Case Summary (G.R. No. 196372)
IPO Director’s Affirmation of Genericness
On appeal, the IPO Director General cited English‐Spanish dictionaries equating “gin” and “ginebra,” held that “ginebra” is a generic term for juniper‐flavored distilled spirits, and denied secondary‐meaning claims because generic marks may not acquire distinctiveness under Sec. 123.2.
Consumer Surveys and Secondary Meaning Claims
GSMI presented two large‐scale consumer surveys (Project Bookman, July 2003; Project Georgia, March 2005) among genuine gin drinkers in Greater Manila, North Luzon, and South Luzon. 90% associated “GINEBRA” with GSMI; 82–86% misidentified TDI’s “GINEBRA KAPITAN” packaging as GSMI products. GSMI argued “GINEBRA” has become distinctive through surface use since 1834 and emotional branding.
Court of Appeals’ Conflicting Rulings
• CA SP No. 112005 (Aug. 2010): Held “GINEBRA” generic; refusal affirmed.
• CA SP No. 127255 (Aug. 2013): Found “GINEBRA” distinctive; TDI liable for infringement & unfair competition; granted injunctive and monetary relief.
• CA CV No. 100332 (Nov. 2014): Agreed with consumer confusion, granted appeal, remanded consistent with SP 127255.
• CA SP No. 132441 (July 2014): In TDI’s own opposition proceeding, CA found “GINEBRA” not generic and disapproved TDI’s mark “GINEBRA KAPITAN.”
Spectrum of Distinctiveness Framework
Under Abercrombie & Fitch v. Hunting World, marks range from fanciful/arbitrary (strong) to suggestive, descriptive (weak; registrable on proof of secondary meaning under Sec. 123.2), to generic (non-registrable under Sec. 123.1(h)).
Primary Significance and Genericness
Sec. 151.1(b) and 2020 IP Rules Sec. 8 adopt the primary‐significance test: a mark is generic if the consuming public primarily understands it as naming the genus of goods. Trademark adjudication must assess public perception by direct (surveys) and indirect (dictionaries, trade usage) evidence, focusing on relevant purchasers.
Doctrine of Secondary Meaning Under Sec. 123.2
Descriptive/geographic marks (Sec. 123.1(j–l)) may register if distinctive through exclusive, continuous use for five years. Generic marks (Sec. 123.1(h)) are excluded from Sec. 123.2’s exception—they cannot acquire secondary meaning.
Doctrine of Foreign Equivalents Limitations
Although U.S. practice often translates foreign marks, it is a guideline, not an absolute rule. Its U.S. rationale—addressing a diverse multilingual marketplace—does not align with Philippine law under R.A. 8293. Low Spanish fluency among Filipino gin drinkers further undermines its application here.
Trademark Infringement: Dominancy Test
Under Sec. 155, infringement requires use of a confusingly similar registered mark or its dominant feature. The Dominancy Test compares whether the prevalent element of an infringing mark duplicates the dominant aspect of an earlier registered mark, likely causing confusion.
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Case Syllabus (G.R. No. 196372)
Procedural Background & Consolidation
- Four petitions consolidated under G.R. Nos. 196372, 210224, 216104, 219632, all raising common issues on the registrability and use of the mark “GINEBRA.”
- G.R. No. 196372: GSMI’s application (No. 4-2003-0001682) for the mark “GINEBRA” for gin products was finally rejected by the Bureau of Trademarks (BOT) and by the IPO Director General as generic.
- GSMI’s subsequent appeals to the Court of Appeals (CA) Special 13th Division (CA-G.R. SP No. 112005) were denied (Decision 08-13-2010; Resolution 03-25-2011).
- G.R. Nos. 210224 & 219632: GSMI sued Tanduay Distillers, Inc. (TDI) in RTC-Mandaluyong (IP Case No. MC03-01) for trademark infringement and unfair competition over TDI’s use of “GINEBRA KAPITAN.”
- RTC granted TRO and preliminary injunction; Supreme Court voided injunction for prematurely deciding merits.
- RTC later dismissed GSMI’s complaint (07-25-2012) as “GINEBRA” generic; CA Special 13th and 16th Divisions reversed RTC, finding “GINEBRA” distinctive and TDI liable (Decisions 08-15-2013 & 11-07-2014).
- G.R. No. 216104: TDI’s application for “GINEBRA KAPITAN” (No. 4-2006-008715) opposed by GSMI (IPC No. 14-2007-00196); BOT-BLA and IPO Director General ruled for TDI as “GINEBRA” generic; CA Special 7th Division reversed (07-23-2014).
Issues
- I. Is “GINEBRA” a generic mark for gin products?
- II. Can a generic or descriptive mark like “GINEBRA” acquire distinctiveness (secondary meaning) and become registrable?
- III. Did TDI infringe GSMI’s mark or commit unfair competition by using “GINEBRA KAPITAN”?
Statutory Framework on Registrability
- Section 123.1(h): “Marks that consist exclusively of signs generic for the goods or services” are unregistrable.
- Section 123.2: Descriptive marks and geographic names (123.1(j–l)) may be registered upon proof of substantially exclusive, continuous use for five years (secondary meaning).
- Section 124.1(j) & Rule 404: Applications must include translation/transliteration of foreign words, primarily to guard well-known marks under 123.1(e–f).
- Section 151.1(b): Cancellation of a registered mark that has become generic; test is the primary significance of the mark to the relevant public.
“GINEBRA” as Generic vs. Distinctive
- BOT/IPODG Decision (12-07-2009): Held “GINEBRA” is Spanish for “gin,” hence a generic term in the public domain.
- CA (08-13-2010): Upheld generic finding; applied doctrine of foreign equivalents.
- GSMI’s Position:
• “GINEBRA” used as historic dominant component of its trademarks since 1834.
• Independent consumer survey (Project Bookman, 07-2003): 90% of 6 million gin drinkers associate “GINEBRA” with GSMI brands.
• Long, continuous exclusive use; prior user; preferential right. - TDI’s Position: “GINEBRA” is generic; disclaimer in GSMI’s own registrations; generic terms cannot acquire secondary meaning.
Doctrine of Foreign Equivalents
- General rule in U.S.: Translate foreign words into English to test for genericness or descriptiveness if ordina