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: 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: Mighty vs. La Campana Fabrica

MIGHTY CORPORATION and LA CAMPANA FABRICA DE TABACO, INC. vs. E.J. GALLO WINERY and THE ANDRESONS GROUP, INC.

FACTS:

            On March 12, 1993, respondents sued petitioners in the RTC-Makati for trademark and trade name infringement and unfair competition, with a prayer for damages and preliminary injunction.

            They claimed that petitioners adopted the Gallo trademark to ride on Gallo Winery’s and Gallo and Ernest & Julio Gallo trademark’s established reputation and popularity, thus causing confusion, deception and mistake on the part of the purchasing public who had always associated Gallo and Ernest and Julio & Gallo trademarks with Gallo Winery’s wines.

            In their answer, petitioners alleged, among other affirmative defenses that: petitioners Gallo cigarettes and Gallo Winery’s wine were totally unrelated products. To wit:

1.    Gallo Winery’s GALLO trademark registration certificates covered wines only, and not cigarettes;

2.    GALLO cigarettes and GALLO wines were sold through different channels of trade;

3.    the target  market of Gallo Winery’s wines was the middle or high-income bracket while Gallo cigarette buyers were farmers, fishermen, laborers and other low-income workers;

4.    the dominant feature of the Gallo cigarette was the rooster device with the manufacturer’s name clearly indicated as MIGHTY CORPORATION, while in the case of Gallo Winery’s wines, it was the full names of the founders-owners ERNEST & JULIO GALLO or just their surname GALLO;

On April 21, 1993, the Makati RTC denied, for lack of merit, respondent’s prayer for the issuance of a writ of preliminary injunction.

On August 19, 1993, respondent’s motion for reconsideration was denied.

On February 20, 1995, the CA likewise dismissed respondent’s petition for review on certiorari.

After the trial on the merits, however, the Makati RTC, on November 26, 1998, held petitioners liable for, permanently enjoined from committing trademark infringement and unfair competition with respect to the GALLO trademark.

On appeal, the CA affirmed the Makati RTC’s decision and subsequently denied petitioner’s motion for reconsideration.

ISSUE:

Whether GALLO cigarettes and GALLO wines were identical, similar or related goods for the reason alone that they were purportedly forms of vice.

HELD:

           

            Wines and cigarettes are not identical, similar, competing or related goods.

            In resolving whether goods are related, several factors come into play:

·         the business (and its location) to which the goods belong

·         the class of product to which the good belong

·    the product’s quality, quantity, or size, including the nature of the package, wrapper or container

·         the nature and cost of the articles

·   the descriptive properties, physical attributes or essential characteristics with reference to their form, composition, texture or quality

·         the purpose of the goods

·   whether the article is bought for immediate consumption, that is, day-to-day household items

·         the field of manufacture

·         the conditions under which the article is usually purchased and

·      the articles of the trade through which the goods flow, how they are distributed, marketed, displayed and sold.

The test of fraudulent simulation is to the likelihood of the deception of some persons in some measure acquainted with an established design and desirous of purchasing the commodity with which that design has been associated. The simulation, in order to be objectionable, must be as appears likely to mislead the ordinary intelligent buyer who has a need to supply and is familiar with the article that he seeks to purchase.

The petitioners are not liable for trademark infringement, unfair competition or damages.

WHEREFORE, petition is granted.

CASE DIGEST: Industrial Refractories vs. CA

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INDUSTRIAL REFRACTORIES CORPORATION OF THE PHILIPPINES vs. COURT OF APPEALS, SECURITIES AND EXCHANGE COMMISSION and REFRACTORIES CORPORATION OF THE PHILIPPINES

G.R. No. 122174, October 3, 2002

Facts:

Respondent Refractories Corporation of the Philippines (RCP) is a corporation duly organized on October 13, 1976. On June 22, 1977, it registered its corporate and business name with the Bureau of Domestic Trade.

Petitioner IRCP was incorporated on August 23, 1979 originally under the name "Synclaire Manufacturing Corporation". It amended its Articles of Incorporation on August 23, 1985 to change its corporate name to "Industrial Refractories Corp. of the Philippines".

Both companies are the only local suppliers of monolithic gunning mix.

Respondent RCP then filed a petition with the Securities and Exchange Commission to compel petitioner IRCP to change its corporate name.

The SEC rendered judgment in favor of respondent RCP.

Petitioner appealed to the SEC En Banc. The SEC En Banc modified the appealed decision and the petitioner was ordered to delete or drop from its corporate name only the word "Refractories".

Petitioner IRCP filed a petition for review on certiorari to the Court of Appeals and the appellate court upheld the jurisdiction of the SEC over the case and ruled that the corporate names of petitioner IRCP and respondent RCP are confusingly or deceptively similar, and that respondent RCP has established its prior right to use the word "Refractories" as its corporate name.

Petitioner then filed a petition for review on certiorari

Issue:

Are corporate names Refractories Corporation of the Philippines (RCP) and "Industrial Refractories Corp. of the Philippines" confusingly and deceptively similar?

Ruling:

Yes, the petitioner and respondent RCP’s corporate names are confusingly and deceptively similar.
Further, Section 18 of the Corporation Code expressly prohibits the use of a corporate name which is "identical or deceptively or confusingly similar to that of any existing corporation or to any other name already protected by law or is patently deceptive, confusing or contrary to existing laws". The policy behind said prohibition is to avoid fraud upon the public that will have occasion to deal with the entity concerned, the evasion of legal obligations and duties, and the reduction of difficulties of administration and supervision over corporation.

The Supreme Court denied the petition for review on certiorari due for lack of merit.

CASE DIGEST: COMPAÑIA GENERAL DE TABACOS DE FILIPINAS vs. ALHAMBRA CIGAR AND CIGARETTE MANUFACTURING CO.

FACTS:

            It is admitted that plaintiff’s trade name as evidenced by the certificate issued under the Spanish regime, consists solely of the words “La Flor de la Isabela”. Plaintiff does not claim that the word “Isabela” has been registered by it as a trade name or that it has a title from any source conferring on it the exclusive right to use that word.

            Defendant began the manufacture of cigarettes, offering them to the public in packages on the front side of each of which appeared the words “Alhambra Isabelas”.

            Action is brought to enjoin the defendant from using the word “Isabelas”.

            The exclusive right to use this name, plaintiff claim arises from two causes: First, the contraction of the phrase “La Flor de la Isabela” into the word “Isabela” by popular expression and use; and second, the use for more than twenty years of the word “Isabela”.

            Judgment was for plaintiff and defendant appealed.

ISSUE:

            Whether defendant’s use of the word “Alhambra Isabela” is an infringement to the use of trade name.

HELD:

            The statute prohibits the registration of a trade name when the trade name represents the geographical place of production or origin of the products or goods to which the trade name refers, or when it is merely the name, quality or description of the merchandise with respect to which the trade name is to be used. In such cases, therefore, no trade name can exist.

            The two claims of the plaintiff are identical; for, there could have been no contraction brought about by popular expression except after long lapse of time. The contraction of the phrase in to the word would create no rights, there being no registration, unless it resulted from long use.

            The opinion of the plaintiff must fail. It shows that in not a single instance in the history of the plaintiff corporation, so far as is disclosed by the record, has a package of its cigarettes gone into the market, either at wholesale or retail with the word “Isabela” alone on the package as a separate or distinct word or name.

            Even admitting that the word “Isabela” may have been appropriable by plaintiff as a trade name at the time it began to use it, the evidence showing that it had been exclusively appropriated by the plaintiff would have to be very strong to establish the fact of appropriation and the right to exclusive use. The law as it stands and has stood since the Royal Decree of 1888 prohibits the use of a geographical name as a trade name.

            The judgment appealed from is reversed.