademarks *!ollo, p. <<+.> (")

R!"#n$ of the Co!%t of A&&ea"

In its assailed !esolution, the $A held as follows4 >After a careful consideration of (respondentDs) arguments and a re,appreciation of the records of this case. (w)e find (respondentDs) motion for reconsideration meritorious. As shown by the records, and as correctly held by the 3irector of Patents, there is hardly any variance in the appearance of the marks H-:@3 T:PD and H-:@3 T:8D since both show a representation of a manDs foot wearing a sock, and the marks are printed in identical lettering. .ection "*d+ of !.A. /o. &?? declares to be unregistrable, Ha mark which consists o(r) comprises a mark or trademark which so resembles a mark or tradename registered in the Philippines of tradename previously used in the Philippines by another and not abandoned, as to be likely, when applied to or used in connection with the goods, business or services of the applicant, to cause confusion or mistake or to deceive the purchasers. (Petitioner)Ds mark is a combination of the different registered marks owned by (respondent). As held in 3el onte $orporation v. $ourt of Appeals, &2& .$!A "&= *&''=+, the question is not whether the two articles are distinguishable by their label when set aside but whether the general confusion made by the article upon the eye of the casual purchaser who is unsuspicious and off his guard, is such as to likely result in confounding it with the original. As held by the $ourt in the same decision(,) HThe 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.D 9urthermore, (petitioner)Ds mark is only registered with the .upplemental !egistry which gives no right of eEclusivity to the owner and cannot overturn the presumption of validity and eEclusiv(ity) given to a registered mark. 59inally, the Philippines and the Knited .tates are parties to the Knion $onvention for the Protection of Industrial Property adopted in Paris on arch 0=, &22<, otherwise known as the Paris $onvention. *Puma .portschuhfabriken !udolf 3assler F.-. v. Intermediate Appellate $ourt, &#2 .$!A 0<<+. (!espondent) is domiciled in the Knited .tates of America and is the lawful owner of several trademark registrations in the Knited .tates for the mark H-:@3 T:8D. EEE EEE E E ED

By virtue of the PhilippinesD membership to the Paris Knion, trademark rights in favor of the (respondent) were created. The obIect of the $onvention is to accord a national of a member nation eEtensive protection against infringement and other types of unfair competition. *Puma .portschuhfabriken !udolf 3assler F.-. v. Intermediate Appellate $ourt, &#2 .$!A 0<<G @a $hemise @acoste, ..A. v. 9ernandeB, &0' .$!A <1<+>(#) 7ence, this Petition.(?)

!e

In its

emorandum,(1) petitioner raises the following issues for the consideration of this $ourt4 'I

6hether or not the $ourt of Appeals overlooked that petitionerDs trademark was used in commerce in the Philippines earlier than respondentDs actual use of its trademarks, hence the $ourt of Appeals erred in affirming the 3ecision of the 3irector of Patents dated .eptember <, &''=. II .ince the petitionerDs actual use of its trademark was ahead of the respondent, whether or not the $ourt of Appeals erred in canceling the registration of petitionerDs trademark instead of canceling the trademark of the respondent. III 6hether or not the $ourt of Appeals erred in affirming the findings of the 3irector of Patents that petitionerDs trademark (was) confusingly similar to respondentDs trademarks. I( 6hether or not the $ourt of Appeals erred in applying the Paris $onvention in holding that respondent ha(d) an eEclusive right to the trademark Hgold toeD without taking into consideration the absence of actual use in the Philippines.>(2) In the main, the $ourt will resolve three issues4 *&+ the date of actual use of the two trademarksG *0+ their confusing similarities, and *<+ the applicability of the Paris $onvention.

The Co!%t) R!"#n$

The Petition has no merit.

F#% t I

!e:

Dates of First Use of Trademark and Devices

Petitioner claims that it started the actual use of the trademark 5-old Top and 3evice> in .eptember &'#?, while respondent began using the trademark 5-old Toe> only on ay &#, &'?0. It contends that the

claim of respondent that it had been using the 5-old Toe> trademark at an earlier date was not substantiated. The latterDs witnesses supposedly contradicted themselves as to the date of first actual use of their trademark, coming up with different dates such as &'#0, &'"1 and &'<2. 6e do not agree. Based on the evidence presented, this $ourt concurs in the findings of the Bureau of Patents that respondent had actually used the trademark and the devices in question prior to petitionerDs use of its own. 3uring the hearing at the Bureau of Patents, respondent presented Bureau registrations indicating the dates of first use in the Philippines of the trademark and the devices as follows4 a+ arch &?, &'#", -old ToeG b+ 9ebruary &, &'#0, the !epresentation of a .ock and a agnifying -lassG c+ %anuary <=, &'<0, the -old Toe !epresentationG and d+ 9ebruary 02, &'#0, 5@ineniBed.> The registration of the above marks in favor of respondent constitutes prima facie evidence, which petitioner failed to overturn satisfactorily, of respondentDs ownership of those marks, the dates of appropriation and the validity of other pertinent facts stated therein. Indeed, .ection 0= of !epublic Act &?? provides as follows4 5.ec. 0=. $ertificate 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 registrantLs ownership of the mark or trade,name, and of the registrantLs eEclusive right to use the same in connection with the goods, business or services specified in the certificate, subIect to any conditions and limitations stated therein.>(') oreover, the validity of the $ertificates of !egistration was not questioned. /either did petitioner present any evidence to indicate that they were fraudulently issued. $onsequently, the claimed dates of respondentDs first use of the marks are presumed valid. $learly, they were ahead of petitionerDs claimed date of first use of 5-old Top and 3evice> in &'#2. .ection #,A of !epublic Act /o. &?? (&=) states that an applicant for a trademark or trade name shall, among others, state the date of first use. The fact that the marks were indeed registered by respondent shows that it did use them on the date indicated in the $ertificate of !egistration. :n the other hand, petitioner failed to present proof of the date of alleged first use of the trademark 5-old Top and 3evice>. Thus, even assuming that respondent started using it only on ay &#, &'?0, we can make no finding that petitioner had started using it ahead of respondent. 9urthermore, petitioner registered its trademark only with the supplemental register. In La Chemise Lacoste v. Fernandez,(&&) the $ourt held that registration with the supplemental register gives no presumption of ownership of the trademark. .aid the $ourt4 >The registration of a mark upon the supplemental register is not, as in the case of the principal register, prima facie evidence of *&+ the validity of registrationG *0+ registrantDs ownership of the markG and *<+ registrantDs eEclusive right to use the mark. It is not subIect to opposition, although it may be cancelled after its issuance. /either may it be the subIect of interference proceedings. !egistration (i)n the supplemental register is not constructive notice of registrantDs claim of ownership. A supplemental register is provided for the registration because of some defects *conversely, defects which make a mark unregistrable on the principal register, yet do not bar them from the supplemental register.+D *Agbayani, II $ommercial @aws of the Philippines, &'12, p. #&", citing Ky 7ong o v. Titay M $o., et al., 3ec. /o. 0#" of 3irector of Patents, Apr. <=, &'?2.> As to the actual date of first use by respondent of the four marks it registered, the seeming confusion may have stemmed from the fact that the marks have different dates of first use. $learly, however, these dates are indicated in the $ertificates of !egistration. In any case, absent any clear showing to the contrary, this $ourt accepts the finding of the Bureau of Patents that it was respondent which had prior use of its trademark, as shown in the various $ertificates

of !egistration issued in its favor. ;erily, administrative agenciesD findings of fact in matters falling under their Iurisdiction are generally accorded great respect, if not finality. Thus, the $ourt has held4 5E E E. By reason of the special knowledge and eEpertise of said administrative agencies over matters falling under their Iurisdiction, they are in a better position to pass Iudgment thereonG thus, their findings of fact in that regard are generally accorded great respect, if not finality, by the courts. The findings of fact of an 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 appellate court to weigh once more the evidence submitted before the administrative body and to substitute its own Iudgment for that of the administrative agency in respect of sufficiency of evidence.> (&0)

Secon* I

!e:

Similarity of Trademarks

$iting various differences between the two sets of marks, petitioner assails the finding of the director of patents that its trademark is confusingly similar to that of respondent. Petitioner points out that the director of patents erred in its application of the idem sonans rule, claiming that the two trademarks 5-old Toe> and 5-old Top> do not sound alike and are pronounced differently. It avers that since the words gold and toe are generic, respondent has no right to their eEclusive use. The arguments of petitioner are incorrect. True, it would not be guilty of infringement on the basis alone of the similarity in the sound of petitionerDs 5-old Top> with that of respondentDs 5-old Toe.> Admittedly, the pronunciations of the two do not, by themselves, create confusion. 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 following portion of its 3ecision4 5As shown by the drawings and labels on file, the mark registered by !espondent,!egistrant under !egistration /o. .!,00=? is a combination of the abovementioned trademarks registered separately by the petitioner in the Philippines and the Knited .tates. 56ith respect to the issue of confusing similarity between the marks of the petitioner and that of the respondent,registrant applying the tests of idem sonans, the mark H-:@3 T:P M 38;I$8D is confusingly similar with the mark H-:@3 T:8D. The difference in sound occurs only in the final letter at the end of the marks. 9or the same reason, hardly is there any variance in their appearance. H-:@3 T:8D and H-:@3 T:PD are printed in identical lettering. Both show (a) representation of a manDs foot wearing a sock. H-:@3 T:PD blatantly incorporates petitionerDs H@I/8/IJ83D which by itself is a registered mark.5 (&<) The Bureau considered the drawings and the labels, the appearance of the labels, the lettering, and the representation of a manDs foot wearing a sock. :bviously, its conclusion is based on the totality of the similarities between the partiesD trademarks and not on their sounds alone. In Emerald Garment Manufacturing Corporation v. Court of Appeals ,(&") this $ourt stated that in determining whether trademarks are confusingly similar, Iurisprudence has developed two kinds of tests, the 3ominancy Test(&#) and the 7olistic Test.(&?) In its words4 5In determining whether colorable imitation eEists, Iurisprudence has developed two kinds of tests N the 3ominancy Test applied in Asia Brewery, Inc. v. $ourt of Appeals and other cases and the 7olistic Test developed in 3el onte $orporation v. $ourt of Appeals and its proponent cases. 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.

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. . . . 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. 3uplication or imitation is not necessaryG nor is it necessary that the infringing label should suggest an effort to imitate. ($. /eilman Brewing $o. v. Independent Brewing $o., &'& 9., "2', "'#, citing 8agle 6hite @ead $o., vs. Pflugh *$$+ &2= 9ed. #1'). 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. *Auburn !ubber $orporation vs. 7anover !ubber $o., &=1 9. 0d #22G E E E.+ EEE EEE EEE

:n the other side of the spectrum, the holistic test mandates that the entirety of the marks in question must be considered in determining confusing similarity.> In the present case, a resort to either the 3ominancy Test or the 7olistic Test shows that colorable imitation eEists between respondentDs 5-old Toe> and petitionerDs 5-old Top.> A glance at petitionerDs 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 registeredG namely, 5-old Toe,> the representation of a sock with a magnifying glass, the 5-old Toe> representation and 5lineniBed.> Admittedly, there are some minor differences between the two sets of marks. The similarities, however, are of such degree, 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 another. An eEamination 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 manDs foot wearing a sock and the word 5lineniBed> with arrows printed on the label. @astly, the names of the brands are similar ,, 5-old Top> and 5-old Toe.> oreover, 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 eEplanation why it chose those representations, considering that these were the eEact symbols used in respondentDs marks. Thus, the overall impression created is that the two products are deceptively and confusingly similar to each other. $learly, petitioner violated the applicable trademark provisions during that time. @et 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.

Th#%* I

!e:

The Paris Convention

Petitioner claims that the $ourt of Appeals erred in applying the Paris $onvention. 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 emphasiBe, .ection #,A of !epublic Act &?? requires the date of first use to be specified in the application for registration. .ince the

trademark was successfully registered, there eEists 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 Knion $onvention for the Protection of Industrial Property adopted in Paris on arch 0=, &22<, otherwise known as the Paris $onvention, of which the Philippines and the Knited .tates are members. !espondent is domiciled in the Knited .tates and is the registered owner of the 5-old Toe> trademark. 7ence, it is entitled to the protection of the $onvention. A foreign,based trademark owner, whose country of domicile is a party to an international convention relating to protection of trademarks, (&1) is accorded protection against infringement or any unfair competition as provided in .ection <1 of !epublic Act &??, the Trademark @aw which was the law in force at the time this case was instituted. In sum, petitioner has failed to show any reversible error on the part of the $ourt of Appeals. 7ence, its Petition must fail. +,EREFORE, the Petition is hereby DEN ED and the assailed !esolution AFF !MED. $osts against petitioner. .: :!38!83.