SOCIETE DES PRODUITS NESTLE, S.A.

and NESTLE
PHILIPPINES, INC., petitioners, vs.COURT OF APPEALS and
CFC CORPORATION., respondents, G.R. No. 112012, April 4,
2001

A. Facts

1. Private respondent CFC Corporation filed with the BPTTT an application for
the registration of the trademark "FLAVOR MASTER" for instant coffee, under
Serial No. 52994
2. Petitioner Societe Des Produits Nestle, S.A., a Swiss company registered
under Swiss laws and domiciled in Switzerland, filed an unverified Notice of
Opposition,3 claiming that the trademark of private respondent’s product is
"confusingly similar to its trademarks for coffee and coffee extracts, to wit:
MASTER ROAST and MASTER BLEND."
3. Notice of Opposition was filed by Nestle Philippines, Inc against CFC’s
application for registration of the trademark FLAVOR MASTER. As Nestle
claimed that the use, if any, by CFC of the trademark FLAVOR MASTER and
its registration would likely cause confusion in the trade
4. CFC further argued that its trademark, FLAVOR MASTER, "is clearly very
different from any of Nestle’s alleged trademarks MASTER ROAST and
MASTER BLEND, especially when the marks are viewed in their entirety, by
considering their pictorial representations, color schemes and the letters of
their respective labels."

B. Issue

Is CFC Corporation trademark “FLAVOR MASTER” confusing similar with

the trademarks of Nestle?

C. Ruling

WHEREFORE, in view of the foregoing, the decision of the Court of Appeals

in CA-G.R. SP No. 24101 is REVERSED and SET ASIDE and the decision of
the Bureau of Patents, Trademarks and Technology Transfer in Inter Partes
Cases Nos. 3200 and 3202 is REINSTATED.

D. REASON

1. The term "MASTER", has acquired a certain connotation to mean the

coffee products MASTER ROAST and MASTER BLEND produced by Nestle.
As such, the use by CFC of the term "MASTER" in the trademark for its coffee
product FLAVOR MASTER is likely to cause confusion or mistake or even to
deceive the ordinary purchasers.
2. Thus, when one looks at the label bearing the trademark FLAVOR
MASTER (Exh. 4) one’s attention is easily attracted to the word MASTER,
rather than to the dissimilarities that exist.The possibility of confusion as to the
goods which bear the competing marks or as to the origins thereof is not
farfetched.
3. In addition, the word "MASTER" is neither a generic nor a descriptive term.
As such, said term can not be invalidated as a trademark and, therefore, may
be legally protected.
4. The term "MASTER" is a suggestive term brought about by the advertising
scheme of Nestle. Suggestive terms27 are those which, in the phraseology of
one court, require "imagination, thought and perception to reach a conclusion
as to the nature of the goods." Such terms, "which subtly connote something
about the product," are eligible for protection in the absence of secondary
meaning.
ANDRES ROMERO, petitioner, vs.MAIDEN FORM BRASSIERE
CO., INC., and THE DIRECTOR OF PATENTS, respondents,
G.R. No. L-18289, March 31, 1964

A. Facts

1. Maiden Form Brassiere Co., Inc. filed with respondent Director of

Patents an application for registration (pursuant to Republic Act No. 166)
of the trademark "Adagio" for the brassieres manufactured by it.
2. Respondent Director issued to respondent company a certificate of
registration of with, trademark "Adagio".
3. Petitioner filed with respondent Director a petition for cancellation of
said trademark, on the grounds that it is a common descriptive name of an
article or substance on which the patent has expire.
4. Petitioner also alleged that said trademark has not become distinctive of
respondent company's goods or business.

B. Issue

Does the trademark “ADAGIO” unregistrable because it has become a common descriptive
name of a particular style of brassiere?

C. Ruling

IN VIEW OF ALL THE FOREGOING, we are of the opinion and so hold, that
respondent Director of Patents did not err in dismissing the present petition for
cancellation of the registered trademark of appellee company, and the
decision appealed from is therefore hereby affirmed, with costs against the
appellant. So ordered.

D. Reason

1. The mark serves to indicate origin of applicant's goods; and the fact that it
is used on only one of several types or grades does not affect its
registrability as a trade mark.
 2. There is no evidence to show that the registration of the trademark
"Adagio" was obtained fraudulently by appellee. The evidence record shows,
on the other hand, that the trademark "Adagio" was first exclusively in the
Philippines by a appellee in the year 1932. There being no evidence of use
of the mark by others before 1932, or that appellee abandoned use thereof,
the registration of the mark was made in accordance with the Trademark
Law.
3. To work an abandonment, the disuse must be permanent and not
ephemeral; it must be intentional and voluntary, and not involuntary or even
compulsory.

Compania General de Tabacos de Filipinas vs Alhambra Cigar & Cigarette

Manufacturing Co., G.R. No. L-10251, February 10, 1916

A. Facts

1. Petitioner Coffee Partners, Inc. registered with the Securities and

Exchange Commission in January 2001 has a franchise argreement with
Coffee Partners Ltd. (CPL).
2. San Francisco Coffee & Roastery registered the business name “SAN FRANCISCO
COFFEE & ROASTERY, INC.” with the Department of Trade and Industry (DTI) in June 1995.
3. San Francisco Coffee & Roastery, Inc. discovered that Coffee Partners, Inc. was about to
open a coffee shop under the name “SAN FRANCISCO COFFEE”.
4. San Francisco Coffee & Roastery, Inc. demanded Coffee Partners, Inc. to stop using the
name “SAN FRANCISCO COFFEE”.
5. San Francisco Coffee & Roastery, Inc.filed a complaint for infringement and/or unfair
competition with claims for damages with the Bureau of Legal Affairs-Intellectual Property
Office (BLA-IPO).
6. Coffee Partners, Inc. denied the allegations and maintained its mark as it could not be
confused with San Francisco Coffee & Roastery, Inc.’s tradename because of the notable
distinctions in their appearances.

B. Issue

Is Coffee Partners, Inc. liable for trademark infringement in San Francisco Coffee &
Roastery’s trademark “SAN FRANCISCO COFFEE” even if the trade name is not registered
with IPO?

C. Ruling

The Supreme Court agreed with the Court of Appeals and found out that there was no
trademark infringement.

D. Reason
Great White Shark Enterprises, Inc. vs Danilo M. Caralde, Jr., G.R. No.
192294, November 21, 2012

A. Facts

1. Danilo M. Caralde filed a trademark application to register a mark “SHARK & LOGO” for
his manufactured goods such as slippers, shoes and sandals.

2. The Great White Shark Enterprises opposed to the application claiming to be the owner
of the mark having a representation of a shark.

3. Great White Shark’s trademark application was granted and it was

issued Certificate of Registration No. 4-2002-001478 on October 23, 2006 for
clothing, headgear and footwear, including socks, shoes and its components.

4. The Great White Shark Enterprises claimed that the cofusing similarity between the
marks is to deceive or confuse the public into believing the Caralde’s good are produced by or
originated from it, or under its sponsorship.

5. Caralde claimed that the two marks are different and are easily distinguishable from its
appearance, style, shape, size, format, color, ideas and goods carried by both parties.

B. Issue

Does the mark of SHARK & LOGO confusingly similar to Great White Shark’s mark?

C. Ruling

The Court denies the instant petition and AFFIRM the assailed December 14,
2009 Decision of the Court of Appeals (CA) for failure to show that the CA
committed reversible error in setting aside the Decision of the IPO Director
General and allowing the registration of the mark "SHARK & LOGO" by
respondent Danilo M. Caralde, Jr.

D. Reason
 1. The Court of Appeals found no confusing similarity between the marks.

2. The BLA Director and the IPO Director General have ruled that Great
White Shark failed to meet the criteria under Rule 102 of the Rules and
Regulations on Trademarks, Service Marks, Trade Names and Marked.

Birkenstock Orthopaedie GMBH and Co. KG (formerly BIRKENSTOCK

ORTHOPAEDIE GMBH) vs Philippine Shoe Expo Marketing Corporation,
G.R. No. 194307, November 20, 2013

A. Facts

1. The Birkenstock Orthopaedie GMBH and Co. KG. applied for various trademark
registrations.

2. The registration was suspended because of an existing registration of the mark

“BIRKENSTOCK AND DEVICE” under Registration No. 56334 in the name of Shoe Town
International and Industrial Corporation, the predecessor-in-interest of respondent Philippine
Shoe Expo Marketing Corporation.

3. The Birkenstock Orthopaedie GMBH and Co. KG. filed for the cancellation of Registration
No. 56334.

4. The Philippine Shoe Expo Marketing Corporation failed to file the required 10th Year
Declaration of Actual Use (10th Year DAU) for Registration No. 56334 which results in the
cancellation of such mark.

5. The said cancellation paved way for the publication of the subject applications of the
Birkenstock Orthopaedie GMBH and Co. KG.

B. Issue

Should subject marks be allowed registration in the name of Birkenstock Orthopaedie GMBH
and Co. KG?

C.