DEL MONTE V.
SUNSHINE SAUCE- Infringement of which their own nationals enjoy for the repression of acts
Trademark and Unfair Competition
In making the comparison to determine similarity, 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. The court therefore should be guided
by its first impression because the imitator will always try
to create enough differences to confuse the Court but
enough similarity to confuse the public.
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 of September 27, 1965, which grants
to the nationals of the parties rights and advantages
of infringement and unfair competition.
Petitioner Philippine Packing Corporation (Philpack) is a
domestic corporation duly organized under the laws of
the Philippines. 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. 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 No. SR-913
by the Philippine Patent Office under the Supplemental
Register. 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 to engage in the manufacture, packing,
distribution and sale of various kinds of sauce, identified
by the logo Sunshine Fruit Catsup. The product itself was
contained in various kinds of bottles, including the Del
Monte bottle, which the private respondent bought from
the junk shops for recycling.
Having received reports that the private respondent was
using its exclusively designed bottles and a logo
confusingly similar to Del Monte's, Philpack and Del
Monte filed a complaint against the private respondent for
infringement of trademark and unfair competition.
Sunshine alleged that its logo was substantially different
from the Del Monte logo and would not confuse the
buying public to the detriment of the petitioners.
ISSUE:
Whether or not there was infringement of trademark and
unfair competition.
RULING: YES.
Section 22 of R.A. No. 166, otherwise known as the
Trademark Law, provides:
Any person who shall use, without the consent of the
registrant, any reproduction, counterfeit, copy or colorable
imitation of any registered mark or tradename in
connection with the sale, offering for sale, or advertising
of any goods, business or services on or in connection
with which 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...
Sec. 29 of the same law states as follows:
Any person who shall employ deception or any other
means contrary to good faith by which he shall pass off
the goods manufactured by him or in which he deals, or
his business, or services for those of the one having
established such goodwill...
To arrive at a proper resolution of this case, it is
important to bear in mind the following distinctions
between infringement of trademark and unfair
competition.
(1) Infringement of trademark is the unauthorized use of
a trademark, whereas unfair competition is the passing
off of one's goods as those of another.
(2) In infringement of trademark fraudulent intent is
unnecessary whereas in unfair competition fraudulent
intent is essential.
(3) In infringement of trademark the prior registration of
the trademark is a prerequisite to the action, whereas in
unfair competition registration is not necessary.
In determining whether two trademarks are confusingly
similar, the two marks in their entirety as they appear in
the respective labels must be considered in relation to the
goods to which they are attached; the discerning eye of
the observer must focus not only on the predorninant
words but also on the other features appearing on both
labels.
The ordinary buyer does not usually make such scrutiny
nor does he usually have the time to do so. 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.
The court therefore should be guided by its first
impression because the imitator will always try to create
enough differences to confuse the Court but enough
similarity to confuse the public. Here, although there are
particular differences, such are only manifest when you
conduct a thorough comparison.
We also note that the respondent court failed to take into
consideration several factors which should have affected
its conclusion, to wit: age, training and education of the
usual purchaser, the nature and cost of the article,
whether the article is bought for immediate consumption
and also the conditions under which it is usually
purchased. It has been aptly observed that the ultimate
ratio in cases of grave doubt is the rule that any doubt
should be resolved against the newcomer inasmuch as
the field from which he can select a desirable trademark
to indicate the origin of his product is obviously a large
one. As Sunshine's label is an infringement of the Del
Monte's trademark, law and equity call for the
cancellation of the private respondent's registration and
withdrawal of all its products bearing the questioned label
from the market. With regard to the use of Del Monte's
bottle, the same constitutes unfair competition; hence,
the respondent should be permanently enjoined from the
use of such bottles.