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GOLD TOE, under Certificate of Registration No. 6797 dated September 22,
1958;
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
following:
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.
ISSUE:
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?
HELD:
The names of the brands are similar Gold Top and Gold Toe.
That petitioner and respondent are engaged in the same line of
business.
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
90 of the RTC of Quezon City, MONTRES ROLEX S.A. AND ROLEX CENTRE PHIL.
LIMITED
FACTS:
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.
ISSUE:
Whether or not the junior use of a registered mark on entirely different goods
subsist.
HELD:
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.