SOCIETE DES PRODUITS NESTLE, S.A. v CA and CFC CORP

SOCIETE DES PRODUITS NESTLE, S.A. v CA and CFC CORP

G.R. NO. 112012

April 4, 2001

Ynares-Santiago, J.

FACTS:

CFC corporation filed with Bureau of Patents a registration of the Trademark  “FLAVOR MASTER” for instant coffee. Petitioner Societe Des Produits Nestle filed an unverified Notice of Opposition, claiming that the trademark of respondent’s product is confusingly similar to its Trademarks for coffee: “MASTER ROAST AND MASTER BLEND”. Nestle Philippines also filed notice of opposition against the registration Petitioners argued that it would cause confusion in trade, or deceive purchasers and would falsely suggest to the public a connection between the two marks.

ISSUE: Is the TM, FLAVOR MASTER, a colorable imitation of the TMs MASTER ROAST and MASTER BLEND?

RULING:

YES. The TM sought to be registered is likely to cause confusion.

A trademark has been generally defined as any word, name, symbol, or device adopted and used by a merchant to identify his goods and distinguish them from those sold by others. Such is entitled to protection

Under the Philippine Trademark Law, the owner of a TM cannot register if it resembles a mark or trade-name registered in the Philippines or a mark previously used and not abandoned WHICH IS LIKELY TO CAUSE CONFUSION OR MISTAKE OR TO DECEIVE PURCHASERS.

The law prescribes a stringent standard proscribes registration if it causes confusing similarity, and if it is likely to cause confusion or mistake or deceive purchasers. Colorable imitation denotes a close imitation as to be calculated to deceive ordinary persons  as to cause him to purchase the one supposing it to be the other.

In determining colorable imitation there are two tests: Dominancy Test and Holistic Test.

The test of dominancy focuses on the similarity of the prevalent features of the competing trademarks; the holistic test mandates the entirety of the marks in question must be considered in determining confusing similarity

The Dominancy test should be applied as it relies not only on the visual but also on the aural and connotative comparisons and overall impressions between the two TMs.

·         The word MASTER is the dominant feature which is neither a generic nor a descriptive term. As such said term cannot be invalidated as a trademark and therefore, may be protected.

·         Generic terms are those which constitute the common descriptive name of an article or substance and are not legally protectable.

·         The term MASTER is a suggestive which require imagination, thought, and perception to reach a conclusion as to the nature of the goods.

The term MASTER has acquired a certain connotation to mean the coffee products MASTER ROAST and Master Blend produced by NESTLE. AS SUCH the use of CFC of the term “MASTER” is likely to cause confusion or mistake.