CA junks Tanduay appeal over infringement of Ginebra trademark

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CA junks Tanduay appeal over infringement of Ginebra trademark
The court rules that Tanduay did not present any new argument in its motion for reconsideration

MANILA, Philippines – The Court of Appeals has junked the plea of Tanduay Distillers, Incorporated (TDI), which it found liable for unfair competition and infringement for using the “Ginebra Kapitan” trademark of its archrival, Ginebra San Miguel Incorporated (GSMI).

TDI operates under the Lucio Tan’s LT Group, Incorporated, while GSMI is largely owned by San Miguel Corporation led by Ramon S. Ang. SMC has long used the “Ginebra” mark for its gin products. (READ: CA orders pullout of Tanduay’s ‘Ginebra’ products)

In a 5-page resolution penned by Associate Justice Rodil Zalameda, the CA’s Special 16th Division held that TDI’s motion for reconsideration failed to raise new issues that would warrant the reversal of its decision issued on November 7, 2014.

“Anent the other matters raised by TDI in its motion for reconsideration, e.g. the doctrine of secondary meaning and trademark infringment, clearly, these issues were already exhaustively dissected, analyzed, and discussed in our decision. Thus, the very same issues, being mere repetitions, need not be revisited,” the CA ruled.

No new argument

The CA also did not give weight to the argument of TDI that it should have dismissed outright GSMI’s appeal for being improper and on the ground of forum shopping.

“And even after a decision was rendered in the said petition, TDI never raised the issues on the impropriety of the mode of appeal and of forum shopping. In any event, we find the absence of forum shopping in the instant case,” the CA ruled.

In its November 2014 decison, the CA’s Special 16th Division reversed and set aside the October 5, 2012, ruling issued by the Regional Trial Court of Mandaluyong City, which dismissed GSMI’s complaint  against TDI for unfair competition, infringement, and damages.

The appellate court declared that “the mere use of ‘Ginebra’ by TDI in its ‘Ginebra Kapitan’ gin products is trademark infringement by itself.”

The CA noted that its findings on TDI’s liability for trademark infringment and unfair competition is consistent with the decision dated August 15, 2013, rendered by the Special Former 13th Division on a similar case involving the same parties.

The November 2014 decision also ordered TDI to remove from the market all its gin products bearing the mark “Ginebra,” including all bottles, labels, signs, prints, packages, wrappers, receptables, and advertisements.

TDI was also directed to cease and desist from using “Ginebra” in any of its gin products.

The CA ruled that through its long use in the country, the term “Ginebra” had already acquired a secondary meaning under Section 123.2 of the Intellectual Property Code of the Philippines, as it has become associated with the source of goods rather than with the goods themselves.

The CA’s Special 16th Division noted though that it kept its silence on the award made by the Special Former 13th Division, after noting that indeed, GSMI failed to present evidence before the court to support its claim for payment of damages.

In its ruling, the Special Former 13th Division directed TDI to pay GSMI 50% of the total gross sales of its “Ginebra Kapitan” products from the time of the filing of the case before the Mandaluyong City RTC in 2003 up to the finality of the judgment.

It also  ordered TDI to pay GSMI P2 million ($43,720.64) as exemplary damages and P500,000 ($10,929.20) as attorney’s fees and remanded the case to the Mandaluyong RTC.

Iconic trademark

On August 2, 2014, the CA’s 11th Division ruled  in favor of GSMI’s petition seeking the nullification of the approval of TDI’s registration of the mark “Ginebra Kapitan” by the Office of the Director of the Intellectual Property Office (ODG-IPO).

TDI, in its application for registration, insisted that “Ginebra” is a generic word which means “gin,” thus, could not function as a trademark and cannot be registered for exclusive use of any company.

It added that GSMI would not be damaged by its registration and use of the mark “Ginebra Kapitan” on its gin product since the dominant portion of the mark would be “Kapitan,” which is not identical to the “San Miguel” trademark of the petitioner.

But, the CA’s 11th Division held that the term Ginebra had long become an iconic trademark which is exclusively associate by the Filipino-drinking public with its gin products.

The CA also gave weight to surveys conducted by GSMI, which showed 90% of gin drinkers in Luzon gave the top of minds responses “Ginebra San Miguel,” “San Miguel,” “Ginebra Blue,” and “La Tondeña” when shown a flashcard with the word “Ginebra.” At least half of those surveyed wrongly identified “Ginebra Kapitan” as the product of the petitioner.

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