CASE 2017-0031: SOCIETE DES PRODUITS, NESTLE, S.A.

, PETITIONER, VERSUS PUREGOLD PRICE

CLUB INC. (G.R NO. 217194, 06 , CARPIO, ACTING C.J.) (SUBJECT/S: CERTIFICATION ON NON-
FORUM SHOPPING BY CORPORATION MUST HAVE BOARD RESOLUTION; WHEN IS TRADEMARK
NOT REGISTRABLE; TWO TESTS TO DETERMINE WHETHER CONFUSION OCCURS AMONG
COMPETING TRADEMARKS) (BRIEF TITLE: NESTLE VS PUREGOLD)

DISPOSITIVE:

“WHEREFORE, we DENY the petition. We AFFIRM the 15 May 2014 Resolution and the 14
October 2014 Resolution of the Court of Appeals in CA-G.R. SP No. 134592.

SO ORDERED.”

SUBJECTS/DOCTRINES/DIGEST:

WHAT HAPPENED IN THIS CASE?

PUREGOLD FILED APPLICATION FOR TRADEMARK “COFFEE MATCH”. NESTLE OPPOSSED ON

THE GROUND THAT IT HAS ALREADY REGISTERED THE MARK “COFFEE-MATE”.

IPO DISMISSED THE OPPOSITION OF NESTLE ON THE GROUND THAT THE CERTIFICATION OF
NON-FORUM SHOPPING WAS NOT SUPPORTED BY BOARD RESOLUTION. FURTHER, THAT THE
MARKS ARE DIFFERENT AND NOT CONFUSING. CA AFFIRMED. SC AFFIRMED.

SPECIFICALLY WHAT WAS THE OPPOSITION OF NESTLE?

NESTLE ALLEGED THAT IT IS THE EXCLUSIVE OWNER OF THE “COFFEE-MATE” TRADEMARK AND
THAT THERE IS CONFUSING SIMILARITY BETWEEN THE “COFFEE-MATE” TRADEMARK AND
PUREGOLD’S “COFFEE MATCH” TRADEMARK. NESTLE ALLEGED THAT “COFFEE-MATE” HAS
BEEN DECLARED AN INTERNATIONALLY WELL-KNOWN MARK AND PUREGOLD’S USE OF
“COFFEE MATCH” WOULD INDICATE A CONNECTION WITH THE GOODS COVERED IN NESTLE’S
“COFFEE-MATE” MARK BECAUSE OF ITS DISTINCT SIMILARITY. NESTLE CLAIMED THAT IT
WOULD SUFFER DAMAGES IF THE APPLICATION WERE GRANTED SINCE PUREGOLD’S “COFFEE
MATCH” WOULD LIKELY MISLEAD THE PUBLIC THAT THE MARK ORIGINATED FROM NESTLE.10

WHAT WAS THE DECISION OF THE IPO?

IPO DISMISSED THE OPPOSITION OF NESTLE FIRST BECAUSE NESTLE’S OPPOSITION WAS
DEFECTIVE BECAUSE THE VERIFICATION AND CERTIFICATION AGAINST FORUM SHOPPING
ATTACHED TO NESTLE’S OPPOSITION DID NOT INCLUDE A BOARD OF DIRECTORS’ RESOLUTION
OR SECRETARY’S CERTIFICATE STATING MR. DENNIS JOSE R. BAROT’S (BAROT) AUTHORITY TO
ACT ON BEHALF OF NESTLE.

AND SECOND BECAUSE THE WORD “COFFEE” AS A MARK, OR AS PART OF A TRADEMARK,

WHICH IS USED ON COFFEE AND SIMILAR OR CLOSELY RELATED GOODS, IS NOT UNIQUE OR
HIGHLY DISTINCTIVE. NESTLE COMBINED THE WORD “COFFEE” WITH THE WORD “-MATE,”
WHILE PUREGOLD COMBINED THE WORD “COFFEE” WITH THE WORD “MATCH.” WHILE BOTH
NESTLE’S “-MATE” AND PUREGOLD’S “MATCH” CONTAIN THE SAME FIRST THREE LETTERS, THE
LAST TWO IN PUREGOLD’S MARK RENDERED A VISUAL AND AURAL CHARACTER THAT MAKES IT
EASILY DISTINGUISHABLE FROM NESTLE’S “COFFEE-MATE.”13 ALSO, THE LETTER “M” IN
PUREGOLD’S MARK IS WRITTEN AS AN UPPER CASE CHARACTER AND THE EYES OF A
CONSUMER WOULD NOT BE CONFUSED OR DECEIVED BY NESTLE’S “COFFEEMATE” WHERE THE
LETTER “M” IS WRITTEN IN LOWER CASE. CONSEQUENTLY, THE CONSUMER CANNOT MISTAKE
THE MARK AND THE PRODUCTS OF NESTLE AS THOSE OF PUREGOLD’S.14

WHAT WAS THE DECISION OF THE CA?

IT AFFIRMED THE DECISION OF THE IPO.

ON THE NON-FORUM SHOPPING CERTIFICATION WHAT WAS THE EXPLANATION OF NESTLE

AND IS THEIR EXPLANATION SUFFICIENT?

NESTLE EXPLAINED THAT THE AUTHORITY OF BAROT TO SIGN THE CERTIFICATION WAS BASED
ON AN SPA EXECUTED BY CELINE GEORGE.
THE SPA IS NOT SUFFICIENT BECAUSE IT WAS NOT ACCOMPANIED BY A BOARD RESOLUTION
OR SECRETARY’S CERTIFICATE FROM NESTLE SHOWING THAT CELINE JORGE WAS AUTHORIZED
BY THE BOARD OF DIRECTORS OF NESTLE TO EXECUTE THE POWER OF ATTORNEY IN FAVOR OF
BAROT.

THE COURTS ARE NOT EXPECTED TO TAKE JUDICIAL NOTICE OF BOARD RESOLUTIONS OR
SECRETARY’S CERTIFICATES ISSUED BY CORPORATIONS.

WHAT IS A TRADEMARK?

A TRADEMARK IS ANY DISTINCTIVE WORD, NAME~ SYMBOL, EMBLEM, SIGN, OR DEVICE, OR

ANY COMBINATION THEREOF, ADOPTED AND USED BY A MANUFACTURER OR MERCHANT ON
HIS GOODS TO IDENTIFY AND DISTINGUISH THEM FROM THOSE MANUFACTURED, SOLD, OR
DEALT BY OTHERS.

WHEN IS A TRADEMARK NOT REGISTRABLE?

SECTION 123 OF REPUBLIC ACT NO. 829346 (RA 8293) PROVIDES FOR TRADEMARKS WHICH
CANNOT BE REGISTERED, TO WIT: THE MARK IS:

XX XX

( D) IS IDENTICAL WITH A REGISTERED MARK BELONGING TO A DIFFERENT PROPRIETOR OR A

MARK WITH AN EARLIER FILING OR PRIORITY DATE, IN RESPECT OF: (I) THE SAME GOODS OR
SERVICES, OR (II) CLOSELY RELATED GOODS OR SERVICES, OR (III) IF IT NEARLY RESEMBLES
SUCH A MARK AS TO BE LIKELY TO DECEIVE OR CAUSE CONFUSION;

( E) IS IDENTICAL WITH, OR CONFUSINGLY SIMILAR TO, OR CONSTITUTES A TRANSLATION OF A

MARK WHICH IS CONSIDERED BY THE COMPETENT AUTHORITY OF THE PHILIPPINES TO BE WELL
KNOWN INTERNATIONALLY AND IN THE PHILIPPINES, WHETHER OR NOT IT IS REGISTERED
HERE, AS BEING ALREADY THE MARK OF A PERSON OTHER THAN THE APPLICANT FOR
REGISTRATION, AND USED FOR IDENTICAL OR SIMILAR GOODS OR SERVICES: PROVIDED, THAT
IN DETERMINING WHETHER A MARK IS WELL-KNOWN, ACCOUNT SHALL BE TAKEN OF THE
KNOWLEDGE OF THE RELEVANT SECTOR OF THE PUBLIC, RATHER THAN OF THE PUBLIC AT
LARGE, INCLUDING KNOWLEDGE IN THE PHILIPPINES WHICH HAS BEEN OBTAINED AS A RESULT
OF THE PROMOTION OF THE MARK;

(F) IS IDENTICAL WITH, OR CONFUSINGLY SIMILAR TO, OR CONSTITUTES A TRANSLATION OF A

MARK CONSIDERED WELL-KNOWN IN ACCORDANCE WITH THE PRECEDING PARAGRAPH,
WHICH IS REGISTERED IN THE PHILIPPINES WITH RESPECT TO GOODS OR SERVICES WHICH ARE
NOT SIMILAR TO THOSE WITH RESPECT TO WHICH REGISTRATION IS APPLIED FOR: PROVIDED,
THAT USE OF THE MARK IN RELATION TO THOSE GOODS OR SERVICES WOULD INDICATE A
CONNECTION BETWEEN THOSE GOODS OR SERVICES, AND THE OWNER OF THE REGISTERED
MARK: PROVIDED FURTHER, THAT THE INTERESTS OF THE OWNER OF THE REGISTERED MARK
ARE LIKELY TO BE DAMAGED BY SUCH USE;

(G) IS LIKELY TO MISLEAD THE PUBLIC, PARTICULARLY AS TO THE NATURE, QUALITY,

CHARACTERISTICS OR GEOGRAPHICAL ORIGIN OF THE GOODS OR SERVICES;

(H) CONSISTS EXCLUSIVELY OF SIGNS THAT ARE GENERIC FOR THE GOODS OR SERVICES THAT
THEY SEEK TO IDENTIFY;

WHAT IS THE GRAVAMEN OF TRADEMARK INFRINGEMENT?

THE LIKELIHOOD OF CONFUSION.

HOW DO YOU DETERMINE WHETHER THERE IS LIKELIHOOD OF CONFUSION?

THERE IS NO ABSOLUTE STANDARD FOR THE LIKELIHOOD OF CONFUSION.

ONLY THE PARTICULAR, AND SOMETIMES PECULIAR, CIRCUMSTANCES OF EACH CASE CAN
DETERMINE ITS EXISTENCE.
THUS, IN INFRINGEMENT CASES, PRECEDENTS MUST BE EVALUATED IN THE LIGHT OF EACH
PARTICULAR CASE.49

WHAT ARE THE TWO TESTS OF DETERMINING THE LIKELIHOOD OF CONFUSION?

THE DOMINANCY TEST AND THE HOLISTIC TEST.

WHAT IS THE DOMINANCY TEST?

THE DOMINANCY TEST FOCUSES ON THE SIMILARITY OF THE PREVALENT FEATURES OF THE
COMPETING TRADEMARKS THAT MIGHT CAUSE CONFUSION AND DECEPTION.

IF THE COMPETING TRADEMARK CONTAINS THE MAIN, ESSENTIAL, AND DOMINANT FEATURES
OF ANOTHER, AND CONFUSION OR DECEPTION IS LIKELY TO RESULT, LIKELIHOOD OF
CONFUSION EXISTS.

THE QUESTION IS WHETHER THE USE OF THE MARKS INVOLVED IS LIKELY TO CAUSE
CONFUSION OR MISTAKE IN THE MIND OF THE PUBLIC OR TO DECEIVE CONSUMERS.

WHAT IS THE HOLISTIC TEST?

IT ENTAILS A CONSIDERATION OF THE ENTIRETY OF THE MARKS AS APPLIED TO THE PRODUCTS,

INCLUDING THE LABELS AND PACKAGING, IN DETERMINING CONFUSING SIMILARITY.

THE DISCERNING EYE OF THE OBSERVER MUST FOCUS NOT ONLY ON THE PREDOMINANT
WORDS BUT ALSO ON THE OTHER FEATURES APPEARING ON BOTH MARKS IN ORDER THAT THE
OBSERVER MAY DRAW HIS CONCLUSION WHETHER ONE IS CONFUSINGLY SIMILAR TO THE
OTHER.54

CAN “COFFEE” BE EXCLUSIVELY BE REGISTERED?

NO BECAUSE IT IS GENERIC OR DESCRIPTIVE OF THE GOODS THEY IDENTIFY.

THE RULE IS THAT GENERIC OR DESCRIPTIVE WORDS ARE NOT SUBJECT TO REGISTRATION AND
BELONG TO THE PUBLIC DOMAIN.

SINCE COFFEE IS GENERIC HOW CAN THE REGISTRABILITY OF THE SUBJECT MARK “COFFEE
MATCH” BE DETERMINED?

WE MUST LOOK AT THE WORD OR WORDS PAIRED WITH THE GENERIC OR DESCRIPTIVE WORD,
IN THIS PARTICULAR CASE “-MATE” FOR NESTLE’S MARK AND “MATCH” FOR PUREGOLD’S
MARK, TO DETERMINE THE DISTINCTIVENESS AND REGISTRABILITY OF PUREGOLD’S MARK
“COFFEE MATCH.”

WHAT IS THE RULING OF THE SC IN THIS CASE:

THE DISTINCTIVE FEATURES OF BOTH MARKS ARE SUFFICIENT TO WARN THE PURCHASING
PUBLIC WHICH ARE NESTLE’S PRODUCTS AND WHICH ARE PUREGOLD’S PRODUCTS.

WHILE BOTH “-MATE” AND “MATCH” CONTAIN THE SAME FIRST THREE LETTERS, THE LAST
TWO LETTERS IN PUREGOLD’S MARK, “C” AND “H,” RENDERED A VISUAL AND AURAL
CHARACTER THAT MADE IT EASILY DISTINGUISHABLE FROM NESTLE’S MARK. ALSO, THE
DISTINCTIVENESS OF PUREGOLD’S MARK WITH TWO SEPARATE WORDS WITH CAPITAL LETTERS
“C” AND “M” MADE IT DISTINGUISHABLE FROM NESTLE’S MARK WHICH IS ONE WORD WITH A
HYPHENATED SMALL LETTER “-M” IN ITS MARK. IN ADDITION, THERE IS A PHONETIC
DIFFERENCE IN PRONUNCIATION BETWEEN NESTLE’S “-MATE” AND PUREGOLD’S “MATCH.” AS
A RESULT, THE EYES AND EARS OF THE CONSUMER WOULD NOT MISTAKE NESTLE’S PRODUCT
FOR PUREGOLD’S PRODUCT.