iPonlineservices.ipophil.gov.ph/ipcaselibrary/ipcasepdf... · 2008. 10. 16. · Exhibit "L" Exhibit "K" Exhibit "M"----- Trademark Registration NO. 43841 of the mark II "GINEBRA LUCKY

iPINTELLECTUAL PROPERTYPHILIPPINES

- versus-

TANDUAY DISTILLERS, INC.,

GINEBRA SAN MIGUEL, INC.,Opposer,

}}}}}}

Respondent-Applicant. }x---------------------------------------------------------x

Inter Partes Case No. 14-2007-00196Opposition to:

Appln. Ser. No. : 4-2006-008715Date Filed 09 September 2006Trademark "GINEBRA KAPITAN"

Decision No. 2008 -1i1.--

DECISION

This case pertains to an opposition to the registration of the mark "GINEBRAKAPITAN" bearing Application No. 4-2006-008715 filed on September 09, 2006 covering thegoods "gin" falling under Class 33 of the International Classification of goods which applicationwas published in the Intellectua l Property Philippines (IPP) E-Gazette on March 30, 2007.

The Opposer in the instant opposition proceedings is "GINEBRA SAN MIGUEL, INC."former ly (La Tonderia Distillers , Inc.), a corporation duly organized and existing under the lawsof the Philippines, with principal place of business at 40 San Miguel Avenue , San MiguelComplex Building , Mandaluyong City.

On the other hand, Respondent-Applicant is "TANDUAY DISTILLERS, INC.", also acorporation duly organized and existing under the laws of the Philippines with address at 348 J.Nepomuceno Street, San Miguel District , Manila.

The grounds of the opposition are as follows:

"1. Ginebra San Miguel, Inc. (GSMI), is the owner , by prior adoption andsubstantially exclusive and continuous use, of the mark "GINEBRA";

"2. The mark "GINEBRA" has become distinctive as used in connection withGSMI's goods and has acquired a "secondary meaning" under Section123.2 of the Intellectual Property Code of the Philippines (IP Code) andis now exclus ively associated with GSMI's gin-products ;

"3. The registration of "GINEBRA KAPITAN" for use on applican t's ginproduct will cause confusion upon the public, which will be led to believethat "GINEBRA KAPITAN" gin products are manufactured , and/orotherw ise sponsored by or affiliated with GSMI; and

"4. GSMI would be damaged by the registrat ion of "GINEBRA KAPITAN".

The ultimate issues to be resolved in this particular case are the following :

1. WHETHER OR NOT THE RESPONDENT-APPLICANT ISENTITLED TO THE REGISTRATION OF THE MARK "GINEBR~~KAPITAN" 1/vi,

Republic of the PhilippinesINTELLECTUAL PROPERTY OFFICE

351 Sen. Gil Puyat Ave., Makati City 1200 Philippines • www.ipophil.gov.phTelephone: +632-7525450 to 65 • Facsimile: +632-8904862 • email : [email protected]

2. WHETHER OR NOT THE WORD "GINEBRA" IS A GENERICTERM AND AS SUCH, CAN BE EXCLUSIVELYAPPROPRIATED

3. WHETHER OR NOT THE DOCTRINE OF SECONDARYMEANING IS APPLICABLE TO A GENERIC TERM

4. WHETHER OR NOT THE MARK "GINEBRA KAPITAN" ISCONFUSINGLY SIMILAR TO OPPOSER'S TRADEMARKS

The applicable provision of the law is Section 123.1 (d) and (h)

Sec . 123. Registrability - 123.1. A mark cannot be registered if it:

(d) Is identical with a registered mark belonging to adifferent proprietor or a mark with an earlier filing orpriority date, in respect of:

(I) The same goods or services, or

(II) Closely related goods or services , or

(III) If it nearly resembles such a mark as tobe likely to deceive or cause confusion ;

(h) Consists exclusively of signs that are generic for the goods orservices that they seek to identify;

The Opposer submitted the following in support of its opposition.

registrations for the mark GINEBRA SAN

Exhibit Description

Exhibit "A" Affidavit of Majalla Baun I

Exhibits "B" to "B-11"Certified True copy of registered trademarks'under the name of La Tondefia Distillers , Inc. I

I- IPrint-out of trademarks search for pendingExhibits "C" to "C-1" trademarks application for La Tondefia

Distillers, Inc.

Certified True copies of foreign trademark I"

I Exhibits "0" to "0 -4" MIGUEL" under the of La TondefianameDistillers, Inc.

Exhibit "E" Affidavit of Mercedes R. Abad

Exhibit "F" Curriculum Vitae of Merceds R. Abad--

Exhibit "G" NFO Trends WorldGroup "Project Bookman" Il---

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Exhibit "H" Sample Questionnaire for "Project Bookman"

Exhibits "I" to "1-29" Answered questionnaire for "Project Bookman"

Exhibit "J" TNS Trends "Project Georgia" 25 April 2005

Exhibit "K" Sample Questionnaire for "Project Georgia"

Exhibit "L" to "L-9" Answered questionnaire for "Project Georgia"

Exhibits "M" to "M-27" Affidavit of Ramon M. Cruz

Exhibits "N" to "N-31" Affidavit of Joaquin "Chito" Loyzaga

Exhibits "0" to "0-2" Affidavit of Ma. Elizabeth Gustillo

On the other hand, Respondent-Applicant submitted the following in support of itstrademark application being opposed.

Exhibit Description

Exhibit "A" Secretary's Certificate

Exhibit "B" Certified true copy of Certificate of CopyrightRegistration for GINEBRA KAPITAN.

Trademark Registration No. SR-7649 of theExhibit "C" mark "GINEBRA SANTIAGO" by Desteleria

Limtuaco & Co. Inc.

Trademark Registration No. 41995099992 ofExhibit "D" the mark "GINEBRA PINOY" by Webengton

Distillery, Phils., Inc.

Trademark Application No. 42004000310 forExhibit "E" the mark "GINEBRA GLADIATOR" by Jose

Estevez SA (Spain)

Trademark Application No. 42000008920 forExhibit "F" the mark "GINEBRA GRANDE" by

Consolidated Distillers of the Far East, Inc.

Trademark Application No. 42003000124 forExhibit "G" the mark "GINEBRA HENERAL" by Tanduay

Distillers, Inc.

Trademark Registration No. 057768 of theExhibit "H" mark "GINEBRA LUZON" by Washington

Distillery, Inc.

Trademark Application No. 41993085728 forExhibit "I" the mark "GINEBRA MATADOR" by Tanduay

Distillers, Inc.

Trademark Application No. 41993087399 forExhibit "J" the mark "GINEBRA TOREADOR & DEVICE"

by Tanduay Distillers, Inc.

Exhibit "L"

Exhibit "K"

Exhibit "M"------------ Trademark Registration NO. 43841 of the mark II

"GINEBRA LUCKY NINE" by DistelleriaLimtuaco & Co., Inc. I

ITrademark Registration No. 064476 of the Imark "GINEBRA TORO &

I REPRESENTATION OF A BULL" by Tanduay iI Distillers Inc.,

r Trademark Registration No. 42663 of the markIL

I "GINEBRA PRESIDENTE" by Washington IIDistillery, Inc.

Exhibit "N"

Exhibits "0" to "0 -6"

IPP Website print-out of San Miguel Inc., IIapplication for the trademark "GINEBRA"IJudicial Affidavit of Mr. Herbert Rosales andattachments.

Exhibits "P" to "P-22"Judicial Affidavit of Mr. Ramoncito Bugia and IIattachments I

L- _

To be noted in this particular case is that the contending trademarks are composite oneas they contained many components/elements. Both trademarks contained the word"GINEBRA" and this is the ultimate reason why the opposition was filed.

Records will show that majority of the Opposer's trademarks if not all are containing/orpreceded by the word "GINEBRA", however , the exclusive use of the same word is disclaimedthe same being not capable of exclusive apporpriation.

As claimed by the Opposer, the gin product "GINEBRA SAN MIGUEL" was firstmanufactured and introduced into the Philippine market , by Destilerias de Ayala, Inc., on 1834or one hundred seventy (170) years ago. The gin product was then known as "GINEBRA SANMIGUEL DE AYALA".

In 1924, or nearly a century later, La Tonderia Incorporada acquired the Ayala distilleryand continued producing the said gin product under the brand name "GINEBRA SAN MIGUEL".

In 1986, or some sixty two (62) years later, San Miguel Corporation bought into LTI andthe emergent corporation was called" La Tonderia Distillers, Inc. (LTDI). In March 2003, as atribute to the 169 years old gin product "GINEBRA SAN MIGUEL" the oldest brand of liquor inthe Philippines , the name of the corporation was changed to "GINEBRA SAN MIGUEL, INC.

It is also observed that there are several number of trademark applications andregistrations containing the word "GINEBRA" in favor of various alcoholic beverage dealers~manufacturers and distributors other than the "GINEBRA SAN MIGUEL, INC.", and they arethe following :

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~.._.._..._ . .. ..~-Trademarks Registration Details

Registration No. SR-76491. GINEBRA SANTIAGO Registrant: Desteleria Limtuaco & Co.

Goods: Ginebra

Registration No. 41995099992

2. GINEBRA PINOYRegistrant: Webengton Distillery, Phil.

Inc.Goods: GIN

Application No. 420040003103. GINEBRA GLADIATOR Applicant: Jose Estevez SA (Spain)

Goods: GIN

Application No. 42000008920

4. GINEBRA GRANDEApplicant: Consolidated Distillers of the

Far East, Inc.Good: Beer

Application No. 420030001245. GINEBRA HENERAL Applicant: Tanduay Distillery, Inc.

Goods: Gin

Registration No. 0577686. GINEBRA LUZON Registrant: Washington Distillery, Inc.

Goods: Compounded liquor

Application No. 419930857287. GINEBRA MATADOR Applicant: Tanduay Distillers, Inc.

Goods: Liquor

Application No. 419930873998. GINEBRA TOREADOR Applicant: Tanduay Distillers, Inc.

Goods: Liquor

Registration No. 0644769. GINEBRA TORO Registrant: Tanduay Distillers, Inc.

Goods: Liquor

Registration No. 42663.10. GINEBRA PRESIDENTE Registrant: Washington Distillery, Inc.

Good: Wine

Registration No. 43841

11. GINEBRA LUCKY NINE Registrant: Distelleria Limtuaco & Co.,Incorporated

Good: GINEBRA

As shown by the records , all applicants who have filed for the registration of theirtrademarks accompanied by the word "GINEBRA" and Registrant's whose trademarks werealready registered and accompanied by the same word "GINEBRA" with the IntellectualProperty Philippines (IPP), including the herein Opposer and Respondent-Applicant has statedin their applications and registrations that the word "GINEBRA" as part of their trad"$:k~

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indicated or declared as "DISCLAIMED" because it was not subject of exclusiveappropriation .

The word "GINEBRA" subject of the instant opposition is defined as:

Gin; Ginebra (Spanish) = Genieve (French) - The English word "GIN" comesfrom the French word genieve, which means 'juniper", the name of theberry which gives gin its distinctive, bitter flavors. Incidentally, the term'juniper" comes from the Celtic word jenupus, meaning "bitter". One finalnote: in the name of the western swiss city of Geneva also stems from thesame source. Apparently, the countryside around Geneva had originallybeen filled with wild juniper plants.

The American Heritage Dictionary of the English language defines the term "GINEBRA"as:

"A strong colorless alcoholic beverage made by distilling orredistilling rye or other grains spirits and adding juniper berries oraromatics such as anise, caraway, seeds or angelica roots asflavoring."

Section 123.1 (h) of Republic Act No. 8293, proscribe the registration of marks if it:

"(h) Consists exclusively of signs that are generic for the goods orservices that they seek to identify : "

It cannot be denied that the word "GINEBRA" is generic as it is defined in the EnglishAmerican Heritage Dictionary as "a strong colorless alcoholic beverage made by distilling or re-distilling rye or other grains spirits and adding juniper berries or aromatics such as anise,caraway, seeds or angelica roots as flavoring." In short the word "GINEBRA" describes orrefers to the goods itself.

In this regard, the Supreme Court held in the case of Societe Des Produits NestleS.A. vs. Court of Appeals (356 SCRA 207) citing Federal Unfair Competition: LANHAM Act.S. 43 (a), that:

"Generic terms are those which constitute the commondescriptive name of an article or substance. x x x or arecommonly used as the name or description of a kind of goods x xx and are not legally protectible."

J. Thomas Mc Carthy, in his book "McCarthy on Trademark and Unfair Competition"quotes the United States Supreme Court when he wrote:

"Generic names are regarded by the law as free for all to use.They are in the public domain. As the United States Supreme co~rtPstated: II

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"Sharing in the goodwill of an article unprotected bypatent or trademark is the exercise of a right possessed byall - and in the free exercise of which the consuming publicis deeply interested. To grant an exclusive right to onefirm of use of the generic name of a products would beequivalent to creating a monopoly in that particularproduct, something that trademark laws were neverintended to accomplish. "

The generic words may form part of a composite mark. However, the exclusive use ofthe same shall be disclaimed pursuant to Rule 608 of the Rules and Regulations in trademarkcases which provides:

Rule 608. - Deletion and or Disclaimer may be required. - TheExaminers may require unregistrable matter to be deleted from thedrawings or disclaimer in the application , but such disclaimer shall notprejudice or affect the applications right then existing under some otherlaw or thereafter arising in the disclaimed matter nor shall such disclaimerprejudice or affect the applicant's rights to registration on anotherapplication of later date, where the discla imed matter has becomedistinctive of the applicant's goods , business or services.

The basic purpose of disclaimer is to make of record , that a significant element of acompos ite mark is not being exclusively appropriated by itself apart from the composite. Thefollowing portions of a mark , must be disclaimed to permit registration, namely:

a) a generic term

b) a descriptive matter in the composite mark.

c) a matter which does not function as a trademark or service markor a trade name.

The Supreme Court , in a long line of cases, has constantly affirmed the rule that genericwords cannot be exclusively appropriated.

In "Masso Hermanos vs. Director of Patents (94 Phil. 136), the Supreme Court ruledthat shoe dealer cannot register the generic words "leather shoes" as it would be unjust todeprive other dealers in leather shoes of the right to use the same words with reference to theirmerchandise. "

In the instant case, the Opposer is claiming exclusive use of the word "GINEBRA" as ithas become distinctive of and has been associated by the public exclusively with GINEBRASAN MIGUEL, INC. gin products and that there has been an extens ive advertising andmarketing done to promote its popularity.

The claim of the Opposer that the word "GINEBRA" as part of its mark has becomedistinctive is not tenable. It is a fact that the said word has been used by the Opposer for s1

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many years already however, such an event or circumstances, does not change its nature andremains as a generic term and because of its nature, such word can never acquire secondarymeaning , and no length of use and no amount of advertising will make it distinctive.

It is worthy to emphasize that there are other entities aside from the Opposer who areactually using the term "GINEBRA" as part of their trademarks for quite sometime already .Their trademarks are also registered with the Intellectual Property Philippines (IPP) , same withthe Opposer.

Another vital point to be considered is the fact that all the entities including the hereinOpposer, who have filed their applications for the registrations of their trademarks havedisclaimed the exclusive use of the word "GINEBRA" for being not capable of exclusiveappropriation and have been issued the corresponding certificates of registrations.

It is likewise noteworthy to emphasize that Sec. 123.2 of R.A. 8293 provides that:

" SEC. 123.2 As regards signs or devices mentioned in paragraphs0), (k), (I), nothing shall prevent the registration of any such sign ordevice which has become distinctive in relation to the goods forwhich registration is requested as a result of the use that have beenmade if it in commerce in the Philippines. The Office may accept asprima facie evidence that the mark has become distinctive, as usedin connection with the applicant's goods or services in commerce,proof of substantially exclusive and continuous use thereof by theapplicant in commerce in the Philippines for five (5) years before thedate on which the claim of distinctiveness is made. "

Hence under the aforequoted provision of law, only the following unregistrable markscan acquire secondary meaning:

"a) Sec. 123 (j) Consist exclusively of signs or of indicationsthat may serve in trade to designate the kind, quality, quantity,intended purpose, value, geographical origin, time or production ofthe goods or rendering of the services, or other characteristics of thegoods or services; "

"b) Sec. 123 (k) Consist of shapes that may be necessitatedby technical factors or by the nature of the goods themselves orfactors that affect their intrinsic value ;"

"c) Sec. 123 (I) Consists of color alone , unless defined by agiven form ;"

It must be noted that the use of the word "Ginebra" falls under Sec. 123 (h) of R.A.8293 which prohibits registration of signs that are generic for the goods that they seek toidentify and not u~d~r e.ithe.r Secs '. 123 0), (k) o.r (I) whi~~ a~e initially u~registrable mark:rbut can become distinctive If used In commerce In the Philippines by applicant for its gOOd;I

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exclusively and continuously for five (5) years before the date the claim of distinctiveness ismade.

In "Ong Ai Gui vs. Director of Patents (96 Phil. 673), the Supreme Court explicitly heldthat the use of a generic term as part of a trademark is always conditional and subject tothe limitation that the registrant does not acquire the exclusive right to the generic term.Generic words like "nylon" is a generic term that cannot be appropriated for exclusiveuse by anyone and because of its nature, such word can never acquired secondarymeaning. The Court further added that no length of use and no amount of advertising willmake a generic word distinctive.

With respect to the claim of the Opposer that its trademark "GINEBRA SAN MIGUEL" isconfusingly similar to the Respondent-Applicant's mark "GINEBRA KAPITAN", the Bureau ofLegal Affairs does not agree .

The only similarity between the contending trademarks is the inclusion of the term"GINEBRA" on both marks which word the exclusive use was likewise disclaimed by bothparties the same being not capable of exclusive appropriation due to its nature being a genericterm .

The other components of the contending marks i. e. Opposers "SAN MIGUEL" andRespondent-applicant's "KAPITAN" are entirely distinct and different from each other inspelling, pronunciation as well as in meaning.

A practical approach to the problem of similarity or dissimilarity is to go into the whole ofthe two trademarks pictured in their manner of display. Inspection should be undertaken fromthe viewpoint of prospective buyer. The trademark complained should be compared andcontrasted with the purchaser's memory (not in juxtaposition) of the trademark said to beinfringed. (87 C.J.S. pp 288-291) Some such factors as sound; appearance; form, styleshape, size or format; color, idea connoted by the mark ; the meaning , spelling andpronunciation of the words used; and the setting in which the words appear may be considered,(87 C.J.S. pp. 291-292) for indeed, trademark infringement is a form of unfair competition(Clark vs . Manila Candy Co., 36 Phil. 100, 106; Co Tiong Sa vs. Director of Patents, 95Phil. 1, 4).

Confus ion is likely between trademarks only if their over-all presentation in any of theparticulars of sound, appearance or meaning are such as would lead the purchasing public intobelieving that the products to which the marks are applied emanated from the same source.

WHEREFORE, in the light of all the foregoing , the opposition is, as it is hereby DENIED.Consequently, trademark application bearing Application No. 4-2006-008715 filed on August 0~9'2006 by TANDUAY DISTILLERS, INC. for the registration of the mark "GINEBRA KAPITAN"is, as it is hereby , GIVEN DUE COURSE.

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Let the filewrapper of the trademark "GINEBRA KAPITAN " subject matter of this casetogether with a copy of this DECISION be forwarded to the Bureau of Trademarks (BOT) forappropriate action .

SO ORDERED.

Makati City , 23 April 2008.

IPUS/JOJO/md123-Apr.(J8

Atty. ELLITABELTRAN-ABELARDODir ctor, Bureau of Legal Affairs

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