Petitioner Nestle, a Swiss corporation, owns the ‘NAN’ trademark for its line of infant powdered milk products in the Philippines. Respondent Dy, Jr. on the other hand, owner of 5M Enterprises, imports and repacks powdered milk for adults bearing the mark ‘NANNY.’ Petitioner Nestle filed before the trial court an infringement complaint against respondent. The trial court held that respondent’s trademark is an infringement to petitioner’s mark because it would imply that respondent’s ‘NANNY’ product came from petitioner. CA reversed and held that the two marks are not confusingly similar thus respondent cannot be held liable for infringement.
Whether or not respondent is liable for trademark infringement.
In accordance with Section 22 of R.A. No. 166, as well as Sections 2, 2-A, 9-A, and 20 thereof, the following constitute the elements of trademark infringement: (a) A trademark actually used in commerce in the Philippines and registered in the principal register of the Philippine Patent Office; (b) It is used by another person in connection with the sale, offering for sale, or advertising of any goods, business or services or in connection with which such use is likely to cause confusion or mistake or to deceive purchasers or others as to the source or origin of such goods or services, or identity of such business; or such trademark is reproduced, counterfeited, copied or colorably imitated by another person and such reproduction, counterfeit, copy or colorable imitation is applied to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used upon or in connection with such goods, business or services as to likely cause confusion or mistake or to deceive purchasers; (c) The trademark is used for identical or similar goods; and (d) Such act is done without the consent of the trademark registrant or assignee.
On the other hand, the elements of infringement under R.A. No. 8293 are as follows: (a) The trademark being infringed is registered in the Intellectual Property Office; however, in infringement of trade name, the same need not be registered; (b) The trademark or trade name is reproduced, counterfeited, copied, or colorably imitated by the infringer; (c) The infringing mark or trade name is used in connection with the sale, offering for sale, or advertising of any goods, business or services; or the infringing mark or trade name is applied to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used upon or in connection with such goods, business or services; (d) The use or application of the infringing mark or trade name is likely to cause confusion or mistake or to deceive purchasers or others as to the goods or services themselves or as to the source or origin of such goods or services or the identity of such business; and (e) It is without the consent of the trademark or trade name owner or the assignee thereof.
Among the elements, the element of likelihood of confusion is the gravamen of trademark infringement. Applying the dominancy test in the present case, the Court finds that “NANNY” is confusingly similar to “NAN.” “NAN” is the prevalent feature of Nestle’s line of infant powdered milk products. It is written in bold letters and used in all products. The line consists of PRE-NAN, NAN-H.A., NAN-1, and NAN-2. Clearly, “NANNY” contains the prevalent feature “NAN.” The first three letters of “NANNY” are exactly the same as the letters of “NAN.” When “NAN” and “NANNY” are pronounced, the aural effect is confusingly similar.