Del Monte vs.
CA and Sushine Sauce GR L78325, January 25, 1990 distinguishable by their label when set side by side but whether the general
FACTS:
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 a Certificate of Trademark Registration.
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 to both.
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 predominant
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
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.
The Supreme Court recognizes that there really are distinctions between the
designs of the logos or trademarks of Del Monte and Sunshine Sauce.
However, it has been that 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.
BERRIS AGRICULTURAL CO., INC. vs. NORVY ABYADANG. G.R. No. 183404.
October 13, 2010

FACTS: Abyadang filed a trademark application with the IPO for the mark
"NS D-10 PLUS" for use in connection with Fungicide. Berris Agricultural Co.,
Inc. filed an opposition against the trademark citing that it is confusingly
similar with their trademark, "D-10 80 WP" which is also used for Fungicide
also with the same active ingredient.

The IPO ruled in favor of Berries but on appeal with the CA, the CA ruled in
favor of Abyadang.

ISSUE: Whether there is confusing similarity between the trademarks.

RULING: Yes. The SC found that both products have the component D-10 as
their ingredient and that it is the dominant feature in both their marks.
Applying the Dominancy Test, Abyadang's product is similar to Berris' and
that confusion may likely to occur especially that both in the same type of
goods. Also using the Holistic Test, it was more obvious that there is
likelihood of confusion in their packaging and color schemes of the marks.
The SC states that buyers would think that Abyadang's product is an
upgrade of Berris'.