Prior Use and Confusing Similarity in Trademark Cancellation Cases

The Supreme Court's ruling in Amigo Manufacturing, Inc. v. Cluett Peabody Co., Inc. (G.R. No. 139300, March 14, 2001) clarifies how Philippine courts evaluate trademark cancellation cases, particularly when two marks appear similar and both parties claim prior use. The case is instructive for businesses that want to understand what makes a mark protectable and how the government's trademark registry treats competing claims.

The Dispute

Cluett Peabody Co., Inc., a New York corporation, owned several registered trademarks for men's socks, including "GOLD TOE," a device showing a sock with a magnifying glass, a representation of gold-colored lines on a sock's toe, and the mark "LINENIZED." These marks were registered in the Philippines between 1958 and 1970.

Amigo Manufacturing, Inc., a Philippine corporation, registered its own mark, "GOLD TOP, Linenized for Extra Wear," under the Supplemental Registry. Cluett Peabody filed a petition to cancel Amigo's registration, arguing that the marks were confusingly similar.

The Issue

The Supreme Court resolved three main questions: (1) which party first used its trademark; (2) whether the marks were confusingly similar; and (3) whether the Paris Convention applied to protect the foreign registrant.

Prior Use and the Value of Principal Registration

The Court held that Cluett Peabody had prior use of its marks. Under Section 20 of Republic Act No. 166 (the Trademark Law then in force), a certificate of registration is prima facie evidence of the validity of the registration, the registrant's ownership, and the registrant's exclusive right to use the mark. The Court noted that Amigo failed to present sufficient evidence to overturn this presumption.

A critical point: Amigo's mark was registered only in the Supplemental Registry. Citing La Chemise Lacoste v. Fernandez, the Court explained that registration in the supplemental register does not give a presumption of ownership. Unlike the principal register, supplemental registration is not constructive notice of a claim of ownership and does not confer the same exclusive rights.

Confusing Similarity: Two Tests

The Court applied two established tests for determining confusing similarity:

• The Dominancy Test, which focuses on the similarity of the prevalent or dominant features of competing marks.
• The Holistic Test, which requires considering the entirety of the marks.

Under either test, the Court found colorable imitation. The Bureau of Patents had considered the totality of similarities—the lettering, the representation of a man's foot wearing a sock, the gold checkered lines against a dark background, and the word "linenized." The Court emphasized that the question is not whether the two articles are distinguishable when set side by side, but whether the general impression upon the eye of the casual, unsuspecting purchaser is likely to result in confusion.

The Paris Convention

The Court also applied the Paris Convention for the Protection of Industrial Property, to which both the Philippines and the United States are parties. Under Section 37 of Republic Act No. 166, nationals of member countries are entitled to protection against infringement and unfair competition. Because Cluett Peabody was domiciled in the United States and had valid registrations, it was entitled to the Convention's protections.

Practical Takeaways

• Register on the principal register, not the supplemental register. Supplemental registration gives no presumption of ownership and offers weaker protection.
• Document the date of first use carefully. The date stated in a certificate of registration is presumed correct; an applicant must state the date of first use, and that date carries evidentiary weight.
• Consider the whole mark, not just the words. Similarity is judged by the totality of appearance, sound, and meaning—including devices, lettering, and overall impression.
• Foreign trademark owners have rights in the Philippines. Through the Paris Convention, nationals of member countries can enforce their marks against local registrants.
• Prior use matters, but proof matters more. A party claiming earlier use must present evidence; a valid registration is strong proof of ownership and use.

This article is general information and not legal advice. For your specific situation, consult a lawyer or ask ASG Legal AI.