Societe des Produits Nestle, S.A. vs. Puregold Price Club, Inc.

A corporation's certification against forum shopping must be accompanied by a board resolution or secretary's certificate proving the authority of the signatory to execute the same on behalf of the corporation; failure to submit such proof is a non-curable defect warranting dismissal of the petition, and in trademark opposition proceedings, generic terms such as "COFFEE" cannot be exclusively appropriated, with the determination of confusing similarity focusing on the distinct elements of the marks rather than the generic components.

Nestle, a Swiss corporation marketing coffee and dairy products under the internationally known "COFFEE-MATE" trademark, sought to prevent the registration of Puregold's "COFFEE MATCH" mark for similar goods. Puregold, a Philippine retail corporation, filed the application covering coffee, tea, cocoa, and related products under Class 30 of the International Classification of Goods. Nestle alleged that Puregold's mark would mislead the public into believing the goods originated from Nestle due to confusing similarity with its established brand.

• The Competing Marks: Nestle owns the "COFFEE-MATE" trademark for coffee-related products. Puregold applied for registration of "COFFEE MATCH" for goods including coffee, tea, cocoa, sugar, and cereal preparations under Class 30 of the International Classification of Goods.
• Opposition Proceedings: On 5 December 2008, Nestle filed an opposition alleging confusing similarity and potential damage to its well-known mark. The opposition was signed by Dennis Jose R. Barot with a verification and certification against forum shopping attached, but without a board resolution or secretary's certificate proving Barot's authority to represent Nestle.
• BLA-IPO Ruling: On 16 April 2012, the Bureau of Legal Affairs dismissed the opposition, ruling that the defect in the certification was sufficient ground for dismissal. It additionally found no confusing similarity, noting that "COFFEE" is generic and the marks "-MATE" and "MATCH" are visually and aurally distinguishable.
• ODG-IPO Ruling: On 11 June 2012, Nestle appealed to the Office of the Director General. On 7 February 2014, the ODG-IPO dismissed the appeal, affirming both the procedural defect regarding Barot's authority and the substantive finding of no confusing similarity.
• Court of Appeals Proceedings: Nestle filed a Petition for Review on 14 April 2014. The CA dismissed it on 15 May 2014 for: (1) failure to name respondent in the title; (2) lack of board resolution/secretary's certificate for Barot; and (3) failure to attach certified true copies of material records. In its 14 October 2014 Resolution denying reconsideration, the CA alternatively ruled that the petition was filed beyond the 15-day reglementary period, computing from receipt by Nestle's former counsel (SVBB Law Offices) on 19 February 2014 rather than substituted counsel (Bengzon Law Offices) who entered appearance on 20 September 2013 and received the decision on 14 March 2014.
• Authority Defect: Nestle acknowledged the absence of a board resolution for Barot but submitted a power of attorney signed by Celine Jorge, which likewise lacked proof of Jorge's authority to bind the corporation.

• Procedural Timeliness: Nestle maintained that the petition was filed within the reglementary period, contending that the 15-day period should be computed from receipt by substituted counsel (Bengzon Law Offices) on 14 March 2014, not former counsel, and that the Motion for Extension filed on 27 March 2014 and the granted extension until 13 April 2014 (Monday, 14 April being the next working day) rendered the filing timely.
• Substantive Merits of Opposition: Nestle argued that the Court of Appeals erred in dismissing the petition without addressing the substantive issues regarding the confusing similarity between "COFFEE-MATE" and "COFFEE MATCH" and the alleged likelihood of deception of the consuming public.

• Procedural Defects: Puregold countered that the certification against forum shopping was fatally defective due to the absence of a board resolution or secretary's certificate proving Barot's authority, and that the power of attorney presented was insufficient as it was signed by an officer (Celine Jorge) whose own authority was not established by corporate resolution.
• Registrability of Mark: Puregold argued that "COFFEE MATCH" was registrable, asserting that the term "COFFEE" is generic and descriptive, and that the mark as a whole is visually and phonetically distinct from "COFFEE-MATE," negating any likelihood of confusion.

• Timeliness of Appeal: Whether the petition for review was filed within the reglementary period where the Court of Appeals computed the period from receipt by former counsel rather than substituted counsel.
• Validity of Certification Against Forum Shopping: Whether the absence of a board resolution or secretary's certificate proving the authority of the corporate representative to sign the certification against forum shopping constitutes a fatal, non-curable defect warranting dismissal.
• Confusing Similarity of Marks: Whether the marks "COFFEE-MATE" and "COFFEE MATCH" are confusingly similar such that Puregold's application should be denied.

• Timeliness of Appeal: The Court of Appeals erred in computing the reglementary period from receipt by former counsel. The period commenced upon receipt by substituted counsel (Bengzon Law Offices) on 14 March 2014, rendering the Motion for Extension filed on 27 March 2014 timely and the subsequent filing on 14 April 2014 (pursuant to the granted extension) proper.
• Validity of Certification Against Forum Shopping: The dismissal for defective certification was proper. For juridical persons, the authorized representative must be selected collectively by the board of directors, evidenced by a board resolution or secretary's certificate. The power of attorney executed by Celine Jorge in favor of Barot was insufficient because Jorge's own authority to execute such power of attorney was not proven by a board resolution or secretary's certificate. Courts cannot take judicial notice of corporate board resolutions.
• Confusing Similarity of Marks: Puregold's mark is registrable. Under Section 123(h) of RA 8293, generic terms like "COFFEE" cannot be exclusively appropriated. Applying the dominancy and holistic tests, the suffixes "-MATE" and "MATCH" are sufficiently distinct visually and aurally; the capitalization of "C" and "M" in "COFFEE MATCH" and the phonetic difference from the hyphenated "COFFEE-MATE" negate likelihood of confusion.

• Corporate Certification Against Forum Shopping: For corporations, the certification against forum shopping must be executed by a representative authorized through a board resolution or secretary's certificate. An officer acting alone without such authorization has no authority to sign, and a power of attorney presented in lieu thereof is insufficient unless accompanied by proof of the grantor's authority to execute it.
• Generic Marks Doctrine: Generic or descriptive words that identify the goods themselves cannot be exclusively appropriated as trademarks and belong to the public domain under Section 123(h) of RA 8293.
• Tests for Confusing Similarity: The dominancy test focuses on the similarity of the prevalent features of competing trademarks that might cause confusion, while the holistic test considers the entirety of the marks as applied to the products. The likelihood of confusion depends on the particular circumstances of each case, examining visual, aural, and conceptual similarities.

• "The requirement that the petitioner should sign the certificate of non-forum shopping applies even to corporations, considering that the mandatory directives of the Circular and the Rules of Court make no distinction between natural and juridical persons."
• "Courts are not, after all, expected to take judicial notice of corporate board resolutions or a corporate officer's authority to represent a corporation."
• "The gravamen of trademark infringement is the likelihood of confusion. There is no absolute standard for the likelihood of confusion. Only the particular, and sometimes peculiar, circumstances of each case can determine its existence."

• Zulueta v. Asia Brewery, Inc., 406 Phil. 543 (2001) — Controlling precedent establishing that the certification against forum shopping requirement applies to corporations and must be signed by the principal party or a duly authorized representative, not merely counsel.
• Eslaban, Jr. v. Vda. de Onorio, 412 Phil. 667 (2001) — Followed for the rule that a corporate officer acting alone has no authority to sign the certification without board authorization.
• Gonzales v. Climax Mining Ltd., 492 Phil. 682 (2005) — Followed for the requirement that a board resolution is necessary to authorize a corporate officer to execute the certification.
• Development Bank of the Philippines v. Court of Appeals, 483 Phil. 216 (2004) — Followed for the proposition that courts cannot take judicial notice of board resolutions and that failure to attach proof of authority is fatal.
• Coffee Partners, Inc. v. San Francisco & Roastery, Inc., 628 Phil. 13 (2010) — Followed regarding the gravamen of trademark infringement being likelihood of confusion and the application of the dominancy and holistic tests.
• McDonald's Corporation v. L.C. Big Mak Burger, Inc., 480 Phil. 402 (2004) — Cited for the principle that courts consider more the aural and visual impressions created by the marks.
• Asia Brewery, Inc. v. Court of Appeals, 296 Phil. 298 (1993) — Cited for the rule that generic or descriptive words are not subject to registration.

• Section 4, Rule 43 of the Rules of Court — Governs the 15-day period for filing appeals from quasi-judicial bodies and allows for one motion for reconsideration and extensions under specific conditions.
• Section 5, Rule 7 of the Rules of Court — Mandates the certification against forum shopping and provides that failure to comply is not curable by mere amendment and is cause for dismissal.
• Section 123, Republic Act No. 8293 (Intellectual Property Code) — Prohibits registration of marks that consist exclusively of signs that are generic for the goods or services they seek to identify (Sec. 123.1[h]) and marks that are identical with or confusingly similar to well-known marks (Sec. 123.1[e]).
• Section 155.1, Republic Act No. 8293 — Defines trademark infringement with reference to the use of a "dominant feature" of a registered mark.

Diosdado M. Peralta, Estela M. Perlas-Bernabe, Alfredo Benjamin S. Caguioa, Andres B. Reyes, Jr.