G.R. No.

112012            April 4, 2001 word present in the three (3) trademarks is "MASTER"; or that the
goods of CFC might be mistaken as having originated from the
SOCIETE DES PRODUITS NESTLE, S.A. and NESTLE latter.
PHILIPPINES, INC., petitioners,
vs. In answer to the two oppositions, CFC argued that its trademark,
COURT OF APPEALS and CFC CORPORATION., respondents. FLAVOR MASTER, is not confusingly similar with the former’s
trademarks, MASTER ROAST and MASTER BLEND, alleging
YNARES-SANTIAGO, J.: that, "except for the word MASTER (which cannot be exclusively
appropriated by any person for being a descriptive or generic
This is a petition for review assailing the Decision of the Court of name), the other words that are used respectively with said word
Appeals in CA-G.R. SP No. 24101, reversing and setting aside
1  in the three trademarks are very different from each other – in
the decision of the Bureau of Patents, Trademarks and meaning, spelling, pronunciation, and sound". CFC further argued
Technology Transfer (BPTTT), which denied private respondent’s
2  that its trademark, FLAVOR MASTER, "is clearly very different
application for registration of the trade-mark, FLAVOR MASTER. 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
On January 18, 1984, private respondent CFC Corporation filed
schemes and the letters of their respective labels."
with the BPTTT an application for the registration of the
trademark "FLAVOR MASTER" for instant coffee, under Serial
No. 52994. The application, as a matter of due course, was In its Decision No. 90-47 dated December 27, 1990, the BPTTT
published in the July 18, 1988 issue of the BPTTT’s Official denied CFC’s application for registration. 5 CFC elevated the
Gazette. matter to the Court of Appeals, where it was docketed as CA-
G.R. SP No. 24101.
Petitioner Societe Des Produits Nestle, S.A., a Swiss company
registered under Swiss laws and domiciled in Switzerland, filed The Court of Appeals defined the issue thus: "Does appellant
an unverified Notice of Opposition, claiming that the trademark of
3  CFC’s trade dress bear a striking resemblance with appellee’s
private respondent’s product is "confusingly similar to its trademarks as to create in the purchasing public’s mind the
trademarks for coffee and coffee extracts, to wit: MASTER mistaken impression that both coffee products come from one
ROAST and MASTER BLEND." and the same source?"

Likewise, a verified Notice of Opposition was filed by Nestle As stated above, the Court of Appeals, in the assailed decision
Philippines, Inc., a Philippine corporation and a licensee of dated September 23, 1993, reversed Decision No. 90-47 of the
Societe Des Produits Nestle S.A., against CFC’s application for BPTTT and ordered the Director of Patents to approve CFC’s
registration of the trademark FLAVOR MASTER. Nestle claimed
4  application. The Court of Appeals ruled:
that the use, if any, by CFC of the trademark FLAVOR MASTER
and its registration would likely cause confusion in the trade; or Were We to take even a lackadaisical glance at the
deceive purchasers and would falsely suggest to the purchasing overall appearance of the contending marks, the physical
public a connection in the business of Nestle, as the dominant discrepancies between appellant CFC’s and appellee’s
respective logos are so ostensible that the casual American Cyanamid Co. v. Director of Patents (76 SCRA
purchaser cannot likely mistake one for the other. 568), appellant CFC’s and appellees’ labels are entirely
Appellant CFC’s label (Exhibit "4") is predominantly a different in size, background, colors, contents and
blend of dark and lighter shade of orange where the pictorial arrangement; in short, the general appearances
words "FLAVOR MASTER", "FLAVOR" appearing on top of the labels bearing the respective trademarks are so
of "MASTER", shaded in mocha with thin white inner and distinct from each other that appellees cannot assert that
outer sidings per letter and identically lettered except for the dominant features, if any, of its trademarks were used
the slightly protruding bottom curve of the letter "S" or appropriated in appellant CFC’s own. The distinctions
adjoining the bottom tip of the letter "A" in the word are so well-defined so as to foreclose any probability or
"MASTER", are printed across the top of a simmering red likelihood of confusion or deception on the part of the
coffee cup. Underneath "FLAVOR MASTER" appears normally intelligent buyer when he or she encounters both
"Premium Instant Coffee" printed in white, slim and coffee products at the grocery shelf. The answer therefore
slanted letters. Appellees’ "MASTER ROAST" label to the query is a clear-cut NO.6
(Exhibit "7"), however, is almost double the width of
appellant CFC’s. At the top is printed in brown color the Petitioners are now before this Court on the following assignment
word "NESCAFE" against a white backdrop. Occupying of errors:
the center is a square-shaped configuration shaded with
dark brown and picturing a heap of coffee beans, where 1. RESPONDENT COURT GRAVELY ERRED IN
the word "MASTER" is inscribed in the middle. "MASTER" REVERSING AND SETTING ASIDE THE DECISION
in appellees’ label is printed in taller capital letters, with (NO. 90-47) OF THE DIRECTOR OF THE BUREAU OF
the letter "M" further capitalized. The letters are shaded PATENTS, TRADEMARKS AND TECHNOLOGY
with red and bounded with thin gold-colored inner and TRANSFER (BPTTT) DATED DECEMBER 27, 1990.
outer sidings. Just above the word "MASTER" is a red
window like portrait of what appears to be a coffee shrub
2. RESPONDENT COURT ERRED IN FINDING THAT
clad in gold. Below the "MASTER" appears the word
APPELLANT CFC’S TRADE DRESS IS BEYOND THE
"ROAST" impressed in smaller, white print. And further
SCOPE OF THE PROSCRIPTION LAID DOWN BY
below are the inscriptions in white: "A selection of prime
JURISPRUDENCE AND THE TRADEMARK LAW.
Arabica and Robusta coffee." With regard to appellees’
"MASTER BLEND" label (Exhibit "6") of which only a
xeroxed copy is submitted, the letters are bolder and taller 3. RESPONDENT COURT ERRED IN HOLDING THAT
as compared to appellant CFC’s and the word "MASTER" THE TOTALITY RULE, RATHER THAN THE TEST OF
appears on top of the word "BLEND" and below it are the DOMINANCY, APPLIES TO THE CASE.
words "100% pure instant coffee" printed in small letters.
4. RESPONDENT COURT ERRED IN INVOKING THE
From the foregoing description, while the contending TOTALITY RULE APPLIED IN THE CASES OF BRISTOL
marks depict the same product, the glaring dissimilarities MYERS V. DIRECTOR OF PATENTS, ET AL. (17 SCRA
in their presentation far outweigh and dispel any aspect of 128), MEAD JOHNSON & CO. V. NVJ VAN DORF LTD.,
similitude. To borrow the words of the Supreme Court in
 (7 SCRA 768) AND AMERICAN CYANAMID CO. V. service marks which shall be known as the principal
DIRECTOR OF PATENTS (76 SCRA 568). register. The owner of a trade-mark, trade-name or
service-mark used to distinguish his goods, business or
The petition is impressed with merit. services from the goods, business or services of others
shall have the right to register the same on the principal
A trademark has been generally defined as "any word, name, register, unless it:
symbol or device adopted and used by a manufacturer or
merchant to identify his goods and distinguish them from those x x x           x x x           x x x
manufactured and sold by others."7
(d) Consists of or comprises a mark or trade-name which
A manufacturer’s trademark is entitled to protection. As Mr. so resembles a mark or trade-name registered in the
Justice Frankfurter observed in the case of Mishawaka Mfg. Co. Philippines or a mark or trade-name previously used in
v. Kresge Co.:8 the Philippines by another and not abandoned, as to be
likely, when applied to or used in connection with the
The protection of trade-marks is the law’s recognition of goods, business or services of the applicant, to cause
the psychological function of symbols. If it is true that we confusion or mistake or to deceive purchasers;
live by symbols, it is no less true that we purchase goods
by them. A trade-mark is a merchandising short-cut which x x x           x x x           x x x
induces a purchaser to select what he wants, or what he
has been led to believe he wants. The owner of a mark (Emphasis supplied)
exploits this human propensity by making every effort to
impregnate the atmosphere of the market with the The law prescribes a more stringent standard in that there should
drawing power of a congenial symbol. Whatever the not only be confusing similarity but that it should not likely cause
means employed, the aim is the same --- to convey confusion or mistake or deceive purchasers.
through the mark, in the minds of potential customers, the
desirability of the commodity upon which it appears. Once Hence, the question in this case is whether there is a likelihood
this is attained, the trade-mark owner has something of that the trademark FLAVOR MASTER may cause confusion or
value. If another poaches upon the commercial mistake or may deceive purchasers that said product is the same
magnetism of the symbol he has created, the owner can or is manufactured by the same company. In other words, the
obtain legal redress. issue is whether the trademark FLAVOR MASTER is a colorable
imitation of the trademarks MASTER ROAST and MASTER
Section 4 (d) of Republic Act No. 166 or the Trademark Law, as BLEND.
amended, which was in force at the time, provides thus:
Colorable imitation denotes such a close or ingenious imitation as
Registration of trade-marks, trade-names and service- to be calculated to deceive ordinary persons, or such a
marks on the principal register. - There is hereby resemblance to the original as to deceive an ordinary purchaser
established a register of trade-marks, trade-names and giving such attention as a purchaser usually gives, as to cause
him to purchase the one supposing it to be the other. 9 In are attached (Bristol Myers Company v. Director of
determining if colorable imitation exists, jurisprudence has Patents, et al., 17 SCRA 128, citing Mead Johnson & Co.
developed two kinds of tests - the Dominancy Test and the v. NVJ Van Dorp, Ltd., et al., 7 SCRA 768). The mark
Holistic Test. The test of dominancy focuses on the similarity of
10 
must be considered as a whole and not as dissected. If
the prevalent features of the competing trademarks which might the buyer is deceived, it is attributable to the marks as a
cause confusion or deception and thus constitute infringement. totality, not usually to any part of it (Del Monte Corp. v.
On the other side of the spectrum, the holistic test mandates that CA, supra), as what appellees would want it to be when
the entirety of the marks in question must be considered in they essentially argue that much of the confusion springs
determining confusing similarity. 11
from appellant CFC’s use of the word "MASTER" which
appellees claim to be the dominant feature of their own
In the case at bar, the Court of Appeals held that: trademarks that captivates the prospective consumers.
Be it further emphasized that the discerning eye of the
The determination of whether two trademarks are indeed observer must focus not only on the predominant words
confusingly similar must be taken from the viewpoint of but also on the other features appearing in both labels in
the ordinary purchasers who are, in general, order that he may draw his conclusion whether one is
undiscerningly rash in buying the more common and less confusingly similar to the other (Mead Johnson & Co. v.
expensive household products like coffee, and are NVJ Van Dorp, Ltd., supra). 12

therefore less inclined to closely examine specific details

of similarities and dissimilarities between competing The Court of Appeals applied some judicial precedents which are
products. The Supreme Court in Del Monte Corporation not on all fours with this case. It must be emphasized that in
v. CA, 181 SCRA 410, held that: infringement or trademark cases in the Philippines, particularly in
ascertaining whether one trademark is confusingly similar to or is
"The question is not whether the two articles are a colorable imitation of another, no set rules can be deduced.
distinguishable by their labels when set side by Each case must be decided on its own merits. In Esso Standard,
13 

side but whether the general confusion made by Inc. v. Court of Appeals, we ruled that the likelihood of confusion
14 

the article upon the eye of the casual purchaser is a relative concept; to be determined only according to the
who is unsuspicious and off his guard, is such as particular, and sometimes peculiar, circumstances of each case.
to likely result in his confounding it with the In trademark cases, even more than in any other litigation,
original. As observed in several cases, the precedent must be studied in light of the facts of the particular
general impression of the ordinary purchaser, case. The wisdom of the likelihood of confusion test lies in its
buying under the normally prevalent conditions in recognition that each trademark infringement case presents its
trade and giving the attention such purchasers own unique set of facts. Indeed, the complexities attendant to an
usually give in buying that class of goods, is the accurate assessment of likelihood of confusion require that the
touchstone." entire panoply of elements constituting the relevant factual
landscape be comprehensively examined. 15

From this perspective, the test of similarity is to consider

the two marks in their entirety, as they appear in the The Court of Appeals’ application of the case of Del Monte
respective labels, in relation to the goods to which they Corporation v. Court of Appeals is, therefore, misplaced. In Del
16 
Monte, the issue was about the alleged similarity of Del Monte’s spelling and pronunciation, both labels have strikingly different
logo with that of Sunshine Sauce Manufacturing Industries. Both backgrounds and surroundings. In addition, one is dispensable
corporations market the catsup product which is an inexpensive only upon doctor’s prescription, while the other may be purchased
and common household item. over-the-counter.

Since Del Monte alleged that Sunshine’s logo was confusingly In the Mead Johnson case, the differences between ALACTA and
similar to or was a colorable imitation of the former’s logo, there ALASKA are glaring and striking to the eye. Also, ALACTA refers
was a need to go into the details of the two logos as well as the to "Pharmaceutical Preparations which Supply Nutritional Needs,"
shapes of the labels or marks, the brands printed on the labels, falling under Class 6 of the official classification of Medicines and
the words or lettering on the labels or marks and the shapes and Pharmaceutical Preparations to be used as prescribed by
colors of the labels or marks. The same criteria, however, cannot physicians. On the other hand, ALASKA refers to "Foods and
be applied in the instant petition as the facts and circumstances Ingredients of Foods" falling under Class 47, and does not require
herein are peculiarly different from those in the Del Monte case. medical prescription.

In the same manner, the Court of Appeals erred in applying the In the American Cyanamid case, the word SULMET is
totality rule as defined in the cases of Bristol Myers v. Director of distinguishable from the word SULMETINE, as the former is
Patents; Mead Johnson & Co. v. NVJ Van Dorf
17 
derived from a combination of the syllables "SUL" which is
Ltd.; and American Cyanamid Co. v. Director of Patents. The
18  19 
derived from sulfa and "MET" from methyl, both of which are
totality rule states that "the test is not simply to take their words chemical compounds present in the article manufactured by the
and compare the spelling and pronunciation of said words. In contending parties. This Court held that the addition of the
determining whether two trademarks are confusingly similar, the syllable "INE" in respondent’s label is sufficient to distinguish
two marks in their entirety as they appear in the respective labels respondent’s product or trademark from that of petitioner. Also,
must be considered in relation to the goods to which they are both products are for medicinal veterinary use and the buyer will
attached; the discerning eye of the observer must focus not only be more wary of the nature of the product he is buying. In any
on the predominant words but also on the other features case, both products are not identical as SULMET’s label indicates
appearing on both labels." 20
that it is used in a drinking water solution while that of
SULMETINE indicates that they are tablets.
As this Court has often declared, each case must be studied
according to the peculiar circumstances of each case. That is the It cannot also be said that the products in the above cases can be
reason why in trademark cases, jurisprudential precedents should bought off the shelf except, perhaps, for ALASKA. The said
be applied only to a case if they are specifically in point. products are not the usual "common and inexpensive" household
items which an "undiscerningly rash" buyer would unthinkingly
In the above cases cited by the Court of Appeals to justify the buy.In the case at bar, other than the fact that both Nestle’s and
application of the totality or holistic test to this instant case, the CFC’s products are inexpensive and common household items,
factual circumstances are substantially different. In the Bristol the similarity ends there. What is being questioned here is the
Myers case, this Court held that although both BIOFERIN and use by CFC of the trademark MASTER. In view of the difficulty of
BUFFERIN are primarily used for the relief of pains such as applying jurisprudential precedents to trademark cases due to the
headaches and colds, and their names are practically the same in peculiarity of each case, judicial fora should not readily apply a
certain test or standard just because of seeming similarities. As This Court cannot agree with the above reasoning. If the ordinary
this Court has pointed above, there could be more telling purchaser is "undiscerningly rash" in buying such common and
differences than similarities as to make a jurisprudential inexpensive household products as instant coffee, and would
precedent inapplicable. therefore be "less inclined to closely examine specific details of
similarities and dissimilarities" between the two competing
Nestle points out that the dominancy test should have been products, then it would be less likely for the ordinary purchaser to
applied to determine whether there is a confusing similarity notice that CFC’s trademark FLAVOR MASTER carries the colors
between CFC’s FLAVOR MASTER and Nestle’s MASTER orange and mocha while that of Nestle’s uses red and brown. The
ROAST and MASTER BLEND. application of the totality or holistic test is improper since the
ordinary purchaser would not be inclined to notice the specific
We agree. features, similarities or dissimilarities, considering that the product
is an inexpensive and common household item.
As the Court of Appeals itself has stated, "[t]he determination of
whether two trademarks are indeed confusingly similar must be It must be emphasized that the products bearing the trademarks
taken from the viewpoint of the ordinary purchasers who are, in in question are "inexpensive and common" household items
general, undiscerningly rash in buying the more common and less bought off the shelf by "undiscerningly rash" purchasers. As such,
expensive household products like coffee, and are therefore less if the ordinary purchaser is "undiscerningly rash", then he would
inclined to closely examine specific details of similarities and not have the time nor the inclination to make a keen and
dissimilarities between competing products." 21 perceptive examination of the physical discrepancies in the
trademarks of the products in order to exercise his choice.
The basis for the Court of Appeals’ application of the totality or
holistic test is the "ordinary purchaser" buying the product under While this Court agrees with the Court of Appeals’ detailed
"normally prevalent conditions in trade" and the attention such enumeration of differences between the respective trademarks of
products normally elicit from said ordinary purchaser. An ordinary the two coffee products, this Court cannot agree that totality test
purchaser or buyer does not usually make such scrutiny nor does is the one applicable in this case. Rather, this Court believes that
he usually have the time to do so. The average shopper is usually the dominancy test is more suitable to this case in light of its
in a hurry and does not inspect every product on the shelf as if he peculiar factual milieu.
were browsing in a library.
22

Moreover, the totality or holistic test is contrary to the elementary

The Court of Appeals held that the test to be applied should be postulate of the law on trademarks and unfair competition that
the totality or holistic test reasoning, since what is of paramount confusing similarity is to be determined on the basis of visual,
consideration is the ordinary purchaser who is, in general, aural, connotative comparisons and overall impressions
undiscerningly rash in buying the more common and less engendered by the marks in controversy as they are encountered
expensive household products like coffee, and is therefore less in the realities of the marketplace. The totality or holistic test only
23 

inclined to closely examine specific details of similarities and relies on visual comparison between two trademarks whereas the
dissimilarities between competing products. dominancy test relies not only on the visual but also on the aural
and connotative comparisons and overall impressions between
the two trademarks.
For this reason, this Court agrees with the BPTTT when it applied every member of a genus and the exclusion of individuating
the test of dominancy and held that: characters," or "refer to the basic nature of the wares or services
provided rather than to the more idiosyncratic characteristics of a
From the evidence at hand, it is sufficiently established particular product," and are not legally protectable. On the other
that the word MASTER is the dominant feature of hand, a term is descriptive and therefore invalid as a trademark
26 

opposer’s mark. The word MASTER is printed across the if, as understood in its normal and natural sense, it "forthwith
middle portion of the label in bold letters almost twice the conveys the characteristics, functions, qualities or ingredients of a
size of the printed word ROAST. Further, the word product to one who has never seen it and does not know what it
MASTER has always been given emphasis in the TV and is," or "if it forthwith conveys an immediate idea of the ingredients,
radio commercials and other advertisements made in qualities or characteristics of the goods," or if it clearly denotes
promoting the product. This can be gleaned from the fact what goods or services are provided in such a way that the
that Robert Jaworski and Atty. Ric Puno Jr.., the consumer does not have to exercise powers of perception or
personalities engaged to promote the product, are given imagination.
the titles Master of the Game and Master of the Talk
Show, respectively. In due time, because of these Rather, the term "MASTER" is a suggestive term brought about
advertising schemes the mind of the buying public had by the advertising scheme of Nestle. Suggestive terms are those
27 

come to learn to associate the word MASTER with the which, in the phraseology of one court, require "imagination,
opposer’s goods. thought and perception to reach a conclusion as to the nature of
the goods." Such terms, "which subtly connote something about
x x x. It is the observation of this Office that much of the the product," are eligible for protection in the absence of
dominance which the word MASTER has acquired secondary meaning. While suggestive marks are capable of
through Opposer’s advertising schemes is carried over shedding "some light" upon certain characteristics of the goods or
when the same is incorporated into respondent- services in dispute, they nevertheless involve "an element of
applicant’s trademark FLAVOR MASTER. Thus, when incongruity," "figurativeness," or " imaginative effort on the part of
one looks at the label bearing the trademark FLAVOR the observer."
MASTER (Exh. 4) one’s attention is easily attracted to the
word MASTER, rather than to the dissimilarities that exist. This is evident from the advertising scheme adopted by Nestle in
Therefore, the possibility of confusion as to the goods promoting its coffee products. In this case, Nestle has, over time,
which bear the competing marks or as to the origins promoted its products as "coffee perfection worthy of masters like
thereof is not farfetched. x x x.
24
Robert Jaworski and Ric Puno Jr."

In addition, the word "MASTER" is neither a generic nor a In associating its coffee products with the term "MASTER" and
descriptive term. As such, said term can not be invalidated as a thereby impressing them with the attributes of said term, Nestle
trademark and, therefore, may be legally protected. Generic advertised its products thus:
terms are those which constitute "the common descriptive name
25 

of an article or substance," or comprise the "genus of which the Robert Jaworski. Living Legend. A true hard court hero.
particular product is a species," or are "commonly used as the Fast on his feet. Sure in every shot he makes. A master
name or description of a kind of goods," or "imply reference to strategist. In one word, unmatched.
 MASTER ROAST. Equally unmatched. Rich and deeply soon as we see that a second comer in a market has, for
satisfying. Made from a unique combination of the best no reason that he can assign, plagiarized the "make-up"
coffee beans - Arabica for superior taste and aroma, of an earlier comer, we need no more; . . . [W]e feel
Robusta for strength and body. A masterpiece only bound to compel him to exercise his ingenuity in quarters
NESCAFE, the world’s coffee masters, can create. further afield.

MASTER ROAST. Coffee perfection worthy of masters WHEREFORE, in view of the foregoing, the decision of the Court
like Robert Jaworski. 28
of Appeals in CA-G.R. SP No. 24101 is REVERSED and SET
ASIDE and the decision of the Bureau of Patents, Trademarks
In the art of conversation, Ric Puno Jr. is master. Witty. and Technology Transfer in Inter Partes Cases Nos. 3200 and
Well-informed. Confident. 3202 is REINSTATED.

In the art of coffee-making, nothing equals Master Roast, SO ORDERED.

the coffee masterpiece from Nescafe, the world’s coffee
masters. A unique combination of the best coffee beans -
Arabica for superior taste and aroma, Robusta for
strength and body. Truly distinctive and rich in flavor.

Master Roast. Coffee perfection worthy of masters like Ric Puno

Jr.
29

The term "MASTER", therefore, 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.

In closing, it may not be amiss to quote the case of American

Chicle Co. v. Topps Chewing Gum, Inc., to wit:
30 

Why it should have chosen a mark that had long been

employed by [plaintiff] and had become known to the
trade instead of adopting some other means of identifying
its goods is hard to see unless there was a deliberate
purpose to obtain some advantage from the trade that
[plaintiff] had built up. Indeed, it is generally true that, as