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G.R. No.

217194
SOCIETE DES PRODUITS,
NESTLE, S.A.
(Petitioner)

PUREGOLD PRICE CLUB, INC.


(Respondent)
THE CASE
 a petition for review on certiorari
 15 May 2014 Resolution
 14October 2014 Resolution of the
Court of Appeals (CA) in CA-G.R. SP
No. 134592.
THE FACTS
Petitioner Societe des
Produits Nestle, S.A.
(Nestle)
 laws of Switzerland
 coffee, ice cream, chocolates, cereals,
sauces, soups, condiment mixes, dairy
and non-dairy products, etc.
THE FACTS
Respondent Puregold Price Club, Inc.
(Puregold)
 Philippine law
 trading goods such as consumer
goods on wholesale or on retail basis.
THE FACTS
June 14, 2007
Puregold filed an application for the
registration of the trademark

 coffee,tea, cocoa, sugar, artificial coffee,


flour and preparations made from
cereals, bread, pastry and confectionery,
and honey
THE FACTS
December 5, 2008
Nestle filed an opposition
◦ there is confusing similarity
◦ exclusive owner
◦ internationally well-known mark
◦ it would suffer damages
The Decision of the Bureau of
Legal Affairs-Intellectual
Property Office (BLA-IPO)
April 16, 2012
THE BLA-IPO DISMISSED NESTLE'S OPPOSITION
 opposition was defective
◦ 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.
◦ sufficient ground to dismiss
The Decision of the (BLA-IPO)
 word "COFFEE“ is not unique or highly
distinctive.
 both contain the same first three letters,
the last two in Puregold's mark rendered a
visual and aural character that makes it
easily distinguishable
The Decision of the (BLA-IPO)

 consumer cannot mistake the mark and


the products
June 11, 2012

Nestle filed an appeal with the Office


of the Director General of the
Intellectual Property Office (ODG-
IPO).
The Decision of the ODG-IPO
February 7, 2014
ODG-IPO DISMISSED NESTLE'S APPEAL
 Barot's authority to sign was not sufficiently
proven by Nestle
 Barot's authority should be accompanied by
proof or evidence of his authority from Nestle.
 not confusingly similar
 consumers would unlikely be deceived or
confused
The Decision of the ODG-IPO
 "COFFEE“ cannot be exclusively
appropriated
 it is generic or descriptive of the goods in
question.
 no visual, phonetic, or conceptual
similarity between the two marks.
April 14, 2014
Nestle filed a Petition for Review
with the Court of Appeals.
The Decision of the CA
May 15, 2014
CA DISMISSED NESTLE'S PETITION FOR
REVIEW
1. the title thereof does not bear the name of
party respondent
2. there is no board resolution and/or
secretary's certificate to prove the authority of
Dennis Jose R. Barot to file the petition and to
sign the Verification/Certification of Non-Forum
Shopping on behalf of petitioner-corporation
The Decision of the CA
3. certified true copies of material
[portions] of the record were not
attached.

The above considering, the Court RESOLVES


to DISMISS the petition outright.
June 13, 2014
Nestle filed a Motion for
Reconsideration which was DENIED by the
CA on 14 October 2014.

 it is without merit
 petitioner filed beyond the 15-day
reglementary period. (Under Rule 43,
Section 4 of the Rules of Court)
THE ISSUES
Nestle presented the following issues:
1. The Honorable Court of Appeals
erred in dismissing petitioner's motion for
reconsideration upon an erroneous
appreciation of certain antecedent facts,
and similarly erred in dismissing the petition
for review on procedural grounds.
2. There is merit to the substantive
issues raised by petitioner, which deserves
to be given due course and a final ruling.
The Ruling of this Court
“WE DENY THE PETITION.”
Procedural issues in this case:
 Nestle filed its petition for review
within the period granted by the Court of
Appeals.
 The CA dismissed Nestle's petition for
review on the ground that Nestle filed its
petition for review after the 15-day
reglementary period required by Section
4, Rule 43 of the Rules of Court.
Under Rule 43, Section 4 of
the Rules of Court (Period of
Appeal)
 within fifteen (15) days
 Only one (1) motion for reconsideration
shall be allowed.
 may grant an additional period of fifteen
(15) days
March 14, 2014 March 27, 2014

 Decision of the  Nestle filed a


ODG-IPO was motion for
received by extension with
Nestle's the CA.

• gives petitioner until April 13, 2014

April 14, 2014


Nestle failed to properly
execute a certification against
forum shopping as required by
Section 5, Rule 7 of the Rules of
Court.
VERIFICATION AND CERTIFICATION OF NON-FORUM SHOPPING
I, _______________________, of legal age, after having been duly sworn in accordance with law, depose
and state that:
1. I am a plaintiff in the above-stated case;
2. I caused the preparation of the foregoing complaint;
3. I have read the contents thereof and the facts stated therein are true and correct of my personal
knowledge and/or on the basis of copies of documents and records in my possession;
4. I have not commenced any other action or proceeding involving the same issues in the Supreme Court,
the Court of Appeals, or any other tribunal or agency;
5. To the best of my knowledge and belief, no such action or proceeding is pending in the Supreme Court,
the Court of Appeals, or any other tribunal or agency;
6. If I should thereafter learn that a similar action or proceeding has been filed or is pending before the
Supreme Court, the Court of Appeals, or any other tribunal or agency, I undertake to report that fact
within five (5) days therefrom to this Honorable Court.
___________________________
Affiant

SUBSCRIBED AND SWORN to before me this ___ day of __________ 200_ at


_________________ affiant exhibiting to me his Community Tax Certificate
No.____________________ issued on ________________ 200_ at ______________ City.

Doc. No. ;
Page No. ;
Book No. ;
Series of 200_.
Failure to comply
 not be curable by mere amendment of
the complaint
 cause for the dismissal of the case
without prejudice, unless otherwise
provided, upon motion and after
hearing.
Juridical persons
 cannot personally sign the certification
against forum shopping
 must act through an authorized
representative.
 exercise of corporate powers is lodged
with the board of directors
 selected or authorized collectively by the
board of directors.
Nestle acknowledged that:
 there is no board resolution and/or
secretary's certificate to prove the
authority of Dennis Jose R. Barot to file
the petition and Verification/Certification
of NonForum Shopping on behalf of
petitioner-corporation
 there is a Power of Attorney evidencing
such authority
 The power of attorney was signed by
Celine Jorge.
 the authority of Celine Jorge 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.
Puregold's mark
may be registered.
 The word "COFFEE" is the common
dominant feature.
 the word "COFFEE" cannot be exclusively
appropriated since it is generic or
descriptive of the goods they seek to
identify.
 we must look at the word or words paired
with the generic or descriptive word
 We agree with the findings of the BLA-IPO
and ODG-IPO.
 distinctive features of both marks are
sufficient to warn the purchasing public
 "MATCH" rendered a visual and aural
character
 the eyes and ears of the consumer would
not mistake Nestle's product for
Puregold's product.
 likelihood of confusion their product does
not exist
 upholds the registration of Puregold's
mark