61. DEL MONTE VS.

 CA
G.R. No. 78325, January 25, 1990
Facts:
Petitioner Del Monte Corporation is a foreign company organized under the laws
of the United States and not engaged in business in the Philippines. Both the
Philippines and the United States are signatories to the Convention of Paris, a
treaty which grants to the nationals of the parties rights and advantages which
their own nationals enjoy for the repression of acts of infringement and unfair
competition. On the other hand, petitioner Philippine Packing Corporation
(Philpack) is a domestic corporation duly organized under the laws of the
Philippines.
Sometime in 1965, Del Monte authorized Philpack to register with the Philippine
Patent Office the Del Monte catsup bottle configuration, for which it was granted
Certificate of Trademark Registration by the Philippine Patent Office under the
Supplemental Register.  In 1969, 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. In 1972, Del Monte
also obtained two registration certificates for its trademark “DEL MONTE” and its
logo.
Respondent Sunshine Sauce Manufacturing Industries was issued a Certificate
of Registration by the Bureau of Domestic Trade in 1980 to engage in the
manufacture, packing, distribution and sale of various kinds of sauce, identified
by the logo Sunshine Fruit Catsup. The logo was registered in the Supplemental
Register in 1983. Sunshine Sauce’s product itself was contained in various kinds
of bottles, including the Del Monte bottle, which it bought from the junk shops for
recycling.
Philpack received reports that Sunshine Sauce was using its exclusively
designed bottles and a logo confusingly similar to Del Monte’s. Philpack warned
Sunshine Sauce 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 Sunshine Sauce for infringement of trademark and unfair
competition.
Sunshine alleged that:
 it had long 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 RTC dismissed the complaint on the following grounds:
 there were substantial differences between the logos or trademarks of the
parties
 Sunshine Sauce became the owner of the said bottles upon its purchase
thereof from the junk yards
 Del Monte and Philpack had failed to establish the its malice or bad faith,
which is an essential element of infringement of trademark or unfair
competition
The CA affirmed RTC’s decision in toto. Hence, the appeal.
Issue(s):
  Whether or not Sunshine Sauce is guilty of unfair competition.
 Whether or not Sunshine Sauce is guilty of infringement for having used
the Del Monte bottle.
Held:
 Yes, it is guilty of unfair competition.
The SC compared the Del Monte and Sunshine Sauce’s packaging. While it
recognized several distinctions, it does not agree with the conclusion that there
was no infringement or unfair competition.
According to the SC, side-by-side comparison is not the final test of similarity.
Such comparison requires a careful scrutiny to determine in what points the
labels of the products differ, as was done by the trial judge. The ordinary buyer
does not usually make such scrutiny nor does he usually have the time to do so.
The average shopper is usually in a hurry and does not inspect every product on
the shelf as if he were browsing in a library.
The question is not whether the two articles are distinguishable by their label
when set side by side but whether the general 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.
A number of courts have held that to determine whether a trademark has been
infringed, we must consider the mark as a whole and not as dissected. If the
buyer is deceived, it is attributable to the marks as a totality, not usually to any
part of it. The court therefore should be guided by its first impression, for a buyer
acts quickly and is governed by a casual glance, the value of which may be
dissipated as soon as the court assumes to analyze carefully the respective
features of the mark.
It has also been held that it is not the function of the court in cases of
infringement and unfair competition to educate purchasers but rather to take their
carelessness for granted, and to be ever conscious of the fact that marks need
not be identical. A confusing similarity will justify the intervention of equity.  The
judge must also be aware of the fact that usually a defendant in cases of
infringement does not normally copy but makes only colorable changes. Well has
it been said that the most successful form of copying is to employ enough points
of similarity to confuse the public with enough points of difference to confuse the
courts.
The Sunshine label is a colorable imitation of the Del Monte trademark. The
predominant colors used in the Del Monte label are green and red-orange, the
same with Sunshine. 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.
 No, it is not guilty of infringement.
Sunshine Sauce is not guilty of infringement for having used the Del Monte
bottle. The reason is that the configuration of the said bottle was merely
registered in the Supplemental Register. Registration only in the Supplemental
Register means absence of the following presumptions: validity of the trademark,
the registrant’s ownership of the mark and his right to its exclusive use.

 
Registration in the Principal Register Registration in the Supplemental Register
 

 gives rise to a presumption of the

validity of the registration, the
 no such presumption
registrant’s ownership of the mark and
his right to the exclusive use thereof

 limited to the actual owner of the

 not limited to the actual owner of the trademark
trademark

 merely proof of actual use of the trademark and

 constructive notice of the registrant’s
notice that the registrant has used or
claim of ownership
appropriated it

 the issue of ownership may be

contested through opposition or
 not subject to opposition although it may be
interference proceedings or, after
cancelled after the issuance
registration, in a petition for
cancellation

 basis for an action for infringement  not a basis

 in applications for registration in the

 not so in applications for registrations in the
Principal Register, publication of the
Supplemental Register
application is necessary

It can be inferred from the foregoing that although Del Monte has actual use of
the bottle’s configuration, the petitioners cannot claim exclusive use thereof
because it has not been registered in the Principal Register. However, we find
that 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.

95. CANON KABUSHIKI KAISHA vs. CA and NSR RUBBER CORP

G.R. NO. 120900
DATE: July 20, 2000

FACTS: NSR Rubber Corp., filed an application for registration of the mark

CANON for sandals (Class 25) in the Bureau of Patents, Trademarks, and
Technology Transfer (BPTTT). The application was opposed by Canon Kabushiki
Kaisha (CKK), a foreign corp. under the laws of Japan.
NSR was declared in default upon motion of CKK. CKK presented as its
evidence certificates of registration for the mark CANON in various countries and
in the Philippines covering goods belonging to Class 2 (paints, chemical
products, toner and dyestuff).

Ruling of the BPTTT: denied the opposition of CKK and granted the application
of NSR Rubber Corp.

CA: affirmed

Both lower courts ruled that there is a dissimilarity between the products of CKK
and NSR, i.e. CKK: paints, chemical products, toner and dyestuff; while NSR:
sandals

ISSUE/S:
1. WON CKK trademark is violated. NO.
2. WON CKK can exclusively use ‘CANON’ as protected by the Paris
Convention. NO.

RULING:
Ordinarily, the ownership of a trademark or tradename is a property right that the
owner is entitled to protect as mandated by the Trademark Law. However, when
a trademark is used by a party for a product in which the other party does not
deal, the use of the same trademark on the latter’s product cannot be validly
objected to.

The certificates of registration for the trademark CANON in other countries and in
the Philippines clearly showed that said certificates cover goods belonging to
class 2 (paints, chemical products, toner, dyestuff). As such, NSR t can use the
trademark CANON for its goods classified as class 25 (sandals). Clearly, there is
a world of difference between the paints, chemical products, toner, and dyestuff
and sandals.

The certificate of registration confers upon the trademark owner the exclusive
right to use its own symbol only to those goods specified in the certificate, subject
to the conditions and limitations stated therein. Thus, the exclusive right of CKK
to use the trademark CANON is limited to the products covered by its certificate
of registration.

The likelihood of confusion of goods or business is a relative concept, to be

determined only according to the particular, and sometimes peculiar,
circumstances of each case. Indeed, in trademark law cases, even more than in
other litigation, precedent must be studied in the light of the facts of the particular
case.
Here, the products involved are so unrelated that the public will not be misled
that there is the slightest nexus between petitioner and the goods of private
respondent.

Goods are related when they belong to the same class or have the same
descriptive properties; when they possess the same physical attributes or
essential characteristics with reference to their form, composition, texture or
quality. They may also be related because they serve the same purpose or are
sold in grocery stores.

Here, the paints, chemical products, toner and dyestuff of CKK that carry the
trademark CANON are unrelated to sandals, the product of NSR. The two
classes of products in this case flow through different trade channels. The
products of CKK are sold through special chemical stores or distributors while the
products of NSR are sold in grocery stores, sari-sari stores and department
stores.

 A tradename refers to the business and its goodwill while a trademark refers to
the goods.

Regarding the applicability of Article 8 of the Paris Convention (“A tradename

shall be protected in all the countries of the Union without the obligation of filing
or registration, whether or not it forms part of a trademark.), there is no automatic
protection afforded an entity whose tradename is alleged to have been infringed
through the use of that name as a trademark by a local entity. However, the then
Minister of Trade and Industry, the Hon. Roberto V. Ongpin, issued a
memorandum dated 25 October 1983 to the Director of Patents, a set of
guidelines in the implementation of Article 6bis (sic) of the Treaty of Paris.

These conditions are:

1.) the mark must be internationally known;
2.) the subject of the right must be a trademark, not a patent or copyright or
anything else;
3.) the mark must be for use in the same or similar kinds of goods; and
4.) the person claiming must be the owner of the mark

CKK failed to comply with the third requirement of the said memorandum. CKK is
using the mark “CANON” for products belonging to class 2 (paints, chemical
products) while NSR is using the same mark for sandals (class 25).

129. Godines vs CA

Facts:
Respondent SV-Agro Industries acquired a letter patent issued to one
Magdalena Villaruz which covers a utility model for hand tractor or power tiller by
virtue of a deed of assignment executed by the latter in its favor. Respondent
after suffering a decline in sales of the patented power tillers, investigated and
discovered that petitioner Godines was manufacturing the same power tillers as
they have. Respondent thus filed a complaint for patent infringement and unfair
competition against petitioner Godines. The trial court held petitioner liable for
infringement. CA affirmed.

Issue:
Whether or not petitioner’s products infringe upon the patent of respondent SV-
Agro.

Ruling: YES.
Tests have been established to determine infringement. These are (a) literal
infringement; and (b) the doctrine of equivalents. In using literal infringement as a
test, “. . . resort must be had, in the first instance, to the words of the claim. If
accused matter clearly falls within the claim, infringement is made out and that is
the end of it.” To determine whether the particular item falls within the literal
meaning of the patent claims, the court must juxtapose the claims of the patent
and the accused product within the overall context of the claims and
specifications, to determine whether there is exact identity of all material
elements. It appears from the observation of the trial court that these claims of
the patent and the features of the patented utility model were copied by
petitioner: In appearance and form, both the floating power tillers of the
defendant and the turtle power tiller of the plaintiff are virtually the same. Viewed
from any perspective or angle, the power tiller of the defendant is identical and
similar to that of the turtle power tiller of plaintiff in form, configuration, design
and appearance. The parts or components thereof are virtually the same. In
operation, the floating power tiller of the defendant operates also in similar
manner as the turtle power tiller of plaintiff.
Petitioner’s argument that his power tillers were different from private
respondent’s is that of a drowning man clutching at straws. Recognizing that the
logical fallback position of one in the place of defendant is to aver that his product
is different from the patented one, courts have adopted the doctrine of
equivalents. Thus, according to this doctrine, “(a)n infringement also occurs when
a device appropriates a prior invention by incorporating its innovative concept
and, albeit with some modification and change, performs substantially the same
function in substantially the same way to achieve substantially the same result.”
In this case, the trial court observed: But a careful examination between the two
power tillers will show that they will operate on the same fundamental principles.
We are compelled to arrive at no other conclusion but that there was
infringement.