G.R. No. 164324 - Tanduay Distillers, Inc. vs. Ginebra San Miguel, Inc.

Tanduay Distillers, Inc. (Tanduay), a corporation engaged in the liquor business since 1854, developed a gin product named “Ginebra Kapitan” in 2002.
Ginebra San Miguel, Inc. (San Miguel) filed a complaint against Tanduay for trademark infringement, unfair competition, and damages, requesting issuance of a temporary restraining order (TRO) and writ of preliminary injunction.
The dispute concerns the use of the mark “Ginebra” and whether Tanduay’s “Ginebra Kapitan” infringes San Miguel’s trademark rights over “Ginebra San Miguel.”

Tanduay’s “Ginebra Kapitan” gin product featured a unique brand name and label design, including a representation of a revolutionary Kapitan on horseback and a resealable twist cap, differentiating it from San Miguel’s “Ginebra San Miguel.”
Tanduay filed a trademark application for “Ginebra Kapitan” with the Intellectual Property Office (IPO) and obtained permits from the Bureau of Internal Revenue before selling the product starting May 2003.

On August 13, 2003, San Miguel’s counsel sent Tanduay a cease-and-desist letter regarding the use of “Ginebra.”
On August 15, 2003, San Miguel formally filed an infringement complaint with applications for TRO and writ of preliminary injunction before the Regional Trial Court (RTC) of Mandaluyong City (Branch 214).

Hearings for the TRO were conducted on August 25, 29, and September 4, 2003.
San Miguel submitted five affidavits providing evidence of prior use, consumer confusion, and reputation of the “Ginebra” mark.
Tanduay filed motions to strike hearsay affidavits and presented witnesses to counter the claim, including evidence of other entities using “Ginebra” in their trademarks.
The RTC issued a TRO on September 23, 2003 enjoining Tanduay from using “Ginebra Kapitan.”
Subsequent hearings for the writ of preliminary injunction were held on October 8, 9, 13, and 14, 2003.
On October 17, 2003, the RTC granted the writ of preliminary injunction, enjoining Tanduay from using the “Ginebra” mark or products confusingly similar to San Miguel’s.

Tanduay filed petitions for certiorari with the CA to challenge the injunctions.
The CA issued a TRO prohibiting the RTC from implementing its writ and ordered further hearings.
On January 9, 2004, the CA dismissed Tanduay’s petition and petition for reconsideration was denied on July 2, 2004.
Tanduay elevated the case to the Supreme Court via a Petition for Review on Certiorari.

San Miguel registered the trademark “Ginebra San Miguel.”
There was a close resemblance between “Ginebra San Miguel” and “Ginebra Kapitan.”
The similarity likely caused confusion among consumers regarding the source of the gin products.
The use of “Ginebra” by Tanduay was likely an attempt to ride on the goodwill of San Miguel’s mark.
Even if “Ginebra” were generic, San Miguel had acquired a secondary meaning through long exclusive use since 1834, warranting protection.

Whether San Miguel is entitled to the writ of preliminary injunction enjoining Tanduay’s use of the mark “Ginebra” pending trial.
Whether the word “Ginebra” is a generic term incapable of exclusive appropriation or a mark with acquired secondary meaning entitling San Miguel to exclusive use.
Whether the trial court and CA gravely abused their discretion in issuing the TRO and writ of preliminary injunction.
Whether the issuance of the injunction prejudged the merits of the main case.
Whether San Miguel sufficiently proved the probability of irreparable injury to justify the issuance of the injunction.