Del Monte Corp. v. Court of Appeals

Del Monte Corporation, a US company, licensed Philippine Packing Corporation (Philpack) to make and sell catsup in the Philippines under the Del Monte mark. The Del Monte catsup bottle configuration was registered in the Supplemental Register, and the DEL MONTE mark and logo were separately registered in 1972. Sunshine Sauce Manufacturing Industries sold 'Sunshine Fruit Catsup', whose logo was registered in the Supplemental Register in 1983, and used various bottles bought from junk shops, including Del Monte bottles embossed 'Del Monte Corporation, Not to be Refilled'. After a demand to desist was ignored, Del Monte and Philpack sued for infringement of trademark and unfair competition, with damages and injunction. Sunshine answered that it had stopped using the bottles and that its logo was substantially different. The RTC of Makati dismissed the complaint, finding substantial differences between the labels, that Sunshine had stopped using the bottles and in any case owned those it bought, and that malice or bad faith was not shown. The Court of Appeals affirmed in toto, applying the rule that marks must be considered in their entirety as they appear on the labels.

1. 1Whether Sunshine's label is a colorable imitation of the Del Monte trademark amounting to infringement under Section 22 of R.A. No. 166.
2. 2Whether Sunshine's use of Del Monte bottles is infringement or unfair competition.

Petition granted. The lower courts were so preoccupied with details that they missed the total picture. Side-by-side comparison is not the final test of similarity; the question is whether the general confusion made by the article upon the eye of the casual purchaser who is unsuspicious and off his guard is likely to result in his confounding it with the original. The mark is considered as a whole, the court is guided by first impression, and it should take purchasers' carelessness for granted. Relevant factors include the age, training and education of buyers, the nature and cost of the article, and purchase conditions; catsup is a low-priced everyday item bought without great care. Even analyzed together, the labels shared predominant green and red-orange colors, the same white lettering style for 'catsup', and a logo approximating a tomato; Sunshine's unexplained choice of the same colors and letters showed deliberate intent to deceive. The Court distinguished infringement (unauthorized use; no fraudulent intent needed; prior registration required) from unfair competition (passing off; fraudulent intent essential; registration unnecessary). Following Lorenzana v. Macagba, registration in the Supplemental Register is not a basis for infringement, so use of the bottle was not infringement; but using bottles embossed with Del Monte's warning showed bad faith and was unfair competition under Section 29. No proof of actual damages was offered under Section 23, so nominal damages were given under Article 2222 of the Civil Code. The Court cancelled Sunshine's Certificate No. SR-6310, enjoined its use of a similar label and of petitioners' bottles, and awarded P1,000 nominal damages and costs.