Ipophil ruling favors Tanduay

The Intellectual Property Office of the Philippines (Ipophil) dismissed an appeal of Ginebra San Miguel Inc. for the reconsideration of an earlier decision to register Tanduay Distillers Inc. and allow it to use the “Ginebra Kapitan” trademark.

This is despite an earlier ruling of the Court of Appeals that prohibited Tanduay from using the term “ginebra” for its gin-based products in the light of a trademark infringement and unfair competition suit filed by GSMI.

In an eight-page decision dated Sept. 24 that denied the petition of GSM, Ipophil Director-General Ricardo Blancaflor said Ginebra Kapitan was “not confusingly similar” to Ginebra San Miguel and that the only similarity between the two was the use of the term “ginebra.”

The Ipophil chief said the marks were “entirely distinct and different from each other in spelling, pronunciation as well as meaning.” He added that “ginebra” was a “generic word which cannot be exclusively appropriated.”

On the question on whether GSMI would be damaged by the registration of Ginebra Kapitan in favor of Tanduay, the Ipophil said the latter had disclaimed the word “ginebra” in its trademark application. No claim was made by Tanduay to the exclusive use of “ginebra” but only the mark Ginebra Kapitan, it said.

“In other words, even if the appellee is granted registration for Ginebra Kapitan, the appellant or any third party is not precluded from using the term ‘ginebra.’ In this regard the registration of the appellee’s mark would not damage the appellant as the latter can continue using ‘ginebra’ in its gin products,” the order said.

The IPO also said GSMI’s claim that “ginebra” had already acquired secondary meaning as referring to its product was “not tenable.”

The government agency explained that in this regard, the term “ginebra” being generic was not covered by the doctrine of secondary meaning and thus “not subject to exclusive appropriation.” It noted that “ginebra” was a Spanish word for gin while the English word gin came from the French word genieve which means juniper, the name of the berry which gives gin its distinctive bitter flavor.

“Words or phrases which have been in common use and which indicate the character, kind, quality and composition of the thing, may not be appropriated by any one to his exclusive use. In the exclusive use of them the law will not protect.

The reason for this is because generic words are considered to be in the public domain and free for all to use,” the IPO order said.

Even if GSMI had been using “ginebra” for a long period in its business activities, the IPO said this would not amount to its exclusive right to use the term. This would otherwise prejudice other persons who are also engaged in producing a similar class of gin products and who are using the same generic term in their trade or services, the IPO said.

The IPO cited the case of Asia Brewery Inc. vs Court of Appeals, in a 1993 decision on which the Supreme Court held that “considering that San Miguel Pale Pilsen has virtually monopolized the domestic beer market for the past hundred years, those who have been drinking no other beer but San Miguel Pale Pilsen these many years certainly know their beer too well to be deceived by a newcomer in the market.” That ruling added that if the consumers gravitated to Asia Brewery’s cheaper beer, it would not be because they were confused or deceived “but because they find the competing product to their taste.”