CASE DIGEST: Del Monte vs. Phil. Packing Corp.

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DEL MONTE CORPORATION and PHILIPPINE PACKING CORPORATION vs. COURT OF APPEALS and SUNSHINE SAUCE MANUFACTURING INDUSTRIES

G.R. No. L-78325 January 25, 1990

FACTS: Petitioner Del Monte Corporation (Del Monte), through its local distributor and manufacturer, PhilPack filed an infringement of copyright complaint against respondent Sunshine Sauce Manufacturing Industries (SSMI), also a maker of catsup and other kitchen sauces. In its complaint, Del Monte alleged that SSMI are using bottles and logos identical to the petitioner, to which is deceiving and misleading to the public.

In its answer, Sunshine alleged that it had ceased to use the Del Monte bottle and that its logo was substantially different from the Del Monte logo and would not confuse the buying public to the detriment of the petitioners.

The Regional Trial Court of Makati dismissed the complaint. It held that there were substantial differences between the logos or trademarks of the parties nor on the continued use of  Del Monte bottles. The decision was affirmed in toto by the Court of Appeals.

Issue: Whether or not SSMI committed infringement against Del Monte in the use of its logos and bottles.

Held: Yes. 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 precognizant words but also on the other features appearing on both labels. It has been correctly held that side-by-side comparison is not the final test of similarity. In determining whether a trademark has been infringed, we must consider the mark as a whole and not as dissected.

The Court is agreed that are indeed distinctions, but similarities holds a greater weight in this case. The Sunshine label is a colorable imitation of the Del Monte trademark. 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. 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.

With regard to the bottle use, Sunshine despite the many choices available to it and notwithstanding that the caution "Del Monte Corporation, Not to be Refilled" was embossed on the bottle, still opted to use the petitioners' bottle to market a product which Philpack also produces. This clearly shows the private respondent's bad faith and its intention to capitalize on the latter's reputation and goodwill and pass off its own product as that of Del Monte.