CA orders pullout of Tanduay’s ‘Ginebra’ products

MANILA, Philippines (UPDATED) – The Court of Appeals (CA) has ordered Tanduay Distillers, Inc. (TDI) a market pullout of all its products that bear the mark “Ginebra” after it ruled that the beverage company infringed a trademark owned by its archrival, Ginebra San Miguel Inc. (GSMI).

TDI operates under the Lucio Tan’s LT Group, Inc. while GSMI is largely owned by San Miguel Corporation, which has long used the “Ginebra” mark for its gin products.

Aside from the pullout, the appellate court also demanded TDI to pay exemplary damages at P2 million ($44,509.73*) to GSMI, which the court said is the rightful owner of the “Ginebra” trademark.

The CA ruling, penned by Associate Justice Rodil Zalameda, said “after almost two centuries of usage, effective tri-media promotions and advertisements has bestowed upon ‘Ginebra’ a secondary meaning exclusively identifiable to GSMI and its gin products.” 

The 47-page decision came in favor of GSMI, and reversed an October 5, 2012 ruling that dismissed the San Miguel subsidiary’s petition that the Lucio Tan beverage company use of “Ginebra” mark in its gin products infringed fair competition.

“The mere use of ‘Ginebra’ by Tanduay in its ‘Ginebra Kapitan’ gin products is trademark infringement by itself,” the CA said.

Meanwhile, the CA also ordered TDI to pay 50% of its Ginebra Kapitan total gross sales beginning in 2003, the same year GSMI claimed the Lucio Tan-led beverage rival violated fair competition rules.

The CA explained how TDI broke the law: “Tanduay has designed its bottle and label to somehow make a colorable similarity with the bottle and label of ‘Ginebra S. Miguel.”

On September 24, 2013, the Director General of the Intellectual Property Office (ODG-IPO) approved Tanduay’s application to register the mark Ginebra Kapitan. TDI asserted that “Ginebra” is a generic term and cannot be registered by any company for exclusive use.

GSMI protested. On August 2, 2014, CA’s 11th Division favored GSMI’s petition, and nullified the ODG-IPO’s decision, saying the public has long associated the term Ginebra with GSMI.

Under Section 123.1(i) of the Intellectual Property Code of the Philippines, a mark cannot be registered if it consists “exclusively or of indications that have become customary or usual to designate the goods or services in everyday language or in bona fide and established trade practice.” – Rappler.com

(Editor’s note: In the original version of the article, it was referred that GSMI broke the law instead of TDI, per CA’s explanation of its decision in favor of GSMI. Also, it was TDI which argued in CA regarding its use of “Ginebra,” not GSMI. These have been corrected in this version. We apologize for the error.)

(*$1=P44.93)