MANILA-- The Court of Appeals (CA) has set aside the decision issued by the Intellectual Property Office of the Philippines (IPOPHL) ordering Ginebra San Miguel, Inc. (GSMI) to disclaim the word "Ginebra" in its trademark application for "Ginebra San Miguel Since 1834" for all its gin products.
The CA's Special 1st Division, in a 16-page decision penned by Associate Justice Myra Garcia-Fernandez, partially granted the petition for review filed by GSMI of the Sept. 24, 2013 on the decision of the Office of the Director General (ODG)-IPOPHL.
Concurring with the ruling were Associate Justices Priscilla Baltazar-Padilla and Marie Christine Azcarraga-Jacob.
The decision denied GSMI's trademark application for Ginebra an Miguel Since 1834 saying that the word Ginebra is a generic term and that the terms Ginebra and Since 1834 are not capable of functioning as trademarks.
In its appeal before the CA, GSMI argued that Ginebra has acquired primary significance as a trademark in the minds of the consuming public, thus, cannot be treated as a generic mark.
It added that granting without admitting that Ginbera was a generic mark, the same has become distinctive and has over time acquired secondary meaning by virtue of its extensive, continued, and exclusive uses since 1834.
In ruling in favor of GSMI, the CA pointed out 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 in the said case, the ODG-IPOPHL upheld the findings of the Bureau of Trademarks (BOT) director that Ginebra is generic and must be disclaimed.
However, the 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 stressed.
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.
Source: Philippines News Agency