The Court of Appeals has overturned the decision promulgated by the Intellectual Property Office of the Philippines directing Ginebra San Miguel Inc. to disclaim the word Ginebra in its trademark application for “Ginebra San Miguel Since 1834” for gin products.
In a 16-page decision, the CA’s Special First Division through Associate Justice Myra Garcia-Fernandez partially granted the petition for review filed by GSMI seeking to reverse and set aside the Sept. 24, 2013 decision of the Office of the Director General (ODG)-IPOPHL.
The said decision denied GSMI’s trademark application for Ginebra San Miguel Since 1834, saying that the word “Ginebra” is a generic term and that the terms “Ginebra and “Since 1834” are incapable of functioning as trademarks.
But in its appeal before the appellate court, GSMI argued that Ginebra has acquired primary significance, as a trademark in the minds of the consuming public and thus cannot be treated as a generic mark. The petitioner also said that granting without admitting that Ginebra was a generic mark, the same has become distinctive and has over time acquired secondary meaning by virtue of its extensive, continued, and exclusive use since 1834.
In granting the appeal of GSMI, the appellate court explained that another division of the CA had already ruled on May 11, 2015 in favor of GSMI on a similar case pertaining to its trademark application for the mark Ginebra San Miguel Flavored Gin Label Design.
The CA said the ODG-IPOPHL upheld the findings of the Bureau of Trademarks director that Ginebra is generic and must be disclaimed. But the CA’s Former Twelfth Division reversed and set aside the decision of the ODG-IPOPHL and ruled in favor of GSMI.
“Settled is the rule that a final judgment or decree on the merits by a court of competent jurisdiction is conclusive of the rights of the parties of their privies in all later suits on points and matters determined in the former suit,” the CA ruled.
It explained that the continuous and exclusive use of the term Ginebra since 1834 has become distinctive of its goods and business.
“Petitioner need not disclaim the mark Ginebra as it had acquired a right to appropriate the mark since the same has become distinctive of petitioner’s goods and business after the lapse of almost two centuries,” the CA noted.
However, with regard to the mark “Since 1834,” the CA held that the ODG-IPOPHL did not err in upholding the ruling of the BOT director that the same must be disclaimed because it does not serve the function of a trademark.
“The Court agrees with the ODG-IPOPHL that the term ‘Since 1834’ does not distinctively point to the origin or ownership of the goods. Petitioner cannot appropriate for itself the term ‘Since 1834’ because it merely signifies the period or year when the goods were first used,” the decision stated.
It added that all other manufacturers or producers with goods or services originating in the same year have equal rights to use the term “Since 1834.”
Associate Justices Priscilla Baltazar-Padilla and Marie Christine Azcarraga-Jacob concurred with the ruling.