Nestle's "Coffee-Mate" vs. Puregold's "Coffee Match"

In a Decision dated September 6, 2017 in the case of SOCIETE DES PRODUITS, NESTLE, S.A. vs. PUREGOLD PRICE CLUB, G.R. No. 217194, the Supreme Court Ruled in favor of Puregold:

     The word "COFFEE" is the common dominant feature between Nestle's mark "COFFEE-MATE" and Puregold's mark "COFFEE MATCH." However, following Section 123, paragraph (h) of RA 8293 which prohibits exclusive registration of generic marks, the word "COFFEE" cannot be exclusively appropriated by either Nestle or Puregold since it is generic or descriptive of the goods they seek to identify. In Asia Brewery, Inc. v. Court of Appeals,55 this Court held that generic or descriptive words are not subject to registration and belong to the public domain. Consequently, 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." 

     We agree with the findings of the BLA-IPO and ODG-IPO. 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. Accordingly, this Court sustains the findings of the BLA-IPO and ODG-IPO that the likelihood of confusion between Nestle's product and Puregold's product does not exist and upholds the registration of Puregold's mark.