GR 196372; (August, 2022) (Digest)
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
Ginebra San Miguel, Inc. (GSMI) filed an application to register the word mark “GINEBRA” for its gin products. The Bureau of Trademarks (BOT) examiner rejected the application, finding “GINEBRA” to be the Spanish term for “gin” and therefore a generic term that cannot be exclusively appropriated. The examiner also cited its identity with five other registered marks containing “Ginebra” (e.g., Ginebra Agila). GSMI appealed, arguing that through its and its predecessors’ continuous use since 1834, “GINEBRA” had acquired distinctiveness and secondary meaning, exclusively identifying its products in the public mind, as supported by a consumer survey. The IPO Director General and the Court of Appeals affirmed the denial, holding “GINEBRA” to be generic and incapable of registration.
ISSUE
Whether the term “GINEBRA” is a generic term that cannot be registered as a trademark, or if it has acquired secondary meaning and distinctiveness, making it registrable.
RULING
The Supreme Court GRANTED the petition, reversing the CA and IPO. The Court held that “GINEBRA” is not generic but has acquired distinctiveness and is thus registrable. The legal logic proceeds from the classification of marks under the Intellectual Property Code. A generic term is the common name of the product itself and cannot ever function as a trademark. The Court found that “GINEBRA,” while the Spanish word for “gin,” is not the common, usual, or generic name for gin in the Philippines, where English is widely used. The common name is “gin.” Therefore, “GINEBRA” is not inherently generic.
The Court then applied the doctrine of secondary meaning under Section 123.2 of the IP Code, which allows a non-inherently distinctive mark to be registered if it has become distinctive of the applicant’s goods through use. The Court emphasized that the acquisition of secondary meaning is a question of fact. It found GSMI’s evidence—including decades of exclusive, continuous, and widespread use, substantial sales and advertising expenditures, and survey results showing 90% association with GSMI—sufficient to prove that “GINEBRA” had acquired distinctiveness as a source identifier for GSMI’s gin. The existence of other marks containing “Ginebra” does not negate this acquired distinctiveness for GSMI’s standalone “GINEBRA” mark, as GSMI’s prior and longstanding use grants it superior rights. Consequently, the mark is registrable.