G.R. No. 172276 August 9, 2010 confusion.
Infringement takes place when the competing
trademark contains the essential features of another.
SOCIETE DES PRODUITS NESTLE, S.A., Petitioner, Imitation or an effort to imitate is unnecessary. The question
vs. is whether the use of the marks is likely to cause confusion
MARTIN T. DY, JR., Respondent. or deceive purchasers.
Facts The holistic test considers the entirety of the marks,
including labels and packaging, in determining confusing
Petitioner Societe Des Produits Nestle, S.A. (Nestle) is a similarity. The focus is not only on the predominant words
foreign corporation manufacturing food products and but also on the other features appearing on the labels.
beverages. Nestle owns the "NAN" trademark for its line of
infant powdered milk products. NAN is classified under In the light of the facts of the present case, the Court holds
Class 6 — "diatetic preparations for infant feeding." that the dominancy test is applicable. In recent cases with
similar factual milieus, the Court has consistently applied
Dy, Jr. imports Sunny Boy powdered milk and repacks the the dominancy test. In Prosource International, Inc., the
powdered milk into three sizes of plastic packs bearing the Court applied the dominancy test in holding that "PCO-
name "NANNY." NANNY is is also classified under Class 6 GENOLS" is confusingly similar to "PYCNOGENOL."
— "full cream milk for adults in [sic] all ages."
In determining the issue of confusing similarity, the Court
In a letter on 1985, Nestle requested Dy, Jr. to refrain from takes into account the aural effect of the letters contained in
using "NANNY" and to undertake that he would stop the marks. In Marvex Commercial Company, Inc. v. Petra
infringing the "NAN" trademark. Dy, Jr. did not act on Hawpia & Company, the Court held:
Nestle’s request. On 1990, Nestle filed before the RTC of
Dumaguete City, a complaint against Dy, Jr. for It is our considered view that the trademarks "SALONPAS"
infringement. Dy, Jr. filed a motion to dismiss alleging that and "LIONPAS" are confusingly similar in sound.
the complaint did not state a cause of action. In its 1990
order, the trial court dismissed the complaint. Nestle Both these words have the same suffix, "PAS", which is
appealed to the Court of Appeals. In its 1993 Resolution, used to denote a plaster that adheres to the body with
the Court of Appeals set aside the 1990 order and curative powers. "PAS," being merely descriptive, furnishes
remanded the case to the trial court for further proceedings. no indication of the origin of the article and therefore is
open for appropriation by anyone (Ethepa vs. Director of
Nestle filed with the trial court a motion to transfer the case Patents, L-20635, March 31, 1966) and may properly
to the RTC of Cebu City, which was designated as a special become the subject of a trademark by combination with
court for intellectual property rights. another word or phrase.
In its 1998 Decision, the trial court found Dy, Jr. liable for The scope of protection afforded to registered trademark
infringement. owners is not limited to protection from infringers with
identical goods. The scope of protection extends to
Dy, Jr. appealed the 1998 Decision to the Court of Appeals. protection from infringers with related goods, and to market
areas that are the normal expansion of business of the
In its Decision, the Court of Appeals reversed the trial registered trademark owners.
court’s 1998 Decision and found Dy, Jr. not liable for
infringement. In Mighty Corporation v. E. & J. Gallo Winery, the Court
held that, "Non-competing goods may be those which,
Issue though they are not in actual competition, are so related to
each other that it can reasonably be assumed that they
The issue is whether Dy, Jr. is liable for infringement. originate from one manufacturer, in which case, confusion
of business can arise out of the use of similar marks." In
Ruling that case, the Court enumerated factors in determining
whether goods are related: (1) classification of the goods;
Yes. (2) nature of the goods; (3) descriptive properties, physical
attributes or essential characteristics of the goods, with
Among the elements of infringement, the element of reference to their form, composition, texture or quality; and
likelihood of confusion is the gravamen of trademark (4) style of distribution and marketing of the goods,
infringement. There are two types of confusion in trademark including how the goods are displayed and sold.
infringement: confusion of goods and confusion of
business. In Sterling Products International, Inc. v.
Farbenfabriken Bayer Aktiengesellschaft, the Court
distinguished the two types of confusion:
Callman notes two types of confusion. The first is the
confusion of goods "in which event the ordinarily prudent
purchaser would be induced to purchase one product in the
belief that he was purchasing the other." In which case,
"defendant’s goods are then bought as the plaintiff’s, and
the poorer quality of the former reflects adversely on the
plaintiff’s reputation." The other is the confusion of
business: "Here though the goods of the parties are
different, the defendant’s product is such as might
reasonably be assumed to originate with the plaintiff, and
the public would then be deceived either into that belief or
into the belief that there is some connection between the
plaintiff and defendant which, in fact, does not exist."
There are two tests to determine likelihood of confusion: the
dominancy test and holistic test. The dominancy test
focuses on the similarity of the main, prevalent or essential
features of the competing trademarks that might cause
