ASIA BREWERY VS CA AND SMC

In September 1988, San Miguel Corporation (SMC) sued Asia Brewery Inc. for allegedly infringing upon their trademark on their beerproduct popularly known as San Miguel Pale Pilsen; that Asia Brewerys Beer na Beer product, by infringing upon SMCs trademark has committed unfair competition as Beer na Beer creates confusion between the two products. The RTC ruled in favor of Asia Brewery but the Court of Appeals reversed the RTC. ISSUE: Whether or not Asia Brewery infringed upon the trademark of SMC. HELD: No. Both products are manufactured using amber colored steinie bottles of 320 ml. Both were labeled in a rectangular fashion using white color paint. But other than these similarities, there are salient differences between the two. As found by the Supreme Court, among others they are the following:

it is likewise expressly labeled as manufactured by Asia Brewery. Surely, there is no intention on the part of Asia Brewery to confuse the public and make it appear that Beer na Beer is a product of SMC, a long-established and more popular brand.

Justice Cruz Dissenting: 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. (Del Monte vs CA & Sunshine Sauce)

1.

The dominant feature of SMCs trademark are the words San Miguel Pale Pilsen while that of Asia Brewerys trademark is the word Beer. Nowhere in SMCs product can be seen the word Beer nor in Asia Brewerys product can be seen the words San Miguel Pale Pilsen. Surely, someone buying Beer na Beer cannot mistake it as San Miguel Pale Pilsen beer.

Del Monte vs Court of Appeals and Sunshine Sauce

Del Monte Corporation is an American corporation which is not engaged in business in the Philippines. Though not engaging business here, it has given authority to Philippine Packing Corporation (Philpack) the right to manufacture, distribute and sell in the Philippines various agricultural products, including catsup, under the Del Monte trademark and logo. In 1965, Del Monte also authorized PPC to register with the Patent Office the Del Monte catsup bottle configuration. Philpack was issued a certificate of trademark registration under the Supplemental Register. Later, Del Monte and Philpack learned that Sunshine Sauce Manufacturing was using Del Monte bottles in selling its products and that Sunshine Sauces logo is similar to that of Del Monte. The RTC of Makati as well as the Court of Appeals ruled that there was no infringement because the trademarks used between the two are different in designs and that the use of Del Monte bottles by Sunshine Sauce does not constitute unfair competition because as ruled in Shell Company vs Insular Petroleum: selling oil in containers of another with markings erased, without intent to deceive, was not unfair competition. ISSUE: Whether or not there is unfair competition and infringement in the case at bar.

2.

The bottle designs are different. SMCs bottles have slender tapered neck while that of Beer na Beer are fat. Though both beer products use steinie bottles, SMC cannot claim that Asia Brewery copied the idea from SMC. SMC did not invent but merely borrowed the steinie bottle from abroad and SMC does not have any patent or trademark to protect the steinie bottle shape and design.

3.

In SMC bottles, the words pale pilsen are written diagonally while in Beer na Beer, the words pale pilsen are written horizontally. Further, the words pale pilsen cannot be said to be copied from SMC for pale pilsen are generic words which originated from Pilsen, Czechoslovakia. Pilsen is a geographically descriptive word and is non-registrable.

4.

SMC bottles have no slogans written on them while Asia Brewerys bottles have a copyrighted slogan written on them that is Beer na Beer.

5.

In SMC bottles, it is expressly labeled as manufactured by SMC. In Asia Brewery beer products,

HELD: Yes. The Supreme Court recognizes that there really are distinctions between the designs of the logos or trademarks of Del Monte and Sunshine Sauce. However, it has been that side by side comparison is not the final test of similarity. Sunshine Sauces logo is a colorable imitation of Del Montes trademark. 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. 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. The Supreme Court also ruled that Del Monte does not have the exclusive right to use Del Monte bottles in the Philippines because Philpackspatent was only registered under the Supplemental Register and not with the Principal Register. Under the law, registration under the Supplemental Register is not a basis for a case of infringement because unlike registration under the Principal Register, it does not grantexclusive use of the patent. However, the bottles of Del Monte do say in embossed letters: Del Monte Corporation, Not to be Refilled. And yet Sunshine Sauce refilled these bottles with its catsup products. This clearly shows the Sunshine Sauces bad faith and its intention tocapitalize on the Del Montes reputation and goodwill and pass off its own product as that of Del Monte.

MIGHTY CORPORATION VS. E & J GALLO WINERY

IP Views No confusion arises from the use of similar marks on wines and cigarettes September 20, 2007 E. & J. Gallo Winery, producer of wines and brandy products which is based in California, U.S.A., registered its GALLO wine trademark in the Philippines in 1971. On the other hand, Mighty Corporation and La Campana Fabrica de Tabaco, Inc., together with their affiliate, Tobacco Industries of the Philippines, were engaged in the manufacture and distribution of tobacco products for which they have been using the GALLO cigarette trademark since 1973. On 14 July 2004, the Supreme Court1 ruled that Mighty Corporation, et al. are not liable for trademark infringement or unfair competition and reaffirmed the doctrine that the use of an identical mark does not, by itself, lead to a legal conclusion that there is trademark infringement. 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. According to the High Court, there are two types of confusion in trademark infringement, namely, "confusion of goods" and "confusion of business." Confusion of goods is evident where the litigants are actually in competition; but confusion of business may arise between non-competing interests as well. Thus, there is likelihood of confusion when, although the goods of the parties are different, they are so related that the defendant's product can reasonably be assumed to originate from the plaintiff. The GALLO trademark registration certificates in the Philippines and in other countries expressly state that they cover wines only, without any evidence or indication that registrant Gallo Winery expanded or intended to expand its business to cigarettes. In determining likelihood of confusion, the Supreme Court considered the following factors: [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. In comparing the resemblance or colorable imitation of marks, various elements were considered, such as the dominant color, style, size, form, meaning of letters, words, designs and emblems used, the likelihood of deception of the mark or name's tendency to confuse, and the commercial impression likely to be conveyed by the trademarks if used in conjunction with the respective goods of the parties. The Supreme Court found that the similarity between the parties' GALLO trademarks, i.e., the use of the word "GALLO" - a family surname for Gallo Winery's wines and a Spanish word for "rooster" for Mighty Corporation, et al.'s cigarettes, was overridden by their different features like color schemes, art works and other markings of both products. In determining whether goods are related the following factors apply:

Read the full text of the case here. Compare it with the case of Asia Brewery vs CA and SMC. Note: This case (Del Monte case) is a prime example of how to apply the Holistic Test as opposed to the Asia Brewery case which applied the Dominancy Test

a. the business (and its location) to which the goods belong; b. c. d. e. the class of product to which the goods belong; the product's quality, quantity, or size, including the nature of the package, wrapper or container; the nature and cost of the articles; the descriptive properties, physical attributes or essential characteristics with reference to their form, composition, texture or quality; the purpose of the goods; whether the article is bought for immediate consumption, that is, day-to-day household items; the fields of manufacture; the conditions under which the article is usually purchased and the channels of trade through which the goods flow, how they are distributed, marketed, displayed and sold.

f. g. h. i. j.

As each trademark infringement case presents its own unique set of facts, no single factor is preeminent. A very important circumstance is whether there exists likelihood that an appreciable number of "ordinarily prudent purchasers" will be misled, or simply confused, as to the source of the goods in question. The "purchaser" is not the "completely unwary consumer" but is the "ordinarily intelligent buyer" who is accustomed to buy, and therefore to some extent familiar with, the goods in question. The Supreme Court distinguished between GALLO wines and GALLO cigarettes as follows: (1) wines are bottled and consumed by drinking while cigarettes are packed in cartons or packages and smoked; (2) there is a whale of a difference between their descriptive properties, physical attributes or essential characteristics like form, composition, texture and quality; (3) GALLO cigarettes are inexpensive items that appeal only to simple folks like farmers, fishermen, laborers and other low-income workers while GALLO wines are patronized by middle-to-high-income earners; and (4) GALLO cigarettes are distributed through sidewalk vendors, sari-sari stores and grocery stores in rural areas, mainly in Misamis Oriental, Pangasinan, Bohol, and Cebu, whereas GALLO wines are imported and exclusively distributed by a local entity and sold in hotels, expensive bars and restaurants, and high-end grocery stores and supermarkets. Based on these distinctions, the High Tribunal declared that wines and cigarettes are non-competing and totally unrelated products which are not likely to cause confusion vis--vis the goods or business of Gallo Winery and Mighty Corporation, et al. Thus, even though similar marks are used, there is no trademark infringement if the public does not expect the plaintiff to make or sell the same class of goods as those made or sold by the defendant.