G.R. No. 196372 , August 9, 2022
GINEBRA SAN MIGUEL, INC., PETITIONER, VS. DIRECTOR OF THE BUREAU OF TRADEMARKS, RESPONDENT. [Consolidated with G.R. Nos. 210224, 216104, 219632]

FACTS

This consolidated case originated from Ginebra San Miguel, Inc.’s (GSMI) application to register the word “GINEBRA” as a trademark for gin under Class 33. The Bureau of Trademarks denied the application, a decision affirmed by the Director General of the Intellectual Property Office, ruling that “ginebra” is a generic term for gin in the Philippines. GSMI appealed, arguing it had acquired distinctiveness through decades of exclusive use. The Court of Appeals reversed, finding secondary meaning, and ordered the mark’s registration. Tanduay Distillers, Inc., which uses “GINEBRA” in its own product marks, opposed this registration, leading to the elevation of the case to the Supreme Court.
The core dispute revolves around whether “GINEBRA,” the Spanish word for “gin,” is a generic term that cannot be exclusively appropriated or if it has acquired secondary meaning as a distinctive identifier of GSMI’s products, thus making it registrable. The case examines the balance between protecting a business’s goodwill and preventing the monopolization of a common descriptive word for a product, which would hinder fair competition.

ISSUE

Whether the word “GINEBRA” is a generic term for gin and therefore unregistrable as a trademark under the Intellectual Property Code.

RULING

The Supreme Court, in its Decision, granted GSMI’s petition and ordered the registration of the “GINEBRA” mark. The Court held that while “ginebra” is generic in the Spanish language, it is not generic in the Philippine context. The Court applied the “primary significance to the relevant public” test, finding that in the Philippines, the primary significance of “GINEBRA” is not as the common name for gin but as a brand specifically associated with GSMI’s products. The Court ruled that GSMI successfully demonstrated that the mark had acquired distinctiveness or secondary meaning through long, exclusive, and widespread commercial use, making it capable of distinguishing its goods.
In his Dissenting Opinion, Justice Leonen argued that the mark “GINEBRA” must be denied registration as it is generic and not registrable under Republic Act No. 8293 . He emphasized that the fundamental purpose of a trademark is to distinguish an enterprise’s goods, and generic words, which name the product itself, cannot be appropriated for exclusive use. He contended that allowing the registration of “GINEBRA” for gin would permit a business to monopolize a word commonly used to refer to the product itself, to the exclusion of competitors like Tanduay. Justice Leonen warned that such a ruling could set a precedent enabling the appropriation of ordinary terms from any language, undermining fair competition and the public’s right to use common descriptive words in commerce.