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

These consolidated petitions originated from Ginebra San Miguel, Inc.’s (GSMI) application to register the trademark “GINEBRA” for its gin products. The Bureau of Trademarks denied the application, and the Director of the Bureau of Legal Affairs of the Intellectual Property Office (IPO) subsequently ordered the cancellation of GSMI’s existing registration for the mark. The IPO’s decisions were anchored on the finding that “GINEBRA” is the Spanish word for “gin,” rendering it a generic term that cannot be exclusively appropriated by a single entity for gin products. GSMI appealed, arguing that through decades of extensive and exclusive use, promotion, and public recognition, the term “GINEBRA” had acquired a secondary meaning, identifying its specific brand of gin rather than the product class itself.

ISSUE

The core issue is whether the term “GINEBRA” is an unregistrable generic term for gin, or if it has acquired distinctiveness through secondary meaning and is thus registrable as a trademark.

RULING

The Supreme Court, in its main Decision, granted GSMI’s petitions and reversed the IPO’s rulings. The Court held that “GINEBRA” is not a generic term incapable of registration. The legal logic proceeds from the statutory framework of the Intellectual Property Code and the doctrine of secondary meaning. While a term that is generic for the goods it seeks to identify is unregistrable under Section 123.1(h) of the IP Code, a descriptive term may be registered if it has become distinctive of the applicant’s goods in commerce. The Court emphasized that genericness is not a static determination; a term’s status can evolve based on public perception.
Applying the “primary significance test” mandated by Section 151.1 of the IP Code, the Court examined whether the primary significance of “GINEBRA” to the relevant Philippine public is the product category (gin) or a specific brand source (GSMI). The Court found GSMI’s evidence—including long, continuous, and exclusive use since 1834, massive advertising expenditures, market surveys, and its market dominance—conclusive. This evidence demonstrated that for the ordinary Filipino consumer, “GINEBRA” primarily signifies GSMI’s gin products, not gin as a general commodity. The Spanish meaning of the word was deemed irrelevant to the Filipino purchasing public’s understanding. Consequently, “GINEBRA” was ruled to be a descriptive mark that has acquired distinctiveness and secondary meaning, making it validly registrable in favor of GSMI.