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G.R. No.

L-78325 January 25, 1990

CO$RT O% APPEAL& an! &$N&"NE &A$CE MAN$%ACT$RNG ND$&TRE&, respondents.
Bito, Misa & Lozada for petitioners.
Reynaldo F. Singson for private respondent.

CR$', J.:
The petitioners are questioning the decision of the respondent court upholding the dismissal by the trial court of their
complaint against the private respondent for infringement of trademark and unfair competition.
Petitioner Del Monte Corporation is a foreign company organized under the las of the !nited "tates and not engaged
in business in the Philippines. #oth the Philippines and the !nited "tates are signatories to the Convention of Paris of
"eptember $%, &'(), hich grants to the nationals of the parties rights and advantages hich their on nationals en*oy
for the repression of acts of infringement and unfair competition.
Petitioner Philippine Packing Corporation +Philpack, is a domestic corporation duly organized under the las of the
Philippines. -n .pril &&, &'(', 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.
-n -ctober $%,&'(), Del Monte authorized Philpack to register ith the Philippine Patent -ffice the Del Monte
catsup bottle configuration, for hich it as granted Certificate of Trademark /egistration 0o. "/1'&2 by the
Philippine Patent -ffice under the "upplemental /egister. 1 -n 0ovember $3, &'%$, Del Monte also obtained to
registration certificates for its trademark 4D56 M-0T54 and its logo. 2
/espondent "unshine "auce Manufacturing 7ndustries as issued a Certificate of /egistration by the #ureau of
Domestic Trade on .pril &%,&'83, to engage in the manufacture, packing, distribution and sale of various kinds of
sauce, identified by the logo "unshine 9ruit Catsup. 3 This logo as registered in the "upplemental /egister on
"eptember $3, &'82. ( The product itself as contained in various kinds of bottles, including the Del Monte bottle, hich
the private respondent bought from the *unk shops for recycling.
:aving received reports that the private respondent as using its e;clusively designed bottles and a logo confusingly
similar to Del Monte<s, Philpack arned it 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 private respondent for infringement
of trademark and unfair competition, ith a prayer for damages and the issuance of a rit of preliminary in*unction. 5
7n its anser, "unshine alleged that it had long ceased to use the Del Monte bottle and that its logo as substantially
different from the Del Monte logo and ould not confuse the buying public to the detriment of the petitioners. )
.fter trial, the /egional Trial Court of Makati dismissed the complaint. 7t held that there ere substantial differences
beteen the logos or trademarks of the parties= that the defendant had ceased using the petitioners< bottles= and that in
any case the defendant became the oner of the said bottles upon its purchase thereof from the *unk yards.
9urthermore, the complainants had failed to establish the defendant<s malice or bad faith, hich as an essential
element of infringement of trademark or unfair competition. 7
This decision as affirmed in toto by the respondent court, hich is no faulted in this petition for certiorariunder
/ule >) of the /ules of Court.
"ection $$ of /... 0o. &((, otherise knon as the Trademark 6a, provides in part as follos?
"ec. $$. Infringement, what constittes. @ .ny person ho shall use, ithout the consent of the
registrant, any reproduction, counterfeit, copy or colorable imitation of any registered mark or trade1
name in connection ith the sale, offering for sale, or advertising of any goods, business or services
on or in connection ith hich such use is likely to cause confusion or mistake or to deceive
purchasers or others as to the source or origin of such goods or services or identity of such business=
or reproduce, counterfeit copy or colorably imitate any such mark or trade name and apply such
reproduction, counterfeit copy or colorable imitation to labels, signs, prints, packages, rappers,
receptacles or advertisements intended to be used upon or in connection ith such goods, business or
services, shall be liable to a civil action by the registrant for any or all of the remedies herein
"ec. $' of the same la states as follos?
"ec. $'. !nfair competition, rights and remedies. @ . person ho has identified in the mind of the
public the goods he manufactures or deals in, his business or services from those of others, hether
or not a mark or tradename is employed, has a property right in the goodill of the said goods,
business or services so identified, hich ill be protected in the same manner as other property
rights. "uch a person shall have the remedies provided in section tenty1 three, Chapter A hereof.
.ny person ho shall employ deception or any other means contrary to good faith by hich he shall
pass off the goods manufactured by him or in hich he deals, or his business, or services for those of
the one having established such goodill, or ho shall commit any acts calculated to produce said
result, shall be guilty of unfair competition, and shall be sub*ect to an action therefor.
7n particular, and ithout in any ay limiting the scope of unfair competition, the folloing shall be
deemed guilty of unfair competition?
+a, .ny person, ho in selling his goods shall give them the general appearance of
goods of another manufacturer or dealer, either as to the goods themselves or in the
rapping of the packages in hich they are contained, or the devices or ords
thereon, or in any other feature of their appearance, hich ould likely influence
purchasers to believe that the goods offered are those of a manufacturer or dealer
other than the actual manufacturer or dealer, or ho otherise clothes the goods
ith such appearance as shall deceive the public and defraud another of his
legitimate trade, or any subsequent vendor of such goods or any agent of any vendor
engaged in selling such goods ith a like purpose=
+b, .ny person ho by any artifice, or device, or ho employs ally other means
calculated to induce the false belief that such person is offering the services of
another ho has identified such services in the mind of the public= or
+c, .ny person ho shall make any false statement in the course of trade or ho
shall commit any other act contrary to good faith of a nature calculated to discredit
the goods, business or services of another.
To arrive at a proper resolution of this case, it is important to bear in mind the folloing distinctions beteen
infringement of trademark and unfair competition.
+&, 7nfringement of trademark is the unauthorized use of a trademark, hereas unfair
competition is the passing off of one<s goods as those of another.
+$, 7n infringement of trademark fraudulent intent is unnecessary hereas in unfair
competition fraudulent intent is essential.
+2, 7n infringement of trademark the prior registration of the trademark is a
prerequisite to the action, hereas in unfair competition registration is not
necessary. 8
7n the challenged decision, the respondent court cited the folloing test laid don by this Court in a number of cases?
7n determining hether to trademarks are confusingly similar, the to marks in their entirety as
they appear in the respective labels must be considered in relation to the goods to hich they are
attached= the discerning eye of the observer must focus not only on the predorninant ords but also
on the other features appearing on both labels. 9
and applying the same, held that there as no colorable imitation of the petitioners< trademark and logo by the private
respondent. The respondent court agreed ith the findings of the trial court that?
7n order to resolve the said issue, the Court no attempts to make a comparison of
the to products, to it?
&. .s to the shape of label or make?
Del Monte? "emi1rectangular ith a cron or tomato shape design on top of the
"unshine? /egular rectangle.
$. .s to brand printed on label?
Del Monte? Tomato catsup mark.
"unshine? 9ruit catsup.
2. .s to the ords or lettering on label or mark?
Del Monte? Clearly indicated ords packed by "ysu 7nternational, 7nc., B.C.,
"unshine? "unshine fruit catsup is clearly indicated 4made in the Philippines by
"unshine "auce Manufacturing 7ndustries4 0o. & Del Monte .venue, Malabon,
Metro Manila.
>. .s to color of logo?
Del Monte? Combination of yello and dark red, ith ords 4Del Monte Buality4 in
"unshine? Chite, light green and light red, ith ords 4"unshine #rand4 in yello.
). .s to shape of logo?
Del Monte? 7n the shape of a tomato.
"unshine? 5ntirely different in shape.
(. .s to label belo the cap?
Del Monte? "eal covering the cap don to the neck of the bottle, ith picture of
tomatoes ith ords 4made from real tomatoes.4
"unshine? There is a label belo the cap hich says 4"unshine #rand.4
%. .s to the color of the products?
Del Monte? Darker red.
"unshine? 6ighter than Del Monte.
Chile the Court does recognize these distinctions, it does not agree ith the conclusion that there as no infringement
or unfair competition. 7t seems to us that the loer courts have been so pre1occupied ith the details that they have
not seen the total picture.
7t has been correctly held that side1by1side comparison is not the final test of similarity. 10 "uch comparison requires a
careful scrutiny to determine in hat points the labels of the products differ, as as done by the trial *udge. 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 ere brosing in a library. Chere the houseife has to return
home as soon as possible to her baby or the orking oman has to make quick purchases during her off hours, she is apt to
be confused by similar labels even if they do have minute differences. The male shopper is orse as he usually does not
bother about such distinctions.
The question is not hether the to articles are distinguishable by their label hen set side by side but hether the
general confusion made by the article upon the eye of the casual purchaser ho is unsuspicious and off his guard, is
such as to likely result in his confounding it ith the original. 11 .s observed in several cases, the general impression of
the ordinary purchaser, buying under the normally prevalent conditions in trade and giving the attention such purchasers
usually give in buying that class of goods is the touchstone. 12
7t has been held that in making purchases, the consumer must depend upon his recollection of the appearance of the
product hich he intends to purchase. 13 The buyer having in mind the markDlabel of the respondent must rely upon his
memory of the petitioner<s mark. 1( !nlike the *udge ho has ample time to minutely e;amine the labels in question in the
comfort of his sala, the ordinary shopper does not en*oy the same opportunity.
. number of courts have held that to determine hether a trademark has been infringed, e must consider the mark as
a hole and not as dissected. 7f the buyer is deceived, it is attributable to the marks as a totality, not usually to any part
of it. 15 The court therefore should be guided by its first impression, 1) for a buyer acts quickly and is governed by a casual
glance, the value of hich may be dissipated as soon as the court assumes to analyze carefully the respective features of the
mark. 17
7t 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. . confusing similarity ill *ustify the intervention of equity. 18 The *udge must also be aare of the fact that
usually a defendant in cases of infringement does not normally copy but makes only colorable changes. 19Cell has it been
said that the most successful form of copying is to employ enough points of similarity to confuse the public ith enough
points of difference to confuse the courts. 20
Ce also note that the respondent court failed to take into consideration several factors hich should have affected its
conclusion, to it? age, training and education of the usual purchaser, the nature and cost of the article, hether the
article is bought for immediate consumption and also the conditions under hich it is usually purchased . 21 .mong
these, hat essentially determines the attitude of the purchaser, specifically his inclination to be cautious, is the cost of the
goods. To be sure, a person ho buys a bo; of candies ill not e;ercise as much care as one ho buys an e;pensive atch.
.s a general rule, an ordinary buyer does not e;ercise as much prudence in buying an article for hich he pays a fe
centavos as he does in purchasing a more valuable thing. 22 5;pensive and valuable items are normally bought only after
deliberate, comparative and analytical investigation. #ut mass products, lo priced articles in ide use, and matters of
everyday purchase requiring frequent replacement are bought by the casual consumer ithout great care. 23 7n this latter
category is catsup.
.t that, even if the labels ere analyzed together it is not difficult to see that the "unshine label is a colorable
imitation of the Del Monte trademark. The predominant colors used in the Del Monte label are green and red1orange,
the same ith "unshine. The ord 4catsup4 in both bottles is printed in hite and the style of the printDletter is the
same. .lthough the logo of "unshine is not a tomato, the figure nevertheless appro;imates that of a tomato.
.s previously stated, the person ho infringes a trade mark does not normally copy out but only makes colorable
changes, employing enough points of similarity to confuse the public ith enough points of differences to confuse the
courts. Chat is undeniable is the fact that hen a manufacturer prepares to package his product, he has before him a
boundless choice of ords, phrases, colors and symbols sufficient to distinguish his product from the others. Chen as
in this case, "unshine chose, ithout a reasonable e;planation, to use the same colors and letters as those used by Del
Monte though the field of its selection as so broad, the inevitable conclusion is that it as done deliberately to
deceive . 2(
7t has been aptly observed that the ultimate ratio in cases of grave doubt is the rule that as beteen a necomer ho
by the confusion has nothing to lose and everything to gain and one ho by honest dealing has already achieved favor
ith the public, any doubt should be resolved against the necomer inasmuch as the field from hich he can select a
desirable trademark to indicate the origin of his product is obviously a large one. 25
Coming no to the second issue, e find that the private respondent is not guilty of infringement for having used the
Del Monte bottle. The reason is that the configuration of the said bottle as merely registered in the "upplemental
/egister. 7n the case of Lorenzana v. Macag"a, 2) e declared that?
+&, /egistration in the Principal /egister gives rise to a presumption of the validity
of the registration, the registrant<s onership of the mark and his right to the
e;clusive use thereof. There is no such presumption in the registration in the
"upplemental /egister.
+$, /egistration in the Principal /egister is limited to the actual oner of the
trademark and proceedings therein on the issue of onership hich may be
contested through opposition or interference proceedings or, after registration, in a
petition for cancellation.
/egistration in the Principal /egister is constructive notice of the registrant<s claim
of onership, hile registration in the "upplemental /egister is merely proof of
actual use of the trademark and notice that the registrant has used or appropriated it.
7t is not sub*ect to opposition although it may be cancelled after the issuance.
Corollarily, registration in the Principal /egister is a basis for an action for
infringement hile registration in the "upplemental /egister is not.
+2, 7n applications for registration in the Principal /egister, publication of the
application is necessary. This is not so in applications for registrations in the
"upplemental /egister.
7t can be inferred from the foregoing that although Del Monte has actual use of the bottle<s configuration, the
petitioners cannot claim e;clusive use thereof because it has not been registered in the Principal /egister. :oever,
e find that "unshine, despite the many choices available to it and notithstanding that the caution 4Del Monte
Corporation, 0ot to be /efilled4 as embossed on the bottle, still opted to use the petitioners< bottle to market a
product hich Philpack also produces. This clearly shos the private respondent<s bad faith and its intention to
capitalize on the latter<s reputation and goodill and pass off its on product as that of Del Monte.
The Court observes that the reasons given by the respondent court in resolving the case in favor of "unshine are
untenable. 9irst, it declared that the registration of the "unshine label belied the company<s malicious intent to imitate
petitioner<s product. "econd, it held that the "unshine label as not improper because the #ureau of Patent
presumably considered other trademarks before approving it. Third, it cited the case of Shell #o. v. Inslar
$etrolem, 27 here this Court declared that selling oil in containers of another ith markings erased, ithout intent to
deceive, as not unfair competition.
/egarding the fact of registration, it is to be noted that the "unshine label as registered not in the Principal /egister
but only in the "upplemental /egister here the presumption of the validity of the trademark, the registrant<s
onership of the mark and his right to its e;clusive use are all absent.
.nent the assumption that the #ureau of Patent had considered other e;isting patents, it is reiterated that since
registration as only in the "upplemental /egister, this did not vest the registrant ith the e;clusive right to use the
label nor did it give rise to the presumption of the validity of the registration.
-n the argument that no unfair competition as committed, the "hell Case is not on all fours ith the case at bar
+&, 7n "hell, the absence of intent to deceive as supported by the fact that the respondent therein,
before marketing its product, totally obliterated and erased the brandsDmark of the different
companies stenciled on the containers thereof, e;cept for a single isolated transaction. The
respondent in the present case made no similar effort.
+$, 7n "hell, hat as involved as a single isolated transaction. -f the many drums used, there as
only one container here the "hell label as not erased, hile in the case at hand, the respondent
admitted that it made use of several Del Monte bottles and ithout obliterating the embossed
+2, 7n "hell, the product of respondent as sold to dealers, not to ultimate consumers. .s a general
rule, dealers are ell acquainted ith the manufacturer from hom they make their purchases and
since they are more e;perienced, they cannot be so easily deceived like the ine;perienced public.
There may ell be similarities and imitations hich deceive all, but generally the interests of the
dealers are not regarded ith the same solicitude as are the interests of the ordinary consumer. 9or it
is the form in hich the ares come to the final buyer that is of significance. 28
.s "unshine<s label is an infringement of the Del Monte<s trademark, la and equity call for the cancellation of the
private respondent<s registration and ithdraal of all its products bearing the questioned label from the market. Cith
regard to the use of Del Monte<s bottle, the same constitutes unfair competition= hence, the respondent should be
permanently en*oined from the use of such bottles.
The court must rule, hoever, that the damage prayed for cannot be granted because the petitioner has not presented
evidence to prove the amount thereof. "ection $2 of /... 0o. &(( provides?
"ec. $2. %ctions and damages and in&nction for infringement. @ .ny person entitled to the
e;clusive use of a registered mark or trade name may recover damages in a civil action from any
person ho infringes his rights, and the measure of the damages suffered shall be either the
reasonable profit hich the complaining party ould have made, had the defendant not infringed his
said rights or the profit hich the defendant actually made out of the infringement, or in the event
such measure of damages cannot be readily ascertained ith reasonable certainty the court may
aard as damages reasonable percentage based upon the amount of gross sales of the defendant or
the value of the services in connection ith hich the mark or trade name as used in the
infringement of the rights of the complaining party. 7n cases here actual intent to mislead the public
or to defraud the complaining party shall be shon, in the discretion of the court, the damages may
be doubled.
The complaining party, upon proper shoing may also be granted in*unction.
9ortunately for the petitioners, they may still find some small comfort in .rt. $$$$ of the Civil Code, hich provides?
.rt. $$$$. The court may aard nominal damages in every obligation arising from any source
enumerated in .rt. &&)%, or in every case here any property right has been invaded.
.ccordingly, the Court can only aard to the petitioners, as it hereby does aard, nominal damages in the amount of
C:5/59-/5, the petition is E/.0T5D. The decision of the Court of .ppeals dated December $>, &'8( and the
/esolution dated .pril $%,&'8%, are /5A5/"5D and "5T ."7D5 and a ne *udgment is hereby rendered?
+&, Canceling the private respondent<s Certificate of /egister 0o. "/1(2&3 and permanently
en*oining the private respondent from using a label similar to that of the petitioners.
+$, Prohibiting the private respondent from using the empty bottles of the petitioners as containers for
its on products.
+2, -rdering the private respondent to pay the petitioners nominal damages in the amount of
Pl,333.33, and the costs of the suit.
"- -/D5/5D.
'arvasa (ancayco, (ri)o*%+ino and Medialdea, ,,., concr.

& -riginal /ecords, pp. $'123.
$ I"id., .nne; $ pp. 81'= .nne; 2, pp. &(1&%.
2 Id., .nne; .. p. >&.
> Id., .nne; #, pp. >$1>2.
) Id., pp. &1(.
( Id., pp. 281>3.
% Id., pp. &((1&(8. Decision penned by Fudge /oque .. Tamayo, affirmed in the Court of .ppeals by
Coquia, F., ponente, ith 6uciano and Cui, FF., concurring.
8 Fose C. Aitug, Pandect of Commercial 6a G Furisprudence, l st ed., p. $'& citing Compania
Eeneral de Tabacos v. de .l*ambra Cigar and Cigarette Manufacturing Co., 22 Phil >8)= -gura v.
Chua, )' Phil. >%&? Parke Davies G Co. v. Hiu 9oo G Co., (3 Phil. '$8.
' Mead Fohnson Co. v. 0.A.F. Aon Dorp. 6td., % "C/. %(8= #ristol Myers Co. v. Director of Patents,
&% "C/. &$8.
&3 "tuart v. 9.E. "teart Co., '& 9 $>2.
&& 0otaseme :osiery v. "trauss $3& 9 ''.
&$ Mc6ean v. 9leming '( !" $>)= 9ischer v. #lank, &28 0.I. $>>= Tillman #endel v. California
Packing Corporation, (2 9 $d >'8.
&2 Martini G /ossi v. Consumer<s People<s Products, )% 9 $d )''.
&> "tuart v. 9. E. "teart Co., '& 9 $>2.
&) :elmet Co. v. Cm Crigley Fr. Co., $>) 9 8>$= Pennzoil Co. v. Pennsylvania Petroleum Co., &)'
M.D. &8%,
&( Cilliam Caltke G Co. v. Eeo :. "chafer, >' .pp. D.C. $'>= Card #aking Co. v. Potter
Crintington, $'8 9 2'8.
&% Aorte; Mfg. Co. v. Ply1/ite Contracting Co., 22 9 $d 23$.
&8 :ilton v. :ilton, '3 0.F. 5q )(>.
&' #ickmore Eall Cure Co. v. Harns, &2> 9 8221& F.C. Penny Co. v. :.D. 6ee Merchantile Co., &$3 9
$d '>'.
$3 #aker and Master Printers !nion of 0e Fersey, 2> 9. "upp. 838.
$& && :.D. 0ims, The 6a of !nfair Competition and Trademark, &'>%, p. &3$%.
$$ I"id., p. &323.
$2 && /udolf Callman, The 6a of !nfair Competition and Trademark, &'>), pp. &&2%, &&2(.
$> I"id., Aol. &&&, $nd ed. pp. &)$%1&)$8 cited in Converse /ubber Corporation v. !niversal /ubber
Product 7nc., &>% "C/. &)).
$) Cilliam Caltke G Co. v. Eeo :. "chafer G Co., >' .pp. D.C. $'>= "tandard -il v. Michie 2> 9
$d 83$.
$( &)> "C/. %$2.
$% && "C/. >2(.
$( Spra., p. &&>&.