B06

Del Monte Corporation vs. CA

GR No.L-78325 |CRUZ, J.| Jan 25, 1990

Digested by: Charlene B. Concepcion

Case Doctrine: Infringement of trademark and unfair competition

Facts:

Petitioner Del Monte Corporation is a foreign company organized under the laws of the United States
and not engaged in business in the Philippines. Both the Philippines and the United States are
signatories to the Convention of Paris, a treaty which grants to the nationals of the parties rights and
advantages which their own nationals enjoy for the repression of acts of infringement and unfair
competition. On the other hand, petitioner Philippine Packing Corporation (Philpack) is a domestic
corporation duly organized under the laws of the Philippines.

Sometime in 1965, Del Monte authorized Philpack to register with the Philippine Patent Office
the Del Monte catsup bottle configuration, for which it was granted Certificate of Trademark
Registration by the Philippine Patent Office under the Supplemental Register. In 1969, Del
Monte granted Philpack the right to manufacture, distribute and sell in the Philippines various
agricultural products, including catsup, under the Del Monte trademark and logo. In 1972, Del
Monte also obtained two registration certificates for its trademark “DEL MONTE” and its logo.

Respondent Sunshine Sauce Manufacturing Industries was issued a Certificate of Registration

by the Bureau of Domestic Trade in 1980 to engage in the manufacture, packing, distribution
and sale of various kinds of sauce, identified by the logo Sunshine Fruit Catsup. The logo was
registered in the Supplemental Register in 1983. Sunshine Sauce’s product itself was contained
in various kinds of bottles, including the Del Monte bottle, which it bought from the junk shops
for recycling.

Philpack received reports that Sunshine Sauce was using its exclusively designed bottles and a
logo confusingly similar to Del Monte’s. Philpack warned Sunshine Sauce to desist from doing
so on pain of legal action. Thereafter, claiming that the demand had been ignored, Philpack and
Del Monte filed a complaint against the Sunshine Sauce for infringement of trademark and
unfair competition.

Sunshine alleged that:

 it had long ceased to use the Del Monte bottle and that
  its logo was substantially different from the Del Monte logo and would not confuse the
buying public to the detriment of the petitioners.

The RTC dismissed the complaint on the following grounds:

 there were substantial differences between the logos or trademarks of the parties

 Sunshine Sauce became the owner of the said bottles upon its purchase thereof from
the junk yards

 Del Monte and Philpack had failed to establish the its malice or bad faith, which is an
essential element of infringement of trademark or unfair competition

The CA affirmed RTC’s decision in toto. Hence, the appeal.

Issue:

Whether or not Sunshine Sauce is guilty of unfair competition

Held:

Yes, it is guilty of unfair competition.

The SC compared the Del Monte and Sunshine Sauce’s packaging. While it recognized several
distinctions, it does not agree with the conclusion that there was no infringement or unfair
competition.

According to the SC, side-by-side comparison is not the final test of similarity. Such comparison
requires a careful scrutiny to determine in what points the labels of the products differ, as was
done by the trial judge. The ordinary buyer does not usually make such scrutiny nor does he
usually have the time to do so. The average shopper is usually in a hurry and does not inspect
every product on the shelf as if he were browsing in a library.

The question is not whether the two articles are distinguishable by their label when set side by
side but whether the general confusion made by the article upon the eye of the casual
purchaser who is unsuspicious and off his guard, is such as to likely result in his confounding it
with the original.

A number of courts have held that to determine whether a trademark has been infringed, we
must consider the mark as a whole and not as dissected. If the buyer is deceived, it is
attributable to the marks as a totality, not usually to any part of it. The court therefore should
be guided by its first impression, for a buyer acts quickly and is governed by a casual glance, the
value of which may be dissipated as soon as the court assumes to analyze carefully the
respective features of the mark.

It has also been held that it is not the function of the court in cases of infringement and unfair
competition to educate purchasers but rather to take their carelessness for granted, and to be
ever conscious of the fact that marks need not be identical. A confusing similarity will justify the
intervention of equity. The judge must also be aware of the fact that usually a defendant in
cases of infringement does not normally copy but makes only colorable changes. Well has it
been said that the most successful form of copying is to employ enough points of similarity to
confuse the public with enough points of difference to confuse the courts.

The Sunshine label is a colorable imitation of the Del Monte trademark. The predominant colors
used in the Del Monte label are green and red-orange, the same with Sunshine. The word
“catsup” in both bottles is printed in white and the style of the print/letter is the same.
Although the logo of Sunshine is not a tomato, the figure nevertheless approximates that of a
tomato.