Title: Del Monte Corporation vs. CA et.al.
Subject Matter: Intellectual Property
Petitioner: Del Monte Corporation and Philippine Packing Corporation
Respondent: Court of Appeals and Sunshine Sauce Manufacturing Industries
Summary:
1. Difference between Infringement and Unfair Competition – It is essential in infringement that there is prior registration of the trademark while in unfair competition, it is not necessary. In the case, the bottle’s design has no prior registration because it has a supplemental register which does not confer exclusive rights to the petitioner. However, the use of the bottle constitutes unfair competition because there is fraudulent intent.
2. In the eyes of generic consumers – In infringement, general confusion must be viewed in the lenses of a generic consumer. A generic consumer normally don’t put a great deal of care when purchasing mass produced items such as catsup. In addition, he or she cares more about the cost of the product.
3. Primary and Supplemental Register – In registration thru primary register, there is exclusive right conferred to the label, mark or design of the product while in registration thru supplemental register, there is no such presumption. Also, registration thru supplemental register is not a basis of infringement since it only informs the use of such trademark while registration thru primary register is a basis for infringement since it is a primary claim to ownership. Lastly, publication in registration thru primary registration is necessary while in registration thru supplementary registration, it is not necessary.
4. Nominal Damages – The court did not award damages due to profits lost because there is no evidence that it occured. However, the court could only grant nominal damages.
Facts:
Petitioners are questiong the decision of CA to uphold dismissal of their complaint against Sunshine Sauce Manufacturing Industries because of infringement of trademark and unfair competition.
Del Monte Corporation is a company organized under the laws of United States. Both US and Philippines are signatories to the Convention of Paris of September 27, 1965 which grant to nationals of both countries rights and advantages against acts of infringement and unfair competition.
PhilPack is a Filipino corporation which Del Monte granted the right to manufacture, distribute, and sell in the Philippines various agricultural products, including Catsup under Del Monte trademark and logo. With Del Monte’s authorization, PhilPack registered with the Philippine Patent’s Office the Del Monte’s bottle configuration (shape) under and the Del Monte trademark and logo (label). The shape was obtained on October 27, 1965 under a Supplemental Register and the label was obtained on November 20, 1972 under two certificates.
Sunshine Sauce Manufacturing Industries is a company that engages in manufacturing, distributing, and selling of various kinds of sauces as identified by the logo “Sunshine Fruit Catsup”. Their logo was registered on September 20, 1983. As a company, they recycle various kinds of bottles including Del Monte bottles for use. In addition, the logo it uses is confusingly similar to Del Monte. So, PhilPack warned it to cease and desist on pain of legal action for acts of infringement and unfair competition. Yet, it failed to deter them.
A legal action was filed against the private respondent however it was dismissed because the trial court believe that that there is substantial difference between the logos; that respondent ceased and desisted on using recycled bottles and that upon purchase from junk yards, the private respondent became their owner. Furthermore, malice or bad faith which is an essential element in trademark infrigement and unfair competition is not firmly established. Decision was affirmed by CA.
Issues:
1. Is respondent liable for trademark infringement because of confusing similarity between of the trademarks between the petitioner and private respondent in terms of shape of label, brand printed on label, words or letterings on label or mark, color of logo, shape of logo, label of cap, and to the colors of the products?
2. Is respondent liable for trademark infringement because of reusing Del Monte bottles?
3. Is respondent liable for unfair competition because of its use of Del Monte label?
4. Is petitioner entitled to receive damages aside from granting writ of injunction against private respondent?
Ruling:
1. Yes, private respondent is liable for trademark infringement because of the confusing similarity between the two marks or labels. It has been held that general confusion must be based on the eyes of a casual purchaser who is unsuspicious and off-guard who is likely to be confounded by the infringed product to the original. The usual purchaser tends to be more cautious on the cost of the goods than on other factors. However, this depend on the wit, age, training, and education of the usual purchaser. Mass products such as catsups are bought by generic consumers without great care. In addition, it is not difficult to see that there is colorable imitation by private respondent of the Del Monte trademark because the predominant colors, the word “catsup”, and the figure used on the logo of both are the same except to the logo where there it is only similar. Hence there is intent to confuse and decieve. Because of such reasons, the private respondent is liable for trademark infringement.
2. No, private respondent is not liable for trademark infringement but for unfair competition because of the use of the bottles. The bottles are not registered under Primary Register; the design of the bottle is not an exclusive right of the petitioner. However, despite of the fact “Not to be refilled” was embossed at the the bottom and there are many options as to what bottles can be used, private respondent still opted to use the Del Monte Bottle. Hence, there is unfair competition.
3. Yes, unfair competition exists on using the labels. Private respondent made no effort to totally obliterate and erase the brands and marks stensilled on the containers; it made use of Del Monte Bottles without removing the embossed warning; and the product was sold to customers. Hence, unfair competition exists.
4. No, petitioner is not entitled to receive damages. Petitioner did not present evidence to prove the amount of the profit lost due to infringement of the private respondent. However, petitioner is entitled to receive nominal damages pursuant to Art. 2222 of the NCC. Hence, petitioner is not entitled to receive damages and only writ of injunction can be granted.
Law:
1.R.A. No. 166, Sec. 22. Infringement, what constitutes. — Any person who shall use, without the consent of the registrant, any reproduction, counterfeit, copy or colorable imitation of any registered mark or trade-name in connection with the sale, offering for sale, or advertising of any goods, business or services on or in connection with which such use is likely to cause confusion or mistake or to deceive purchasers or others as to the source or origin of such goods or services or identity of such business; or reproduce, counterfeit copy or colorably imitate any such mark or trade name and apply such reproduction, counterfeit copy or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used upon or in connection with such goods, business or services, shall be liable to a civil action by the registrant for any or all of the remedies herein provided.
Sec. 29 of the same law states as follows:
Sec. 29. Unfair competition, rights and remedies. — A person who has identified in the mind of the public the goods he manufactures or deals in, his business or services from those of others, whether or not a mark or tradename is employed, has a property right in the goodwill of the said goods, business or services so identified, which will be protected in the same manner as other property rights. Such a person shall have the remedies provided in section twenty- three, Chapter V hereof.
Any person who shall employ deception or any other means contrary to good faith by which he shall pass off the goods manufactured by him or in which he deals, or his business, or services for those of the one having established such goodwill, or who shall commit any acts calculated to produce said result, shall be guilty of unfair competition, and shall be subject to an action therefor.
In particular, and without in any way limiting the scope of unfair competition, the following shall be deemed guilty of unfair competition:
(a) Any person, who in selling his goods shall give them the general appearance of goods of another manufacturer or dealer, either as to the goods themselves or in the wrapping of the packages in which they are contained, or the devices or words thereon, or in any other feature of their appearance, which would likely influence purchasers to believe that the goods offered are those of a manufacturer or dealer other than the actual manufacturer or dealer, or who otherwise clothes the goods with such appearance as shall deceive the public and defraud another of his legitimate trade, or any subsequent vendor of such goods or any agent of any vendor engaged in selling such goods with a like purpose;
(b) Any person who by any artifice, or device, or who employs ally other means calculated to induce the false belief that such person is offering the services of another who has identified such services in the mind of the public; or
(c) Any person who shall make any false statement in the course of trade or who shall commit any other act contrary to good faith of a nature calculated to discredit the goods, business or services of another.
2. Section 23 of R.A. No. 166. Actions and damages and injunction for infringement. — Any person entitled to the exclusive use of a registered mark or trade name may recover damages in a civil action from any person who infringes his rights, and the measure of the damages suffered shall be either the reasonable profit which the complaining party would have made, had the defendant not infringed his said rights or the profit which the defendant actually made out of the infringement, or in the event such measure of damages cannot be readily ascertained with reasonable certainty the court may award as damages reasonable percentage based upon the amount of gross sales of the defendant or the value of the services in connection with which the mark or trade name was used in the infringement of the rights of the complaining party. In cases where actual intent to mislead the public or to defraud the complaining party shall be shown, in the discretion of the court, the damages may be doubled.
The complaining party, upon proper showing may also be granted injunction.
3. Art. 2222 of the Civil Code. The court may award nominal damages in every obligation arising from any source enumerated in Art. 1157, or in every case where any property right has been invaded.
Subject Matter: Intellectual Property
Petitioner: Del Monte Corporation and Philippine Packing Corporation
Respondent: Court of Appeals and Sunshine Sauce Manufacturing Industries
Summary:
1. Difference between Infringement and Unfair Competition – It is essential in infringement that there is prior registration of the trademark while in unfair competition, it is not necessary. In the case, the bottle’s design has no prior registration because it has a supplemental register which does not confer exclusive rights to the petitioner. However, the use of the bottle constitutes unfair competition because there is fraudulent intent.
2. In the eyes of generic consumers – In infringement, general confusion must be viewed in the lenses of a generic consumer. A generic consumer normally don’t put a great deal of care when purchasing mass produced items such as catsup. In addition, he or she cares more about the cost of the product.
3. Primary and Supplemental Register – In registration thru primary register, there is exclusive right conferred to the label, mark or design of the product while in registration thru supplemental register, there is no such presumption. Also, registration thru supplemental register is not a basis of infringement since it only informs the use of such trademark while registration thru primary register is a basis for infringement since it is a primary claim to ownership. Lastly, publication in registration thru primary registration is necessary while in registration thru supplementary registration, it is not necessary.
4. Nominal Damages – The court did not award damages due to profits lost because there is no evidence that it occured. However, the court could only grant nominal damages.
Facts:
Petitioners are questiong the decision of CA to uphold dismissal of their complaint against Sunshine Sauce Manufacturing Industries because of infringement of trademark and unfair competition.
Del Monte Corporation is a company organized under the laws of United States. Both US and Philippines are signatories to the Convention of Paris of September 27, 1965 which grant to nationals of both countries rights and advantages against acts of infringement and unfair competition.
PhilPack is a Filipino corporation which Del Monte granted the right to manufacture, distribute, and sell in the Philippines various agricultural products, including Catsup under Del Monte trademark and logo. With Del Monte’s authorization, PhilPack registered with the Philippine Patent’s Office the Del Monte’s bottle configuration (shape) under and the Del Monte trademark and logo (label). The shape was obtained on October 27, 1965 under a Supplemental Register and the label was obtained on November 20, 1972 under two certificates.
Sunshine Sauce Manufacturing Industries is a company that engages in manufacturing, distributing, and selling of various kinds of sauces as identified by the logo “Sunshine Fruit Catsup”. Their logo was registered on September 20, 1983. As a company, they recycle various kinds of bottles including Del Monte bottles for use. In addition, the logo it uses is confusingly similar to Del Monte. So, PhilPack warned it to cease and desist on pain of legal action for acts of infringement and unfair competition. Yet, it failed to deter them.
A legal action was filed against the private respondent however it was dismissed because the trial court believe that that there is substantial difference between the logos; that respondent ceased and desisted on using recycled bottles and that upon purchase from junk yards, the private respondent became their owner. Furthermore, malice or bad faith which is an essential element in trademark infrigement and unfair competition is not firmly established. Decision was affirmed by CA.
Issues:
1. Is respondent liable for trademark infringement because of confusing similarity between of the trademarks between the petitioner and private respondent in terms of shape of label, brand printed on label, words or letterings on label or mark, color of logo, shape of logo, label of cap, and to the colors of the products?
2. Is respondent liable for trademark infringement because of reusing Del Monte bottles?
3. Is respondent liable for unfair competition because of its use of Del Monte label?
4. Is petitioner entitled to receive damages aside from granting writ of injunction against private respondent?
Ruling:
1. Yes, private respondent is liable for trademark infringement because of the confusing similarity between the two marks or labels. It has been held that general confusion must be based on the eyes of a casual purchaser who is unsuspicious and off-guard who is likely to be confounded by the infringed product to the original. The usual purchaser tends to be more cautious on the cost of the goods than on other factors. However, this depend on the wit, age, training, and education of the usual purchaser. Mass products such as catsups are bought by generic consumers without great care. In addition, it is not difficult to see that there is colorable imitation by private respondent of the Del Monte trademark because the predominant colors, the word “catsup”, and the figure used on the logo of both are the same except to the logo where there it is only similar. Hence there is intent to confuse and decieve. Because of such reasons, the private respondent is liable for trademark infringement.
2. No, private respondent is not liable for trademark infringement but for unfair competition because of the use of the bottles. The bottles are not registered under Primary Register; the design of the bottle is not an exclusive right of the petitioner. However, despite of the fact “Not to be refilled” was embossed at the the bottom and there are many options as to what bottles can be used, private respondent still opted to use the Del Monte Bottle. Hence, there is unfair competition.
3. Yes, unfair competition exists on using the labels. Private respondent made no effort to totally obliterate and erase the brands and marks stensilled on the containers; it made use of Del Monte Bottles without removing the embossed warning; and the product was sold to customers. Hence, unfair competition exists.
4. No, petitioner is not entitled to receive damages. Petitioner did not present evidence to prove the amount of the profit lost due to infringement of the private respondent. However, petitioner is entitled to receive nominal damages pursuant to Art. 2222 of the NCC. Hence, petitioner is not entitled to receive damages and only writ of injunction can be granted.
Law:
1.R.A. No. 166, Sec. 22. Infringement, what constitutes. — Any person who shall use, without the consent of the registrant, any reproduction, counterfeit, copy or colorable imitation of any registered mark or trade-name in connection with the sale, offering for sale, or advertising of any goods, business or services on or in connection with which such use is likely to cause confusion or mistake or to deceive purchasers or others as to the source or origin of such goods or services or identity of such business; or reproduce, counterfeit copy or colorably imitate any such mark or trade name and apply such reproduction, counterfeit copy or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used upon or in connection with such goods, business or services, shall be liable to a civil action by the registrant for any or all of the remedies herein provided.
Sec. 29 of the same law states as follows:
Sec. 29. Unfair competition, rights and remedies. — A person who has identified in the mind of the public the goods he manufactures or deals in, his business or services from those of others, whether or not a mark or tradename is employed, has a property right in the goodwill of the said goods, business or services so identified, which will be protected in the same manner as other property rights. Such a person shall have the remedies provided in section twenty- three, Chapter V hereof.
Any person who shall employ deception or any other means contrary to good faith by which he shall pass off the goods manufactured by him or in which he deals, or his business, or services for those of the one having established such goodwill, or who shall commit any acts calculated to produce said result, shall be guilty of unfair competition, and shall be subject to an action therefor.
In particular, and without in any way limiting the scope of unfair competition, the following shall be deemed guilty of unfair competition:
(a) Any person, who in selling his goods shall give them the general appearance of goods of another manufacturer or dealer, either as to the goods themselves or in the wrapping of the packages in which they are contained, or the devices or words thereon, or in any other feature of their appearance, which would likely influence purchasers to believe that the goods offered are those of a manufacturer or dealer other than the actual manufacturer or dealer, or who otherwise clothes the goods with such appearance as shall deceive the public and defraud another of his legitimate trade, or any subsequent vendor of such goods or any agent of any vendor engaged in selling such goods with a like purpose;
(b) Any person who by any artifice, or device, or who employs ally other means calculated to induce the false belief that such person is offering the services of another who has identified such services in the mind of the public; or
(c) Any person who shall make any false statement in the course of trade or who shall commit any other act contrary to good faith of a nature calculated to discredit the goods, business or services of another.
2. Section 23 of R.A. No. 166. Actions and damages and injunction for infringement. — Any person entitled to the exclusive use of a registered mark or trade name may recover damages in a civil action from any person who infringes his rights, and the measure of the damages suffered shall be either the reasonable profit which the complaining party would have made, had the defendant not infringed his said rights or the profit which the defendant actually made out of the infringement, or in the event such measure of damages cannot be readily ascertained with reasonable certainty the court may award as damages reasonable percentage based upon the amount of gross sales of the defendant or the value of the services in connection with which the mark or trade name was used in the infringement of the rights of the complaining party. In cases where actual intent to mislead the public or to defraud the complaining party shall be shown, in the discretion of the court, the damages may be doubled.
The complaining party, upon proper showing may also be granted injunction.
3. Art. 2222 of the Civil Code. The court may award nominal damages in every obligation arising from any source enumerated in Art. 1157, or in every case where any property right has been invaded.
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