DEL MONTE CORPORATION VS. COURT OF APPEALS

181 SCRA 410, JANUARY 25, 1990

Republic of the Philippines

CASE:
    Colorable imitation by Sunshine Tomato catsup of the Del Monte Trademark due to prominent similarities in general design. Unfair competition committed by Sunshine Sauce Manufacturing Industries by using Del Monte catsup bottles despite warning. Sanctions imposed on Sunshine Sauce Manufacturing Industries for violation of R.A. No. 166 otherwise known as Trademark Law.
KEY WORDS:
    Colorable imitation of trademark; bad faith in using Del Monte catsup bottles despite warnings; side by side comparison not final test of similarity.
REFERENCE:
    Supreme Court Reports Annotated, January 25, 1990 Decision, Volume 181, pages 410-423
INDUSTRIES:
    Del Monte Corporation and Sunshine Sauce Manufacturing Industries
RELEVANT LAWS:
    R.A. No. 166 - Trademark Law
    Arts. 2222 and 1157 of the New Civil Code
SUMMARY:
  1. Petitioner Philippine Packing Corporation was granted by Del Monte Corporation the right to manufacture, distribute and sell in the Philippines various agricultural products, including catsup, under the Del Monte trademark and logo. Respondent Sunshine Sauce Manufacturing Industries is engaged in the manufacture, packing, distribution and sale of various kinds of sauce, identified by the logo Sunshine Fruit Catsup. Having received reports that the respondent was using its exclusively designed bottles and a logo confusingly similar to Del Monte's, Philpack warned it to desist from doing so on pain of legal action. Thereafter, claiming that the demand had been ignored, Philpack and Del Monte filed a complaint against the respondent for infringement of trademark and unfair competition with prayer for damages and the issuance of a writ of preliminary injunction. 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.

  2. The issue here is whether there is infringement of trademark and unfair competition committed by the private respondent, and if so, is damages recoverable.

  3. The court decided that there is infringement since the logo of the respondent creates confusion upon the eye of the casual purchaser who is unsuspicious, that the same is that of the petitioner Del Monte Corporation. Since Sunshine's label is an infringement of the Del Monte trademark, law and equity call for the cancellation of the private respondent's registration and withdrawal of all its products bearing the questioned label from the market. With regard to the use of Del Monte's bottle, the same constitutes unfair competition; hence, the respondent should be permanently enjoined from the use of such bottles. As to the amount of damages, the court ruled that damages cannot be granted since there was no proof presented as evidence to prove the amount thereof. The court only awarded nominal damages to the petitioner.