TANDUAY DISTILLERS, INC. VS. GINEBRA SAN MIGUEL, INC.

G.R. No. 164324

August 14, 2009

Doctrine:
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. A cloud of doubt exists over San Miguels exclusive right
relating to the word Ginebra hence its right to injunctive relief has not been clearly and unmistakably demonstrated.

FACTS:
Tanduay developed a new product and the brand name chosen for the product 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 Kapital 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. Tanduay
filed an application for Ginebra Kapitan with the Intellectual Property Office (IPO) and began selling. Eventually, San
Miguel filed a complaint for trademark infringement, unfair competition and damages, with applications for the issuance
of a TRO and a writ of preliminary injunction against Tanduay before the RTC granted. Tanduay filed a petition for
certiorari with the CA and an Urgent Motion to Defer Injunction Hearing before the trial court which was denied.

ISSUE:
Whether or not San Miguel is entitled to the writ of preliminary injunction.

HELD:
No. 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. In this case, a cloud of doubt exists over San Miguels
exclusive right relating to the word Ginebra. We find that San Miguels right to injunctive relief has not been clearly and
unmistakably demonstrated. The trial court’s grant of the writ of preliminary injunction in favor of San Miguel, despite
the lack of a clear and unmistakable right on its part, constitutes grave abuse of discretion amounting to lack of
jurisdiction.
I agree with the ruling of the Supreme Court. Before an injunctive writ is issued, it is essential that the following
requisites are present: (1) the existence of a right to be protected and (2) the acts against which the injunction is
directed are violative of the right. In the instant case, the word Ginebra is a generic word meaning the Spanish word of
Gin. Ginebra argued before the CA that it has used the term Ginebra since 1834 which has become distinctive of its
goods and business. However, the term Since 1834 does not distinctively point to the origin or ownership of the goods.
Petitioner cannot appropriate for itself the term Since 1834 because it merely signifies the period or year when the
goods were first used. Under the current intellectual property law, generic marks are incapable of being registered.
Being incapable of registration, such mark cannot confer any rights upon its claimant hence the first requisite of a valid
preliminary injunction is not present. San Miguel’s right was not properly established.
San Miguel contends that Ginebra can be appropriated as a trademark, and there was no error in the trial courts
provisional ruling based on the evidence on record. Assuming that Ginebra is a generic word which is proscribed to be
registered as a trademark, it can still be registered as a trademark considering that Ginebra is also a mark which
designates the kind of goods produced by San Miguel which has become distinctive of San Miguels products due to its
substantially exclusive and continuous use as the dominant feature of San Miguels trademarks since 1834. Hence, San
Miguel is entitled to a finding that the mark is deemed to have acquired a secondary meaning.

San Miguel states that Tanduay failed to present any evidence to disprove its claims; thus, there is no basis to set aside
the grant of the TRO and writ of preliminary injunction.

San Miguel states that its disclaimer of the word Ginebra in some of its registered marks is without prejudice to, and did
not affect, its existing or future rights over Ginebra, especially since Ginebra has demonstrably become distinctive of San
Miguels products.

Tanduay asserts that not one of the requisites for the valid issuance of a preliminary injunction is present in this case.
Tanduay argues that San Miguel cannot claim the exclusive right to use the generic word Ginebra for its gin products
based on its registration of the composite marks Ginebra San Miguel, Ginebra S. Miguel 65, and La Tondea Cliq! Ginebra
Mix, because in all of these registrations, San Miguel disclaimed any exclusive right to use the non-registrable word
Ginebra for gin products.

Tanduay explains that the word Ginebra, which is disclaimed by San Miguel in all of its registered trademarks, is an
unregistrable component of the composite mark Ginebra San Miguel. Tanduay argues that this disclaimer further means
that San Miguel does not have an exclusive right to the generic word Ginebra. Tanduay states that the word Ginebra
does not indicate the source of the product, but it is merely descriptive of the name of the product itself and not the
manufacturer thereof.

Tanduay submits that it has been producing gin products under the brand names Ginebra 65, Ginebra Matador, and
Ginebra Toro without any complaint from San Miguel. Tanduay alleges that San Miguel has not filed any complaint
against other liquor companies which use Ginebra as part of their brand names such as Ginebra Pinoy, a registered
trademark of Webengton Distillery; Ginebra Presidente and Ginebra Luzon as registered trademarks of Washington
Distillery, Inc.; and Ginebra Lucky Nine and Ginebra Santiago as registered trademarks of Distileria Limtuaco & Co., Inc.
Tanduay claims that the existence of these products, the use and registration of the word Ginebra by other companies
as part of their trademarks belie San Miguels claim that it has been the exclusive user of the trademark containing the
word Ginebra since 1834.

Tanduay argues that before a court can issue a writ of preliminary injunction, it is imperative that San Miguel must
establish a clear and unmistakable right that is entitled to protection. San Miguels alleged exclusive right to use the
generic word Ginebra is far from clear and unmistakable. Tanduay claims that the injunction issued by the trial court was
based on its premature conclusion that Ginebra Kapitan infringes Ginebra San Miguel.

The CA upheld the trial court’s ruling that San Miguel has sufficiently established its right to prior use and registration of
the word Ginebra as a dominant feature of its trademark. The CA ruled that based on San Miguel’s extensive,
continuous, and substantially exclusive use of the word Ginebra, it has become distinctive of San Miguels gin products;
thus, a clear and unmistakable right was shown.
 TORRES vs. PEREZ
G.R. No. 188225
November 28, 2012
Doctrine:
The arguments of petitioner have no basis, because respondents are the exclusive owners of Sasay's Closet Co. (SCC), of
which she is no longer a partner. Respondents have completed the payments of the share of petitioner in the
partnership affairs and were already its exclusive owners who, as such, had the right to use the "Naturals" brand. The
key elements of unfair competition are "deception, passing off and fraud upon the public." No deception can be
imagined to have been foisted on the public through different vendor codes, which are used by SM only for the
identification of suppliers' products.

FACTS:
Petitioner and Sunshine formed SCC to engage in the garments business. SCC used the trademark "Naturals with
Design," and registered such with the IPO and used the facilities and business address owned by RGP which was owned
by Spouses Perez and was the supplier of Shoe Mart (SM). Products were supplied to SM with vendor code "190501".
SCC used. Sunshine pulled out of the partnership and respondent took over Sunshine's responsibilities. Despite
objections of petitioner to the dissolution of SCC, various amounts were paid to her by respondents for her share.
Petitioner established Tezares Enterprise and engaged in trading of clothing and accessories. Later, she discovered that
underwear products with the brand "Naturals" were being sold in SM with vendor code "180195." which was registered
to RGP. The trial court ruled that respondents did not pass off "Naturals" as the brand of another manufacturer but used
the brand in the honest belief that they owned SCC, the owner of the brand.
ISSUE:
Whether or not there exists probable cause to indict respondents for unfair competition.
HELD:
No. Judge Untalan erred in the fact that his focus on the crime of unfair competition was unwarranted. In this case,
much more important is the change of ownership of SCC. The arguments of petitioner have no basis, because
respondents are the exclusive owners of SCC, of which she is no longer a partner. Respondents have completed the
payments of the share of petitioner in the partnership affairs and were already its exclusive owners who, as such, had
the right to use the "Naturals" brand. The use of the vendor code of RGP was resorted to only for the practical purpose
of ensuring that SM's payments for the "Naturals" products would go to respondents, who were the actual suppliers.
Furthermore, the complaint for unfair competition cannot prosper. The key elements of unfair competition are
"deception, passing off and fraud upon the public." No deception can be imagined to have been foisted on the public
through different vendor codes, which are used by SM only for the identification of suppliers' products.

I agree with the ruling of the case. Probable cause are facts as are sufficient to engender a well-founded belief that a
crime has been committed and the respondent is probably guilty thereof, and should be held for trial. The
determination of the existence of probable cause necessitates the prior determination of whether an offense was
committed. There is no probable cause to indict respondents because the crime of unfair competition was not
committed. Unfair competition consists in employing deception or any other means contrary to good faith by which any
person shall pass off the goods manufactured by him or in which he deals, or his business, or services for those of the
one having established goodwill, or committing any acts calculated to produce such result. Respondents were exclusive
owners having rights to use the “Naturals” brand and furthermore no deception can be attributed to them.
 SAMSON vs. CA
G.R. No. 139983
March 26, 2008

DOCTRINE:
The authority granted to Luminlun to use the OTTO trademark was limited for use on jeans only. Under the agreement,
Samson could revoke the authority if Luminlun should do or cause to be done any act which would in any way prejudice
or discredit the trademark OTTO not only in connection with its use for jeans but as well as for other
products enumerated in Samsons registration certificates.

FACTS:
Samson applied for the registration of the OTTO trademark with the Philippine Patent Office on belts, bags, t-shirts et.
al. Respondent Luminlun likewise filed for the registration of the OTTO trademark on jeans, sportswear et. al. Later,
Samson executed a document granting Luminlun the authority to use the OTTO trademark for jeans only. The Philippine
Patent Office issued to Samson a Certificate of Registration for the mark OTTO and subsequently, the latter
informed Luminlun that he was revoking the latter’s authority to use the trademark OTTO and to stop from further
manufacturing and distributing OTTO jeans otherwise he would confiscate jeans and also demanded the payment of
royalties. Luminlun filed a complaint before the RTC questioning the validity of Samson’s revocation. Luminlun likewise
prayed that he be compensated for the loss of sales he suffered. The RTC ruled in favour of Samson but was reversed by
the CA.

ISSUE:
Whether or not the revocation made by Samson was unjustified

HELD:
Yes. The authority granted to Luminlun to use the OTTO trademark was limited for use on jeans only. Under the
agreement, Samson could revoke the authority if Luminlun should do or cause to be done any act which would in any
way prejudice or discredit the trademark OTTO not only in connection with its use for jeans but as well as for other
products enumerated in Samsons registration certificates. As correctly found by the trial court, Luminlun manufactured
OTTO belts, buttons, and bags as well as OTTO LTD. clothing in violation of the terms and conditions of the authority
which affected Samson and discredited his products. Under the circumstances and in accordance with the terms and
conditions of the Authority to Use Trademark, we find that Samson was justified in revoking Luminluns authority to use
the OTTO trademark.

Analysis:
I agree with the court’s ruling. The agreement between Samson and Luminlun is in the nature of a contract subject to
certain conditions. In the instant case, Luminlun breached the contract when he manufactured OTTO belts, buttons, and
bags as well as OTTO LTD. clothing in violation of the terms and conditions of the authority which affected Samson and
discredited his products. Hence the revocation of the authority by Samson was justified