(Societe Des Produits, Nestle, S.A. v. Puregold Price Club, G.R. No. 217194, Sept. 6, 2017)
Is PUREGOLD’s “COFFEE MATCH” trademark confusingly similar to NESTLE’s “COFFEE-MATE” registered trademark?
On 5 December 2008, NESTLE filed an opposition against Puregold’s application for registration of the trademark “COFFEE MATCH”. NESTLE alleged that it is the exclusive owner of the “COFFEE-MATE” trademark and that there is confusing similarity between its “COFFEE-MATE” registered trademark and Puregold’s “COFFEE MATCH” trademark application.
The IPO Bureau of Legal Affairs and the Office of Director General dismissed NESTLE’s Opposition on the basis of a defective verification and certification against forum shopping. On appeal, the Appellate Court similarly dismissed NESTLE’s petition on procedural grounds.
The Supreme Court, although finding NESTLE’s petition procedurally defective, ruled that there is no confusing similarity between the trademarks “COFFEE MATCH” and “COFFEE-MATE”.
In its 06 September 2017 decision, the Supreme Court, applying the dominancy test, ruled that the word “COFFEE”, which is the common dominant feature between the competing marks, cannot be exclusively appropriated by either Nestle or Puregold since it is generic or descriptive of the goods they seek to identify. The Supreme Court further stated that “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.”
The Supreme concurred with the findings of the BLA-IPO and the ODG-IPO that:
“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.”
In short, NESTLE’s “COFFEE-MATE” has finally met its “MATCH”.