Philippines: Battle of the mugs
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Philippines: Battle of the mugs

On June 27 2016, the Court of Appeals (CA) denied Nestlé's petition to prevent the registration of San Miguel Corporation's trade mark application for San Mig Coffee Mild Sugar Free Label Design filed with the Intellectual Property Office (IPOPHL) on June 7 2005.

coffee-300.jpg

Mug Device

Nescafé with
Mug Device on Jar

Nestlé opposed San Miguel's trade mark application on January 15 2007 on the ground that it is the first to adopt, use and file the mark Mug Device in the Philippines for coffee and other goods, and therefore, has the right to exclude everyone else from using or registering marks that are identical or confusingly similar to its mark, such as that of San Miguel's. Nestlé claimed that its Mug Device mark is well known internationally and in the Philippines. Further, Nestlé alleged that San Miguel violated an agreement entered into on April 2005 with Nestlé Philippines, Inc where San Miguel recognised the rights of Nestle in the Mug Device. Nestlé's Mug Device trade mark covered by two Philippine registrations is illustrated. In its defence, San Miguel alleged that the marks are not similar and that it has continuously and extensively used its San Mig Coffee Mild Sugar Free Label Design mark through its affiliated company San Miguel Super Coffeemix Company Inc and has invested heavily in advertising its coffee line of products. It also denied violation of the agreement.

The Director of the Bureau of Legal Affairs (BLA) denied Nestlé's opposition and ruled that the dominant feature of San Miguel's mark is the term San Mig which has no similarity to Nestle's Mug Device and Nescafé with Mug Device, and that Nestlé failed to substantiate its claim that its Mug Device is internationally well known.

On January 5 2009, Nestlé appealed the decision of the BLA to the Office of the Director General (ODG) which upheld the BLA in its decision issued on August 13 2012. Dissatisfied, Nestlé appealed the ODG's decision to the CA which upheld the ODG decision. In its ruling, the CA stated that the ODG correctly observed that Nestlé's Nescafé and San Miguel's San Mig marks are the dominant marks of the parties as they are prominently printed on the labels "which easily attract and catch the eyes of an ordinary consumer". The CA further stated that "petitioner's Mug Device only features a red mug unlike the mug in respondent's San Mig mark which is red orange", and that Nestlé's Nescafé with Mug Device on Jar clearly shows the word Nescafé with a line connecting from the letter "N" overlining the remaining letters "escafé". Insofar as San Miguel's mark is concerned, the term San Mig is distinguishable from the double leaf device above the letter "i". The CA's decision is appealable to the Supreme Court.

Hechanova_Editha-100

Editha R Hechanova


Hechanova & Co., Inc.Salustiana D. Ty Tower104 Paseo de Roxas AvenueMakati City 1229, PhilippinesTel: (63) 2 812-6561Fax: (63) 2 888-4290

editharh@hechanova.com.ph

www.hechanova.com.ph

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