Supreme Court Allows the Registration of Puregold’s “COFFEE MATCH” Despite Nestle’s “COFFEE-MATE”

The Supreme Court of the Philippines held that there is a huge difference between “COFFEE MATCH” and “COFFEE-MATE” for use on Class 30 goods and that there can be no likelihood of confusion between the two.

Societe des Produits Nestle S.A. (“Nestle”), the world’s largest food company, opposed Puregold Price Club Inc.’s (“Puregold”) application to register the trademark “COFFEE-MATCH” for coffee, tea, cocoa, sugar, artificial coffee, flour and preparations made from cereals, bread, pastry and confectionery, and honey under Class 30 of the International Classification of Goods. Nestle argued that it is the owner of the well-known trademark “COFFEE-MATE” and that Puregold’s use of “COFFEE MATCH” would indicate a connection with “COFFEE-MATE” goods because of its distinct similarity.

Both the Bureau of Legal Affairs of the Intellectual Property Office and also the Office of the Director General, on appeal, found no confusing similarity between the two contending marks. While the Court of Appeals dismissed Nestle’s appeal of the IPO’s decision on procedural grounds.

The Supreme Court in agreeing with the both the decisions of the Bureau of Legal Affairs and Office of the Director General of the IPO rationalized that 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.

Generic or descriptive words are not subject to registration and belong to the public domain. Accordingly, one must look at the word or words paired with the generic or descriptive word. In this case, “-MATE” for Nestle’s mark and “MATCH” for Puregold’s mark, to determine the distinctiveness and registrability of Puregold’s mark “COFFEE MATCH.”

The Supreme Court concluded that 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.

The Supreme Court, in the same decision, also emphasized the importance of following procedural rules. It held that the Court of Appeals did not err in dismissing the Petition for Review for the failure of Nestle to comply with the proper execution of the Certification Against Forum Shopping required by the Revised Rules of Court. In this case, the Court of Appeals dismissed Nestle’s appeal on the ground that there is no board resolution and/or secretary’s certificate to prove the authority of Dennis Jose R. Barot to file the Petition and to sign the Verification/Certification of Non-Forum Shopping on behalf of Nestle. The Supreme Court found the dismissal based on this procedural defect proper. Nestle’s failure to attach a copy of a board resolution proving the authority of the representative to sign the certification against forum shopping was fatal and was sufficient ground to dismiss since the courts are not expected to take judicial notice of board resolutions or secretary’s certificates issued by corporations.