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.

CASE DIGEST: Sambar vs. Levi Strauss

VENANCIO SAMBAR, doing business under the name and style of CVS Garment Enterprises vs. LEVI STRAUSS & CO., LEVI STRAUSS (PHIL.), INC.

FACTS:

Private respondents alleged in their complaint that Levi Strauss and Co. (LS&Co.), an internationally known clothing manufacturer, own the arcuate design trademark which was registered under US Trademark Registration No. 404,248 on November 16, 1943. That sometime in 1987, CVSGIC and Venancio Sambar, without the consent and authority of private respondents and in infringement and unfair competition, sold and advertised, and despite demands to cease and desist, continued to manufacture, sell and advertise denim, pants under the brand name “Europress” with back pockets bearing a design similar to the arcuate trademark of private respondents, thereby causing confusion on the buying public, prejudiced to private respondent’s goodwill and property right.

Sambar filed a separate answer. He admitted that copyright Registration No. 1-1998 was issued to him, but he denied using it. He said he did not authorize anyone to use the copyrighted design.

Trial court issued a writ of preliminary injunction enjoining CVSGIC and petitioner from manufacturing, advertising and selling pants with the arcuate design on their back pockets.

Private respondents moved for reconsideration praying for the cancellation of petitioner’s copyright registration.

Trial court granted the prayer.

Petitioner appealed to the Court of Appeals which affirmed the ruling of the trial court.

ISSUE:

Whether petitioner infringe on private respondent’s arcuate design.

HELD:

To be entitled to a copyright, the thing being copyrighted must be original, created by the author through his own skill, labor and judgment, without directly copying or evasively imitating the work of another.

Both the trail court and the Court of Appeals found there was infringement.

CASE DIGEST: Vargas vs. FM Yaptico

ANGEL VARGAS vs F. M. YAPTICO & CO. (Ltd.)

G.R. No. 14101, September 24, 1919

Facts:

Plaintiff Angel Vargas, a farmer, was issued patents by the United States Patent Office for his so-called invention of an improved adjustable plow with the use his own native plow. A certified copy of the patent was filed in the Division of Patents, Copyrights, and Trademarks of the Executive Bureau, Government of the Philippine Islands.

Defendant F. M. Yaptico & Co. (Ltd.), a firm engaged in the foundry business in Iloilo City, was a manufacturer of plow parts. It produced points, shares, shoes, and heel pieces in a considerable amount adapted to replace worn-out parts of the Vargas plow.

Vargas filed a case in the Court of First Instance of Iloilo to enjoin the alleged infringement of his U.S. Patent by the defendant F. M Yaptico & Co. (Ltd.), and to recover the damages suffered by reason of this infringement, to which the court issued the preliminary injunction prayed for.

The defendant denied the allegations and defended that the patent lacked novelty or invention, that there was no priority of ideas or device in the principle and construction of the plow, and that the plow, whose manufacture it was sought to have enjoined by the plaintiff, had already been in public use for more than two years before the application of the plaintiff for his patent.

The trial judge rendered judgment in favor of the defendant, declaring null and without effect the patent in question and dismissing the suit with costs against the plaintiff. Hence, the plaintiff appealed said judgment.

Issues:

1. Whether the patented invention is void for lack of novelty and invention?

2. Whether the patent is invalid considering that the plow had already been in public use for over two years prior to the application for a patent.

Ruling:

1. Yes, the patent if void. The Supreme Court affirmed the trial court’s conclusion that the plow of the plaintiff is not different from the native plow, except in the material, in the form, in the weight and the grade of the result, the said differences giving it neither a new function nor a new result distinct from the function and the result obtained from the native plow. Also, its production does not presuppose the exercise of the inventive faculty but merely of mechanical skill, which does not give a right to a patent of an invention under the provisions of the Patent Law.

2. Yes, the patent is void. Under the provisions of the statute, an inventor's creation must not have been in public use or on sale in the United States (and the Philippine Islands) for more than two years prior to his application.

Further, it was proved that the invention was used in public at Iloilo by others than Vargas, the inventor, more than two years before the application for the patent thus, the patent is invalid.

CASE DIGEST: Universal Mills Corporation vs. Universal Textile Mills

78 SCRA 62 (1977) 

FACTS:

This is an appeal from the order of the Securities and Exchange Commission granting a petition by the respondent to have the petitioner’s corporate name be changed as it is “confusingly and deceptively similar” to that of the former.

On January 8, 1954, respondent Universal Textile Mills was issued a certificate of Corporation as a textile manufacturing firm. On the other hand, petitioner, which deals in the production of hosieries and apparels, acquired its current name by amending its articles of incorporation, changing its name from Universal Hosiery mills Corporation to Universal Mills corporation.

ISSUE:

Whether or not petioner’s trade name is confusingly similar with that of respondent’s.

HELD:

Yes. The corporate names in question are not identical, but they are indisputably so similar that even under the test of reasonable care and observation as the public generally are capable of using and may be expected to exercise” invoked by appellant. We are apprehensive confusion will usually arise, considering that x x x appellant included among its primary purposes the manufacturing, dyeing, finishing and selling of fabrics of all kinds” which respondent had been engaged for more than a decade ahead of petitioner.

CASE DIGEST: Kenneth Roy Savege vs. Taypin

KENNETH ROY SAVAGE/K ANGELIN EXPORT TRADING, owned and managed by GEMMA DEMORAL-SAVAGE vs. JUDGE APRONIANO B. TAYPIN, Presiding Judge, RTC-BR. 12, Cebu City, CEBU PROVINCIAL PROSECUTOR'S OFFICE, NATIONAL BUREAU OF INVESTIGATION, Region VII, Cebu City, JUANITA NG MENDOZA, MENDCO DEVELOPMENT CORPORATION, ALFREDO SABJON and DANTE SOSMEÑA

G.R. No. 134217, May 11, 2000 

FACTS: Petitioners Savage, seek to nullify the search warrant issued by respondent Judge Aproniano B. Taypin of the Regional Trial Court, Br. 12 Cebu City, which resulted in the seizure of certain pieces of wrought iron furniture from the factory of petitioners located in Biasong, Talisay, Cebu.

The complaint was lodged by private respondent Eric Ng Mendoza, president and general manager of Mendco Development Corporation (MENDCO), alleging that Savage’s products are the object of unfair competition involving design patents, punishable under Art. 189 of the Revised Penal Code as amended. Savage contends however, that there was no existence of offense leading to the issuance of a search warrant and eventual seizure of its products.

Issue: Whether or not unfair competition involving design patents are punishable under Article 189 of the Revised Penal Code.

HELD: To provide a clear view, the Intellectual Property Code took effect on January 1, 1998. The repealing clause of the IPC provides that Articles 188 and 189 of the Revised Penal Code (RPC), Presidential Decree No. 49, are hereby repealed The issue involving the existence of "unfair competition" as a felony involving design patents, referred to in Art. 189 of the Revised Penal Code, has been rendered moot and academic by the repeal of the article. Hence, the search warrant cannot even be issued by virtue of a possible violation of the IPR Code.

There is no mention of any crime of "unfair competition" involving design patents in the controlling provisions on Unfair Competition of the RPC. It is therefore unclear whether the crime exists at all, for the enactment of RA 8293 did not result in the reenactment of Art. 189 of the Revised Penal Code.

The court is are prevented from applying these principles, along with the new provisions on Unfair Competition found in the IPR Code, to the alleged acts of the petitioners, for such acts constitute patent infringement as defined by the same Code

Although the case traces its origins to the year 1997 or before the enactment of the IPR Code, Article 22 of the Revised Penal Code provides that penal laws shall be applied retrospectively, if such application would be beneficial to the accused. Since the IPR Code effectively obliterates the possibility of any criminal liability attaching to the acts alleged, then RPC provisions must be applied.

CASE DIGEST: Samson vs. Tarroza

28 SCRA 792 (1969)

FACTS:

This is an appeal from a decision of the Director of Patents denying the petition for the cancellation of Utility Model Letters Patent No. 62 in favor of respondent Felipe Tarroza for his Side Tilting-Dumping Wheelbarrow.

Petitioner Gerardo Samson, Jr was also a prior grantee of Utility Model Patent No. 27 for a Dumping and Detachable Wheelbarrow, which he claims to have been infringed by the respondent, they being neighbors.

ISSUE:

Whether or not respondent’s Utility Model Patent deserves cancellation.

HELD:

No. There is an express recognition under the Patent Law that any new model of implements or tools or of any industrial product even if not possessed of the quality of invention but which is of “practical utility” is entitled to a “patent for a utility model: From the description of the side of tilting-dumping wheelbarrow, the product of ingenuity and industry, it is quite apparent that it has a place in the market and possesses what the statute refers to as “practical utility.”

CASE DIGEST: Frank vs. Benito

PATRICK HENRY FRANK and WILLIAM HENRY GOHN vs. CONSTANCIO BENITO

G.R. No. L-27793, March 15, 1928 

FACTS: Plaintiffs are the owners of a patent covering hemp-stripping machine No. 1519579 issued to them by the United States Patent Office and duly registered in the Bureau of Commerce and Industry of the Philippine Islands under the provisions of Act No. 2235  

Plaintiffs allege that the defendant manufactured a hemp-stripping machine in which, without authority from the plaintiffs, and has embodied and used such spindles and their method of application and use, and is exhibiting his machine to the public for the purpose of inducing its purchase. Frank and Gohn stress that use by the Benito of such spindles and the principle of their application to the stripping of hemp is in violation of, and in conflict with, plaintiffs' patent, together with its conditions and specifications.

Plaintiffs assert the violation of infringement upon the patent granted to Frank & Gohn, and requested that an action for injunction and damages be instituted against Benito.

Respondent on the other hand contends that it had no prior knowledge of the prior existence of the hemp-stripping invention of the plaintiffs nor had any intent to imitate the Frank’s product.  Likewise, the defendant contended that the facts alleged therein do not constitute a cause of action, that it is ambiguous and vague. The lower court rendered judgment in favor of the plaintiffs, to which was later affirmed by the appellate court.

HELD: As a rule, the burden of proof to substantiate a charge of infringement is with the plaintiff. Where, however, the plaintiff introduces the patent in evidence, if it is in due form, it affords a prima facie presumption of its correctness and validity. The decision of the Commissioner of Patents in granting the patent is always presumed to be correct. The burden the shifts to the defendant to overcome by competent evidence this legal presumption.

The patent in the case at bar, having been introduced in evidence, affords a prima facie presumption of its correctness and validity. Hence, this is not a case of a conflict between two different patents. In the recent of Temco Electric Motor Co. vs. Apco Mfg. Co., decided by the Supreme Court of the United States ruled “an improper cannot appropriate the basic patent of another, and if he does so without license is an infringer, and may be used as such. It is well established that an improver cannot appropriate the basic patent of another and that the improver without a license is an infringer and may be sued as such.”

CASE DIGEST: Etepha A.G. vs. Director of Patents

16 SCRA 495 (1966)

FACTS:

            On April 23, 1959, private respondent  Westmont Pharmaceuticals, Inc. sought registration of trademark “Atussin” This was objected to by petitioner Etepha, A.G. alleging that it will be detrimental on their part as it is confusingly similar to its Pertussin. Both products deal with the treatment of cough.

ISSUE:

            Whether or not Attusin may be registered as a trademark.

HELD:

            Yes. x x x The validity of a cause for infringment is predicated upon colorable imitation. The phrase “colorable imitaion” denotes such a “close or ingenious imitation as to be calculated to deceive ordinary persons, or such a resemblance to the original as to deceive an ordinary purchaser giving such attention as a purchaser usually gives, and to cause him to purchase the one supposing it to be the other.”

            While “tussin” by itself cannot thus be used exclusively to identify one’s goods, it may properly become the subject of a trademark “by combination with another word or phrase.”

            The two labels are entirely different in colors, contents, arrangement of words theeon, sizes, shapes and general appearance. The contrasts in pictorial effects and appeals to the eye is so pronounced that the label of one cannot be mistaken for that of the other, not even by persons unfamiliar with the two trademarks.

            We cannot escape notice of the fact that the two words do not sound alike – when pronounced.

‘The Buzz’ staff charged for copyright infringement

By Julie M. Aurelio
Philippine Daily Inquirer
First Posted 00:48:00 03/16/2011
Filed Under: Television, Entertainment (general), Patents and Copyright and Trademarks, Conflicts (general)

MANILA, Philippines—The Quezon City prosecutors’ office has charged eight staff members of an ABS-CBN showbiz talk show for allegedly violating copyright laws after using footage of a GMA 7 soap opera without the network’s consent.

In a resolution dated 2008 but released only early this month, eight production staff of showbiz talk show “The Buzz” were charged in court for violating the Republic Act 8293 or the Intellectual Property Code.

Named in the indictment were Nancy Yabut, executive producer; Gia Nina Suyao, production manager; Jonathan Diaz, director; and Roxy Liquigan, supervising producer and creative consultant.

Assistant City Prosecutor Vesta Victoria Villamor indicted the ABS-CBN employees on charges of violation of Section 177 and 211 of the Intellectual Property Code.

Also charged were Lani Gutierrez, associate producer for technical matters; Jenny Ingalia, associate producer; Romer Gonzales, head writer and Roldeo Endrinal, reportedly of the show's executive management.

Villamor said in her six-page resolution that she found probable cause to charge them in court as there was no merit to their defense of ignorance.

She, however, dismissed the case against ABS-CBN executives Eugenio Lopez III, Luis Alejandro, Ma. Rosario Santos-Concio and Ma. Socorro Vidanes for insufficiency of evidence.

Villamor, in indicting the eight staff members of “The Buzz,” noted that each episode was a product of their meeting and brainstorming, and that there was no merit to their defense of ignorance.

“Human experience and logic would dictate that these respondents who are experienced employees in the field of broadcasting knew beforehand that a news item about Jopay Paguia would be tackled in their program. This fact should have put them on guard instead of making it appear that they were ignorant of the intended airing of the footage of “Daisy Siete” without the consent and authority of FOCUS or GMA.”

Ms. Paguia is a mainstay of GMA-7 afternoon program, “Daisy Siete.”

The assistant prosecutor recommended a bail of P6,000 each for the respondents’ provisional liberty.

The case has then been raffled to Regional Trial Court Branch 90.

The case stemmed from a complaint filed by GMA Network Inc through its counsel Dick Perez, and Focus Entertainment, Inc., which produced the soap opera “Daisy Siete.”

The two entities claimed that the unauthorized airing of footages from “Daisy Siete” happened during the Feb. 13, 2005 broadcast of “The Buzz.”

In their complaint, GMA 7 and Focus alleged that the portion included in “The Buzz’s” opening billboard or OBB was the scene of Jopay Paguia walking beside and mounting a jeepney while holding a yellow flower with the text “Jopay Paguia” at the bottom of the screen.

The afternoon soap opera features the Sexbomb dancers, of which Paguia is a member.

The rival of ABS-CBN, GMA 7 claimed that the respondents allegedly used the footage after rumors circulated that Paguia was quitting the group.

In their defense, the respondents maintained they didn’t violate any copyright laws as the airing of the footage was just for a few seconds and was intended as part of a report on current events.

They added that under the Intellectual Property Code’s Article 185, the reproduction of a material has been allowed under the “Fair Use” principle.

CA temporarily stops ABS-CBN’s infringement case vs Revillame

By Nancy C. Carvajal
Philippine Daily Inquirer
First Posted 19:24:00 12/21/2010

MANILA, Philippines—The Court of Appeals has ordered a Makati Regional Trial Court to stop conducting hearings on the petition for a temporary restraining order (TRO) being sought by television network ABS-CBN against former “Wowowee” host Willie Revillame.

According to ABC 5 lawyer Ferdinand Domingo, the appellate court granted the petition for a TRO filed by ABC Development Corp. (TV5) and its president, Ray C. Espinosa, against Judge Joselito C. Villarosa, presiding judge of the Makati City Regional Trial Court Branch 66.

“The TRO enjoins the Makati Regional Trial Court from conducting further proceedings on the TRO application by ABS-CBN on Civil Case No. 10-1155,” Domingo said.

Revillame moved to TV5 earlier this year after he and ABS-CBN had a falling out. He is the host of the network’s new primetime game show, “Willing Willie.”

Domingo said the decision was contained in the December 17 resolution of the appellate court’s Fourth Division headed by Associate Justice Josefina Guevara-Salonga with Associate Justices Franchito N. Diamante and Mariflor Punzalan Castillo as members.

Earlier, ABS-CBN filed a copyright infringement case against Revillame before the Makati RTC. It accused him of copying the format of “Wowowee” in “Willing Willie.”

In response, TV5 asked the appellate court to issue a TRO to stop the lower court from hearing the case against Revillame.


Domingo, however, said the court required TV5 to post a cash bond worth P102,400,000 “to answer for any and all damages which private respondent (ABS-CBN) may suffer or sustain, by reason of the temporary restraining order, should this court finally decide that the petitioners are not entitled thereto.”

SOURCE: http://showbizandstyle.inquirer.net/entertainment/entertainment/view/20101221-310255/CA-temporarily-stops-ABS-CBNs-infringement-case-vs-Revillame

Gin by any other name still ‘ginebra’

MANILA, Philippines—The Court of Appeals (CA) has thrown out the petition of an alcoholic beverage firm asking for the exclusive use of “ginebra” on its gin products.
The court said the word was a generic term for “gin.”

In a ruling released Friday, Associate Justice Estela Bernabe upheld the decision of the Intellectual Property Office (IPO) junking the request of La Tondeña Distillers Inc. (LTDI) to grant it a trademark for “ginebra.”

“Accordingly, the court finds no error on the part of the IPO director general in dismissing petitioner’s appeal from the denial of its application for registration of the mark ‘ginebra,’” Bernabe said in her six-page decision.

LTDI, formerly Ginebra San Miguel Inc., had filed a petition on February 21, 2003, asking the Bureau of Trademarks to grant it exclusive rights to put the word “ginebra” on its products.
According to the appellate court, LTDI itself mentioned in the petition that the term “ginebra” was a Spanish word for the English word “gin,” an intoxicating drink made from the juniper berry.

As such, the court said that using the word “ginebra” was “merely indicative and descriptive of the merchandise or product designated” and that it was a generic term referring to gin products.
It said that allowing LTDI to have intellectual property rights over the word “ginebra” would unfairly deny four other beverage companies use of the term on their products.

“It is, therefore, a generic term which cannot be appropriated for petitioner’s exclusive use because it would unjustly deprive other gin dealers of the right to use the same with reference to their merchandise,” the appeals court ruled. Aside from LTDI, alcoholic beverage companies Tanduay Distillers Inc., Twin Ace Holding Corp., Consolidated Distillers of the Far East Inc., and Webengton Distillery Inc. had also been putting the word “ginebra” on their gin bottles, the court said.

http://business.inquirer.net/money/breakingnews/view/20100823-288377/Gin-by-any-other-name-still-ginebra