THE Court of Appeals (CA) has ruled in favor of Ginebra San Miguel, Inc. (GSMI) on its complaint for unfair competition, infringement and damages against Tanduay Distillers, Inc. (TDI) in connection with the use of its registered trademark “Ginebra.”
In a 47-page decision penned by Associate Justice Rodil Zalameda and concurred in by Associate Justices Romeo Barza and Maria Elisa Sempio Diy, the CA’s Special Sixteenth Division granted the appeal filed by GSMI as it reversed and set aside the decision of the Regional Trial Court (RTC) of Mandaluyong City, Branch 211, dated October 2012.
The new findings on TDI’s liability for trademark infringement and unfair competition is consistent with the decision dated August 15, 2013 previously rendered by the CA Special Thirteenth Division pursuant to prevailing jurisprudence, so as to prevent the issuance of inconsistent rulings.
The CA ordered TDI “to remove from the market all its gin products bearing the name/mark of “Ginebra” and all the infringing or unfairly competing goods in the possession of (TDI), its employees, agents, representatives, dealers, all bottles, labels, signs, prints, packages, wrappers, receptacles and advertisements bearing the mark ‘Ginebra’ and that the same be destroyed or be disposed of outside the channels of commerce.”
The case stemmed from the complaint filed by GSMI against TDI before the Mandaluyong RTC claiming that the latter is deceiving the general public into believing that “Ginebra Kapitan” was being manufactured, distributed and sold by GSMI.
It pointed out the imitation of GSMI’s bottle and label signs for “Ginebra.”
GSMI said it conducted an independent survey where it was found out that 90 percent of the respondents representing six million gin drinkers have associated the mark “Ginebra” with “Ginebra San Miguel.”
The RTC dismissed GSMI’s complaint against TDI for lack of merit, prompting GSMI to bring the case to the appellate court.
According to the CA, GSMI “has presented a preponderance of evidence to prove its claim over the mark “Ginebra,” and that the same has acquired a secondary meaning in trademark laws.”
The CA directed TDI to “pay to GSMI P2,000,000 as exemplary damages and P500,000 as attorney’s fees.”
The appeals tribunal “remanded to the court (RTC) a quo for the purpose only of the accounting of the gross sales of TDI’s ‘Ginebra Kapitan’ and for the determination of the amount of actual compensatory damages to be awarded to GSMI.”