G.R. No. L-78325 – 181 SCRA 410 – Mercantile Law – Intellectual Property Law – Law on Trademarks, Service Marks and Trade – Trademark Infringement – Unfair Competition – Holistic Test
Del Monte Corporation is an American corporation which is not engaged in business in the Philippines. Though not engaging business here, it has given authority to Philippine Packing Corporation (Philpack) the right to manufacture, distribute and sell in the Philippines various agricultural products, including catsup, under the Del Monte trademark and logo. In 1965, Del Monte also authorized Philpack to register with the Patent Office the Del Monte catsup bottle configuration. Philpack was issued a certificate of trademark registration under the Supplemental Register.
Later, Del Monte and Philpack learned that Sunshine Sauce Manufacturing was using Del Monte bottles in selling its products and that Sunshine Sauce’s logo is similar to that of Del Monte. The RTC of Makati as well as the Court of Appeals ruled that there was no infringement because the trademarks used between the two are different in designs and that the use of Del Monte bottles by Sunshine Sauce does not constitute unfair competition because as ruled in Shell Company vs Insular Petroleum: “selling oil in containers of another with markings erased, without intent to deceive, was not unfair competition.”
ISSUE: Whether or not there is unfair competition and infringement in the case at bar.
HELD: Yes. The Supreme Court recognizes that there really are distinctions between the designs of the logos or trademarks of Del Monte and Sunshine Sauce. However, side by side comparison is not the final test of similarity. Sunshine Sauce’s logo is a colorable imitation of Del Monte’s trademark. 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. The person who infringes a trade mark does not normally copy out but only makes colorable changes, employing enough points of similarity to confuse the public with enough points of differences to confuse the courts. What is undeniable is the fact that when a manufacturer prepares to package his product, he has before him a boundless choice of words, phrases, colors and symbols sufficient to distinguish his product from the others. When as in this case, Sunshine chose, without a reasonable explanation, to use the same colors and letters as those used by Del Monte though the field of its selection was so broad, the inevitable conclusion is that it was done deliberately to deceive.
The Supreme Court also ruled that Del Monte does not have the exclusive right to use Del Monte bottles in the Philippines because Philpack’s patent was only registered under the Supplemental Register and not with the Principal Register. Under the law, registration under the Supplemental Register is not a basis for a case of infringement because unlike registration under the Principal Register, it does not grant exclusive use of the patent. However, the bottles of Del Monte do say in embossed letters: “Del Monte Corporation, Not to be Refilled”. And yet Sunshine Sauce refilled these bottles with its catsup products. This clearly shows the Sunshine Sauce’s bad faith and its intention to capitalize on the Del Monte’s reputation and goodwill and pass off its own product as that of Del Monte.
Compare it with the case of Asia Brewery vs CA and SMC.
Note: This case (Del Monte case) is an example of how to apply the Holistic Test as opposed to the Asia Brewery case which applied the Dominancy Test.
