Del Monte vs.

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

FACTS:

Del Monte, after receiving reports that the private respondent Sunshine Corp., a company
engage in the manufacture, packing, distribution and sale of various kinds of sauce, was using
its exclusively designed bottles, which it bought from the junkshops, and a logo confusingly
similar to Del Monte's, warned it to desist from doing so on pain of legal action. Thereafter,
claiming that the demand had been ignored, Del Monte filed a complaint against the private
respondent for infringement of trademark and unfair competition, with a prayer for damages
and the issuance of a writ of preliminary injunction. In its answer, 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.

ISSUE:

WON Sunshine Corp. was guilty of trademark infringement and unfair competition.

HELD:

The SC ruled in the affirmative.

As to trademark infringement:

The SC stated that in 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.

At that, even if the labels were analyzed together it is not difficult to see that 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.

As previously stated, 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.

It has been aptly observed that the ultimate ratio in cases of grave doubt is the rule that as
between a newcomer who by the confusion has nothing to lose and everything to gain and one
who by honest dealing has already achieved favor with the public, any doubt should be resolved
against the newcomer inasmuch as the field from which he can select a desirable trademark to
indicate the origin of his product is obviously a large one.

As to unfair competition:

Even though Del Monte cannot claim exclusive use the bottles even if it has actual use of the
bottle's configuration because it has not been registered in the Principal Register but only in the
Supplemental Register where the presumption of the validity of the trademark, the registrant's
ownership of the mark and his right to its exclusive use are all absent the SC however found
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.

Mighty Corp. vs. E.J. Gallo and Winery

G.R. No. 154342 July 14, 2004

FACTS:

Respondent Gallo Winery and Andreson, respondents domestic corp. produces different kinds
of wines and brandy products and sells them in many countries under different registered
trademarks, including the GALLO and ERNEST & JULIO GALLO wine trademarks while petitioner
Mighty Corporation and La Campana and their sister company, Tobacco Industries of the
Philippines (Tobacco Industries), are engaged in the cultivation, manufacture, distribution and
sale of tobacco products.

Petitioners claim that GALLO cigarettes have been sold in the Philippines since 1973, initially by
Tobacco Industries, then by La Campana and finally by Mighty Corporation. 15

On the other hand, although the GALLO wine trademark was registered in the Philippines in
1971, respondents claim that they first introduced and sold the GALLO and ERNEST & JULIO
GALLO wines in the Philippines circa 1974 within the then U.S. military facilities only. By 1979,
they had expanded their Philippine market through authorized distributors and independent
outlets.16
Respondents claim that they first learned about the existence of GALLO cigarettes in the latter
part of 1992 when an Andresons employee saw such cigarettes on display with GALLO wines in
a Davao supermarket wine cellar section.17 Forthwith, respondents sent a demand letter to
petitioners asking them to stop using the GALLO trademark, to no avail.

Respondents then sued petitioners in the Makati RTC for trademark and tradename
infringement and unfair competition, with a prayer for damages and preliminary injunction.

ISSUE:

WON petitioners were guilty of trademark and tradename infringement and unfair competition.

HELD:

The SC ruled in the negative.

THE ACTUAL COMMERCIAL USE IN THE

PHILIPPINES OF GALLO CIGARETTE
TRADEMARK PRECEDED THAT OF
GALLO WINE TRADEMARK.

In a catena of cases decided by the SC, it gave utmost importance to the actual
commercial use of a trademark in the Philippines prior to its registration.

By respondents’ own judicial admission, the GALLO wine trademark was registered in the
Philippines in November 1971 but the wine itself was first marketed and sold in the country only
in 1974 and only within the former U.S. military facilities, and outside thereof, only in 1979. To
prove commercial use of the GALLO wine trademark in the Philippines, respondents presented
sales invoice no. 29991 dated July 9, 1981 addressed to Conrad Company Inc., Makati,
Philippines and sales invoice no. 85926 dated March 22, 1996 addressed to Andresons Global,
Inc., Quezon City, Philippines. Both invoices were for the sale and shipment of GALLO wines to
the Philippines during that period. 55 Nothing at all, however, was presented to evidence the
alleged sales of GALLO wines in the Philippines in 1974 or, for that matter, prior to July 9, 1981.

On the other hand, by testimonial evidence supported by the BIR authorization letters, forms
and manufacturer’s sworn statement, it appears that petitioners and its predecessor-in-interest,
Tobacco Industries, have indeed been using and selling GALLO cigarettes in the Philippines
since 1973 or before July 9, 1981. 56

In view of the foregoing, the actual commercial use of the GALLO wine trademark
was subsequent to its registration in 1971 (July 9, 1981) and to Tobacco Industries’
commercial use of the GALLO cigarette trademark in 1973 (as supported by BIR
docs), SC ruled that, on this account, respondents never enjoyed the exclusive right
to use the GALLO wine trademark to the prejudice of Tobacco Industries and its
successors-in-interest, herein petitioners

NO LIKELIHOOD OF CONFUSION, MISTAKE

OR DECEIT AS TO THE IDENTITY OR SOURCE
OF PETITIONERS’ AND RESPONDENTS’
GOODS OR BUSINESS

A crucial issue in any trademark infringement case is the likelihood of confusion,

mistake or deceit as to the identity, source or origin of the goods or identity of the
business as a consequence of using a certain mark. Likelihood of confusion is
admittedly a relative term, to be determined rigidly according to the particular (and
sometimes peculiar) circumstances of each case.

In determining the likelihood of confusion, the Court must consider: [a] the resemblance
between the trademarks; [b] the similarity of the goods to which the trademarks are attached;
[c] the likely effect on the purchaser and [d] the registrant’s express or implied consent and
other fair and equitable considerations.

Petitioners and respondents both use "GALLO" in the labels of their respective
cigarette and wine products. But, as held in numerous cases, the use of an identical
mark does not, by itself, lead to a legal conclusion that there is trademark
infringement:

Applying the Dominancy (Asia Brewery Case) and Holistic Tests (Del Monte case) ,
SC found that the dominant feature of the GALLO cigarette trademark is the device
of a large rooster facing left, outlined in black against a gold background. The
rooster’s color is either green or red – green for GALLO menthols and red for GALLO
filters. Directly below the large rooster device is the word GALLO. The rooster device
is given prominence in the GALLO cigarette packs in terms of size and location on
the labels.84

The GALLO mark appears to be a fanciful and arbitrary mark for the cigarettes as it has no
relation at all to the product but was chosen merely as a trademark due to the fondness for
fighting cocks of the son of petitioners’ president. Furthermore, petitioners adopted GALLO, the
Spanish word for rooster, as a cigarette trademark to appeal to one of their target markets,
the sabungeros (cockfight aficionados).85

Also, as admitted by respondents themselves, 86 on the side of the GALLO cigarette packs are
the words "MADE BY MIGHTY CORPORATION," thus clearly informing the public as to the
identity of the manufacturer of the cigarettes.

On the other hand, GALLO Winery’s wine and brandy labels are diverse. In many of
them, the labels are embellished with sketches of buildings and trees, vineyards or a
bunch of grapes while in a few, one or two small roosters facing right or facing each
other (atop the EJG crest, surrounded by leaves or ribbons), with additional designs
in green, red and yellow colors, appear as minor features thereof. 87 Directly below or
above these sketches is the entire printed name of the founder-owners, "ERNEST &
JULIO GALLO" or just their surname "GALLO," 88 which appears in different fonts,
sizes, styles and labels, unlike petitioners’ uniform casque-font bold-lettered GALLO
mark.
Moreover, on the labels of Gallo Winery’s wines are printed the words "VINTED AND BOTTLED
BY ERNEST & JULIO GALLO, MODESTO, CALIFORNIA.

PETITIONERS ARE ALSO NOT LIABLE

FOR UNFAIR COMPETITION

The universal test question is whether the public is likely to be deceived. Nothing
less than conduct tending to pass off one man’s goods or business as that of another
constitutes unfair competition. Actual or probable deception and confusion on the
part of customers by reason of defendant’s practices must always appear. SC, on
this score, finds that petitioners never attempted to pass off their cigarettes as
those of respondents. There is no evidence of bad faith or fraud imputable to
petitioners in using their GALLO cigarette mark.