Facts:
Ginebra San Miguel, Inc. v. Director of the Bureau of Trademarks, G.R. Nos. 196372, 210224, 216104, 219632, August 09, 2022, Supreme Court En Banc, Gesmundo, J., writing for the Court.
Petitioner
Ginebra San Miguel, Inc. (GSMI) sought registration of the word mark
GINEBRA for gin products (Trademark Application No. 4-2003-0001682) and later sued
Tanduay Distillers, Inc. (TDI) for infringement and unfair competition over TDI’s use of
GINEBRA KAPITAN. The Bureau of Trademarks (BOT)/Intellectual Property Office (IPO) examiner initially required translation of “GINEBRA,” the BOT/IPO later rejected GSMI’s application as generic (Paper No. 6, Final Rejection; IPO Dir. Gen. decision Dec. 7, 2009), and the Court of Appeals (CA) affirmed in CA-G.R. SP No. 112005 (Aug. 13, 2010). GSMI elevated that denial to the Supreme Court (petition for review).
Separately, GSMI sued TDI in the Regional Trial Court (RTC) for unfair competition, infringement, and damages (IP Case No. MC03-01). The RTC granted a TRO and preliminary injunction early on, but this Court later voided the injunction (612 Phil. 2009). After trial the RTC dismissed GSMI’s complaint (July 25, 2012). GSMI sought relief in the CA by both a petition for review under Rule 43 (CA-G.R. SP No. 127255) and an ordinary appeal elevated as CA-G.R. CV No. 100332; the CA Special Thirteenth Division and later the Special Sixteenth Division rendered decisions (Aug. 15, 2013 and Nov. 7, 2014) reversing the RTC and finding infringement and unfair competition, awarding various damages and remedies against TDI.
TDI separately applied to register
GINEBRA KAPITAN (Application No. 4-2006-008715). The IPO Bureau of Legal Affairs (BLA) and later the IPO Director General at one point gave TDI’s applications due course, while the CA (CA-G.R. SP No. 132441, July 23, 2014) reversed the IPO and disapproved TDI’s mark. GSMI and TDI filed petitions to the Supreme Court. The Court consolidated the four petitions (Resolution, March 10, 2020) and, after full consideration of survey and documentary evidence (notably GSMI’s consumer surveys “Project Bookman” and “Project Georgia”), rendered the present En Banc decision. The matters reac...
(Pro-only)
Issues:
- Is the mark “GINEBRA” a generic mark?
- If not generic, can “GINEBRA” be a distinctive (registrable) mark by virtue of secondary meaning?
- Did Tanduay Distillers, Inc. commit trademark infringement and/or unfair competition by using “GINEBRA KAPITAN,” and what remedies and d...(Pro-only)
Ruling:
Ratio:
Doctrine: