Case Summary (G.R. No. 230528)
Proceedings Before the BPTTT
The BPTTT examined the opposition, emphasizing that the word “MASTER” is the dominant feature in Nestlé’s marks, reinforced by extensive advertising campaigns associating “MASTER” with Nestlé coffee. Applying the dominancy test, it found that CFC’s use of “MASTER” in FLAVOR MASTER would likely cause confusion, and thus denied registration.
Court of Appeals Decision
On appeal, the CA applied the holistic or totality test, comparing the overall appearance, color schemes, pictorial elements, and lettering of the labels. It concluded that visual discrepancies—such as color combinations (orange and mocha vs. red and brown), label size, and pictorial arrangements—were so pronounced that an ordinary purchaser would not confuse the two marks. Accordingly, the CA reversed the BPTTT and directed registration.
Issues on Appeal Before the Supreme Court
Petitioners assigned errors to the CA, contending that:
- The CA erred in reversing the BPTTT’s decision.
- The CA improperly applied the holistic test instead of the dominancy test.
- The jurisprudence cited by the CA was factually distinguishable and inapplicable.
Legal Framework for Confusing Similarity
Under Section 4(d) of RA 166, a mark is unregistrable if it “so resembles” a previously used mark “as to be likely, when applied to... goods... to cause confusion or mistake.” Philippine jurisprudence recognizes two principal tests:
- Dominancy Test: Focuses on the dominant or most memorable feature of the mark.
- Holistic (Totality) Test: Considers the mark as a whole, including visual, aural, connotative and overall market impressions.
Supreme Court’s Evaluation of Precedents
The Court emphasized that trademark cases turn on their unique facts and that precedents should guide only if circumstances substantially coincide. It found the CA’s reliance on Del Monte, Bristol Myers, Mead Johnson, and American Cyanamid inappropriate, as those cases involved dissimilar factual matrices (e.g., prescription vs. over-the-counter medicines, distinct syllabic differences, different consumer vigilance).
Preference for the Dominancy Test
Given that instant coffee is a common, inexpensive household item purchased by “undiscerningly rash” buyers, the SC held the dominancy test more suitable. An ordinary purchaser, in a hurried decision at a retail shelf, will latch onto the dominant element of the mark. The holistic test—which requires attention to nuanced visual details—would understate the risk of confusion in such context.
Analysis of the Term “MASTER” and Colorable Imitation
The Court found “MASTER” neither generic no
...continue readingCase Syllabus (G.R. No. 230528)
Case Title and Citation
- G.R. No. 112012, April 04, 2001
- 408 Phil. 307 (First Division)
- Ponente: Justice Ynares-Santiago
Facts
- On January 18, 1984, CFC Corporation filed Trademark Application No. 52994 for “FLAVOR MASTER” covering instant coffee.
- The application was published in the BPTTT Official Gazette on July 18, 1988.
- Petitioners Societe des Produits Nestle, S.A. (Swiss domiciled) and Nestle Philippines, Inc. (licensee) opposed registration, asserting confusing similarity to their trademarks “MASTER ROAST” and “MASTER BLEND.”
- Nestle’s unverified Opposition (Inter Partes Case No. 3202) and Nestle Philippines’ verified Opposition (Inter Partes Case No. 3200) argued that “MASTER” is the dominant element likely to deceive purchasers into thinking the goods share a common source.
- CFC answered that “MASTER” is descriptive or generic, that “FLAVOR” differs from “ROAST” and “BLEND” in meaning, spelling, pronunciation and appearance, and that overall trade dress—pictorial elements, color schemes, lettering—are distinct.
Procedural History
- The Bureau of Patents, Trademarks and Technology Transfer (BPTTT) issued Decision No. 90-47 (December 27, 1990), denying CFC’s application.
- CFC appealed to the Court of Appeals, docketed as CA-G.R. SP No. 24101.
- On September 23, 1993, the Court of Appeals reversed the BPTTT, ordering approval of “FLAVOR MASTER.”
- Petitioners elevated the case to the Supreme Court via a petition for review.
Issue
- Whether CFC’s trademark “FLAVOR MASTER,” when considered in its entirety, is confusingly similar or a colorable imitation of Nestle’s trademarks “MASTER ROAST” and “MASTER BLEND,” thereby likely to cause confusion or deceive purchasers.
BPTTT Decision (No. 90-47)
- Applied the dominancy test: held “MASTER” to be the dominant feature of Nestle’s marks.
- Noted bold typography, size and prominence of “MASTER” on Nestle labels, and its emphasis in advertising via personalities titled “Master of the Game” and “Master of the Talk Show.”
- Concluded that the same prominence of “MASTER” in “FLAVOR MASTER” would likely confuse ordinary pu