Supreme Court decision on a Nestle trademark case on confusing similarity on milk products

It is FINAL. The Supreme Court has denied the Motion for Reconsideration filed by our opposing counsel in    favorable decision of the Court  on a Nestle trademark case on confusing similarity on milk products.. I personally handled the appeal case in the CA and SC level...

http://sc.judiciary.gov.ph/jurisprudence/2010/august2010/172276.htm

Nestle owns the “NAN” trademark for its line of infant powdered milk products, consisting of PRE-NAN, NAN-H.A., NAN-1, and NAN-2.  NAN is classified under Class 6 — “diatetic preparations for infant feeding.” Respondent Martin  Dy, Jr. owns 5M Enterprises.  He imports Sunny Boy powdered milk from Australia and repacks the powdered milk into three sizes of plastic packs bearing the name “NANNY.”  NANNY is is also classified under Class 6 — “full cream milk for adults in [sic] all ages.”  Dy, Jr. distributes and sells the powdered milk in Dumaguete, Negros Oriental, Cagayan de Oro, and parts of Mindanao.



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.

NANNY and NAN have the same classification, descriptive properties and physical attributes.  Both are classified under Class 6, both are milk products, and both are in powder form.  Also, NANNY and NAN are displayed in the same section of stores — the milk section.

The Court agrees with the lower courts that there are differences between NAN and NANNY: (1) NAN is intended for infants while NANNY is intended for children past their infancy and for adults; and (2) NAN is more expensive than NANNY.  However, as the registered owner of the “NAN” mark, Nestle should be free to use its mark on similar products, in different segments of the market, and at different price levels.   

The scope of protection afforded to registered trademark owners is not limited to protection from infringers with identical goods. The scope of protection extends to protection from infringers with related goods, and to market areas that are the normal expansion of business of the registered trademark owners.