Unfair Competition

Jasmine Leona Q.
Monteclaro
Intellectual Property Law ( Case on Unfair Competition)
Tanduay Distillers, Inc., vs. Ginebra San Miguel, Inc.,
GR 164324 August 14, 2009
Facts:
Tanduay, a corporation organized and existing under Philippine laws, is engaged in the
liquor business since 1854. In 2002 Tanduay developed a new product distinguish from its sweet
smell Tanduay claims that it engaged the services of an advertising firm to develop a brand name
and a label for its new gin product. The brand name eventually chosen was "Ginebra Kapitan"
with the representation of a revolutionary Kapitan on horseback as the dominant feature of its
label. Tanduay points out that the label design of "Ginebra Kapitan" in terms of color scheme,
size and arrangement of text, and other label features were precisely selected to distinguish it
from the leading gin brand in the Philippine market, "Ginebra San Miguel."
After the filing for trademark and securing the necessary permits Tanduay begun selling the said
gin to the public in the year 2003. On the same year they have received a letter from San
Miguels counsel asking for the immediate cease and desist from using the mark Ginebra and
from committing acts that violate San Miguels intellectual property rights.
15 August 2003, San Miguel filed a complaint for trademark infringement, unfair competition
and damages, with applications for issuance of TRO and Writ of Preliminary Injunction against
Tanduay before the Regional Trial Court of Mandaluyong.
On 23 September 2003, the trial court issued a TRO prohibiting Tanduay from manufacturing,
selling and advertising "Ginebra Kapitan. On its order it stated that "Ginebra," which is a wellknown trademark, was adopted by Tanduay to benefit from the reputation and advertisement of
the originator of the mark "Ginebra San Miguel," and to convey to the public the impression of
some supposed connection between the manufacturer of the gin product sold under the name
"Ginebra San Miguel" and the new gin product "Ginebra Kapitan." Basing now on the facts
establish it further state that San Miguel had demonstrated a clear, positive, and existing right to
be protected by a TRO. Otherwise, San Miguel would suffer irreparable injury if infringement
would not be enjoined.
The trial court conceded to Tanduays assertion that the term "Ginebra" is a generic word; hence,
it is non-registrable because generic words are by law free for all to use. However, the trial court
relied on the principle that even if a word is incapable of appropriation as a trademark, the word
may still acquire a proprietary connotation through long and exclusive use by a business entity
with reference to its products. The purchasing public would associate the word to the products of
a business entity.
Jasmine Leona Q. Monteclaro

Intellectual Property Law ( Case on Unfair Competition)
On 3 October 2003, Tanduay filed a petition for certiorari with the CA. On 9 January 2004, the
CA rendered a Decision dismissing Tanduays petition and supplemental petition. On 28 January
2004, Tanduay moved for reconsideration which was denied in a Resolution dated 2 July 2004.
Issue:
Whether or not San Miguel has the exclusive right for the use of the mark Ginebra.
Held:
The court holds that the CA committed a reversible error. The two trademarks "Ginebra San
Miguel" and "Ginebra Kapitan" apparently differ when taken as a whole, but according to San
Miguel, Tanduay appropriates the word "Ginebra" which is a dominant feature of San Miguels
mark. It is not evident whether San Miguel has the right to prevent other business entities from
using the word "Ginebra." It is not settled (1) whether "Ginebra" is indeed the dominant feature
of the trademarks, (2) whether it is a generic word that as a matter of law cannot be appropriated,
or (3) whether it is merely a descriptive word that may be appropriated based on the fact that it
has acquired a secondary meaning.
The issue that must be resolved by the trial court is whether a word like "Ginebra" can acquire a
secondary meaning for gin products so as to prohibit the use of the word "Ginebra" by other gin
manufacturers or sellers. This boils down to whether the word "Ginebra" is a generic mark that is
incapable of appropriation by gin manufacturers.
In this case, a cloud of doubt exists over San Miguels exclusive right relating to the word
"Ginebra." San Miguels claim to the exclusive use of the word "Ginebra" is clearly still in
dispute because of Tanduays claim that it has, as others have, also registered the word "Ginebra"
for its gin products. This issue can be resolved only after a full-blown trial.
The SC grants the petition of Tanduay Distillers to reverse the Court of Appeals ruling which
affirmed the injunction issued by the lower court. The High Court also orders the RTC to resolve
expeditiously the intellectual property rights case filed by Ginebra San Miguel against Tanduay
Distillers.

Unfair Competition

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Jasmine Leona Q.

Jasmine Leona Q. Monteclaro

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