In June 2007, Puregold Price Club, Inc., a corporation created and registered under Philippine laws, filed a trademark application for their product COFFEE MATCH. In December 2008, Societe des Produits Nestle, S.A., a corporation organized and registered under Swiss laws, filed their opposition. Nestle alleged that COFFEE MATCH is too similar to their product COFFEE MATE. Nestle claimed that it would suffer damages if the application is granted since Puregold’s “COFFEE MATCH” would likely mislead the public that the mark originated from Nestle.
ISSUE: Whether or not Puregold infringed on Nestle’s trademark.
HELD: No. Using the dominancy test, the dominant features of COFFEE MATCH and COFFEE MATE are not likely to cause confusion to the consuming public.
The dominancy test focuses on the similarity of the prevalent features of the competing trademarks that might cause confusion and deception. If the competing trademark contains the main, essential, and dominant features of another, and confusion or deception is likely to result, likelihood of confusion exists. The question is whether the use of the marks involved is likely to cause confusion or mistake in the mind of the public or to deceive consumers.
The word “COFFEE” is the common dominant feature between Nestle’s mark “COFFEE-MATE” and Puregold’s mark “COFFEE MATCH.” However, following Section 123, paragraph (h) of RA 8293 which prohibits exclusive registration of generic marks, the word “COFFEE” cannot be exclusively appropriated by either Nestle or Puregold since it is generic or descriptive of the goods they seek to identify.
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.
