THE Supreme Court has ordered Tanduay Distillers, Inc. (TDI) to stop using the word “Ginebra” in its gin products as it upheld Ginebra San Miguel, Inc.’s (GSMI) trademark over the term.
In a 92-page ruling dated Aug. 9 last year and made public on March 14, the tribunal said TDI committed trademark infringement against GSMI when it used the word “Ginebra” in its “Ginebra Kapitan” gin product.
“Thus, an ordinary purchaser, even one accustomed to drinking gin, may likely be confused into buying a ‘Ginebra Kapitan’ thinking it is·a ‘Ginebra’ product of GSMI,” Chief Justice Alexander G. Gesmundo said in the ruling.
The decision also cited the “element of likelihood of confusion, which is the gravamen of trademark infringement.”
The High Court ordered TDI to pay temperate damages of P300,000 and lawyer fees worth P200,000 to GSMI.
In 2003, GSMI applied for a trademark registration of “Ginebra” for its gin products and has been provided the preferential right to use the term for its business, the court noted.
That same year, a Mandaluyong regional trial court imposed an injunction and fines on TDI for using the term in its “Ginebra Kapitan” gin product.
The Court of Appeals upheld the ruling as it said GSMI sufficiently proved that it had used the term over a long period of time and that the term “Ginebra” is associated with the firm’s gin products.
The appellate court then reversed its decision as it agreed with TDI’s argument that the term “Ginebra” was a Spanish word for gin and is a generic term under trademark law.
The SC also ordered the director of the Bureau of Trademarks to reinstate GSMI’s trademark on the term.
“While TDI is still free to produce and promote any of its gin products, it is prohibited from adapting and utilizing the distinct mark ‘Ginebra,’ which rightfully belongs to GSMI, in any part of its labels, signs, products, goods, or services,” it ruled. — John Victor D. Ordoñez