Del Monte Corporation v. Court of Appeals
REITERATIONFacts
The Antecedents: Petitioners Del Monte Corporation and Philippine Packing Corporation (Philpack) filed a complaint against respondent Sunshine Sauce Manufacturing Industries for infringement of trademark and unfair competition. Del Monte, a foreign corporation, granted Philpack, a domestic corporation, the right to manufacture and sell products under the Del Monte trademark and logo in the Philippines. Del Monte had registered its trademark and logo, as well as the Del Monte catsup bottle configuration in the Supplemental Register. Sunshine was issued a Certificate of Registration to engage in the manufacture and sale of sauces, identified by the Sunshine Fruit Catsup logo, and registered this logo in the Supplemental Register. Sunshine used bottles, including Del Monte bottles purchased from junk shops, and a logo that Philpack alleged was confusingly similar to Del Monte's. Procedural History: The Regional Trial Court dismissed the complaint, finding substantial differences between the logos, that Sunshine had ceased using Del Monte bottles, and that ownership of the bottles was acquired by purchase. The trial court also held that malice or bad faith, essential for infringement and unfair competition, was not established. The Court of Appeals affirmed the trial court's decision. The Petition: Petitioners question the decision of the Court of Appeals, arguing that the lower courts erred in finding no infringement or unfair competition.
Issue(s)
Whether the respondent's Sunshine Fruit Catsup logo constitutes an infringement of the Del Monte trademark and logo. Whether the respondent's use of Del Monte bottles constitutes unfair competition. Whether the petitioners are entitled to damages.
Ruling
The petition is GRANTED. The decision of the Court of Appeals is REVERSED and SET ASIDE. A new judgment is rendered: (1) canceling the private respondent's Certificate of Registration No. SR-6310 and permanently enjoining the private respondent from using a label similar to that of the petitioners; (2) prohibiting the private respondent from using the empty bottles of the petitioners as containers for its own products; and (3) ordering the private respondent to pay the petitioners nominal damages in the amount of P1,000.00, and costs.
Ratio Decidendi
On the issue of trademark infringement: The Court held that the respondent court erred in focusing on minute differences between the logos and failing to consider the general impression on the ordinary purchaser. The ordinary buyer, often in a hurry, relies on memory and a casual glance, and is likely to be confused by similar labels even with minor distinctions. The Court emphasized that the test is not whether the articles are distinguishable side-by-side but whether the general impression upon the casual purchaser is likely to cause confusion. The predominant colors and style of print for 'catsup' on both labels were similar, and the Sunshine logo approximated the shape of a tomato. The Court concluded that the Sunshine label was a colorable imitation of the Del Monte trademark, and that the choice of similar colors and letters, given the broad range of options, indicated a deliberate intent to deceive. The Court reiterated the principle that in cases of doubt, the newcomer should be resolved against, as they have nothing to lose and everything to gain from confusion. On the issue of unfair competition through the use of Del Monte bottles: The Court found that while the configuration of the Del Monte bottle was registered only in the Supplemental Register, which does not give rise to a presumption of validity or exclusive use, the private respondent's act of using these bottles, despite an embossed caution not to refill, demonstrated bad faith and an intention to capitalize on Del Monte's reputation. The Court distinguished this case from Shell Co. v. Insular Petroleum, noting that Sunshine did not obliterate the markings, used multiple bottles, and did not erase the warning, unlike in the Shell case where the markings were obliterated and it involved a single isolated transaction with dealers, not ultimate consumers. The Court concluded that the use of Del Monte bottles constituted unfair competition. On the issue of damages: The Court ruled that the petitioners could not be granted the actual damages prayed for because they failed to present evidence to prove the amount thereof. However, applying Article 2222 of the Civil Code, which allows for nominal damages when a property right has been invaded, the Court awarded nominal damages in the amount of P1,000.00 to the petitioners.
Main Doctrine
The test for determining confusing similarity between trademarks focuses on the general impression of the ordinary purchaser, buying under normal conditions and giving the attention usually given to that class of goods, and not on a side-by-side comparison that dissects minute differences. A newcomer who benefits from confusion should be resolved against them.