Case Digest (G.R. No. 205703)
Facts:
In Societe Des Produits Nestle, S.A. v. Martin T. Dy, Jr., decided on August 8, 2010 under G.R. No. 172276, petitioner Nestlé, a Swiss corporation, owns Certificate of Registration No. R-14621 for the NAN trademark covering Class 6 infant powdered milk products since April 7, 1969. Respondent Dy, Jr., owner of 5M Enterprises, imports Sunny Boy powdered milk from Australia, repacks it into 80-, 180-, and 450-gram plastic packs, and sells it under the NANNY mark in Mindanao and parts of Negros Oriental and Cagayan de Oro. After Nestlé’s August 1, 1985 demand to cease use of “NANNY,” Dy, Jr. ignored the request and Nestlé filed a complaint for infringement on March 1, 1990 in the RTC, Dumaguete City. The trial court dismissed the complaint on June 4, 1990, but the Court of Appeals reversed on February 16, 1993 and remanded for further proceedings. Pursuant to A.O. 113-95, the case was transferred to the RTC, Branch 9, Cebu City. On September 18, 1998 the trial court found Dy, Jr. l...Case Digest (G.R. No. 205703)
Facts:
- Nestlé’s “NAN” Trademark
- Societe Des Produits Nestlé, S.A. (“Nestlé”) is a Swiss corporation manufacturing food products and beverages.
- By Certificate of Registration No. R-14621 (7 April 1969), Nestlé owns the registered trademark “NAN” for its infant powdered milk line—PRE-NAN, NAN-H.A., NAN-1, NAN-2—classified under Class 6 (“dietetic preparations for infant feeding”).
- Nestlé extensively promotes and distributes its NAN products nationwide through training, advertising, and sales networks.
- Respondent’s “NANNY” Product
- Martin T. Dy, Jr. (“Dy, Jr.”), proprietor of 5M Enterprises, imports Sunny Boy powdered milk from Australia, repacking it into plastic packs labeled “NANNY” in 80g, 180g, and 450g sizes (priced at ₱8.90, ₱17.50, ₱39.90) under Class 6 (“full cream milk for all ages”).
- Dy, Jr. markets NANNY in Dumaguete, Negros Oriental, Cagayan de Oro, and parts of Mindanao.
- Pre-trial Correspondence and Proceedings
- On 1 August 1985, Nestlé sent Dy, Jr. a cease-and-desist letter to stop using “NANNY”—Dy, Jr. did not comply.
- On 1 March 1990, Nestlé filed an infringement complaint in RTC Dumaguete (Branch 31); the RTC dismissed it via 4 June 1990 order.
- Nestlé appealed to the Court of Appeals (CA); on 16 February 1993, the CA set aside the dismissal and remanded to the trial court.
- Pursuant to A.O. 113-95, the case was transferred to RTC Cebu City (Branch 9) as Civil Case No. CEB-19345.
- Trial Court Decision (18 September 1998)
- The RTC found Dy, Jr. liable for infringement, applying the “related goods” concept from Esso Standard Eastern, Inc. v. Court of Appeals: goods in the same class may be so related as to cause confusion of business even if non-competing.
- Despite differences in packaging, target market, price, and label design, the court held that NANNY implies origin from Nova’s NAN manufacturer and thus infringes.
- Court of Appeals Decision and Resolution
- On 1 September 2005, the CA reversed the trial court, finding no colorable imitation and applying a holistic test—emphasizing material label differences (cans vs plastic packs, color schemes, imagery, letter styles, price disparities, infant formula vs adult milk).
- On 4 April 2006, the CA denied Nestlé’s motion for reconsideration. Nestlé then filed a Rule 45 petition for certiorari with the Supreme Court.
Issues:
- Whether Martin T. Dy, Jr.’s use of the mark “NANNY” infringes Nestlé’s registered trademark “NAN” under Republic Act No. 166 (as amended) and R.A. No. 8293, by creating a likelihood of confusion or deception as to the source or origin of the goods.
Ruling:
- (Subscriber-Only)
Ratio:
- (Subscriber-Only)
Doctrine:
- (Subscriber-Only)