Title
Del Monte Corporation vs. Court of Appeals
Case
G.R. No. 78325
Decision Date
Jan 25, 1990
Del Monte sued Sunshine for trademark infringement and unfair competition over similar logos and reused bottles; Supreme Court ruled in Del Monte's favor, citing confusion and bad faith.
trademark infringement
unfair competition
cancellation of registration
A

Case Summary (G.R. No. 78325)

Key Dates and Applicable Law

  • Relevant registrations and events (as pleaded): authorization to register bottle configuration (Oct. 27, 1965); Del Monte wordmark/logo registrations (Nov. 20, 1972); Sunshine business registration (Apr. 17, 1980); Sunshine label registration in Supplemental Register (Sep. 20, 1983).
  • Legal framework applied: 1987 Philippine Constitution (governing context of the decision), R.A. No. 166 (Trademark Law) — especially Sections 22 (infringement), 23 (remedies and damages), and 29 (unfair competition), the Paris Convention (international principle of reciprocal protection), and Civil Code Art. 2222 (nominal damages). The Court also relied on controlling jurisprudence concerning the distinction between Principal and Supplemental Registers and the tests for confusing similarity and passing off.

Procedural Posture

  • Trial court (Regional Trial Court, Makati) dismissed the complaint for trademark infringement and unfair competition, finding substantial differences in labels, that Sunshine had ceased using Del Monte bottles, that Sunshine became owner of bottles purchased from junkyards, and that complainants failed to prove malice or bad faith.
  • The Court of Appeals affirmed the trial court.
  • Petitioners sought review by certiorari under Rule 45 to the Supreme Court, which granted relief.

Issues Presented

  • Whether Sunshine’s label constituted a reproduction, counterfeit, copy, or colorable imitation of Del Monte’s registered mark such that infringement occurred under Section 22.
  • Whether Sunshine’s use of Del Monte-shaped bottles amounted to unfair competition or passing off under Section 29.
  • Whether proof of bad faith or intent was required and whether such intent existed.
  • Appropriate remedies, including cancellation of registration, injunctions, and damages.

Legal Distinctions and Standards Applied

  • The Court reiterated important distinctions: (1) trademark infringement is unauthorized use of a registered trademark (fraudulent intent is unnecessary); (2) unfair competition (passing off) involves the deception of the public and requires fraudulent intent; and (3) registration in the Principal Register gives presumptions and is a prerequisite for an infringement action, whereas registration in the Supplemental Register does not carry those presumptions and is not a basis for infringement suits.
  • On confusing similarity, the Court applied the “general impression” or “ordinary purchaser” test: the mark must be considered in its entirety as it appears on the label and judged by the casual, unsuspicious purchaser under the normally prevalent conditions of trade. Side-by-side minute comparisons by a judge are not the definitive test; instead, the Court must consider the totality and first impression of the marks as perceived in ordinary trade conditions.

Findings of the Lower Courts (as reviewed)

  • The trial court found differences in label shape, wording, color combinations, logo shape, label inscriptions, label position and cap seals, and product color; it concluded no infringement and no unfair competition, and found lack of malice.
  • The Court of Appeals affirmed those findings, emphasizing the apparent distinctions and the fact of registration of Sunshine’s label.

Supreme Court’s Analysis on Confusing Similarity and Infringement

  • The Supreme Court held that focusing on isolated differences overlooked the total impression created by the competing labels on the ordinary purchaser. The Court emphasized that ordinary consumers act by quick, casual glance and depend on memory of product appearance; thus the overall resemblance, not dissected differences, is decisive.
  • Applying this standard to the labels, the Court found that Sunshine’s label was a colorable imitation: Sunshine used the same predominant colors (green and red-orange), used the word “catsup” printed in white with the same style of lettering, and adopted a logo figure approximating a tomato shape. Given the wide field of available choices for words, colors and symbols, Sunshine’s selection of these features without reasonable explanation supported an inference of deliberate intent to deceive.
  • The Court also invoked the principle that, when in doubt, decisions favor the prior user who has established goodwill rather than a newcomer who stands to gain by confusion.

Supreme Court’s Analysis on Bottle Configuration and Unfair Competition

  • The Court recognized that Del Monte’s catsup bottle configuration had been registered only in the Supplemental Register. Under precedent (Lorenzana v. Macagba), Supplemental Register registration does not give rise to the presumption of validity, ownership, or exclusive rights that registration in the Principal Register confers; it merely proves actual use and notice of appropriation. Thus Del Monte could not rely on Supplemental Register registration alone to sustain an infringement action for the bottle configuration.
  • However, the Court found Sunshine’s conduct in using Del Monte bottles (including bottles bearing the embossed warning “Del Monte Corporation. Not to be Refilled”) constituted unfair competition. Sunshine purchased Del Monte bottles from junkyards and used them without obliterating Del Monte’s identifying marks; the Court contrasted this with cases where a respondent obliterated prior marks and engaged in isolated transactions. Sunshine’s sustained use of Del Monte bottles, without efforts to remove identifying marks and in marketing a product competing with Philpack’s, evidenced bad faith and an intent to capitalize on Del Monte/Philpack’s reputation and goodwill, amounting to passing off.

Treatment of Registrations and Bureau Actions

  • The Court rejected the lower courts’ reliance on Sunshine’s registration in the Supplemental Register and the assumption that the Bureau of Patents’ r

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