CA resolves dispute over ‘Ginebra’ brand name

Tanduay Distillers, Inc. (TDI), the liquor arm of Lucio Tan-controlled LT Group, Inc., lost its legal battle with diversified conglomerate San Miguel Corporation (SMC) as the Court of Appeals (CA) found the former liable for unfair competition and infringement over the “Ginebra” brand name.

“The mere use of ‘Ginebra’ by Tanduay in its ‘Ginebra Kapitan’ gin products is trademark infringement by itself,” declared the CA’s Special Sixteenth Division in its 47-page ruling penned by Associate Justice Rodil Zalameda.

The CA said its decision to reverse the Oct. 5, 2012 ruling issued by a Mandaluyong City Regional

Trial Court (RTC), which ruled in favor of TDI, is consistent with the decision dated Aug. 15, 2013 rendered by the Special Former Thirteenth Division on a similar case involving the same parties.

It further explained that it decided to merely adopt the Special Former Thirteenth Division’s dispositive portion which directed TDI to pay Ginebra San Miguel Inc. (GSMI) 50 percent of the total gross sales of its “Ginebra Kapitan” products from the time of the filing of the case before the Regional Trial Court (RTC) of Mandaluyong City in 2003 up to the finality of the judgment.

The appellate court also ordered TDI to pay GSMI the amount of P2 million as exemplary damages and 500,000 as attorney’s fees and remanded the case to the Mandaluyong RTC for the purpose only of the accounting of the gross sales of TDI’s Ginebra Kapitan and for the determination of the amount of actual and compensatory damages to be awarded to GSMI.

Furthermore, the CA ordered TDI to remove from the market all its gin products bearing the mark Ginebra including all bottles, labels, signs, prints, packages, wrappers, receptacles and advertisements bearing the said mark.

The TDI was also directed to cease and desist from using Ginebra in any of its gin products.

The CA ruled that through its long use in the country, Ginebra has become “singularly synonymous” with GSMI’s gin products and GSMI itself as the manufaturer, thus, the mark has already acquired a secondary meaning in trademark laws.

“After almost two centuries of usage, effective tri-media promotions and advertisments ghas beestowed upon ‘Ginebra’ a secondary meaning exclusively identifiable to GSMI and its gin products,” the CA added.

The CA also pointed out that TDI committed infringement in its use of the Ginebra mark and unfair competition in the way it designed its bottle and label for consumers.

“There is no dispute that the shapes of the bottles are similar. Even the shapes of the labels are almost, if not, totally identical. Looking at the bottles, it becomes apparent that Tanduay has designed its bottle and label to somehow make a colorable similarity with the bottle and label of ‘Ginebra S. Miguel,’” it added.

Records show that on Aug. 2, 2014, the CA Eleventh Division granted GSMI’s petition seeking the nullification of the decision rendered by the Office of the Director General of the Intellectual Property Office (ODG-IPO) on Sept. 24, 2013, which approved the application filed by Tanduay for the registration of the mark Ginebra Kapitan.

In its application for registration, Tanduay insisted that “Ginebra” is a generic word which means “gin”, thus, could not function as a trademark and cannot be registered for exclusive use of any company.

It added that GSMI would not be dam- aged by its registration and use of the mark Ginebra Kapitan on its gin product since the dominant portion of the mark would be “Kapitan,” which is not identical to the “San Miguel” trademark of the petitioner.

In ruling in favor of GSMI, the appellate court gave credence to its argument that the term Ginebra had long become an iconic trademark which is exclusively associate by the Filipino-drinking public with its gin products.

The CA gave weight to surveys conducted by GSMI which showed 90 percent of gin drinkers in Luzon gave the top of minds responses “Ginebra San Miguel,” “San Miguel,” “Ginebra Blue” and “La Tondeña” when shown a flashcard with the word “Ginebra” and at least half of those surveyed wrongly identified “Ginebra Kapitan” to the product of the petitioner.

“What is clear, however, based on the record, is the fact that the relevant public perceives the word “Ginebra” as the gin product of the petitioner,” it added.

Furthermore, the CA said it agrees with the petitioner that the term “Ginebra” had already acquired a secondary meaning under Section 123.2 of the Intellectual Property Code of the Philippines, since it has become associated with the source of goods rather than with the goods themselves.

“While the term ‘Ginebra’ may originally descriptive term for a gin product, the said word had already become distinctive of the products of the petition in view of the latter’s extensive and substantive use of the term ‘Ginebra’ on their gin products for over 180 years,” it noted.