Societe des produits Nestle, S.A. V Court of Appeals; GR No.

112012; April 4, 2001 FACTS: Respondent CFC Corporation filed with Bureau of Trademarks and Technology Transfer (BPTTT) an application for the registration of the trademark Flavor Master for instant coffee. Nestle opposed and claimed that the use by CFC of the trademark flavor master would likely cause confusion in the trade or deceive purchasers and would falsely suggest to the purchasing public a connection in the business Nestle as the dominant Word MASTER was also present in Nestles products, MASTER ROAST and MASTER BLEND. BPTTT denied CFCs application for registration, while CA approved CFCs application. CA based its ruling on the holistic test where it described the color of the trademark, placing of the word master in the mark, the fonts used are different in both CFC and Nestle, thus there is no trademark infringement. ISSUE: WON BPTTT decision in denying registration of CFC Corporation correct? HELD: Yes. The SC ruled that CA erred in using the holistic test, as the dominancy test should be used in this case. Under the law, a trademark is any word, name, symbol or device adopted and used by a manufacturer or merchant to identify his goods and distinguish them from those manufactured and sold by others. The owner of the trademark shall have the right to register the same on the principal register UNLESS it consist of or comprises a mark which so resembles a mark registered in the Philippines or previously used in the Philippines by another and not abandoned. A colourable imitation is a close or ingenious imitation as to calculate to deceive ordinary persons, or such a resemblance to the original as to deceive an ordinary purchaser giving such attention as a purchaser usually gives, as to cause him to purchase the one supposing it to be the other. In determining if colourable imitation exists, jurisprudence has developed two kinds of tests, the dominancy test and holistic test. Dominancy test focuses on the similarity of the prevalent features of the competing trademarks which might cause confusion or deception and this constitute infringement. Holistic test mandates that the entirety of the marks in question must be considered in determining confusing similarity. In the case at bar, the CA used the holistic test since the ordinary purchaser of instant coffee is undiscerning rash in buying such common and inexpensive household products. But the SC ruled that this reasoning is inconsistent and the application of the holistic test is improper since if the ordinary purchaser is undiscerning rash, he would not be inclined to notice the specific features, similarities or dissimilarities, considering that the product is an inexpensive and common household item, that will probably cause the purchaser to be deceived, hence the dominancy test should be used. Furthermore, the word MASTER is the dominant feature of opposers mark, as such word has always been the emphasis in the TV and radio commercials and other advertisements made in promoting the product of Nestle (opposer). Robert Jaworski and Ric Puno Jr., engaged to promote the product are given the titles of Master of the game and Master of the Talk show, respectively.

Therefore the dominancy test should be used considering the word Master influencing the prospective buyers.