Case Digest (G.R. No. 172276)
Facts:
Societe Des Produits Nestle, S.A. v. Martin T. Dy, Jr., G.R. No. 172276, August 08, 2010, Supreme Court Second Division, Carpio, J., writing for the Court.
Societe Des Produits Nestle, S.A. (Nestle) is a Swiss corporation that manufactures and markets infant powdered milk under the registered trademark NAN (Certificate of Registration No. R-14621 issued 7 April 1969). Nestle sells its NAN line (PRE-NAN, NAN-H.A., NAN-1, NAN-2) throughout the Philippines and invested substantially in promotion and sales efforts for those products. Nestle asserted ownership of NAN as a mark for infant feeding preparations (Class 6).
Respondent Martin T. Dy, Jr. owned 5M Enterprises, imported a product sold as NANNY powdered milk (imported from Australia), repacked into 80g, 180g and 450g plastic packs and sold at low retail prices in Dumaguete, Negros Oriental, Cagayan de Oro and parts of Mindanao. NANNY was classified as a milk product (also Class 6). On 1 August 1985 Nestle demanded that Dy stop using “NANNY”; Dy did not comply.
Nestle filed a complaint for infringement on 1 March 1990 before the RTC, Judicial Region 7, Branch 31, Dumaguete City. The trial court initially dismissed the complaint in an order dated 4 June 1990; the Court of Appeals set aside that dismissal in a 16 February 1993 resolution and remanded the case. Pursuant to Administrative Order No. 113‑95 Nestle moved to transfer venue; the case was transferred to RTC, Judicial Region 7, Branch 9, Cebu City (a special IP court).
After trial, the RTC (Branch 9) rendered a decision on 18 September 1998 finding Dy liable for infringement. The RTC applied the related‑goods concept (from Esso Standard Eastern, Inc. v. Court of Appeals) and held that despite packaging differences the use of “NANNY”—which contains “NAN”—could likely confuse purchasers into believing a common source.
Dy appealed to the Court of Appeals. In its 1 September 2005 Decision (CA-G.R. CV No. 62730) the Court of Appeals reversed the RTC, finding no infringement. The CA emphasized packaging and market differences, applied the holistic approach to compare labels and...(Pro-only)
Issues:
- Is respondent Martin T. Dy, Jr. liable for trademark infringement of Nestle’s registered mark “NAN”?...(Pro-only)
Ruling:
- (Pro-only)
Ratio:
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Doctrine:
- (Pro-only)