The Supreme Court ruled that Puregold’s trademark “COFFEE MATCH” is registrable, as it is not confusingly similar to Nestle’s “COFFEE-MATE”. This decision highlights the importance of distinctiveness in trademarks and the application of the dominancy and holistic tests in determining likelihood of confusion. The Court also emphasized the procedural requirements for corporations executing certifications against forum shopping.

Coffee Clash: Can “COFFEE MATCH” Brew Confusion with “COFFEE-MATE”?

This case revolves around Nestle’s opposition to Puregold’s application for trademark registration of “COFFEE MATCH.” Nestle argued that “COFFEE MATCH” was confusingly similar to its registered trademark “COFFEE-MATE,” potentially misleading consumers. The Intellectual Property Office (IPO) and the Court of Appeals (CA) both sided with Puregold, leading Nestle to elevate the case to the Supreme Court. The central legal question is whether Puregold’s mark infringes on Nestle’s trademark due to a likelihood of confusion among consumers.

The Supreme Court denied Nestle’s petition, affirming the CA’s decision. The Court addressed both procedural and substantive issues. Procedurally, the Court examined whether Nestle properly executed the certification against forum shopping, a requirement under Section 5, Rule 7 of the Rules of Court. This rule ensures that a party does not simultaneously pursue the same claim in multiple forums. For corporations, this certification must be signed by a duly authorized representative, typically through a board resolution or secretary’s certificate.

The Court found that Nestle failed to provide sufficient proof of authority for Mr. Dennis Jose R. Barot to sign the certification. While Nestle submitted a power of attorney, it lacked a board resolution or secretary’s certificate authorizing Celine Jorge to execute the power of attorney on Nestle’s behalf. The Supreme Court has consistently held that courts cannot take judicial notice of corporate board resolutions; they must be presented as evidence. In Development Bank of the Philippines v. Court of Appeals, the Court stated:

What petitioners failed to explain, however, is their failure to attach a certified true copy of Resolution No. 0912 to their petition for certiorari in CA-G.R. SP No. 60838. Their omission is fatal to their case. Courts are not, after all, expected to take judicial notice of corporate board resolutions or a corporate officer’s authority to represent a corporation.

Therefore, the Court upheld the CA’s dismissal on procedural grounds, emphasizing the importance of strict compliance with the Rules of Court, especially regarding certifications against forum shopping. However, the Court also addressed the substantive issue of trademark infringement, providing valuable insights into the principles of trademark law.

Turning to the likelihood of confusion, the Court applied two tests: the dominancy test and the holistic test. The dominancy test focuses on the similarity of the dominant features of the competing trademarks that might cause confusion. The holistic test considers the entirety of the marks, including labels and packaging, to determine if there is a confusing similarity. The Court acknowledged that “COFFEE” is the common dominant feature in both trademarks. However, it noted that Section 123(h) of Republic Act No. 8293 (RA 8293), also known as the Intellectual Property Code, prohibits the exclusive registration of generic marks. Section 123 states:

Sec. 123. Registrability. –
123.1 A mark cannot be registered if it:
x x x x
(h) Consists exclusively of signs that are generic for the goods or services that they seek to identify;

Since “COFFEE” is a generic term for the goods in question, neither Nestle nor Puregold can exclusively claim it. The Court then focused on the distinctive elements: “-MATE” in Nestle’s mark and “MATCH” in Puregold’s mark. While both share the first three letters, the Court found that the last two letters in “MATCH” created a distinct visual and aural character, differentiating it from “-MATE.” The Court also noted the visual difference, with “COFFEE MATCH” being two separate words with capitalized letters, unlike the hyphenated “COFFEE-MATE.” Therefore, following the ruling in Coffee Partners, Inc. v. San Francisco & Roastery, Inc., the court looked into likelihood of confusion:

In determining similarity or likelihood of confusion, our jurisprudence has developed two tests: the dominancy test and the holistic test.

In the application of the tests, the Court concluded that consumers were unlikely to confuse the two products. The Court emphasized that the distinctiveness of Puregold’s mark was sufficient to alert consumers to the difference between the two products. This aligns with the principle that trademark law protects against actual confusion, not mere similarity.

The Court’s decision reinforces the principle that generic or descriptive words cannot be exclusively appropriated as trademarks. This ensures that businesses can freely use common terms to describe their products, promoting competition and preventing monopolies on language. The decision also highlights the importance of conducting thorough trademark searches before applying for registration, to avoid potential conflicts with existing trademarks.

Moreover, this case serves as a reminder of the importance of adhering to procedural rules, particularly regarding certifications against forum shopping. Corporations must ensure that their representatives are duly authorized to sign such certifications, supported by appropriate board resolutions or secretary’s certificates. Failure to do so can result in the dismissal of their case, regardless of the merits of their claim.

The Court’s analysis provides a clear framework for assessing trademark infringement claims, balancing the rights of trademark owners with the need to avoid stifling competition. By applying the dominancy and holistic tests, the Court ensures that only truly confusingly similar marks are prevented from registration, while allowing businesses to differentiate their products in the marketplace.

FAQs

What was the key issue in this case?	The key issue was whether Puregold’s trademark “COFFEE MATCH” was confusingly similar to Nestle’s “COFFEE-MATE,” warranting the denial of Puregold’s trademark application. The court had to determine if consumers were likely to confuse the two products.
What is a certification against forum shopping?	A certification against forum shopping is a sworn statement that the party has not filed any similar action in other courts or tribunals. This requirement prevents parties from pursuing the same claim in multiple venues simultaneously.
Why was Nestle’s petition initially dismissed by the Court of Appeals?	Nestle’s petition was initially dismissed by the Court of Appeals due to procedural defects, including the failure to properly prove the authority of their representative to sign the certification against forum shopping. They also initially filed beyond the reglementary period.
What is the dominancy test in trademark law?	The dominancy test focuses on the similarity of the dominant features of the competing trademarks. If the dominant features are similar and likely to cause confusion, trademark infringement exists.
What is the holistic test in trademark law?	The holistic test involves considering the entirety of the marks, including labels and packaging, to determine if there is a confusing similarity. This test assesses the overall impression the marks create on consumers.
Why can’t the word “COFFEE” be exclusively appropriated as a trademark?	The word “COFFEE” is a generic term for coffee products. Generic terms cannot be exclusively appropriated as trademarks because they are descriptive of the goods or services and should be available for public use.
What is the significance of a board resolution in corporate litigation?	A board resolution is a formal document authorizing a corporate representative to act on behalf of the corporation in legal proceedings. It serves as evidence of the representative’s authority and is often required for signing certifications against forum shopping.
What is the effect of failing to comply with procedural rules in court?	Failing to comply with procedural rules, such as properly executing a certification against forum shopping, can lead to the dismissal of a case. Courts require strict compliance to ensure fairness and efficiency in the legal process.

This case emphasizes the importance of distinctiveness in trademarks and the need to comply with procedural rules in legal proceedings. The Supreme Court’s decision provides valuable guidance for businesses seeking to protect their trademarks and navigate the complexities of intellectual property law.

For inquiries regarding the application of this ruling to specific circumstances, please contact ASG Law through contact or via email at frontdesk@asglawpartners.com.

Disclaimer: This analysis is provided for informational purposes only and does not constitute legal advice. For specific legal guidance tailored to your situation, please consult with a qualified attorney.
Source: Societe des Produits, Nestle, S.A. vs. Puregold Price Club, Inc., G.R. No. 217194, September 06, 2017