Del Monte vs.

CA
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 Sauces 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 Montes. 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 RTCs decision in toto. Hence, the appeal.
Issue(s):
1) Whether or not Sunshine Sauce is guilty of unfair competition.
2) Whether or not Sunshine Sauce is guilty of infringement for having
used the Del Monte bottle.
Held:
1) Yes, it is guilty of unfair competition.
The SC compared the Del Monte and Sunshine Sauces 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.
2) No, it is not guilty of infringement.
Sunshine Sauce is not guilty of infringement for having used the Del Monte
bottle. The reason is that the configuration of the said bottle was merely
registered in the Supplemental Register. Registration only in the
Supplemental Register means absence of the following presumptions:
validity of the trademark, the registrants ownership of the mark and his
right to its exclusive use.

Registration in the Principal Register


Registration in the Supplemental
Register

gives rise to a presumption of
the validity of the
registration, the registrants
ownership of the mark and
his right to the exclusive use
thereof


no such presumption

limited to the actual owner of
the trademark


not limited to the actual
owner of the trademark

constructive notice of the
registrants claim of
ownership


merely proof of actual use
of the trademark and
notice that the registrant
has used or appropriated it


the issue of ownership may
be contested through
opposition or interference
proceedings or, after
registration, in a petition for
cancellation


not subject to opposition
although it may be
cancelled after the
issuance

basis for an action for
infringement

not a basis


in applications for registration
in the Principal Register,
publication of the application
is necessary


not so in applications for
registrations in the
Supplemental Register

It can be inferred from the foregoing that although Del Monte has actual
use of the bottles configuration, the petitioners cannot claim exclusive use
thereof because it has not been registered in the Principal Register.
However, we find that Sunshine, despite the many choices available to it
and notwithstanding that the caution Del Monte Corporation, Not to be
Refilled was embossed on the bottle, still opted to use the petitioners
bottle to market a product which Philpack also produces. This clearly shows
the private respondents bad faith and its intention to capitalize on the
latters reputation and goodwill and pass off its own product as that of Del
Monte.