Gin and the jam over ‘genericness’

By Mila Federis, Federis & Associates

A recent decision by the previous director general of the Intellectual Property Office of the Philippines (IPOPHL) reignited the long simmering feud between Ginebra San Miguel Inc (GSMI) and Tanduay Distillers Inc (TDI), two prominent liquor producers in the Philippines. GSMI had appealed the IPOPHL’s Bureau of Legal Affairs’ (BLA) dismissal of its oppositions to TDI’s applications for GINEBRA LIME & DEVICE, GINEBRA ORANGE & DEVICE, GINEBRA ESPECIAL & DEVICE, and GINEBRA POMELO & DEVICE, all covering gin, under Class 33.

GSMI owns trademark registrations for GINEBRA SAN MIGUEL (GIN) 250ml, and GINEBRA SAN MIGUEL (3D mark), also covering gin under Class 33. GSMI alleged that the dominant feature of TDI’s marks is GINEBRA, which is confusingly similar to GSMI’s registered trademarks. TDI claimed that GINEBRA is a generic term that belongs in the public domain. The BLA sided with TDI, holding that GINEBRA is a generic term not capable of exclusive appropriation or registration.

Mila Federis
Managing partner
Federis & Associates

The opposition is just one of many cases that have been litigated by the same parties, where the central issue is the “genericness” of the term, GINEBRA. GSMI and TDI have been slugging it out for nearly 20 years before the IPOPHL and the courts. An infringement and unfair competition case, lodged by GSMI in 2003, is awaiting review by the Supreme Court.

At the heart of this long-playing legal battle is the question of whether or not GINEBRA is a generic term. GSMI claims that its long years of substantially exclusive use of GINEBRA has transformed the term into one whose primary significance to consumers is the gin products it produces. It claims that it started to use GINEBRA as a trademark in 1970, although it has been used by its predecessors since 1834.

In 2013, the BLA and IPOPHL’s then-director general, Ricardo Blancaflor, were unwavering in their position that GINEBRA cannot function as a trademark because it is a generic term not capable of functioning as a source indicator. They cited Merriam-Webster in holding that the Spanish word “GINEBRA” refers to gin, a colourless alcoholic beverage made from distilled or re-distilled neutral grain spirits flavoured with juniper berries and aromatics; as a generic designation, GINEBRA cannot be exclusively appropriated.

Blancaflor’s successor, Josephine Santiago, took a different turn and concluded that: (1) GINEBRA is “generic or descriptive”; (2) GSMI’s unrebutted evidence of attempts to exclusively and continuously use GINEBRA as a mark for its gin products are efforts to shed off the “genericness and descriptiveness” of the term; (3) GINEBRA has become distinctive because the consuming public associates GINEBRA with GSMI and its products; (4) GSMI’s repeated use of GINEBRA in association with GINEBRA SAN MIGUEL has imbued GINEBRA with the same function as a registered mark; and (5) even if “San Miguel” is dropped from its trade name, leaving only GINEBRA, the term in itself is capable of functioning as a trademark for GSMI.

The takeaway is the blurring of the distinction between descriptive versus generic designations – two different concepts expressly defined in the IP Code as standards for registrability. Signs that are generic for the goods they seek to identify are not permitted to be registered (sections 123.1(h) and 123.2).

Similarly disqualified unless they have acquired a secondary meaning are descriptive designations that “designate the kind, quality, quantity, intended purpose, value, geographical origin, time or production of the goods or rendering of the services, or other characteristics of the goods or services” (section 123.1(J)). The director general’s decision treats these two separate concepts as one, while citing jurisprudence that treated them as different and distinct concepts.

The name of a product or service is the very antithesis of a mark, and the terms “generic” and “trademark” are mutually exclusive, according to Thomas McCarthy, the author of a seminal treatise on trademarks, McCarthy on Trademarks and Unfair Competition. The US Supreme Court has warned against conferring a monopoly upon a firm over a product name, something that trademark laws were never intended to accomplish. (Car Freshner Corp v Auto Aid Mfg Corp).

The director general held that the “descriptive or generic GINEBRA” has attained a secondary meaning through exclusive and sustained use as a source indicator “for centuries”. It did not, however, say that GINEBRA was already understood by the public as gin products of GSMI when it launched in 1970, which means it was generic when GSMI took it.

If generic at date of launch, no sustained use of a mark, no matter how exclusive, can convert it to a distinctive mark. It would be like yanking it from the public domain and running away with it through campaign and advertising. This is contrary to public policy.

Moreover, Spanish was widely used in the Philippines around 1834, so it is easy to imagine GINEBRA as being a common name for gin before that year. Can one company get that common name, to own forever, by sheer insistence?

Mila Federis is the founder and managing partner of Federis & Associates.

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