No infringement in Tanduay’s use of ‘Ginebra’ - IPO

MANILA, Philippines - Tanduay distillers, Inc can look forward to using the "Ginebra" name for a gin product after the Intellectual Property Office (IPO) rejected a complaint filed by rival company. In ruling against a P100-million civil infringement suit filed by Ginebra San Miguel, Inc. (GSMI), IPO legal affairs director Estrellita Beltran-Abelardo said Tanduay’s registration of the mark "Ginebra Kapitan" would be "given due course". The San Miguel Corp. unit, said Ms. Abelardo, cannot claim exclusive rights to the word for its own "Ginebra San Miguel" product as it is a generic term that means "gin" in Spanish. The Intellectual Property Code, she said, states that "a mark cannot be registered if it ... consists exclusively of signs that are generic for the goods or services that they seek to identify." "The Supreme Court, in a long line of cases, has constantly affirmed the rule that generic words cannot be exclusively appropriated." Ms. Abelardo, who ordered that a copy of the decision be forwarded to the Bureau of Trademarks "for appropriate action," also disagreed with GSMI’s position that "Ginebra" had become associated exclusively with its product. "The claim of the opposer that the word ’Ginebra’ as part of its mark has been distinctive is not tenable. It is a fact that the said word has been used by the opposer for so many years already, however, such an event or circumstance does not change its nature and [it] remains as a generic term," she stressed. Ms. Abelardo pointed out that there were other entities actually using the term "for quite sometime already" and whose trademarks are registered. Apart from Ginebra San Miguel, IPO records showed 12 trademark applications for gin products bearing the name "ginebra". The decision also cited a Supreme Court ruling which held that the use of a generic term as part of a trademark is always conditional and subject to the limitation that the registrant does not acquire the exclusive right to the term. Ginebra San Miguel, Ms. Abelardo said, is not confusingly similar to Ginebra Kapitan. That alleged similarity was the basis of a case GSMI filed before the Mandaluyong Regional Trial Court in August 2003. The court issued a restraining order in September, prompting Tanduay to file a P122-million countersuit. The Court of Appeals restrained the lower court two months later, allowing Tanduay to resume making and selling the gin. It has since been sold as "Gin Kapitan" and the firm filed a motion for reconsideration on January 2004. Ms. Abelardo noted that the only similarity between the contending trademarks was the inclusion of the term "Ginebra". "The other components of the contending marks are entirely distinct and different from each other in spelling, pronunciation as well as in meaning." Incorporated on July 10, 1987, GSMI is a majority-owned subsidiary of San Miguel Corp. that is primarily engaged in the manufacture and sale of alcohol and alcoholic beverages. Its other products include GSM Blue, Gran Matador Brandy and Vino Kulafu. Tanduay Distillers, meanwhile, operates under Tanduay Holdings which has business interests in airlines, banks and brewery. It manufactures Tanduay 1854, Cossack Vodka, Barcelona brandy, and London Dry Gin. - BusinessWorld