3aepublit of tbe ~bilippines

~upr£m£ QCourt
:fflanila
EN BANC

GINEBRA SAN MIGUEL, INC., G.R. No. 196372

Petitioner,

- versus -

DIRECTOR OF THE BUREAU

OF TRADEMARKS,
Respondent.

X-- -- -- -- -- -- -- -- -- -- -- -- -- -- -- X

TANDUAY DISTILLERS, INC., G.R. No. 210224

Petitioner,

- versus -

GINEBRA SAN MIGUEL, INC.,

Respondent.
X-- -- -- -- -- -- -- -- -- -- -- -- -- -- -- X

TANDUAY DISTILLERS, INC., G.R. No. 216104

Petitioner,

- versus -

GINEBRA SAN MIGUEL, INC.,

Respondent.
X-- -- -- -- -- -- -- -- -- -- -- -- -- -- -- X
Decision 2 G.R. Nos. 196372, 210224,
216104 & 219632

TANDUAY DISTILLERS, INC., G.R. No. 219632

Petitioner,
Present:

GESMUNDO, C.J.,
LEONEN,
CAGUIOA,
HERNANDO,
LAZARO-JAVIER,
INTING,
ZALAMEDA,*
- versus - LOPEZ, M., **
GAERLAN,
ROSARIO,
LOPEZ, J.,
DIMAAMPAO,
MARQUEZ,
KHO, JR., and
SINGH, JJ

Promulgated:
GINEBRA SAN MIGUEL, INC.,
Respondent. . Au t 9 2022

x-----------------------------------------------x
DECISION

GESMUNDO, C.J.:

In these consolidated Petitions, 1 the Court undertakes to settle the

common issue of whether the term ''.GINEBRA" is a generic•mark, or a
distinctive mark that may be registered by Ginebra San Miguel, Inc. (GSMJ) . .

The antecedents of each case are as follows:

* No part due to prior participation in the proceedings before the Court of Appeals.
'Rollo (G.R. No. 196372), pp. 12-105; Rollo (G.R. No. 210224), pp. 3-48; Rollo (G.R. No. 216104), pp. 8-
46; Rollo (G.R. No. 219632), pp. 8-62.
** On official leave.
Decision 3 G.R. Nos. 196372, 210224,
216104 & 219632

G.R. No. 196372

On February 21, 2003, GSMI 2 filed with the Intellectual Property

Office (IPO) an application for the registration of the mark "GINEBRA" for
its gin products. The application was docketed as Trademark Application No.
4-2003-0001682, 3 and referred to the Bureau of Trademarks (BOT) for
examination. 4 The word mark is as follows: 5

GINEBRA
On August 1, 2003, the BOT examiner issued Paper No. 2 6 which
required GSMI to provide, among others, the English equivalent of the mark
"GINEBRA." It also informed GSMI that the mark sought to be registered is
identical to five (5) other marks; namely, "Ginebra Agila," "Ginebra Grande,"
"Ginebra Heneral," "Ginebra Pinoy," and "Ginebra Primera," for which
reason registration of "GINEBRA" as trademark is proscribed under Section
123.l(d) of Republic Act No. 8293 (R.A. No. 8293), otherwise known as the
Intellectual Property Code of the Philippines (IP Code).

GSMI filed its response to Paper No. 2, dated September 24, 2003, 7
stating that the word "GINEBRA" is the Spanish term for "gin." However, by
itself and through its predecessors, GSMI has continuously been using the
term as the dominant feature of its trademarks in the manufacture, distribution,
marketing, and sale of its gin products throughout the Philippines since 1834.
GSMI recounted the genesis of its use of the mark "GINEBRA," as follows:

The origin of the gin product currently being produced by GSMI is

the gin product known as "Ginebra San Miguel de Ayala" which had been
manufactured by Destilerias Ayala, Inc. since 1834. In 1924, La Tondefia
Incorporada ("LTI") acquired the Ayala distillery and continued producing
said gin product under the brand "Ginebra San Miguel." In 1986, LTI was
merged with San Miguel Corporation and renamed La Tondefia Distillers,
Inc. ("LTDI"). LTDI continued to manufacture and produce the "Ginebra
San Miguel" gin product and its other variants. In March 2003, LTDI was

2 Formerly La Tondefia Distilleries, Inc. In March 2003, the company was renamed Ginebra San Miguel, Inc.
See rollo (G.R. No. 196372), p. 864.
3 Also docketed as Application No. 4-2003-001682 in some parts of the rollo, (Rollo, pp. 23 and 870).
4
Rollo (G.R. No. 196372), p. 80.
5 World Intellectual Property Organization Global Brand Database
https://branddb. wipo.int/branddb/ph/en/showData.jsp?ID-PHTM.42003001682 [last accessed: May 18,
2022]
6
Rollo (G.R. No. 196372), p. 863.

j
7 Id. at 864-869. .
 Decision 4· G.R. Nos. 196372, 210224,
216104 & 219632

renamed Ginebra San Miguel, Inc. as a tribute to tbe "Ginebra San Miguel"
gin product, which is tbe oldest brand of Philippine liquor in existence. The
"GINEBRA" word mark therefore has been a constant dominant component
oftbe applicant's gin product brand since 1834 and has long since become
distinctive and exclusively associated with applicant. 8

GSMI claimed that through its extensive, consistent, and continuous

use of the word "GINEBRA" as the dominant feature of its trademarks, the
term had become distinctive of, and associated by the public exclusively with,
its gin products. It also cited an independent survey wherein ninety percent
(90%) of the more than 6 million gin drinkers in the Greater Manila Area,
North Luzon and South Luzon associated the mark "GINEBRA" with
"GINEBRA SAN MIGUEL," "SAN. MIGUEL," or "La Tondefia." Such
survey result allegedly shows that the public has indeed identified the mark
"GINEBRA" with GSMI and its gin products. 9

In addition, GSMI pointed out that its predecessor used "GINEBRA"

as the dominant feature of its gin products since December I, 1945, whereas
the other applicants' earliest filing date was only on October 10, 1988. Hence,
all of them are mere imitations ofGSMI's "GINEBRA" mark. Furthermore,
inasmuch as GSMI is the prior user and registrant of the trademarks which use
the word "GINEBRA," and considering further that the term had become
distinctive of GSMI's gin products, GSMI enjoys preferential and superior
right to use the term as trademark, to the exclusion of others. 10 The
registration of the "GINEBRA" mark in GSMI's favor will allegedly not
cause confusion to the public. On the contrary, it is the registration of the 5
marks of the other companies that will likely confuse and mislead the public,
in view of the said survey results. Hence, it is the registration of those 5 other
marks that should be refused or cancelled. 11

The BOT and IPO Rulings

On January 3, 2007, the BOT examiner issued Paper No. 6, 12

denominated as Final Rejection, stating that GSMI's application for
registration is finally rejected on the ground that the mark "GINEBRA" is a
generic term. GSMI appealed to the Director of the BOT, but this recourse
proved to be unsuccessful. 13 Its subsequent appeal to the IPO Director General
fared no better.

8
Id. at 864.
9
Id. at 867.
10
Id. at 868.
11
Id. at 869.
12
Id. at 870.
13
Id. at 872.
Decision 5 G.R. Nos. 196372, 210224,
216104 & 219632

In his Decision 14 dated December 7, 2009, the IPO Director General

dismissed GSMI's appeal. Citing the dictionary, he noted that the word "gin"
is the English translation of the Spanish word "GINEBRA." 15 It is a generic
term and the common name given to alcoholic spirits distilled from grain and
flavored with juniper berries. Correspondingly, generic words may not be
registered and are considered to be in the public domain and free for all to use.
Since the generic term "gin" cannot be registered, the word "GINEBRA" may
not also be registered. Moreover, "GINEBRA" cannot acquire secondary
meaning because the doctrine of secondary meaning applies only to
descriptive marks under Sec. 123.2 ofR.A. No. 8293. 16

Undeterred, GSMI filed a petition for review with the Court of Appeals
(CA) under Rule 43 of the R~les of Court, docketed as CA-G.R. SP No.
112005.

The CA Ruling

In its August 13, 2010 Decision, 17 the CA dismissed the appeal. It held
that since the English translation of the Spanish word "GINEBRA" is "gin,"
its use in gin products would be merely "indicative and descriptive of the
merchandise or product designated." "GINEBRA" is a generic term which
cannot be appropriated for GSMI's exclusive use because it would unjustly
deprive other gin dealers of the right to use the same with reference to their
merchandise. 18

The CA also did not apply the doctrine of secondary meaning under
Sec. 123.1 G) in relation to Sec. 123.2 of the IP Code. It reasoned that even if
"GINEBRA" is not the direct Spanish counterpart of the English word "gin"
but rather the Spanish equivalerit of"genever" or "jenever," the juniper berry-
flavored grain spirit which originated in the Netherlands in the 17th century
and a kind of gin, it is still not registrable. Such meaning does not change the
fact that "GINEBRA" and "gin" refer to the same object. Being exclusively
generic, the doctrine of secondary meaning does not apply. Besides, for the
doctrine to apply, the use of the mark must have been exclusive. This is not
the case here, where other manufacturers of gin had similarly used the mark
"GINEBRA" as part of the composite marks for their products. The lack of
exclusivity in the use of "GINEBRA" has prevented the word from becoming

14 Id. at 871-875; penned by Dir. General Adrian S. Cristobal, Jr.

15
Id. at 874.
16
Id. at 873-875.
17 Id. at 115-120; penned by Associate Justice Estela M. Perlas-Bernabe (now a retired Member of the Court)

with Associate Justices Bienvenido B. Reyes (now a retired Member of the Court) and Elihu A. Ybanez,
concurring.
18
Id. at 117.
 Decision 6 G.R. Nos. 196372, 210224,
216104 & 219632

distinctive or acquiring a secondary meaning that would bar others from using
the same mark in their gin or alcoholic beverage products. 19

Further, according to the CA, it would appear that the public associates
"GINEBRA" with gin products in general and distinguish them from one
another by the composite marks on their bottle labels. Despite the proliferation
of various gin product variants by these manufacturers, the general gin-buying
public is not likely to be confused or· deceived because they are buying by
brand, according to their taste, as opposed to catsup, for example, which is
usually picked up from a store shelf. 20 .

Finally, the CA agreed that the Doctrine of Foreign Equivalents 21

should be applied, quoting with approval the following ruling of the Director
of the BOT:

x x x Thus, a mark that is generic in a foreign language is still

unregistrable even if the language is not predominantly spoken in the
country where the registration is sought.

Applying the doctrine of foreign equivalents in determining whether

a foreign term is entitled to registration, the test is whether, to those buyers
familiar with the foreign language, the word would have a descriptive or
generic connotation. It is, therefore, irrelevant whether majority of Filipinos
do not speak fluent Spanish. It is only necessary that the foreign word is
susceptible of a generic translation to a group of buyers even vaguely
familiar with the Spanish language. Absolute unanimity is not required. 22

The dispositive portion of the CA decision states:

WHEREFORE, the instant p.etition is DISMISSED. The assailed

December 7, 2009 Decision rendered by the IPO Director General in Appeal
No. 04-09-01 is hereby AFFIRMED.

SO ORDERED. 23

GSMI moved for reconsideration, but the CA denied it through its

Resolution24 dated March 25, 2011. Hence, the present petition.

19
Id. at I 17-118.
20
Id. at 118.
21
The CA cited the World Intellectual Property Organization (WIPO) definition of doctrine of foreign
equivalents as a rule that requires the translation of foreign words used in trademarks into their common
English meaning in usage for purposes of determining whether they are generic or descriptive, or confusingly
similar to an English mark (Rollo [G.R. No. 196372],p. 118).
22
Rollo (G.R. No. I 96372), p. 119.
23
Id. at 119.
24
ld. at 122.
Decision 7 G.R. Nos. 196372, 210224,
216104 & 219632

The petition was initially denied outright by the Court's Second

Division in its Resolution25 dated June 22, 2011. GSMI filed a Motion for
Reconsideration, 26 and subsequently a motion to refer the case to the Court En
Banc. 27 In the meantime, the case was transferred to the Court's Third
Division, which later issued a Resolution28 dated October 17, 2011 denying
both motions.

On December 28, 2011, GSMI filed a Manifestation with Motion for

Relief from Judgment, 29 seeking the reconsideration of the Court's June 22,
2011 and October 17, 2011 Resolutions, and the referral of the case to the
Court En Banc for a decision on the merits. The Court's Third Division later
referred the case to the Court En Banc. On June 26, 2018, the Court En Banc
issued a Resolution30 accepting the case, treating GSMI's motion for relief
from judgment as a second motion for reconsideration, and reinstating the
petition, among others.

G.R. Nos. 210224 & 219632

On August 15, 2003, GSMI filed a Complaint31 (With Application for

Temporary Restraining Order. and/or Writ of Preliminary Injunction) for
unfair competition, infringement, and damages against Tanduay Distillers, Inc.
(TDI) before the Regional Trial Court (RTC) ofMandaluyong City, docketed
as IP Case No.MC03-01. GSMI claimed that TDI used the mark "GINEBRA"
in manufacturing, distributing _and marketing its gin product "GINEBRA
KAPITAN." The use of the said mark, coupled with the colorable imitation
of GSMI' s bottle and label designs for "GINEBRA," caused confusion to and
deceived the general public, as they are made to believe that "GINEBRA
KAPITAN" was being manufactured, distributed, and sold by GSMI. 32

GSMI cited an independent survey conducted by an internationally-

accredited market research firm.covering the Greater Manila Area, North, and
South Luzon, which found that 90% of the respondents, representing some six
(6) million gin drinkers, associated the mark "GINEBRA" with "Ginebra San
Miguel," "San Miguel," or "La Tondena." Moreover, eighty-two percent
(82%) and sixty-five percent ( 65%) of those respondents mistakenly identified
"GINEBRA KAPITAN" as "GINEBRA," "GINEBRA SAN MIGUEL,"
"SAN MIGUEL," or "GINEBRA BLUE," when shown the back view and

25 Id. at 729-730.
26
Id. at 732-757.
27
Id. at 759-773.
28
Id. at 775-776.
29 Id. at 777-798.
30
Id. at 881-882.
31
Rollo (G.R. No. 214104), pp. 1774-1789.
32
Id. at 1778-1782.
 Decision 8 G.R. Nos. 196372, 210224,
216104 & 219632

front view, respectively, of "GINEBRA KAPITAN." 33 Thus, GSMI prayed

that TDI be restrained from manufacturing, distributing, or using in commerce
the mark "GINEBRA," or otherwise prevented from dealing in gin products
which have the general appearance of, or are confusingly similar with,
GSMI's gin products. 34

In its presentation of evidence during the hearing for the issuance of a

TRO, GSMI established, among others, that it has the following registered
trademarks for its gin products under Class 33:

(i) Mark: GINEBRA SAN MIGUEL (word mark)

Reg. No.: 7484 (Supplemental Register)
Reg. Date: 18 September 1986
Term: Twenty years, or until is September 2006
Date of First Use: 01 December 1945

(ii) Mark: GINEBRA SAN MIGUEL (word mark)

Reg. No.: 42568
Reg. Date: 19 January 1989
Term: Twenty years, or until 19 January 2009
Date of First Use: 01 December 1945

(iii) Mark: GINEBRA S- MIGUEL 65

Reg. No.: 53668
Reg. Date: 13 October 1.992
Term: Twenty years, or until 13 October 2012
Date of First Use: 09 May 1990

(iv) Mark: GINEBRA SAN MIGUEL

Reg. No.: 001389
Reg. Date: 13 October 1993
Term: Twenty years, or until 13 October 2013
Date of First Use: 05 April 1949

(v) Mark: LA TONDENA CLIQ! GINEBRA MIX &

STYLIZED LETTERS LTD. WITH CROWN DEVICE
Reg. No.: 41996113597
Reg. Date: 23 July 2001
Term: Twenty years, or until 23 July 2021
Date of First Use: 04 September 1996 35

33
Id. at 1782.
34
Id. at 1786.
35
Rollo (G.R. No. 210224), p. 82.
Decision 9 G.R. Nos. 196372, 210224,
216104 & 219632

According to GSMI, "GINEBRA" is the dominant feature of these

trademarks, and that GSMI, by itself and through its predecessors-in-interest,
has been continuously marketing and distributing throughout the Philippines
the said trademarks since 1934, as evidenced by the special issue of the Manila
Chronicle dated December 31, 1968. 36

The RTC granted GSl\111's prayer for a TRO, and later, a writ of
preliminary injunction, on the ground that GSMI had sufficiently established
its right of prior use and registration of the mark "Ginebra" as a "dominant
feature of its trademark." 37 TDI assailed the injunction order before the CA,
and later, with this Court in G.R. No. 164324.38 On August 14, 2009, the Court
rendered a decision declaring the writ of preliminary injunction void on the
ground that it disposes of the case on the merits as it effectively enjoined the
use of the word "GINEBRA" by TDI without the benefit of a full-blown trial.
In addition, GSMI failed to submit proof that it will suffer damage that is
irreparable and incapable of pecuniary estimation. 39

Meanwhile, the case before the RTC proceeded to trial.

The RTC Ruling

On July 25, 2012, the RTC rendered a Decision40 dismissing GSMI's

complaint. It held that "GINEBRA" is a generic term which cannot be
appropriated, and that its use, no matter how long, can never ripen into a
secondary meaning under the trademark law. The name can never be
descriptive for a gin product for the reason that "GINEBRA" is just the
Spanish translation that is synonymous to the word "gin." Basic is the rule
that the use of a generic trade name is always conditional, i.e., subject to the
limitation that the registrant does not acquire the exclusive right to the
descriptive or generic term or word. 41 In addition, the name "GINEBRA" has
not acquired a secondary meaning since GSMI did not use it to the exclusion
of others. Documentary evidence presented by TDI showed that other
companies have used "GINEBRA" as part of their composite trademark, 42
albeit their certificates of registration were later on cancelled by the IPO. For
these reasons, the RTC held that TDI may not be held liable for trademark
infringement.

36
Id. at 84.
37
Id. at 90.
38 The case is entitled Tanduay Distillers Inc. v. Ginebra San Miguel, Inc., 612 Phil. 1020 (2009).

39 Id. at 1041, 1043.

40 Rollo (G.R. No. 210224), pp. 80-117; penned by Presiding Judge Ofelia L. Calo.
41
ld. at 107-108.
42
Id. at 108-109.
Decision 10 G.R. Nos. 196372, 210224,
216104 & 219632

The RTC also applied both the dominancy test and holistic test in ruling
that there was no unfair competition.· It noted that the dominant feature of
GSMI's label is not the word "GINEBRA" but the image of the archangel
wielding a sword against a fallen devil which occupies almost 70% of the
entire label. The words "GINEBRA S. MIGUEL," on the other hand, were in
relatively small and thin fonts using black color on white background and
occupy only about 10 to 15% of the entire label. On the other hand, the
dominant feature of TDI's label is the composite mark "GINEBRA
KAPITAN," which is strategically placed in the middle of the label to
emphasize the name of the product, and occupies almost 35% of the entire
label. 43 Applying the holistic test, the RTC held that the labels and total
packaging of the competing products would not likely cause confusion to the
consuming public. While both bottles are transparent, the similarity ends
there. 44

Finally, the RTC declared the survey evidence presented by GSMI as

hearsay and self-serving. 45 The dispositive portion of the RTC decision states:

WHEREFORE, premises considered, judgment is hereby rendered

DISMISSING the instant complaint for trademark infringement and unfair
competition for lack of merit.

No pronouncement as to cost.·

SO ORDERED.46

GSMI filed a motion for reconsideration but it was denied by the RTC
for lack of merit. 47 GSMI consequently filed a notice of appeal, but it was also
denied by the RTC in its Order dated October 31, 2012 for being a wrong
mode of appeal. 48 However, upon GSMI's motion for reconsideration, the
RTC issued an Order dated 14 February 2013 giving due course to GSMI's
notice of appeal on the grounds of liberality and substantial justice. 49
Consequently, GSMI's appeal was routinely elevated to the CA and docketed
as CA-G.R. CV No. 100332.

Meanwhile, GSMI filed an Ad Cautelam Motion for Extension of Time

to File Petition for Review Under Rule 43 50 with the CA following the RTC

43
Id. at 116.
44
Id. at 116-1! 7.
45
Id. at 117.
46
Id.
47
ld. at 118-121.
48
Rollo (G.R. No. 219632), p. 88.
'' Id.
so Id.
Decision 11 G.R. Nos. 196372, 210224,
216104 & 219632

order denying its notice of appeal. The CA granted the motion, and GSMI
eventually filed its petition, docketed as CA-G.R. SP No. 127255.

Later, in CA-G.R. No. 100332, GSMI filed a Manifestation With

Motion for Consolidation51 to consolidate CA-G.R. CV No. 100332 with CA-
G.R. SP No. 127255. However, at the time, a decision had already been
rendered in CA-G.R. SP No. 127255. Thus, the CA in CA-G.R. No. 100332
continued to adjudicate the ordinary appeal separately.

CA-G.R. SP No. 127255

In CA-G.R. SP No. 127255, the CA Special Thirteenth Division

disposed of the issues of wheth~r GSMI had acquired, by prior adoption and
use, the exclusive ownership of the word "GINEBRA," and whether TDI is
guilty of trademark infringement and unfair competition. In its Decision dated
August 15, 2013, 52 it ruled in favor ofGSMI.

The CA held that GSMI had sufficiently established its claim that it had
been using the word "GINEBRA" in its gin products over a long period of
time such that, to the public, the word is already associated with GSMI's gin
product. 53 It upheld GSMI's evidence showing that the name "GINEBRA" is
the dominant feature of its trademarks and bottle designs, and that GSMI's
gin products bearing this name have been marketed and distributed by GSMI
and its predecessors since 1934. The CA also recognized news articles that
spoke of "GINEBRA SAN MIGUEL" and advertising materials of GSMI's
gin products that used the name "GINEBRA." 54 On the other hand, the CA
noted that prior to the introduction of "GINEBRA KAPITAN'' to the public
by TDI, it was only GSMI that was known to carry the name "GINEBRA" in
its gin products. 55 The CA concluded that GSMI has established the
"GINEBRA" mark as the brand._name of its gin products and not just a generic
term for any liquor product, and that the primary significance of"GINEBRA"
to the public is not its Spanish translation but GSMI's gin products. 56

On the second issue, the CA, applying the dominancy test, held that
there was trademark infringement. It observed that there are differences in the
general appearance of "GINEBRA SAN MIGUEL" and "GINEBRA
KAPITAN," but it cannot be denied that the dominant feature of both products

51
Rollo (G.R. No. 210224), pp. 143-148.
52
Id. at 151-171; penned by Associate Justice Isaias P. Dicdican with Associate Justices Nina G. Antonio-
Valenzuela nd Victoria Isabel A. Paredes, concurring.
53
Id. at l 62.
s• 1ct.
55
Id. at 163.
56
Id.
Decision 12 G.R. Nos. 196372, 210224,
216104 & 219632

is the mark "GINEBRA." The consl.lilling public will just rely on the mark
and not really take time to examine .the differences between the two gin
products. Moreover, the label of "GINEBRA KAPITAN" does not indicate
that it is a product of TDI. Hence, it is likely that the consuming public will
be misled into thinking that it is a gin product of GSMI. 57 The CA also held
that it cannot discount the probative value of the survey conducted on behalf
of GSMI, which shows that most respondents associated the word
"GINEBRA" with "GINEBRA SAN MIGUEL" and perceived the bottle of
"GINEBRA KAPITAN" as a product ofGSMI or La Tondefia. 58

The CA finally held that TDI is liable for unfair competition. Having
known that GSMI had been using the mark "GINEBRA" in its gin products
and that "GINEBRA SAN MIGUEL" had obtained over the years a
considerable number of loyal customers, it still chose to use the same mark in
launching its gin product. TDI's use of the word "GINEBRA" as part of the
trademark of its "GINEBRA KAPITAN" tended to show the intention to pass
off their product as that of GSMI and ultimately ride on the popularity and
established goodwill of GSMI. 59 The dispositive portion of the CA decision
in CA-G.R. SP No. 127255 states:

WHEREFORE, in view of the foregoing premises, the instant

petition for review is hereby GRANTED and the assailed July 25, 2012
Decision as well as the October 5, 2012 Order of the Regional Trial Court,
Branch 211 of the National Capital Judicial Region stationed in
Mandaluyong City in IP Case No. MC03-01 are hereby REVERSED and
SET ASIDE. Accordingly, respondent Tanduay Distillers, Inc., is hereby
ordered to:

1) Remove from the market all its gin products

bearing the name/mark "GINEBRA" and all the infringing
or unfairly competing goods in the possession of it, its
employees, agents, representative, dealers including, 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.

2) Cease and Desist from using the word/mark

"GINEBRA" in any of its gin products.

3) Render an accounting of the gross sales of its

"GINEBRA KAPITAN" products from the time of the filing
of the instant case up to the finality of this judgment and to
pay to GSMI an amount equivalent to fifty percent (50%) of
the total gross sales.

57
Id. at 166.
58
Id. at 166-167.
59
Id. at 167-168.
Decision 13 G.R. Nos. 196372, 210224,
216104 & 219632

4) Pay to GSMI l"2,000,000.00 as exemplary

damages and 1"500,000.00 as attorney's fees.

The instant case is hereby remanded to the court a quo for

the purpose only of the acc;ounting of the gross sales of TDI's
"GINEBRA KAP ITAN" and for the determination of the amount of
actual and compensatory damages to be awarded to GSMI.

SO ORDERED. 60

CA-G.R. CV No. 100332

Preliminarily, the CA Special Sixteenth Division held that it had been

unaware of the proceedings in CA-G.R. SP No. 127255 and it was only when
GSMI's filed a manifestation with motion to consolidate on September 2,
2013 that it learned of the petition and Decision dated August 15, 2013
rendered in that case. Had it been promptly apprised, it would have ordered
the mandatory consolidation of the cases. But since a decision has already
been rendered in CA-G.R. SP No. 127255 and a motion for reconsideration
of the decision denied, there is nothing more to consolidate. 61 In any event,
the CA Special Sixteenth Division opted to decide the case on the merits
despite the procedural faux pas 62 committed by GSMI, in the interest of
substantial justice. It observed that neither of the parties moved for the
dismissal of the case, and that the issues are of utmost importance. It thus
deemed it proper to dwell on the substantive issues, bearing in mind the ruling
of the Former Special Thirteenth Division in CA-G.R. SP No. 127255. 63

In its November 7, 2014 Decision, 64 the CA granted the appeal and

reversed and set aside the RTC decision in IP Case No. MC03-01. It held that
while it may be true that the word "GINEBRA" is a Spanish word for gin and
thus generic, or descriptive of the class of alcoholic drinks called gin, it has
acquired a secondary meaning under the trademark law. Since it has been used
in the Philippines by GSMI and its predecessors-in-interest since the 1800s, it
had become singularly synonymous with GSMI's gin products and GSMI
itself as manufacturer, and identifiable not only by the consuming public but
also by the general populace. Almost two (2) centuries of usage, effective
media promotions and advertisements have bestowed upon "GINEBRA" a
secondary meaning exclusively_ identifiable to GSMI and its gin products. 65
There had been attempts by other entities to register the mark "GINEBRA" or
60
Id. at 169-170.
61 Rollo (G.R. No. 219632), pp. 90-91.
62 To recall, CA-G.R. CV No. 100332 is an mdinary appeal and not a petition for review that is sanctioned

by the Intellectual Property Code.

63 Rollo (G.R. No. 219632), p. 92.
64 Id. at 72-118; penned by Associate Justice Rodi! V. Zalameda (now a Member of the Court) with Associate
Justices Romeo Barza and Maria Elisa Sempio Diy, concurring.
65
Id. at 99-100.
 ,

Decision 14 G.R. Nos. 196372, 210224,

216104 & 219632

market their products bearing the said mark, but they have not actively utilized
the term, or the consuming public was never saturated with their products
containing the mark. 66

The CA further disagreed with the RTC ruling that the survey results
presented by GSMI are inadmissible for being hearsay. It held that the
emerging trend in trademark disputes is the admissibility of survey results to
determine if there is indeed confusion or dilution of a trademark, or if the mark
is generic. In the United States, survey evidence which is historically
considered hearsay, is now admissible under the Federal Rules ofEvidence. 67
In the Philippines, the equivalent exception refers to the doctrine of
independently relevant statements, i.e., if the purpose of placing the statement
on record is merely to establish the fact that the statement was made regardless
of its truth or falsity, the hearsay rule does not apply. 68

In this case, GSMI's expert witness, Mercedes Abad (Abad) did not
testify to prove the truth or falsity of the answers given in the survey, but to
establish that those statements were made by the survey respondents and that
they constitute the latter's state of mind. Thus, even if the survey respondents
were not presented in court, Abad's testimony should not be stricken off the
record for being hearsay. 69 The CA observed that TDI tried to discredit the
survey, but nonetheless failed to present countervailing evidence. 70

The CA also held that TDI cornrr'J.itted trademark infringement in its use
of the mark "GINEBRA," and unfair competition in the way it designed and
presented its bottle and label to consumers. 71 It observed the differences in the
packaging and presentation of"GINEBRA SAN MIGUEL" and "GINEBRA
KAPITAN," but ruled that confusing similarity of the products should not be
dependent on these alone. Other factors should be taken into consideration,
such as the widespread association of the mark "GINEBRA" with GSMI's gin
72
products. Here, the design of"GINEBRA KAPITAN" conveys the idea that
it is a gin product of different type or flavor manufactured by GSMI, and not
necessarily produced by TDI. Even discounting the features of the bottles and
labels of the competing products and their dominant features, the mere use of
"GINEBRA" in "GINEBRA KAPITAN'' is sufficient to cause an average

66
td. at 100-101.
67
Id. at 101.
68
Id. at 102.
69
Id. at 103.
70
Id. at l 04.
71
Id. at 111.
72
Id. at 113.
Decision 15 G.R. Nos. 196372, 210224,
216104 & 219632

person to associate it with GSMI's gm product, and 1s a trademark

infringement in itself. 73

The CA added that the gravamen of the trademark infringement is the

element of likelihood of confusion. In confusion of goods, the ordinarily
prudent purchaser would be induced to purchase one product in the belief that
he was purchasing the other. In this case, the mark "GINEBRA" has been so
deeply ingrained in the general psyche of the Filipinos that it is conveniently
and exceptionally associated with GSMI's "GINEBRA SAN MIGUEL" gin
products. It is not difficult to imagine an ordinary purchaser, even one
accustomed to drinking gin, to be confused into buying "GINEBRA
KAP ITAN" thinking that it is the "GINEBRA" product of GSMI. Hence, TDI
should be held liable for trademark infringement and unfair competition. 74

The dispositive portion of the CA decision in CA-G.R. No. 100332 took

notice of, and quoted the dispositive portion of the Decision of the Special
Thirteenth Division in CA-G.R . SP No. 127255, thus:

WHEREFORE, the foregoing premises considered, the Appeal is

hereby GRANTED. Accordingly, the Decision dated 05 October 2012 of
Branch 211, Regional Trial Court of Mandaluyong City, in IP Case No.
MC03-0l is hereby REVERSED AND SET ASIDE.

Further, considering· that Our findings on defendant-appellee

Tanduay Distillers, Inc.'s liability for trademark infringement and unfair
competition is consistent with the Decision dated 15 August 2013
previously rendered by the Special Former Thirteenth Division in CA-G.R.
SP No. 127255, pursuant to prevailing jurisprudence, so as to prevent the
issuance of inconsistent rulings, We merely take NOTICE and quote the
dispositive portion thereof, wh.ich states:

xxxx

SO ORDERED. 75

Undaunted, TDI filed the present petitions for review, docketed G.R.
Nos. 210224 and 219632, respectively.

G.R. No. 216104

On August 9, 2006, TDI filed an application for the registration of the

mark "GINEBRA KAPITAN'' with the IPO, covering the goods classified as

73
Id.
74
Id. at 114.
75
ld. at 116-118.
Decision 16 G.R. Nos. 196372, 210224,
216104 & 219632

"gin." The application was docketed as Application No. 4-2006-008715. 76

The word mark is as follows: 77

Ginebra Kapitan
On Jrme 29, 2007, GSMI filed its verified opposition to the application,
docketed as IPC No. 14-2007-00196, based on the following grounds:

1. [GSMI] was the . owner, by prior adoption and substantially

exclusive and continuous use, of the mark "GINEBRA";

2. [GSMI] and its predecessors had extensively, consistently and

continuously used the word "GINEBRA" as the dominant feature of their
trademarks in the manufacture, distribution, marketing and sale of gin
products throughout the Philippines since (sic) the year 1843;

3. The mark "GINEBRA" had become distinctive as used in

connection with the goods of [GSMI] and had already acquired a
"secondary meaning" pursuant to [S]ection 123 .2 of the Intellectual
Property Code x xx. It is now exclusively associated with the gin products
of[GSMI];

4. The registration of "GINEBRA KAPITAN" for use on the gin

product of [TDI] would cause confusion among the public [who] would be
led to believe that "GINEBRA KAPITAN" gin products are manufactured
by or affiliated with [GSMI]; and

5. [GSMI] would be damaged by the registration of "GINEBRA

KAPITAN." 78

TDI cormtered that "GINEBRA" is a generic word that cannot function

as a trademark, and therefore is not capable of exclusive appropriation. In the
first place, GSMI had disclaimed the word "GINEBRA" in all its trademark
registrations. The doctrine of secondary meaning is not applicable to words
that have been disclaimed for being 'generic. Moreover, TDI insisted that
GSMI will not be damaged by its registration and use of the mark "GINEBRA
KAPITAN'' on its gin product since the dominant portion of the mark would
be "KAPITAN," which is not identical to the "SAN MIGUEL" trademark of
GSMI. Finally, the trade dresses of the products of both parties differ in that
they would not be confused from each other by the public. 79

76
Rollo (G.R. No. 216104), p. 57.
77
World Intellectual Property Organization (WIPO) Global Brand Database,
https://branddb. wipo.int/branddb/ph/en/showData.jsp?ID~PHTM.42006008715 [last accessed May 25, 2022]
78
Rollo (G.R. No. 216104), pp. 57-58. .
79
Id. at 59.
Decision 17 G.R. Nos. 196372, 210224,
216104 & 219632

The Rulings ofthe BLA and /PO Director General

On April 23, 2008, the· Bureau of Legal Affairs (ELA) rendered a

Decision 80 denying GSMI's opposition and giving due course to TDI's
registration of the mark "GINEBRA KAPITAN." In essence, it held that the
word "GINEBRA" is a generic term, defined in the American Heritage
Dictionary of the English language as "a strong colorless alcoholic beverage
made by distilling or redistilling rye or other grain spirits and adding juniper
berries or aromatics such as ·anise, caraway seeds or angelica roots as
flavoring." In other words, "GINEBRA" describes or refers to the goods itself.
The BLA observed that the Court has constantly affirmed the rule that generic
words cannot be exclusively appropriated, and concluded that GSMI's claim
that "GINEBRA" has become a distinctive part of its mark is untenable.
Generic words supposedly can never acquire secondary meaning, and no
length of use and no amount of advertising can make it distinctive. 81 Finally,
the BLA held that "GINEBRA KAPITAN'' is not confusingly similar to
"GINEBRA SAN MIGUEL." The only similarity between the contending
marks was the inclusion of the term "GINEBRA." The other components of
the marks were entirely distinct and different from each other in spelling,
pronunciation, and meaning. 82 _

GSMI's motion for reconsideration having been denied, 83 it filed an

appeal before the Office of the Director General. The latter rendered a
Decision 84 on September 24, 2013 upholding the BLA decision and
dismissing the appeal. He ruled, among others, that the term "GINEBRA,"
being generic, is not covered by the doctrine of secondary meaning and
accordingly not subject to exclusive appropriation. Thus, even if GSMI had
been using "GINEBRA" for a long period of time in its business activities,
this will not amount to an exclusive right to use the name. Otherwise, it would
prejudice other persons who are also engaged in producing or manufacturing
a similar class of gin products .and who are using the same generic term in
their trade or services. 85 Moreover, GSMI's claim that it had marketed its
products bearing the word "GINEBRA" for a long period of time does not
automatically translate to a conclusion that TDI's use of "GINEBRA
KAPITAN'' will deceive the purchasing public. The public will buy
"GINEBRA KAPITAN" because it suits their taste and not for the reason that
they associate it with GSMI's gin products. Allowing the registration of

80
Id. at 242-252; penned by the Director of Bureau of Legal Affairs, Atty. Estrellita Beltran-Abelardo.
81
Id. at 248-250.
82
Id. at 251.
83
Id. at 255-257.
84
Id. at 311-318; penned by Director General Ricardo R. Blancaflor.
85
Id. at 316.
Decision 18 G.R. Nos. 196372, 210224,
216104 & 219632

"GINEBRA KAPITAN'' will also not result to unfair competition, but will
instead allow market competition among "Ginebra" or gin products. 86

Feeling aggrieved, GSMI filed a petition for review before the CA.

The CA Ruling

On July 23, 2014, the CA rendered its Decision87 in CA-G.R. SP No.

132441, granting GSMI's petition. It lield that even if the term "GINEBRA"
may be a Spanish word that means "gin" in English, there is no evidence of
this fact because the dictionary from where the supposed definition came from
is not in the record. It declared that "GINEBRA" is not a generic word since,
to the Filipino gin-drinking public, it does not relate to a class of liquor or
alcohol but refers specifically and exclusively to the gin products of GSMI.
The point of view of the public is controlling since the test for genericness is
the primary significance of the term to the ordinary consumer. Evidence of
the relevant public's understanding of a term may be obtained from any
competent source, including direct testimony of consumers, consumer surveys,
or publications. 88

The CA upheld the surveys conducted by GSMI which showed that 90%
of gin drinkers surveyed in Luzon gave the top-of-mind responses
"GINEBRA SAN MIGUEL ," "SAN MIGUEL" , "GINEBRA BLUE ," and
"LA TONDENA" when shown a flashcard with the word "GINEBRA," and
at least half of this sample erroneously- identified "GINEBRA KAPITAN" to
be the product of GSMI. The CA found the testimonial evidence given by
GSMI's survey expert, Abad, and advertising expert, Ma. Elizabeth Gustilo
(Gustilo), relevant. Abad testified that "GINEBRA" is almost exclusively
associated by the relevant consuming public with GSMI's gin products and
not with gin itself, while Gustilo testified that "GINEBRA" has gained the
status of an iconic brand. 89

The CA also agreed with GSMI that the term "GINEBRA" had
acquired a secondary meaning under Sec. 123.2 of the Intellectual Property
Code. While "GINEBRA" may have originally been a descriptive term for a
gin product, it had become distinctive of GSMI's products through its
extensive and substantive use thereof for over 180 years. 90

86
ld.at317.
87
Id. at 55-69; penned by Associate Justice Isaias P. Dicdican, with Associate Justices Michael P. Elbinias
and Victoria Isabela A. Paredes, concurring.
88
Id. at 64-66.
89
Id. at 66.
90
Id. at 67.
Decision 19 G.R. Nos. 196372, 210224,
216104 & 219632

Finally, the CA found "GINEBRA" to have already been associated by

the relevant public with GSMI's products, and that the registration and use of
"GINEBRA KAPITAN" in TDI' s gin products would cause confusion among
the relevant consuming public as to the source and origin of products bearing
the said marks. This, in turn, may cause damage to the goodwill that GSMI
had built for decades and defeat the very purpose for which the laws on
trademarks were created. 91 The dispositive portion of the CA Decision states:

WHEREFORE, in view of the foregoing premises, judgment is

hereby rendered by us GRANTING the petition filed in this case. The
Decision that was rendered by the Office of the Director General of the
Intellectual Property Office of the Philippines dated September 24, 2013 in
Appeal No. 14-09-28 is hereby REVERSED and SET ASIDE.
Consequently, the trademark application bearing Application No. 4-2006-
008715 that was filed by [TDI] on August 9, 2006 for the registration of the
mark "GINEBRA KAPITAN" is hereby DISAPPROVED.

SO ORDERED. 92

TDI' s motion for reconsideration having been denied, 93 it filed the

present petition for review before the Court, docketed as G.R. No. 216104.

On February 13, 2020, GSMI filed a Manifestation 94 informing the

Court that on December 27, 2019, the Director General of the IPO rendered a
Decision95 granting GSMI's opposition to TDI's application for registration
of the marks "Ginebra Lime · & Device," "Ginebra Orange & Device,"
"Ginebra Especial & Device," and "Ginebra Pomelo & Device." According
to the Director General, it has been established that the term "GINEBRA" has
attained a secondary meaning in relation to GSMI's gin products. GSMI's
investments, through its marketing campaigns, have effectively created an
unmistakable link among the term "GINEBRA," the registered trademark
"Ginebra San Miguel," and GSMI, such that even if "SAN MIGUEL" is
dropped from GSMI's trade name and registered marks leaving only the term
"GINEBRA," this singular word is still capable of pointing to the proper
origin of the gin products to which it attached, which is GSMI, and
distinguishing such products from those of the other manufacturers. 96

91
Id. at 68.
92
Id. at 68-69.
93 Id. at 72-73.
94
Id. at I 054-106 I.
95
Id. at 1064-1083.
96
Id. at 1055-1058.
Decision 20· G.R. Nos. 196372, 210224,
216104 & 219632

In its March 10, 2020 Resolution, 97 the Court consolidated the four
petitions in view of the identity of the p~rties and the similarity ofissues raised
therein.

On October 27, 2021, GSMI filed another Manifestation98 stating that

on December 16, 2020, the Director General of the IPO rendered a Decision99
granting the appeal of GSMI to register the mark "GINEBRA S. MIGUEL"
for the use on gin under Class 33 of the Nice Classification. The Director
General reiterated that the term "GINEBRA" is linked with GSMI's products
and eventually the same generic or descriptive term "GINEBRA" points to
GSMI as the origin of the goods. It was further stated therein that as GSMI
had already established its ownership of "GINEBRA" as a descriptive term
on its gin products, GSMI's application to register GINEBRA S. MIGUEL
for use on gin should be given due course. 100

The Issues

The issues raised in the consolidated petitions may be summarized as

follows:

WHETHER "GINEBRA" IS A GENERIC MARK;

II

WHETHER "GINEBRA" MAY BECOME A DISTINCTIVE MARK

PURSUANT TO THE DOCTRINE OF SECONDARY MEANING; [AND]

HI
WHETHER TDI COMMITTED TRADEMARK INFRINGEMENT AND
UNFAIR COMPETITION FOR UTILIZING "GINEBRA KAPITAN" AS
A LABEL FOR ITS GIN PRODUCT[.]

In G.R. No. 196372, GSMI argues that the mark "GINEBRA" is not
generic but an iconic one, and that such status was attained through GSMI's
consistent and successful use of emotional branding. 101 Emotional branding,
in turn, is the principle that a brand must focus on a position in a consumer's
mind, which must be maintained consistently in all brand activities. In the case
of "GINEBRA," it is the telling and re-telling, for at least the past 25 years,
97
Id. at I088-1089.
98
Rollo (G.R. No. 216104), pp. 2464-2468.
99
Id. at 2470-2473.
100
Id. at 2465-2466.
101
Rollo (G.R. No. 196372), p. 84.
Decision 21 G.R. Nos. 196372, 210224,
216104 & 219632

of stories embodying the concept of the "hardworking," "never say die,"

"principled" Filipino male in all of GSMI' s advertisements for its "GINEBRA"
products. This allegedly resulted in a strong following among dignified
Filipino workers from all walks of life, 102 and the consumer perception that a
product with a "GINEBRA" mark is a GSMI product. 103 GSMI also cited the
survey results in Project Bookman and Project Georgia, which allegedly show
that the mark "GINEBRA" is exclusively perceived as, and associated by the
relevant consuming public with; GSMI's "GINEBRA" gin products. 104 In this
connection, GSMI asserts that it is of no moment that "GINEBRA" is the
Spanish translation for "gin," since non-Spanish speaking Filipinos do not
understand the term this way, but rather understand it as GSMI's brand of
gin. 105 Moreover, a generic mark may subsequently become not generic, and
hence registrable as a trademark. 106

In addition, GSMI argues that even if "GINEBRA" is not to be

considered iconic, it is at least descriptive. As a descriptive term used by
GSMI pervasively for many years in relation to its gin products, it has
acquired a secondary meaning and is thus entitled to trademark protection. 107
Further, the doctrine of foreign equivalents does not apply in this case because
it is not likely that an ordinary gin-drinking Filipino will stop and translate
"GINEBRA" into its English equivalent. The doctrine must moreover yield to
the policy of customer perception that the "GINEBRA" mark's primary
signification is GSMI's gin product. 108 GSMI consequently prays for the
reversal of the CA decision in CA-G.R. CV No. 112005, and an order
requiring the IPO to give due course to Application No. 4-2003-001682 for
the registration of the mark "Ginebra" in the name ofGSMI. 109

In G.R. No. 210224, petitioner TDI raises procedural and substantive

issues. It argues that the RTC decision in IP Case No. MC-03-01 had become
final and executory on account of GSMI's improper filing of a motion for
reconsideration which is a prohibited pleading under the Rules on Intellectual
Property Cases, and its filing of a notice of appeal instead of a petition for
review under Rule 43, which is the proper remedy in intellectual property
cases. The procedural mishaps allegedly did not toll the running of the 15-day
period to file a petition for review with the CA. 110 TDI also faults the CA in
not citing GSMI in contempt, and in not dismissing both the petition for

102
Id. at 85-86.
103
Id. at 87.
104 Id.
w, Id. at 88.
10, Id.
107
Id. at 94.
,os Id. at 98.
,oo Id. at I 04.
110
Rollo (G.R. No. 210224). pp. I 0-13.
Decision 22. G.R. Nos. 196372, 210224,
216104 & 219632

review and the ordinary appeal then pending before it for obvious forum
shopping. 111

On the substantive issues, TDI insists that the name "GINEBRA" is a

generic term that may not be registered as a trademark. 112 "GINEBRA" is the
Spanish term for "gin" and thus comprises the genus of the product, the
species of which are either GSMI's or TDI's products. 113 As a generic term,
it cannot acquire secondary meaning. 114 TDI further argues that the CA ruling
that "GINEBRA" is associated with GSMI has no leg to stand on in the light
of evidence belying GSMI's claim of exclusive use of the term. 115 Even before
TDI introduced "GINEBRA KAPITAN" to the market, TDI and other
companies have already been manufacturing and selling gin products under
trademarks that use the word "Ginebra." 116 TDI also attacks the credibility and
methodology of the survey evidence presented by GSl\11, 117 and denies any
liability for trademark infringement and unfair competition. 118 Finally, TDI
assails the CA ruling which found it liable for payment of damages, and prays
for the Court to set aside the CA decision in CA-G.R. SP No. 127255 and
affirm the RTC Decision in IP Case No. MC03-01. 119

The petition in G.R. No. 219632 was filed by TDI assailing the decision
of the CA Special Sixteenth Division in CA-G.R. CV No. 100332, which
tackled the ordinary appeal filed by GSMI against the RTC decision in IP
Case No. MC03-0l. TDI asserts that upon learning of the decision in CA-G.R.
SP No. 127255, the CA Special Sixteenth Division should have recognized
the existence of forum shopping and dismissed the case outright. 120 Not only
that, it should have recognized that the notice of appeal was filed out of time
since GSl\11 initially filed a prohibited pleading, i.e., a motion for
reconsideration. In the alternative, the ·cA should have restrained itself from
rendering judgment on the substantive aspects of the appeal, after it
acknowledged that its ruling would have to be consistent with the ruling of
the CA Special Thirteenth Division. 121 TDI's arguments on the substantive
issues are essentially the same as those it raised in G.R. No. 210224. It
similarly prayed for the Court to set aside the CA decision in CA-G.R. CV
No. 100332, and affirm the RTC decision in IP Case No. MC03-01.

111
Id. at 14-16.
112
Id. at 16.
113
Id. at 20.
114
Id. at 24.
115
Id. at 26.
116
Id. at 27.
117
Id. at 29-30, 35-36.
118
Id. at 30-43.
119
Id. at 44-47.
120
Rollo (G.R. No. 2 I 9632), p. 21.
121
Id. at 23.
Decision 23 G.R. Nos. 196372, 210224,
216104 & 219632

Finally, TDI's main arguments in G.R. No. 216104 are similar to those
it raises in the other petitions, namely: that "GINEBRA" is a generic term
which may not be registered; the doctrine of secondary meaning does not
apply to a generic word like "GINEBRA;" and there is no confusion between
TDI and GSMI's gin products. TDI prays for the Court to set aside the CA
Decision in CA-G.R. SP No. 132441, and affirm the findings of the Bureau
of Legal Affairs and IPO Director General which gave due course to TDI's
registration of the mark "GINEBRA KAPITAN."

The Court's Ruling

The Court finds that "GINEBRA" is not a generic mark.

Procedural Matters

In G.R. No. 219632, the Court finds that, by initially instituting an

ordinary appeal, GSMI resorted to the wrong mode of appeal. When GSMI
filed its appeal, Sec. 2, Rule 9 of the Rules of Procedure for Intellectual
Property Rights Cases 122 applies, and it provides that:

SECTION 2. How Appeal Taken. - All decisions and final orders

shall be appealable to the Court of Appeals through a petition for review
under Rule 43 of the Rules of Court.

The petition for review shall be taken within fifteen (15) days from
notice of the decision or final-order of the Regional Trial Court designated
by the Supreme Court as Special Commercial Courts. Upon proper motion
and the payment of the full amount of the legal fee prescribed in Rule 141,
as amended, and before the expiration of the reglementary period, the Court
of Appeals may grant an additional period of fifteen (15) days within which
to file the petition for review.•No further extension shall be granted except
for the most compelling reasons, and in no case to exceed fifteen ( 15)
days. 123 ( emphasis supplied)

Thus, when the trial court renders a decision in an intellectual rights

case, the proper mode of appeal would be a petition for review under Rule 43
of the Rules of Court filed before the CA, pursuant to the Rules of Procedure
for Intellectual Property Rights Cases, and not an ordinary appeal under Rule
41 of the Rules of Court.

122
A.M. No. 10-3-10-SC, October 18, 2011.
123
This provision has been retained in 2020 Revised Rules of Procedure for Intellectual Property Rights
Cases, A.M. No. 10-3-10-SC, October 6, 2020.
 Decision 24 G.R. Nos. 196372, 210224,
216104 & 219632

Accordingly, GSMI should have entirely pursued its petition for review
under Rule 43 before the CA in CA-G.R. SP No. 127255, which it
subsequently filed when the notice of appeal was initially denied by the RTC.
Nevertheless, since the RTC, in its Order dated February 14, 2013, gave due
course to GSMI's Notice of Appeal on the grounds ofliberality and substantial
justice, which routinely elevated the case before the CA docketed as CA-G.R.
CV No. 100332, it cannot be said thatGSMI was completely relieved of its
duties. Notably, GSMI filed the manifestation with motion for consolidation
to consolidate the petition for review under Rule 43, in CA-G.R. SP No.
127255, and the ordinary appeal, in CA-G.R. CV No. 100332. It just so
happened that the CA already rendered its decision in CA-G.R. SP No.
127255, thus, consolidation was no longer possible.

Nevertheless, even if the petition in G.R. No. 210224 is disregarded

because of the wrong mode of appeal, it is inconsequential and immaterial
because the same issues raised in said petition - whether "GINEBRA" is a
generic mark and whether TDI committed trademark infringement and unfair
competition- would still be tackled under the consolidated cases ofG.R. Nos.
196372, 210224, and 216104.

The Court has allowed some meritorious cases to proceed despite

inherent procedural defects and lapses. This is in keeping with the principle
that rules of procedure are mere tools designed to facilitate the attainment of
justice and that strict and rigid application of rules which would result in
technicalities that tend to frustrate rather than promote substantial justice must
always be avoided. It is a far better and more prudent cause of action for the
court to excuse a technical lapse and afford the parties a review of the case to
attain the ends of justice, rather than dispose of the case on technicality and
cause grave injustice to the parties, giving a false impression of speedy
disposal of cases while actually resulting in more delay, if not a miscarriage
of justice. 124

Substantial Matters

A trademark is any distinctive ~ord, name, symbol, emblem, sign, or

device, or any combination thereof, adopted and used by a manufacturer or
merchant on his goods to identify and distinguish them from those
manufactured, sold, or dealt by others. 125 It is intellectual property deserving
protection by law, and susceptible to registration if it is crafted fancifully or
arbitrarily and is capable of identifying and distinguishing the goods of one
manufacturer or seller from those of another. 126 In the recent case of Zuneca
124
Republic of the Phils. v. Heirs ofEvaristo Tiotioen, 589 Phil. 145, 155 (2008).
1
~ Societe Des Produits, Nestle, S.A. v. Puregold Price Club, 817 Phil. 1030, 1044 (2017).
1 6
- Dy v. Court ofAppeals, 807 Phil. 8 l 9, 828 (20 l 7). .
Decision 25 G.R. Nos. 196372, 210224,
216104 & 219632

Pharmaceutical v. Natrapharm; Inc., 127 the Court held that under the present
Intellectual Property Code, ownership of a trademark is acquired through
registration.

R.A. No. 8293 instructs that a mark means any visible sign capable of
distinguishing the goods (trademark) or services (service mark) of an
enterprise and shall include a. stamped or marked container of goods. 128
Notably, it does not elaborate how a mark may become capable of
distinguishing the goods or services of an enterprise. Instead, Sec. 123 thereof
enumerates the marks that are incapable of registration. 129

In the United States, the landmark case regarding the distinctiveness of

a trademark is Abercrombie & Fitch Co. v. Hunting World, Inc. 130 In that case,
the spectrum of distinctiveness for purposes of trademark protection was
introduced. It was explained therein that there are four (4) different categories
of marks and the strength of trademark protection accorded to each category
varies, to wit:

1. Fanciful or arbitrary;
2. Suggestive;
3. Descriptive; and
4. Generic.

A review of the relevant laws and jurisprudence affirms that the

spectrum of distinctiveness is also applicable in our jurisdiction. More
recently, Kolin Electronics Co., Inc. v. Kolin Philippines International,
Inc., 131 (Kolin) discussed the spectrum of distinctiveness.

The strongest trademarks, and those that enjoy the broadest protection,
are arbitrary and fanciful marks. 132 Fanciful marks are not found in the
dictionary. They are coined letter and/or number combinations whose sole
function is to serve as a mark, not as a word in the English language, and are
the "strongest and most distinctive" marks. 133 An example of a fanciful mark
would be the term "KODAK" for film products as that word is not found in

127
G.R. No. 2 l l 850, September 8, 2020.
128
R.A. No. 8293, approved June 6, 1997
SECTION 121. Definitions. -As used in Part III, the following terms have the following
meanings:
12 l. l. "Mark" means any visible sign capable of distinguishing the goods (trademark) or
services (service mark) of an enterprise ·and shall include a stamped or marked container of
goods[.]
129
Id. SEC. 123. Registrability. - 123. LA mark cannot be registered if it: xx x
130
537 F.2d 4 (2nd Cir. 1976).
131
G.R. No. 228165, February 9, 2021.
132
l Gilson on Trademarks §2.04 (2020).
133 Id.
Decision 26 · G.R Nos. 196372, 210224,
216104 & 219632

the dictionary and it was particularly coined for the sole purpose of
distinguishing a mark. 134

On the other hand, arbitrary marks are terms that have ordinary
meaning apart from their connection to the goods and services at issue, but
are unrelated to the goods and services on which they are applied. 135 Arbitrary
marks are words or phrases used as a mark that appear to be random in the
context of its use. They are generally considered to be easily remembered
because of their arbitrariness. They are original and unexpected in relation to
the products they endorse, thus, becoming themselves distinctive. 136

An example of an arbitrary mark was discussed in Romero v. Maiden

Form Brassiere Co., Inc. 137 In that case, the Court held that "ADAGIO," is a
musical term, which means slowly or in an easy manner, but when applied to
brassieres, develops to an arbitrary mark, not being a common descriptive
name for a particular style of brassieres, thus, it becomes distinct and
registrable as a trademark.

The next category of distinctiveness is suggestive marks. These are

inherently distinctive and thus protectable as trademarks. They are presumed
to be valid and may be registered without the necessity of presenting proof of
secondary meaning. These terms merely imply or suggest, but do not
explicitly describe the qualities or functions of a particular product or service.
Suggestive marks require imagination, thought, or perception to link the
trademark with the goods. 138

In GSJS Family Bank- Thrift Bank v. BPI Family Bank, 139 the Court
stated that suggestive marks are marks which merely suggest some quality or
ingredient of goods. The strength of the suggestive mark lies on how the
public perceives the word in relation to the product or service. In said case,
the Court held that the "FAMILY BANI(" is a suggestive mark, to wit:

The word "family" is defined as "a group consisting of parents and

children living together in a household" or "a group of people related to one
another by blood or marriage." Bank; on the other hand, is defined as "a
financial establishment that invests money deposited by customers, pays it
out when requested, makes loans at interest, and exchanges currency." By
definition, there can be no expected relation between the word "family" and
the banking business of respondent. Rather, the words suggest that

134 Id.
1,, Id.
136
GS/S Family Bank- Thrift Bank v. BPI Family Bank, 770 Phil. 158, 173 (2015).
137
119 Phil. 829, 832 (I 964).
138
I Gilson on Trademarks §2.04 (2020).
139
Supra note 136.
Decision 27 G.R. Nos. 196372, 210224,
216104 & 219632

respondent's bank is where family savings should be deposited. More,

as in the [Ang v. Teodoro], the phrase "family bank" cannot be used to
define an object. 140 ( emphasis supplied)

The next category, which entails a weaker trademark protection, is

descriptive terms. Words which are merely descriptive of character, qualities,
or composition of article, or of place where it is manufactured or produced,
cannot be monopolized as trademark. 141 Sec. 123 of the R.A. 8293 states that
descriptive marks are generally not registrable as trademarks, viz.:

SECTION 123. Registrability. - 123.1. A mark cannot be

registered if it:

xxxx

(j) Consists exclusively of signs or of indications that may serve in

trade to 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;

(k) Consists of shapes that may be necessitated by technical factors

or by the nature of the goods themselves or factors that affect their intrinsic
value;

(I) Consists of color alone, unless defined by a given form[.]

In Asia Brewery, Inc. v. C~urt ofAppeals, 142 the Court held that "PALE
PILSEN" is a descriptive term because it merely describes the color (pale), of
a type of beer (pilsen), which is a light bohemian beer with a strong hops
flavor that originated in the City of Pilsen in Czechoslovakia. Since it was a
descriptive term, it cannot be appropriated as a trademark for exclusive use.

Nevertheless, there is an exception wherein a descriptive mark may

become registrable as a trademark based on the doctrine of secondary meaning.
Under this doctrine, a word or a phrase that is "originally incapable of
exclusive appropriation" may nonetheless be used as a trademark of an
enterprise if such word or phrase-by reason of the latter's long and exclusive
use thereof with reference to its article-has "come to mean that such article
was [its] product." 143 This doctrine of secondary meaning shall be
meticulously discussed infra.

140
Id. at 174-175.
141
4 Computer Contracts II (2020).
142
296 Phil. 298, 3 I 4 (I 993).
143
See Lyceum of the Philippines, Inc. v. Court ofAppeals, 292 Phil. 609,618 (1993), citing Philippine Nut
Industry Inc. v. Standard Brands, Inc., 160 Phil. 581, 592-593 (1975).

i
Decision 28 G.R. Nos. 196372, 210224,
216104 & 219632

The last and weakest mark in the spectrum of distinctiveness is the

generic mark. A generic word or term is the name by which a class of products
or services is commonly known. 144 These are words or signs that name the.
species or object to which they apply. 145 For this reason, they are not eligible
for protection as marks under the IP Code 146 as the law precisely requires a
trademark to be comprised of words or signs that are "capable of
distinguishing the goods or services ofa [particular] enterprise." 147

Generic terms are those which constitute "the common descriptive

name of an article or substance," or comprise the "genus of which the
particular product is a species," or are "commonly used as the name or
description of a kind of goods," or "imply reference to every member of a
genus and the exclusion of individuating characters," or "refer to the basic
nature of the wares or services provided rather than to the more idiosyncratic
characteristics of a particular product," and are not legally protectable. 148

In our jurisdiction, the registration and use of generic words as

trademarks are expressly proscribed under RA No. 8293. Thus, Sec. 123.l(h)
of the law bars the registration of generic names for such goods or services
that they seek to identify, to wit:

SECTION 123. Registrability. - 123.1. A mark cannot be

registered if it:

xxxx

(h) Consists exclusively of signs that are generic for the goods
or services that they seek to identify; 149

In a similar manner, Sec. 151. l(b) of the same law renders cancellable
registered trademarks that subsequently develop generic signification for the
products or services they represent. 150

144
Trademark Manual and Examination Procedures of the United States Patent and Trademark Office
(USPTO), October2017 edition, Chapter 1200, §1209.0l(c).
145
Kolin Electronics Co., Inc. v. Kolin Philippines International, Inc., supra note ] 31.
1•1~ .
147
See Sec. 121.1., R.A. No. 8293.
148
Societe des Produits Nestle, S.A. v. Court ofAppeals, 408 Phil. 307,325 (2001).
149
Sec. 123, R.A. No. 8293.
150
(b) At any time, if the registered mark becomes the generic name for the goods or services, or a portion
thereof, for which it is registered, or has been abandOned, or its registration was obtained fraudulently or
contrary to the provisions of this Act, or if the registered mark is being used by, or with the permission of,
the registrant so as to misrepresent the source of the goods or services on or in connection with which the
mark is used. If the registered mark becomes the generic name for less than all of the goods or services for
which it is registered, a petition to cancel the registration for only those goods or services may be filed. A
registered mark shall not be deemed to be the generic name of goods or services solely because such mark is
also used as a name of or to identify a unique product br service. The primary significance of the registered
Decision 29 G.R. Nos. 196372, 210224,
216104 & 219632

An example of a generic mark would be "COFFEE" for a product of

coffee. 151 Thus, a generic word alone is not subject to exclusive appropriation
because it does not distinguish itself from the genus of which the particular
product is a species. Stated differently, a generic term names a "class" of
goods or services; rather than any particular feature or exemplification of the
class. 152

In sum, based on the spectrum of distinctiveness, fanciful, arbitrary, and

suggestive marks carry strong trademark protection and are registrable. On
the other hand, descriptive marks are weak in distinctiveness and are generally
not subject to trademark registration. As an exception, descriptive marks may
be registrable under the doctrine of secondary meaning, as with the long use
of a particular product, it comes to be known by the public as specifically
designating that product. Finally, generic marks are the weakest in the
spectrum of distinctiveness and do not deserve any protection under the
trademark law because these marks simply refer to the genus of the product.

In this case, the mark under dispute is "GINEBRA" for the gin product
of GSMI. The Court is tasked to determine which spectrum of distinctiveness
"GINEBRA" falls. If this term is either fanciful, arbitrary, or suggestive, then
it is a registrable mark because of its distinctiveness. If it is a descriptive mark,
then as a rule it is not registrable unless the doctrine of secondary meaning
applies. Lastly, if the mark is a generic term, then it is not subject to any
protection at all and cannot be appropriated exclusively. To begin the analysis,
one question must be answered: how are generic terms determined?

Determination ofgenericness

The ultimate factor in determining whether a particular word is generic,

is public perception. 153 In the landmark US case of Bayer v. United Drug, 154
the basic question underlying this test must be posed:

"[w]hat do the buyers understand by the word for whose use the parties are
contending?" 155

mark to the relevant public rather than purchaser motivation shall be the test for determining whether the
registered mark has become the generic name of goods or services on or in connection with which it has been
used.
151
See Coffee Partners, Inc. v. San Francisco Coffee & Roastery, Inc., 628 Phil. 13, 24 (2010).
152
Patent and Trademark Office v. Booking.com B. V., 140 S. Ct. 2298, 207 L. Ed. 2d 738 (2020).
153
See Bayerv. United Drug, 272 F. 505 (S.D.N.Y 1921). Ctf. Sec. 151(b) ofR.A. No. 8293.
154 Id.
155 Id.
Decision 30 G.R. Nos. 196372, 210224,
216104 & 219632

Based on public perception, a word is regarded as generic if the relevant

consuming public understands such word as merely referring to the general
class of product it purports to represent as a mark. 156 Conversely, if the
relevant consuming public understands a word as pertaining to the product of
a particular enterprise, then such word is not considered as generic but a
distinctive one. 157

In the United States, courts use the primary significance test, codified
in the Lanham Act or 15 U.S.C. §1064(3), to determine whether a term is
generic. 158 It provides:

xxxx

(3) At any time if the registered mark becomes the generic name for
the goods or services, or a portion thereof, for which it is registered, or is
functional, or has been abandoned, or its registration was obtained
fraudulently or contrary to the provisions of [S]ection 1054 of this title or
of subsection (a), (b), or (c) of [S]ection 1052 of this title for a registration
under this chapter, or contrary to similar prohibitory provisions of such prior
Acts for a registration under such Acts, or if the registered mark is being
used by, or with the permission of, the registrant so as to misrepresent the
source of the goods or services on or in connection with which the mark is
used. If the registered mark becomes the generic name for less than all of
the goods or services for which it is registered, a petition to cancel the
registration for only those goods or services may be filed. A registered mark
shall not be deemed to be the generic name of goods or services solely
because such mark is also used as a name of or to identify a unique product
or service. The primary significance of the registered mark to the
relevant public rather than purchaser motivation shall be the test for
determining whether the registered mark has become the generic name
of goods or services on or in connection with which it has been used. 159

Under the primary significance· test, a term is not generic when the
primary significance of the term in the minds of the consuming public is not
the product but the producer. 160 The critical issue in genericness cases is
whether members of the relevant public primarily understand the term sought
to be protected to refer to the genus of goods or services in question. 161
Accordingly, based on public perception, if the consuming public primarily
associates or signifies a particular term to a specific producer with its goods
or services, then such term cannot be considered as generic.

156
Levy, Marc C., From Genericism to Trademark Significance: Deconstructing the De Facto Secondary
Meaning Doctrine, Volume 95, No. 6, The Trademark,Reporter (November-December 2005).
151 Id.
158
See Genessee Brewing Co., Inc. v. Stroh Brewing Co., 124 F.3d 137, 144 (2d Cir. I 997).
159
15 U.S.C. §1064(3). ·
16
°
161
Kellogg Co. v. National Biscuit Co., 305 U.S. 111, I 18 (1938).
Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358, 1367 (Fed. Cir. 2018).
Decision 31 G.R. Nos. 196372, 210224,
216104 & 219632

Both direct and indirect evidence can be used to determine the primary
significance of a term to consumers. 162 Purchaser testimony and consumer
surveys, which are direct evidence, and listings, dictionaries, newspapers, and
other publications, which are indirect evidence, may show primary
significance of the term to the general public. 163 In the US, direct evidence of
consumers' understanding of a term, such as consumer surveys, are a
preferred method of proving genericness. 164 Consumer surveys have become
almost de rigueur in litigation over genericness. Indirect evidence, such as
dictionary definitions, may be considered as well but are not determinative of
how a term is understood by the consuming public. 165

Not coincidentally, in the Philippines, a word or a sign's distinctive

capacity is the recognized benchmark of trademark protection:

PART III
THE LAW ON TRADEMARKS, SERVICE MARKS AND
TRADE NAMES

SECTION 121. Definitions. - As used in Part III, the following terms

have the following meanings:

121.1. "Mark' 1 means any visible sign capable of distinguishing

the goods (trademark) or services (service mark) of an
enterprise and shall include a stamped or marked container of
goods[.] (emphasis supplied)

The use of public perception as the main standard in determining the

genericness or distinctiveness of words is implied from the very rationale of
trademarks and trademark regulations. As can be derived from its function,
trademarks are meant to serve as devices by which the consuming public are
able to tell apart the product of one enterprise from another. 166 Consequently,
trademark regulations-particularly those that limit trademark protection only
to words or signs that have distinctive quality-were put in place, largely, in
order to eliminate potential causes of market confusion and thus ensure that
trademarks remain reliable source indicators for the consuming public. 167

162
See Glover v. Ampak, Incorporated, 74 F ..Jd 57 (4th Cir. 1996)
163 Id.
164
Princeton Vanguard, LLC v. Frito-Lay North America, Inc., 786 F.3d 960 (2015).
165
Berner Intern. Corp. v. Mars Sales Co., 987 F.2d 975 (3d Cir. 1993); cf Filipino Yellow Pages, Inc. v.
Asian Journal Publ'ns, Inc., 198 F.3d 1143, 1148 (9th Cir. 1999).
166
Mark P. McKenna, The Normative Foundations of Trademark Law, 82 Notre Dame L. Rev. 1839 (2013).
167
Id. However, it has also been said that trademark law serves to protect manufacturers' brands against
potential misappropriation by other entities. (See Hoopes, Neal, Reclaiming the Primary Significance Test:
Dictionaries, Corpus Linguistics, and Trademark Genericide, [2016]. [Available at:
https://ssm.com/abstracc=3025850 or http://dx.doi.org/J0.2139/ssm.3025850, last accessed on November 30
2020]). ,
Decision 32 G.R. Nos. 196372, 210224,
216104 & 219632

Notably, the primary significant test, which is used to measure public

perception in the United States to determine whether a term is generic or not,
is also reflected in our jurisdiction under Sec. 151. l(b) ofR.A. No. 8293. The
provision reads:

SECTION 151. Cancellation. - 15Ll: A petition to cancel a registration of

a mark under this Act may be filed with the Bureau of Legal Affairs by any
person who believes that he is or will be damaged by the registration of a
mark under this Act as follows:

(a) xxxx

(b) At any time, if the registered mark becomes the generic name for the
goods or services, or a portion thereof, for which it is registered, or has been
abandoned, or its registration was obtained fraudulently or contrary to the
provisions of this Act, or if the registered mark is being used by, or with the
permission of, the registrant so as to misrepresent the source of the goods
or services on or in connection with which the mark is used. If the registered
mark becomes the generic name for less than all of the goods or services for
which it is registered, a petition to cancel the registration for only those
goods or services may be filed. A registered mark shall not be deemed to be
the generic name of goods or services solely because such mark is also used
as a name of or to identify a unique product or service. The primary
significance of the registered mark to the relevant public rather than
purchaser motivation shall be the_ test for determining whether the
registered mark has become the ge!).eric name of goods or services on
or in connection with which it has been used. (n)

(c) xx x 168 (emphasis supplied)

Under Sec. 151.l(b) ofR.A. No. 8293, a registered trademark is made

susceptible to cancellation if it subsequently becomes a generic name for the
product or service it represents. In determining whether a registered trademark
has become generic, the provision categorically adopted as the test therefor-
"the primary significance of the registered mark to the relevant public ... " 169
This, in franker terms, is an explicit call for the application of public
perception under the primary significance test in determining the genericness
or distinctiveness of a mark.

Similarly, Sec. 8, Rule 18 of the 2020 Revised Rules of Procedure for

Intellectual Property Rights Cases states that the test for determining the
genericness of a mark depends on the primary significance of the mark to the
public, to wit: ·

168
Sec. 151.1. R.A. No. 8293.
169 Id.
Decision 33 G.R. Nos. 196372, 210224,
216104 & 219632

SECTION 8. Generic Marks. - A registered mark shall not be

deemed to be the generic name of goods or services solely because such
mark is also used as a name of or to identify a unique product or service.

The test for determining whether the mark is or has become the
generic name of goods or services on or in connection with which it has
been used shall be the primary significance of the mark to the relevant
public rather than purchasi:r motivation. (emphasis supplied)

Accordingly, the above-cited provision expressly adopts the primary

significance test to determine public perception since this test applies to an
inquiry where the genericness of words or marks is at issue. In other words,
whether a word is generic or not is a question of the primary significance of
the word based on public perception.

Consequently, a generic i:erm a century ago may become a distinctive

mark today because of the change in its primary significance based on public
perception. In the United States, there have been instances where a generic
mark from long ago became a distinctive mark because of the shift in primary
significance based on public perception. In Singer Manufacturing Co. v. June
Manufacturing Co., 170 it was declared in 1896 that "SINGER" is a generic
mark for a type of sewing machine. Subsequently, in Singer Mfg. Co. v.
Redlich, 171 it was declared that "SINGER" had become a valid trademark
because of the decades spent on promoting their product and the investment
spent in advertising to keep Singer Manufacturing Co.'s names, trademarks,
services and merchandise relevant before the public. Thus, while "SINGER"
was initially declared as generic, it nevertheless became a registrable mark
decades later due to the change in public perception.

More recently, in Patent and Trademark Office v. Booking.com B. V., 172

the Supreme Court of the Uni~ed States (SCOTUS) ruled that the primary
significance of the registered mark to the relevant public shall be the test for
determining whether the registered mark has become the generic name of
goods or services. Initially, both "BOOKING" and ".COM" were generic
terms that could convey no source-identifying meaning. However, the
SCOTUS found that, based on survey evidence to establish the primary
significance of the mark utilizi'ng public perception, the consuming public
primarily understands that utilizing "BOOKING.COM" does not refer to a
genus, rather, it is descriptive of services involving 'booking' available at that
domain name. 173 SCOTUS, having determined that "Booking.com" is

170
163 U.S. 169, I 6 S. Ct. I 002 (I 896).
m 109 F. Supp. 623 (S.D. Cal. 1952).
172
Patent and Trademark Office v. Booking.com B. V., 140 S. Ct. 2298, (2020).
173
Id.
Decision 34 G.R. Nos. 196372, 210224,
216104 & 219632

descriptive, affirmed the findings of the district court that the term had
acquired secondary meaning as to hotel-reservation services. 174

Conversely, a distinctive mark decades ago may become a generic mark

today because of the shift in public perception. This is contemplated under
Sec. 151.1 (b) ofR.A. No. 8293 regarding cancellations of trademark that have
become generic pursuant to the primary significance of the registered mark to
the relevant public. The deterioration of a trademark into a generic name is
ordinarily the result of a combination of complex factors, from consumer
behavior to the trademark owner's lack of awareness and its inability to act. 175

For instance, in Bayer Co. v. United Drug Co., 176 the mark "ASPIRIN"
originally referred to the acetylsalicylic acid product of Bayer Co. However,
as time passed and due to loss of distinctiveness or genericization, the term
"ASPIRIN" became the common nam~ for the drug and the term has passed
into public domain. From that point, the mark became generic and could not
be subject to trademark protection. Again, it was emphasized therein that the
determination of genericness lies in .the use of the word to the general
consuming public.

As brilliantly expounded by Justice Caguioa, "a generic term may

evolve into a descriptive term and it. is only when it has already become
descriptive that it may be capable of acquiring distinctiveness based on Sec.
123.2 of the R.A. No. 8293. In other words, under the doctrine of secondary
meaning, a term cannot jump from being generic to being distinctive at once.
It must first evolve into a descriptive term and thereafter acquire
distinctiveness." 177

However, it must be emphasized that if the generic mark does not

evolve in the spectrum of distinctiveness, based on the primary significance
test, and remains generic despite the- passage of time and shift in public
perception, then such generic mark still remains unregistrable under Sec.
123.1 of the R.A. No. 8293.

The next inquiry to be addressed is: how is the primary significance of

the mark based on public perception determined to resolve the issue of
genericness? In this case, since the term "GINEBRA" is alleged to be a foreign

174
Id. at 2304.
175
I Gilson on Trademarks §2.02 (2020).
176
272 F. 505 (1921).
177
Concurring and Dissenting Opinion of Justice Caguioa, pp. 25-26.
Decision 35 G.R. Nos. 196372, 210224,
216104 & 219632

word, the doctrine of foreign equivalents may be explored to decide whether

such mark is generic.

Doctrine offoreign equivalents·

The doctrine of foreign equivalents is a legal principle that advocates

resort to dictionary translations in order to ascertain whether a foreign word
is generic or not. It stipulates that a foreign word ought to be considered
generic with respect to a certain product if the English translation thereof
likewise concedes a generic meaning in relation to such product. 178

The general idea behind the doctrine of foreign equivalents is fairly

simple. A common term from another country used to describe an item from
that same country should not be given trademark protection in this country. 179
Words that are foreign equivalents of generic or merely descriptive terms may
not merit legal protection where consumers would recognize the generic or
descriptive meaning of the foreign terms. 180

Marks consisting of or including foreign words or terms from common,

modem languages are translated into English to determine genericness,
descriptiveness, likelihood of -confusion, and other similar issues. With
respect to likelihood of confusion, it is well-established that foreign words or
terms are not entitied to be registered if the English language equivalent has
been previously used on or registered for products which might reasonably be
assumed to come from the sam~ source. 181

Following this doctrine, a tribunal may, under certain circumstances,

translate foreign words into their English-equivalent in order to determine
their genericness and descriptiveness. Generic or descriptive names for a
product, in whatever language, belong in the public domain if the typical
consumer would recognize those names as generic or descriptive. The foreign
equivalent of a generic term is unregistrable where the typical consumer
would translate the term into English. No merchant may obtain the exclusive
right over a trademark designation if that exclusivity would prevent
competitors from designating a.product as what it is in the foreign language
their customers know best. 182

178
Trademark Manual and Examination Procedures of the United States Patent and Trademark Office
(USPTO), supra note 144, § 1209.03(g), citing In re N Paper Mills, 64 F.2d 998, I 002, 17 USPQ 492, 493
(C.C.P.A. 1933).
179
The Foreign Equivalents Doctrine ... In English?, 28 Tex. Intel!. Prop. L.J. 129, 134.
180
I Gilson on Trademarks §2.02 (2020).
181
6 Gilson on Trademarks Examination Guide 1-08 (2020).
182
I Gilson on Trademarks §2.02 (2020).

fl
Decision 36 G.R. Nos. 196372, 210224,
216104 & 219632

Several cases in the United States have applied the doctrine .of foreign
equivalent to determine whether a foreign word is a generic mark. In In re
Northern Paper Mills, 183 the court therein denied the registration of the
foreign Spanish word "GASA" for toilet paper, which translated to English
is "Gauze," because it merely describes the product as a thin, slight, and
transparent fabric. Similarly, in Weiss Noodle Co. v. Golden Cracknel & .
Specialty Co., 184 the court denied the registration of the foreign Hungarian
word "HA-LUSH-KA" or "GALUSKA" for egg noodles, which translated to
English was "Noodles," hence, a generic mark. Further, in In Hyuk Suh v.
Choon Sik Yang, 185 the Korean word "KUK SOOL," which translated to
English as "National Martial Arts," was found generic and cannot be protected
under trademarks laws, particularly, for trademark infringement.

In our jurisdiction, the concept of the doctrine of foreign equivalents,

while not expressly mentioned in R.A. 8293, has been fundamentally applied
in some court cases. In Lyceum of the Philippines, Inc. v. Court ofAppeals, 186
the Court found the Latin word "LYCEUM," which in English translates to
"University," a generic mark, hence, not subject to the protection of trademark.
Neither was the doctrine of secondary meaning applied therein because the
petitioner failed to prove the exclusive use of the word for a long period of
time considering that there are numerous other institutions that use
"LYCEUM" and, in fact, one of those institutions even predated the petitioner
in the usage of the word "LYCEUM."

In contrast, in Kensonic, Inc. v. Uni-Line Multi-Resources, Inc.

(Phil.), 187 the Court declared as foreign the word "SAKURA" which, when
translated to English, refers to a "Japanese flowering cherry." At first glance,
it may be considered as generic in nature. However, since the said mark was
used in an arbitrary manner to identify products of DVD and VCD players,
which were totally not associated with cherry blossoms, the "SAKURA" mark
was allowed to be appropriated as a valid trademark.

Hence, as a general rule, when there is a foreign term, the English

translation evidence is a considerable factor for the courts in determining
whether to apply the doctrine of foreign equivalents. If the translation
evidence shows that the English translation is unambiguously literal and direct,
with no other relevant connotations or variations in meaning, the doctrine has
generally been applied. 188

183
64 F.2d 998, (C.C.P.A. 1933).
184
290 F.2d 845, (C.C.P.A. 1961), 129 U.S.P.Q. (BNA) 411.
185
987 F. Supp. 783, (N.D. Cal. 1997).
186
Supra note 143 at617-620.
187
832 Phil. 495,507 (2018).
188
8 Trademark Manual of Examining Procedure 1207 (2019).
Decision 37 G.R. Nos. 196372, 210224,
216104 & 219632

Dictionary definitions ar~ typically good gauges of how the public

understands a word or term. Under ordinary circumstances, a dictionary entry
defining a word as a generic name of a class of products is reasonable evidence
that the public perceives such word as such. 189 However, as stated above,
while dictionary definitions are indirect evidence to establish primary
significance, it may not be determinative or conclusive of how a term is
understood by the consuming public. 190

Exceptions to the doctrine of

foreign equivalents

Nevertheless, there are limitations to the applicability of the doctrine of

foreign equivalents when a foreign word is not translated to its English or
dictionary definition. In those exceptions, the foreign word will not be
translated for the purpose of trademark registration.

The first limitation was discussed in the leading US case of Palm Bay
Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772. 191 The
applicant therein wanted to register the French term "VEUVE ROYALE,"
which refers to "Royal Widow" when translated to English, for its sparkling
wine products. An oppositor contested the application because it is
confusingly similar with its registered trademark "THE WIDOW" for its wine
products. The federal court held that:

Although words from modem languages are generally translated

into English, the doctrine of foreign equivalents is not an absolute rule
and should be viewed merely as a guideline. The doctrine should be
applied only when it is likely that the ordinary American purchaser
would "stop and translate [the word] into its English equivalent." xx x
(emphasis supplied)

Indeed, the doctrine of foreign equivalents is not an absolute rule and

should only be considered as a guideline. In addition, the doctrine should only
be applied when an ordinary purchaser would "stop and translate the foreign
word into its English equivalent." If an ordinary purchaser would not likely
"stop and translate the foreign word" because the said word already signifies
a different meaning based on public perception, then the doctrine of foreign
equivalents is inapplicable. In that case, since an appreciable number of
purchasers are unlikely to be aware that VEUVE means "widow" and are

189
See Hoopes, Neal, Reclaiming the Primary Significance Test: Dictionaries, Corpus Linguistics, and
Trademark Genericide (2016). (Available at: https://ssm.com/abstractc3025850 or
http://dx.doi.org/10.2139/ssm.3025850, last accessed on November 30, 2020).
190
Id. cf Filipino Yellow Pages, Inc. v. Asian Journal Pub/'ns, Inc., 198 F.3d 1143, 1148 (9th Cir. 1999).
191
396 F.3d 1369 (Fed. Cir. 2005). ·
Decision 38 G.R. Nos. 196372, 210224,
216104 & 219632

unlikely to translate the "VEUVE ROYALE" into English, then the doctrine
of foreign equivalents was not applied.

Subsequently, in the case of In re Spirits Int'!, N V., 192 a federal court

held that the "ordinary American purchaser" is not limited to only those
consumers unfamiliar with non-English languages; rather, the term includes
all American purchasers, including those proficient in a non-English language
who would ordinarily be expected to translate words into English.

In that case, the applicant wanted to register the Russian term

"MOSKOVSKA YA," which translates "from Moscow" in English, for its
vodka products. The court held that it must be determined whether the
ordinary purchasers, which include the consuming public whether or not
fluent in the foreign language, would stop and translate the foreign word into.
English. If in the affirmative, then it is generic; otherwise, it is registrable.
Hence, the general consuming public, not merely those purchasers familiar
with the foreign language, is considered for the test of public perception with
respect to the distinctiveness of a mark.

The second limitation of the doctrine of foreign equivalents is with

respect to highly obscure and dead languages. If evidence shows that the
language at issue is highly obscure or a dead language, the doctrine will not
be applied. The determination of whether a language is "dead" is made on a
case-to-case basis, based upon the meaning the word or term would have to
the relevant purchasing public. For example, Latin is generally considered a
dead language. However, if evidence shows that a Latin term is still in use by
the relevant purchasing public (i.e., if the term appears in current dictionaries
or news articles), then this Latin term Would not be considered dead. The same
analysis is applied to other words or terms from uncommon or obscure
languages. 193 Notably, the primordial consideration of this limitation again is
the understanding of the relevant purchasing public of the foreign term.

The third limitation of the doctrine of foreign equivalents is the

alternate meaning of mark and marketplace circumstances or the commercial
setting in which the mark is used. 194 The said doctrine shall not be applied
when the foreign word has a meaning in the relevant marketplace that differs
from the translated meaning in English; or that the foreign expression will not
be translated by purchasers because of the manner in which the term is

192
563 F.3d 1347 (Fed. Cir. 2009).
193
8 Trademark Manual of Examining Procedure 1207 (2019).
194
6 Gilson on Trademarks Examination Guide 1-08 (2020).
Decision 39 G.R. Nos. 196372, 210224,
216104 & 219632

encountered in the marketing environment as used in connection with the

goods and/or services.

In other words, the doctrine will not be applied where the foreign word
has developed an alternate meaning in the relevant marketplace that is
different from the translated meaning in English, and the evidence shows that
the alternate meaning would be understood by the relevant purchasing
public. 195

This exception was observed in Cont'! Nut Co. v. Le Cordon Bleu, 196
where the applicant sought the· registration of the French term "CORDON
BLEU," for its edible shelled nuts. An oppositor disputed the registration
because it was confusingly similar with its mark "LE CORDON BLEU" for
culinary education services. The. applicant countered that "CORDON BLEU"
cannot exclusively be appropriated by the oppositor because it is a generic
mark for "Blue Ribbon." The court upheld the opposition and denied the
application because "CORDON BLEU" was a pre-existing mark in favor of
the oppositor, which is a well-known school of French cooking to the public.
Its literal translation to "Blue Ribbon" does not have the same significance to
the American public which creates a different commercial impression. The
application of the doctrine of foreign equivalents was therefore precluded
because the mark developed an alternate meaning in the relevant marketplace.

The doctrine also typically will not be applied where the record
indicates that it is unlikely purchasers would translate the mark because of
"marketplace circumstances or the commercial setting in which the mark is
used." 197 This was applied inln re Pan Tex Hotel Corp., 198 where it was found
that the Spanish language mark "LA POSADA" for lodging and restaurant
services, which translates to "the inn," would not likely be translated by
American purchasers. It was therein held that the manner of use of the mark
on the applicant's specimens, in which the applicant used the mark in
advertising brochures and on a sign mounted in front of its motor hotel with
the words "motor hotel" appearing directly under the notation LA POSADA,
is completely different from the typical inn.

The Court finds that the -limitations or exceptions to the doctrine of

foreign equivalents are applicable in our jurisdiction. Again, the ultimate test
to determine whether a mark is generic is its primary significance based on
public perception. 199 To determine public perception and whether the doctrine

195 Id.
196
494 F.2d 1395, (C.C.P.A. 1974).
197
6 Gilson on Trademarks Examination Guide 1-08 (2020).
198
190 USPQ 109, 110 (TTAB 1976).
199
Sec. 151.l(b) ofR.A. No. 8293.
Decision 40 G.R. Nos. 196372, 210224,
216104 & 219632

of foreign equivalents shall be applied, an analysis of the evidence of record,

including translation evidence, the nature of the foreign and English
combined-wording, and any other relevant facts and evidence should be
considered in these cases. 200

Indeed, the doctrine of foreign equivalents is not an absolute rule. It is

merely a guideline to determine the registrability of a mark. The doctrine of
foreign equivalents will_ not apply when, based on the test of primary
significance pursuant to public perception, the relevant public has placed a
different or alternate meaning or assessment to a foreign word.

The cases at bench present a novel backdrop because GSMI presented,

among others, two (2) consumer survey evidence, to prove that the relevant
consuming public does not consider "GINEBRA" as a generic mark.

Survey evidence

As a preliminary matter, it must be underscored that the Court is not a

trier of facts and a review is not a matter of right but of sound judicial
discretion. It will be granted only when there are special and important reasons
therefor. 201 The rule however, admits of exceptions, including when the
factual findings of the lower courts are conflicting. 202 Since the factual
findings of the lower courts and tribunals are conflicting in this case, the Court
finds that a factual review is proper.

Evidence is admissible when it is relevant to the issue and is not

excluded by the law or the rules on evidence. 203 Admissibility of evidence
should not be confused with its probative value. Admissibility refers to the
question of whether certain pieces of evidence are to be considered at all,
while probative value refers to the question of whether the admitted evidence
proves an issue. Thus, a particular evidence may be admissible, but its
evidentiary weight depends on judicial evaluation within the guidelines
provided by the rules of evidence. 204

The Court has recognized that American law is where most of our
intellectual property laws were patterned from. 205 Since the Court is
articulating a rather novel principle in our jurisdiction, it is not unreasonable
200
See 8 Trademark Manual of Examining Procedure 1207 (2019).
201
Central Bank ofthe Philippines v. Castro, 514 Phil. 425,436 (2005).
202
Cathay Pacific Steel Corp. v. Uy, Jr., G.R. No. 219317, June 28, 2021.
2
°' RULES OF COURT, Rule 128, Sec. 3 states: ·
Section 3. Admissibility of evidence. - Evidence is admissible when it is relevant to the issue and
is not excluded by the law or these rules. (3a)
204
Disiniv. Republic of the Philippines, G.R. No. 205172, June 15, 2021.
205
W land Holding, Inc. v. Starwood Hotels and Resorts Worldwide, Inc., 822 Phil. 23, 46-47 (2017).
Decision 41 G.R. Nos. 196372, 210224,
216104 & 219632

to consider the enunciated parameters as a guiding light in measuring the

probative value ofGSMI's survey evidence.

In the United States, consumer opinion is vital to several of the most

critical questions in trademark law: Are consumers likely to be confused as to
the source of a certain product or service? Do consumers associate a certain
term or design with a single source? Do a substantial number of consumers
find a particular mark to be famous? Has a name become so widely used it no
longer refers to a specific brand? Are consumers misled by a certain
advertising claim? It is not surprising that consumer surveys are commonly
conducted in trademark cases and properly-conducted surveys are considered
the most probative evidence available on many issues, particularly likelihood
of confusion, secondary meaning and misleading advertising. 206

Consumer survey evidence was recently cited by the SCOTUS in

Patent and Trademark Office v. Booking.com. B. V., 207 where based on the
survey evidence to establish public perception, the consuming public
primarily understood "BOOKING.COM" not to refer to a genus, but is
descriptive of services involving 'booking' available at that domain name. 208
Consumer surveys have long been used in trademark matters to establish
consumer perception of trademarks. These surveys have been used to aid the
likelihood of confusion, secondary meaning, and tacking analyses, among
others. 209

Nevertheless, consumer survey evidence is challenging. The right

questions need to be asked of'. the right number of people from the right
population in the right manner and designed and analyzed by the right expert
using the right methodology. And all of this can be very expensive. However,
it must be emphasized that survey evidence in trademark cases is not
mandatory 210 since it is only one of the pieces of evidence that can be
presented to determine the primary significance test.

Initially, survey evidence was deemed inadmissible in court

proceedings because it was treated as hearsay since the respondents who
answered the survey are not presented during trial; it is only the survey-
supervisor who testifies as an expert witness during trial. 211

206
3 Gilson on Trademarks §8.03 (2020).
207
Supra note 172.
20& Id.
209
Exxon Corp. v. Texas Motor Exch. of Houston, Inc., 628 F.2d 500, 506 (5th Cir. 1980).
210
3 Gilson on Trademarks §8.03 (2020). ,
211
See Du Pont Cellophane Co. v. Waxed Prods. Co., 6 F. Supp. 859, 885 (E.D.N.Y. 1934), modified, 85
F.2d 75 (2 Cir.), cert. denied, E. I. Du Pont De Nemours & Co. v. Waxed Products Co., 299 U.S. 601, 57 S.
Ct. 194, 81 L. Ed. 443 (1936); Elgin Nat'/ Watch Co. v. Elgin Clock Co., 26 F.2d 376 (D.Del.l 928).
Decision 42 · G.R. Nos. 196372, 210224,
216104 & 219632

Nevertheless, in the leading US case of Zippo Mfg. Co. v. Rogers Imps.,

Inc., 212
a trademark infringement ca~e, survey evidence was finally and
conclusively considered as a valid exception to the hearsay rule, to wit:

x x x Toe weight of case authority, the consensus of legal writers,

and reasoned policy considerations all indicate that the hearsay rule should
not bar the admission of properly conducted public surveys. Although courts
were at first reluctant to accept survey evidence or to give it weight, the
more recent trend is clearly contrary. Surveys are now admitted over the
hearsay objection on two technically distinct bases. Some cases hold that
surveys are not hearsay at all; other cases hold that surveys are hearsay but
are admissible because they are within the recognized exception to the
hearsay rule for statements of present state of mind, attitude, or belief. Still
other cases admit surveys without stating the ground on which they are
admitted.

The cases holding that surveys are not hearsay do so on the basis that
the surveys are not offered to prove the truth of what respondents said and,
therefore, do not fall within the classic definition of hearsay. This approach
has been criticized because, it is said, the answers to questions in a survey
designed to prove the existence of a .specific idea in the public mind are
offered to prove the truth of the matter contained in these answers. Under
this argument, when a respondent is asked to identify the brand of an
unmarked lighter, the answer of each respondent who thinks the lighter is a
Zippo is regarded as if he said, 'I believe that this unmarked lighter is a
Zippo.' Since the matter to be proved in a secondary meaning case is
respondent's belief that the lighter shown him is a Zippo lighter, a
respondent's answer is hearsay in the classic sense. Others have criticized
the non-hearsay characterization, regardless of whether surveys are offered
to prove the truth of what respondents said, because the answers in a survey
depend for their probative value on the sincerity of respondents. One of the
purposes of the hearsay rule is to subject to cross-examination statements
which depend on the declarant' s narrative sincerity. See Morgan, Hearsay
Dangers and the Application of the Hearsay Concept, 62 Harv.L.Rev. 177
(1948). The answer of a respondent that he thinks an unmarked lighter is a
Zippo is relevant to the issue of secondary meaning only if, in fact, the
respondent really does believe that the unmarked lighter is a Zippo. Under
this view, therefore, answers in a survey should be regarded as hearsay.

Regardless of whether the surveys in this case could be admitted

under the non-hearsay approach,· they are admissible because the
answers of respondents are expressions of presently existing state of
mind, attitude, or belief. There is a recognized exception to the hearsay
rule for such statements, and under it the statements are admissible to
prove the truth of the matter contained therein. 213 (emphasis supplied)

Guidance may be obtained from the Zippo case which mentioned "two
technically distinct bases" that would justify the admissibility of survey
evidence, to wit: necessity and trustworthiness. In other words, there must be
212
216 F. Supp. 670 (1963).
213
Id. at 682-683.
Decision 43 G.R. Nos. 196372, 210224,
216104 & 219632

a further examination of the necessity for the statements in the survey

evidence at trial and the circumstantial guaranty of trustworthiness
surrounding the making of the statements in the survey evidence. Zippo
explained the requirement of necessity in this wise:

Necessity x xx requires a comparison of the probative value of the

survey with the evidence, if any, which as a practical matter could be used
if the survey were excluded. If the survey is more valuable, then necessity
exists for the survey, i.e., it is the inability to get 'evidence of the same value'
which makes the hearsay statement necessary. When, as here, the state of
mind of a smoking population (115,000,000 people) is the issue, a
scientifically conducted survey is necessary because the practical
alternatives do not produce equally probative evidence. With such a survey,
the results are probably approximately the same as would be obtained if
each of the 115,000,000 people were interviewed. The alternative of having
115,000,000 people testify in court is obviously impractical. The
alternatives of having a much smaller section of the public testify (such as
eighty witnesses) .or using expert witnesses to testify to the state of the
public mind are clearly not as .valuable because the inferences which can be
drawn from such testimony to the public state of mind are not as strong or
as direct as the justifiable inf;_rences from a scientific survey. 214

Statistical methods can often estimate, to specified levels of accuracy,

the characteristics of a "population" or "universe" of events, transactions,
attitudes, or opinions by observing those characteristics in a relatively small
segment, or sample, of the population. Acceptable sampling techniques, in
lieu of discovery and presentation of voluminous data from the entire
population, can save substantial time and expense, and in some cases provide
the only practicable means to collect and present relevant data. 215 As regards
the element of trustworthiness, Zippo held:

The second element involved in this approach is the guaranty of

trustworthiness supplied by th_e circumstances under which the out-of-court
statements were made. A logical step in this inquiry is to see which of the
hearsay dangers are present. With regard to these surveys: there is no danger
of faulty memory; the danger of faulty perception is negligible because
respondents need only examine two or three cigarette lighters at most; the
danger of faulty narration is equally negligible since the answers called for
are simple. The only appreciable danger is that the respondent is insincere.
But this danger is minimized by the circumstances of this or any public
opinion poll in which scientific sampling is employed, because members of
the public who are asked questions about things in which they have no
interest have no reason to falsify their feelings. While sampling procedure
substantially guarantees trustworthiness insofar as the respondent's
sincerity is concerned, other survey techniques substantially insure
trustworthiness in other respects. If questions are unfairly worded to suggest

214
Zippo Manufacturing Company v. Rogers Imports, Inc., 216 F. Supp. 670 (1963).
215
Manual for Complex Litigation, § 11.493., p. I 02 (Federal Judicial Center 4th ed. 2004).
Decision 44 G.R. Nos. 196372, 210224,
216104 & 219632

answers favorable to the party sponsoring the survey, the element of

trustworthiness in the poll would be lacking. The same result would follow
if the interviewers asked fair questions in a leading manner. Thus, the
methodology of the survey bears directly on trustworthiness, as it does on
necessity.

Following these guidelines, survey evidence is a necessity in this case,

as survey results of the representative sample of the universe may show how
the relevant consuming public perceives the name "GINEBRA." Further, as
long as the party would be able to establish that the conduct survey has a
guarantee of trustworthiness, such as in this case, then such survey can be
admitted in evidence. As discussed, public perception is pertinent to the
determination of whether the doctrine of foreign equivalents applies.

In the U.S., under Rule 803(3) of the Federal Rules ofEvidence, survey
evidence is admissible as an exception to the hearsay rule because the
statements of the survey respondents express their present existing state of
mind, attitude, or belief, viz.:

Rule 803. Exceptions to the Rule Against Hearsay

The following are not excluded by the rule against hearsay, regardless of
whether the declarant is available as a witness:

xxxx

(3) Then-Existing Mental, . Emotional, or Physical

Condition A statement of the ~eclarant's then-existing state
of mind (such as motive, intent, or plan) or emotional,
sensory, or physical condition (such as mental feeling, pain,
or bodily health), but not including a statement of memory
or belief to prove the fact remembered or believed unless it
relates to the validity or terms of the declarant's wil!. 216

Laying the foundation for survey evidence will ordinarily involve

expert testimony and, along with disclosure of the underlying data and
documentation, should be taken up by the court well in advance of trial. Even
if the court finds deficiencies in the proponent's showing, the court may
receive the evidence subject to argument going to its weight and probative
value. 217 When the purpose of a survey is to show what people believe-but
not the truth of what they believe-the results are not hearsay. 218

216
Rule 803 of the Federal Rules of Evidence, as amended.
217
Manual for Complex Litigation, § 11.493., p. I 03 (l'ederal Judicial Center 4th ed. 2004).
218
Id. at 104.
Decision 45 G.R. Nos. 196372, 210224,
216104 & 219632

As properly explained by the CA in G.R. No. 219632, in the Philippines,

the equivalent exception under the hearsay rule, as in the situation above,
refers to the doctrine of independently relevant statement. Ordinarily, a
witness can only testify to those facts which he or she knows of his or her
personal knowledge, save for certain exceptions. 219 One of these exceptions
refers to the doctrine of independently relevant statement:

While the testimony of a witness regarding a statement made by

another person given for the_ purpose of establishing the truth of the fact
asserted in the statement is clearly hearsay evidence, it is otherwise if the
purpose of placing the statement on the record is merely to establish the fact
that the statement, or the tenor of such statement, was made. Regardless of
the truth or falsity of a statement, when what is relevant is the fact that such
statement has been made, the hearsay rule does not apply and the statement
may be shown. As a matter of fact, evidence as to the making of the
statement is not secondary but primary, for the statement itself may
constitute a fact in issue or is circumstantially relevant as to the existence of
such a fact. This is the doctrine of independently relevant statements. 220

Thus, when the person who supervised the conduct of the survey
testifies on the survey results, that person does not technically testify to prove
the truth or falsity of the statements or answers made by the survey
respondents or interviewees. Rather, the survey-supervisor, as an expert
witness, testifies to the fact that such statements or answers were indeed made
by the survey respondents and that those statements constitute their state of
mind. The survey-supervisor merely collated the results of the survey and
presented the trends, so to speak, culled from the survey respondents' answers.
Hence, even if the survey respondents themselves were not presented on the
stand to testify on their answers, a person's testimony, who supervised the
survey, as to the fact that such responses were made by the said respondents
should not be stricken off the record as being hearsay. 221

Notably, the 2020 Revised Rules of Procedure for Intellectual Property

Rights Cases, 222 allow market surveys to be presented in court to prove the
primary significance of the mark to the public and/or the likelihood of
confusion, to wit:

SECTION 9. Market Survey. - A market survey is a scientific

market or consumer survey which a party may offer in evidence to prove (a)
the primary significance of a mark to the relevant public, including its

219
Rollo (G.R. No. 219632), p. 102.
220
Arriola v. People, G.R. No. 199975, February 24, 2020.
221
Rollo (G.R. No. 219632), p. 103.
222
A.M. No. 10-3-10-SC, October 6, 2020.
Decision 46 G.R. Nos. 196372, 210224,
216104 & 219632

distinctiveness, its descriptive or generic status, its strength or well-

lmown status and/or (b) likelihood of confusion. (emphasis supplied)

Accordingly, the RTC in G.R: Nos. 210224 and 219632 erred in

declaring survey evidence as inadmissible under the hearsay rule. The
procedural rules allow the offer of survey evidence under the doctrine of
independently relevant statement and ·the 2020 Revised Rules of Procedure
for Intellectual Property Rights Cases. Verily, the admissibility of survey
evidence is now settled. While not compulsorily required in every intellectual
property litigation, survey evidence may be crucial to establish the
significance of a mark to the public and/or the likelihood of confusion. 223

With the matter of admissibility now settled, the credibility or probative

weight of evidence that a court or tribunal places on survey evidence must be
addressed.

The Manual for Complex Litigation224 of the Federal Judicial Center, 225
provides that the following factors should be considered in determining the
reliability of survey evidence presented by the parties, which affects its
probative value: ·

1. The universe was properly defined;

2. A representative sample of that universe was selected;
3. The questions to be asked of interviewees were framed in a
clear, precise and non-leading manner;
4. Sound interview procedures were followed by competent
interviewers who had no knowledge of the litigation or the
purpose for which the survey was conducted;
5. The data gathered was accurately reported;
6. The data was analyzed in accordance with accepted statistical
principles; and ·
7. Objectivity of the entire process was assured. 226 227

223
Id., Rule 18, Sec. 9.
224
Manual for Complex Litigation, § l 1.493., p. I 03 (Federal Judicial Center 4th ed. 2004).
225
The Federal Judicial Center is the research and education agency of the judicial branch of the U.S.
government. See Federal Judicial Center https://www.fic.gov/ [last accessed: May 26, 2022],
226
See McCarthy, Trademarks and Unfair Competi_tion §32:53 (1973), 4 Louisell and Mueller, Federal
Evidence §472 at 957 (1979), Manual for Complex Litigation, 116 (5th Ed.1981), and 3 Gilson on
Trademarks §8.03 (2020), citing Manual for Complex Litigation, Fourth (2004) §11.493.
227
In other cases, they add an eight factor that "the sample and the interviews were conducted independently
of the attorneys in the case." See G. Heileman Brewing Co. v. Anheuser-Busch, Inc., 873 F.2d 985 (7th Cir.
1989), ·
Decision 47 G.R. Nos. 196372, 210224,
216104 & 219632

The above-stated factors have been adopted by the US courts in

determining the reliability of survey evidence in trademark cases. 228 The
closer the survey question resembles the precise legal question before the
court and mirrors the experience of consumers in the marketplace, the more
weight the survey will have. 229 A court may place such weight on survey
evidence as it deems appropriate. 230

If the factors are not sufficiently established, then it will affect the
evidentiary weight of the survey evidence. The flaws in the universe, design
and interpretation of defendants' study undermine its probative value and it
deserves no weight in measuring actual confusion over source of goods or
services. 231

The US Trademark Manual of Examining Procedure also states that

survey evidence, market research, and consumer reaction studies are relevant
in establishing acquired distinctiveness and secondary meaning. 232 A survey
should reveal that the consuming public associates the proposed mark with a
single source, and not that the applicant is the first among many parties
associated with the designation. 233 Information regarding how a survey was
conducted, the number of participants surveyed, and the geographic scope of
the survey may assist in determining the probative weight of such evidence. 234

Accordingly, whenever survey evidence is presented by the parties, the

court must be circumspect to determine the reliability of the survey, by taking
into account the different factors that affect its probative value and evidentiary
weight.

Projects Bookman and Georgia

In this case, GSMI presented two (2) consumer survey evidence:

Project Bookman and Project Oeorgia. Project Bookman was presented in
G.R. Nos. 196372, 210224, 216104 & 219632. On the other hand, Project
Georgia was presented in G.R. Nos. 210224, 216104 and 219632. These

228
Toys R US, Inc. v. Canarsie Kiddie Shop, Inc., 559 F. Supp. 1189 (E.D.N.Y. 1983), Nestle Co., Inc. v.
Chester's Market, Inc., 571 F. Supp. 763 (D. Conn. 1983), Consumers Union ofUS, Inc. v. New Regina Corp.,
664 F. Supp. 753 (S.D.N.Y. 1987), Weight Watchers Intern., Inc. v. Stouffer Corp., 744 F. Supp. 1259
(S.D.N.Y. 1990), Gillette Co. v. Nore/co Consumer Products Co., 69 F. Supp. 2d 246 (D. Mass. 1999),
National Distillers Products v. Refreshment Brands, 198 F. Supp. 2d 474 (S.D.N.Y. 2002).
229
3 Gilson on Trademarks §8.03 (2020), citing Manual for Complex Litigation, Fourth (2004) §I 1.493.
230
Weight Watchers Intern., Inc. v. Stouffer Corp., 744 F. Supp. 1259 (S.D.N.Y. 1990).
231
See Weight Watchers Intern., Inc. v. Stouffer Corp., 744 F. Supp. 1259, 1276 (S.D.N.Y. 1990).
232
1212.06(d) Survey Evidence, Market Research and Consumer Reaction Studies, Trademark Manual of
Examining Procedure.
233
Id. See Am. Flange & Mfg. Co. v. Rieke Corp., 80 USPQ2d 1397, 1415 (TTAB 2006).
234 Id.
Decision 48 G.R. Nos. 196372, 210224,
216104 & 219632

surveys were administered by NFO Trends, Inc., an agency engaged in market

research and consumer behavior research.

The objectives of the survey Project Bookman were to test whether the
term "GINEBRA" had acquired a strong association with certain bra.rids
among gin drinkers, and to check for possible confusion in the market arising
from the project launch of TDI's "GINEBRA KAPITAN." The survey was
conducted from June 13 to July 6, 2003, covering the Greater Manila Area
(GMA), North Luzon, and South Luzon. 235

The survey "Project Georgia," on the other hand, had for its objective
the determination of the extent to which "Ginebra San Miguel Red" is being
identified with "Ginebra Kapitan" and. "Gin Kapitan" in terms of packaging.
The survey was conducted between March 17-21, 2005 in the 16 cities of
Metro Manila and Taytay, Rizal. 236

Following a review of the report on these surveys detailing their

purpose, methodology, and results, the Court is of the considered view that
they are necessary and trustworthy, and that both have significant probative
value.

A. Project Bookman

As regards Project Bookman, the record evinces its reliability:

First, the universe where the sample and respondents were taken was
properly defined. According to the technical details, the universe consisted of
a population of 6,203,643 gin drinkers in GMA, North Central Luzon and
South Luzon. 237 The sample tested appears to be representative of the relevant
consuming public. Respondents consisted of male individuals aged 18-55
years old from Classes D and E urban and rural households. They are bona
fide gin drinkers who drank gin in the past 4 weeks and who drink gin
regularly at an average frequency of twice a week. Majority of those surveyed
in North and South Luzon had elementary or high school education, while
those surveyed in GMA were mostly high school graduates or have had some
or completed college education. 238 This profile is consistent with GSMI's

235
Rollo (G.R. No. 196372), p.501.
236 Id. at 523.

,/
237
Id. at 503.
238
Id. at 513.

%
Decision 49 G.R. Nos. 196372, 210224,
216104 & 219632

target market: fishermen, farmers, loggers, workers, and the like, and even
working students. 239

Second, the record indicates that the sample is numerically relevant.

There was a sample of 100 gin drinkers per area, from GMA, North Luzon,
and South Luzon, 240 or a total of 300 respondents. The sampling design
consisted of two stages:

Stage I: Selection of sample areas

In GMA, areas were drawn from a list of electoral precincts.

The number . of precincts per city/municipality was
proportionate to the population of the area.

In North and South Luzon, the latest list of barangays was

used from which sample barangays were randomly chosen,
with equal probabilities assigned to each barangay. The
number of areas drawn was based on the estimated incidence
of gin drinkers, given that only five (5) households were to
be sampled per barangay.

Stage 2: Selection of households

In each sample area, five (5) qualified households were

chosen following a random start. In each household, all
males meeting the age requirement were given a chance to
be chosen. 241

On the other hand, the sample size was explained as follows:

The sample was disproportionately distributed so as to read each

area independently at an acceptable confidence level. In aggregating results
from the three areas, weights were subsequently applied to reflect the
corresponding proportion of gin drinkers in these areas.

Total Sample size of Population of Weighted base

interviewed gin drinkers gin drinkers

Greater Manila Area 155 100 1,373,004 137

North Central Luzon 116 100 2,566,164 257
South Luzon 108' 100 2,264,475 226
[Total] 379 300 6,203,643 620

239
Id. at 539.
240
Id. at 503.
241
Id. at 502.
Decision 50 G.R. Nos. 196372, 210224,
216104 & 219632

Note: The magnitude of possible random error at 95% confidence

level is as follows:

• 300 ± 5.6
• 100±9.8
• 50 ± 13.9242

In the affidavit that she identified in court during trial as an expert

witness, Abad, who is the President and Managing Director ofNFO Trends,
explained that this is scientifically representative of"Ginebra's" target market.
Thus:

Q17: After so determining the target market, what other factors, if

any, were determined and why:
A 17: We determined, and used, a representative sample of 100
respondents per test area, or a total of 300 respondents for the three areas
tested, namely, Greater Manila Area, North Central Luzon, and South
Luzon. A representative sample is defined as a number of people randomly
selected following accepted scientific sampling procedures. The size of the
sample used for Project Bookman (100 per area) is sufficiently large to
contain a wide spectrum of personal attributes and behavior within the
universe. A sample size of 100 per area is therefore scientifically
representative of the target market-universe subject of the survey. 243

xxxx

Q19: What are taken into account in determining the representative

sample of respondents for a survey, if any?
Al 9: Basically, the purpose and expectations of the survey, as well
as intended marketing applications, determine sample size. The size of the
sample, in turn, determines a range of margin of error---0therwise called a
probability of correctness. For purposes of the survey project of [GSMI],
the sample of I 00 respondents per area is a respectable base. This ensured
the independence of each area. 244 ( emphasis supplied)

Notably, the survey had a meticulously determined sample size.

Considering that there were 300 respondents in the survey, the margin of error
at 95% confidence level was acceptable at± 5.6.

Third, the questions asked to the survey respondents were framed in a

clear, precise and non-leading manner, There were also measures placed to
ensure the objectivity of the entire process. In other words, the questions were
posed to avoid bias. Three questions were asked from the respondents:

242
Id. at 503.
243
Id. at 396.
244 Id.
 Decision 51 G.R. Nos. 196372, 210224,
216104 & 219632

1. What brand comes to your mind when you see this (Showcard
with the word "GINEBRA")?245
2. What is the brand of the product we showed you? (Showed
back of the product "GINEBRA KAPITAN") 246
3. Who is the manufacturer of the product you saw? (Showed
front view of the product "GINEBRA KAPITAN") 247

Abad testified that she personally formulated the questions, and that she
particularly ensured that the questions were open-ended, not leading, and did
not suggest the desired answers:

Q22: What were taken into account in formulating these questions?

A22: Of foremost consideration in surveys is the integrity
thereof. This begins with ensuring that the questions to be asked of
respondents are properly phrased and sequenced. Thus, the questions
were open-ended, not leading, and did not suggest the desired answers.
For example, instead of just asking "Does (brand) come to your mind when
you see this (showcard with the word "Ginebra")?, we asked "What brand
comes to mind when you see this (showcard with the word "Ginebra")?
x x x. 248 ( emphasis supplied)

Further, Abad explained that the respondents of the survey were not
allowed to read questionnaires, so as to prevent them from anticipating
questions asked, thereby unconsciously and unnaturally structuring their
responses. 249

Likewise, in order to ensure confidentiality of the project, the

respondents were screened to ensure that neither they nor others in their
household work in advertising, market research, or in any company involved
in the manufacturing, distribution, marketing or sale of any kind of
beverages. 250

Fourth, the methodology was adequately explained and developed

from long years of experience by an organization that has established a
reputation in market research. NFO Trends is a reputable market research firm
that has been in the industry since 1980 and whose clients composed of
various large and well-known companies. 251

245
Id. at 508.
246
Id. at 51 I.
247
Id. at 512.
248
Id. at 397.
249
Id. at 398.
250
Id. at 502.
'" Id. at 393 and 395.
 •

Decision 52 G.R. Nos. 196372, 210224,

216104 & 219632

As regards methodology, the Project Bookman report states that face-

to-face interviews were conducted with the aid of a structured questionnaire.
Respondents were asked what brand comes to mind when they see a showcard
with the word "GINEBRA." Then, they were screened for regularity of gin
consumption. Finally, respondents were tested for packaging association.
Even-numbered respondents were shown the "GINEBRA KAPITAN" bottle
for about 5 seconds, with the back of the product facing respondents at a
distance of 4-5 feet, and asked the question: "What is the brand of the product
we showed you? On the other hand, odd-numbered respondents were shown
the "GINEBRA KAPITAN" bottle for about 5 seconds with the front label
facing respondents at a distance of 4-5 feet and asked the question: "Who is
the manufacturer of the product you saw?" 252 Abad's affidavit indicates that
this method was borne from experience: "x xx this time and distance by which
an ordinary person may view and have a clear and full impression of a gin
bottle is reasonable and may occur in ·and most closely approximates actual
market conditions." 253

Fifth, the data gathered was accurately reported and analyzed in

accordance with acceptable statistical principles. For the field control of the
survey, the field manager oversaw the proper implementation of the study.
She was assisted by two field coordinators who trained and supervised the
interviewers. Fallowing the quality standards promised, at least l 0% of the
interviews were supervised and 20% of the balance were back-checked. 254

Regarding the first question, 90% of the respondents associated the

word "GINEBRA" with GSMI as top-of-mind mention, which consists of
Ginebra San Miguel, San Miguel, La Tondena, or Ginebra Blue. 255 This figure
further increases to 92% when it includes total brand mentions. 256 Notably,
only 1% of the respondents associated "GIJ\TEBRA" with Tanduay. 257 The
word "GINEBRA" is practically exclu~ively associated with GINEBRA SAN
MIGUEL. The association of the word "GINEBRA" with other brands is
rather small and cannot be seriously taken because they are within the range
of sampling error. 258

With the second question, the survey shows that 82% of the respondents
stated the products of GSMI, which consists of Ginebra San Miguel, San
Miguel, La Tondena, or Ginebra Blue, 259 when shown with the back view of
the product ofGINEBRA KAPITAN. Only 16% of the respondents correctly
252
Id. at 504.
253
Id. at 398.
254
Id. at 505.
255
Id. at 508
256
Id. at 509.
257
Id. at 508.
258
Id. at 507.
259
Id. at 5 I 1.
 Decision 53 G.R. Nos. 196372, 210224,
216104 & 219632

named the product as "GIN KAPITAN." 260 The back view of the GINEBRA
KAPITAN bottle gives the impression that it is GINEBRA SAN MIGUEL,
the product ofGSMI. 261

With the third question,· the survey results indicate that 69% of the
respondents associated it with GSMI, when the respondents were shown the
front view of the product of GINEBRA KAPITAN, particularly, 86% and
83% of the respondents from GMA and South Luzon, respectively. 262 Only
6% of the respondents stated that the product was from Tanduay. 263 Notably,
25% of the respondents did not know the origin of the product. 264

Sixth, the interviewers who asked the survey respondents were unaware
of· the ongoing litigation. Abad stated in her affidavit that the field
interviewers, checkers, editor and encoders were not informed who the client
was, nor that the survey was to be used in litigation. The use of a code name
for the survey also prevents these persons from becoming biased. Project
Bookman was run like any of the 300 or so surveys that NFO conducts every
year_26s

Abad likewise added that "[t]o ensure integrity, [NFO] also does not
allow the client and its attorneys to participate in any aspect of the survey.
[GSMI] and its counsel were "intentionally not informed of the interview
schedules and venues." 266 It was added that "[NFO] was paid only for
conducting the survey and our fees were not conditioned upon the results
thereof. [NFO] would have been paid even if the results were unfavorable to
the client." 267

Finally, the survey is supported at trial by expert testimony. At the time

she testified in court about Project Bookman and Project Georgia, Abad had
been in the field of market research for over 40 years. She designed market
research studies for Proctor and Gamble, and was the project director for
operations of Consumer Pulse, Inc., an independent company engaged in
market research. In 1980, she founded Total Research Needs-MBL, Inc.,
which was renamed as NFO Trends, and subsequently renamed as TNS
Trends. She was a fellow and founder of the Social Weather Stations, Inc.,
and a member of various professional associations such as the Marketing and
Opinion Research Society of the Philippines (of which she had also been

2,0 Id.
261
Id. at 510.
262
Id. at 512.
263 Id.
264 ld.
265
Id. at 398.
266 Id.
261 Id.
Decision 54. G.R. Nos. 196372, 210224,
216104 & 219632

president), British Market Research Society, and European Society for

Opinion and Marketing Research. 268

Accordingly, the Court finds that, due to its reliability, Project

Bookman has substantial probative value in determining the distinctiveness of
the word "GINEBRA," which the consumer associates with GSMI and its gin
product. It also established that there was likelihood of confusion with GSMI
and the product "GINEBRA KAPITAN'' ofTDI.

B. Project Georgia

The manner in which the survey codenamed Project Georgia was

conducted is similar to that of Project Bookman. The Court finds that Project
Georgia is also reliable and has probative value in the present case.

First, the sample tested was representative of the relevant consuming

public. 65% of respondents were between 18 to 34 years old, about half are
single, and about one third have completed high school, with very few
possessed of college degrees. 72-77% were gainfully employed, mostly as
service workers, craftsmen and unskilled workers. Respondents likewise
consisted of male gin drinkers aged 18,55 years old from the same D-E Class.
The sample profile is consistent with GSMI's target market. 269 The objective
of the survey was to determine t..he extent to which Ginerba San Miguel Red
is being identified with Ginebra Kapitan and Gin ... Kapitan in terms of
packaging. 270

Second, 300 respondents were interviewed, and open-ended questions

were asked to avoid bias. Ten (10) areas within Metro Manila were randomly
selected. In each area, 2 central location sites were set up. Exactly 15
respondents (5 for each version) were interviewed in each central location. 271

A central location is a home or ~ffice where an interviewing area is set

up so that conversation is confined between the interviewer and the
respondent. Controls were implemented to ensure that each audio-visual
presentation (AVP) would be seen by an equal number of respondents with
comparable socio-demographic characteristics. 272

268
Id. at 394.
269
Id. at 523, 537.
270
Id. at 523.
271
Id. at 526.
zn Id.
 Decision 55 G.R. Nos. 196372, 210224,
216104 & 219632

Third, the methodology adopted in Project Georgia was a face-to-face

interview of respondents with ·the aid of a structured questionnaire. Aside
from the questionnaire, respondents were asked to view an audio-visual
presentation on a 29-inch colored television from 1-meter distance, of an
actual drinking session from the perspective of a passer-by for at least 6
seconds. The drinking session consists of 5 friends drinking gin in front of a
sari-sari store with two bottles of gin on the table in front of them. One bottle
displays the front part, while the other, the back part. A glass is handed to one
of the men who was urged by the rest of the group to finish up the drink. The
last two seconds of the AVP showed the man finishing up his drink in one
swig, for which he received a pat on the back from his friends as a sign of
approval. The A VP was prepared in three versions which showed the same
drinking situation and the same characters, the only difference being the brand
of gin on the table. One AVP showed bottles of "GINEBRA SAN MIGUEL
RED," a product of GSMI, and the other two showed bottles of "Ginebra
Kapitan" and "Gin Kapitan," products ofTDI, respectively. Each respondent
viewed only one version of the randomly-assigned AVP. 273

Fourth, after respondents had viewed the A VP, they were asked
questions pertaining to the packaging of the gin product and their awareness
of the gin brands. As regards packaging, respondents were asked the following
questions: "Starting from the beginning, would you please relate to me
everything that you have seen 9r heard in the video?" "What is the brand of
the product being drunk in the video?" "Who do you think is the manufacturer
of the product you saw in the video?" 274 Respondents were also asked about
their awareness of other gin brands, as well as the last gin brand they drank,
and the gin brand they drink most often. 275 Similar to Project Bookman, the
questions were open-ended to avoid leading questions that would suggest the
answer to the respondents.

Fifth, the data gathered from the survey was accurately reported and
thoroughly analyzed. After viewing the audio-visual presentation that shows
GSMI's product, respondents were asked what brand was the product shown
in the video. The results sho~ed that 80% of the respondents correctly
identified the brand of GINEBRA SAN MIGUEL. 276 If the other pet names
of GINEBRA SAN MIGUEL are considered, such as SAN MIGUEL,
GINEBRA, BILOG, the figures rise to 94% as correct answers. 277

On the other hand, when the product of GINEBRA KAPITAN was

shown in the audio-visual presentation, a significant majority of the
273
ld. at 524.
274
Id. at 525.
21s Id.
276
Id. at 528.
277
Id. at 529.
Decision 56 G.R. Nos. 196372, 210224,
216104 & 219632

278
respondents mistakenly thought it was GINEBRA SAN MIGUEL. The
confusion was more likely if pet names given to GINEBRA SAN MIGUEL
by consumers is considered. Thus, 70% of those respondents confused the
product of"GINEBRA KAPITAN" with GSMI's "Ginebra," "Gin Bilog," or
simply "Bilog." Only 10% of the respondents correctly identified the product
279
of "GINEBRA KAPITAN" with its brand name in the AVP .

The respondents in the survey shared the reasons why they identified
GINEBRA SAN MIGUEL as the brand shown in t.1-ie AVP. The label design
(in particular, the archangel, demonyo, angel, etc.), and bottle shape are the
key packaging elements that confused gin drinkers to say that GINEBRA
KAPITAN was GINEBRA SAN MIGUEL. 280 When shown GINEBRA
KAPITAN, its round bottle shape (45%), the predominant features in its label
design (32%), and logo (13%) are the key specific elements that lead
consumers into thinking that the group was drinking GINEBRA SAN
MIGUEL. 281 On the other hand, 40%·of the respondents relied on its label
design features, 40% refer to the round bottle shape, and 26% referred to its
logo in correctly identifying the product when the GINEBRA SAN MIGUEL
product was shown in the AVP. 282

As to the brand identification and awareness, the following results were

shown by the survey:

3. Awareness ofGSM Red (99%~99%) and GSM Blue (92%-94%) are

both at saturation.Awareness of both Ginebra Kapitan (71%-76%)
and Gin ... Kapitan (55%-62%) are still far from saturation.

Majority of those aware of Ginebra Kapitan mis-identify the brand

shown in the audiovisual presentation where the group was drinking
Ginebra Kapitan as Ginebra San Miguel (63 incorrect brand
identification out of 73 people aware of Ginebra Kapitan). 283

When the respondents were asked to name the manufacturer of the

brand shown on the AVP, more than three-fourths, or 84% of the respondents,
incorrectly named either SAN MIGUEL CORPORATION or GINEBRA
SAN MIGUEL or LA TONDENA as the manufacturer of GINEBRA
KAPITAN. 284 On the other hand, a majority (86%) correctly named GSl'vH,

278
Id. at 528.
"' Id.
280
Id. at 530.
2s1 Id.
282 Id.
283
!d. at 533.
284
Id. at 535.
Decision 57 G.R. Nos. 196372, 210224,
216104 & 219632

which consists of San Miguel or Ginebra San Miguel or La Tondefi.a, as the

manufacturer of GINEBRA SAN MIGUEL. 285

Finally, NFO Trends employed a field manager who ensured the

proper implementation of the survey, a field coordinator who trained and
supervised the interviewers, as well as trained female interviewers. All
interviews were conducted in the presence of the supervisor. 286 That the
interviewers were not informed who the client was, or that the survey will be
used in litigation may be inferred from the general manner in which
safeguards on the integrity of the survey were put in place. 287 Similar to
Project Bookman, the survey under Project Georgia was supported by the
expert testimony of Abad, who is an expert in market research.

The foregoing indubitably shows that both surveys, Project Bookman

and Project Georgia, complied with the parameters set forth to establish their
credibility. The selection of the target market and sample size, the open-ended
questions that ensured responses would not be skewed in favor of GSMI's
products, the methods by which data was collected and verified, were all
adequately explained. Abad, who may be considered an expert in the field of
market research, attests to the integrity of the empirical results.

The Court gives weight to the surveys since they are shown to have
reliably established the true state of mind of gin drinkers and addressed the
precise legal question before the Court, i.e., how the appropriate group of
consumers, in this case gin-drinkers, perceive GSMI's "Ginebra" gin product.
The survey results reveal that an overwhelming majority of the gin-consuming
public primarily identified the word "GINEBRA" with GSMI's brand of gin
products.

In essence, Project Bci,okman showed 90% of the respondents

associated the word "GINEBRA" with GSMI as top-of-mind mention. On the
other hand, the association of the word with the other brands is rather
insignificant since it is within- the range of sampling error. 288 In Project
Georgia, the survey showed that 84% of the respondents, incorrectly named
either SAN MIGUEL CORPORATION or GINEBRA SAN MIGUEL or LA
TONDENA as the manufacturer of GINEBRA KAPITAN. 289 The label
design, bottle shape, and product logo were the significant elements that

2ss Id.
286
Id. at 526.
287
Id. at 398.
288
Id. at 507.
289
Id. at 535.
 58 G.R. Nos. 196372, 210224,
Decision
216104 & 219632

actually confused gin drinkers to say that GINEBRA KAPITAN was the same
as GINEBRA SAN MIGUEL. 290

Throughout the course of the~e consolidated cases, these survey

evidence have been scrutinized by several tribunals and courts, which have
the authority to adjudicate questions of facts and appreciate the weight of
evidence. Upon review of the assailed decisions, the Court agrees with the
findings of the CA in G.R. Nos. 210224, 216104, and 219632 that these
consumer surveys are reliable, credible, and significant; and that the survey
methodology and sampling size undertaken, and the resulting empirical data,
were sufficient to establish the state of public perception with respect to the
term "GINEBRA." The entire survey projects-from the crafting of the
questions, the selection and sizing of the target market, the methods by which
the data were collected in the field, up to the analysis of the results-were
conducted in accordance with accepted standards of market research so as to
ensure and maintain the accuracy, reliability and freedom from bias of the
results. In her affidavit and testimony, Abad meticulously enumerated the
safeguards applied in the conduct of the surveys to ensure the integrity and
veracity of the empirical results. 291

Conspicuously, Projects Bookman and Georgia remain uncontroverted.

While TDI tried to discredit the surveys by arguing that the number of the
respondents did not constitute enough sample of the consuming public to
reach a conclusion about the strength of the "GINEBRA" brand, no evidence
was provided to establish its counter-hypothesis. TDI simply made
unsubstantiated allegations to dispute the empirical and scientific surveys
presented by GSMI. In the same manner, TDI had the opportunity to cross-
examine Abad and scrutinize the reliability of the results of the survey.
However, TDI was utterly unsuccessful in discrediting her, and the survey
data, figures, and outcome presented by GSMI.

To reiterate, NFO Trends which conducted the survey has been in the
market research for a long enough time as to gain the trust of well-established
corporations. Certainly, TDI cannot just claim that the research and survey
methodologies ofNFO Trends are wrong without substantiating it. And even
if GSMI has the burden to show that the surveys are admissible as competent
proof of their contents, as explained earlier, these were sufficiently established
based on the utmost detail and specificity · of the said surveys, the
representative samples, the methodology employed, and the careful
safeguards adopted to ensure the surveys' integrity. TDI could have
commissioned their own independent survey if it truly wanted to scientifically

290 Id.
291
Id. at 392-401.
Decision 59 G.R. Nos. 196372, 210224,
216104 & 219632

discredit and disprove the results ofNFO Trends' surveys as countervailing

evidence. But for reasons unknown, it did not. In any event, the methodology
utilized by NFO Trends is well-documented in Projects Bookman's and
Georgia's reports. and findings.

Verily, the Court finds that Projects Bookman and Georgia stand as
credible proof that an overwhelming majority of the Filipino gin-consuming
public primarily identified the word "GINEBRA," not as an ordinary term for
gin, but specifically as GSMI's brand of gin products.

Other supporting evidence

Under the US TrademarkManual of Examining Procedure, large-scale

expenditures in promoting and advertising goods and services under a
particular mark are significant to indicate the extent to which a mark has been
used. However, proof of an expensive and successful advertising campaign is
not in itself enough to prove secondary meaning. 292 The ultimate test in
determining whether a designation has acquired distinctiveness is the
applicant's success, rather than its efforts, in educating the public to associate
the proposed mark with a single source. There may be an examination of the
advertising material to determine how the term is being used, the commercial
impression created by such use, and what the use would mean to purchasers. 293
The applicant may indicate the types of media through which the goods and
services have been advertised (e.g., national television) and how frequently
the advertisements have appeared. 294

Aside from survey evidence, GSMI also presented other evidence

before the RTC to prove the distinctiveness of "GINEBRA" as its gin brand.
Among them was the testimony of expert witness Ma. Elizabeth Gustilo,
President and Chief Executive Officer of Lowe, Inc., an advertising agency
belonging to a multi-national advertising network and who has been engaged
in the field of advertising for about 25 years. Gustilo explained how the kind
of advertisements employed by GSMl and its predecessors-in-interest helped
cultivate a deep connection between Filipino gin drinkers, particularly those
in target classes C, D and E, and GSMI's gin products. 295

GSMI also submitted advertising materials it had used across decades,

showing the use of the word "GINEBRA" in its gin products. The earliest
documented print advertisement for "Ginebra San Miguel" appeared in the
April 12, 1948 issue of The Manila Times (see below first photo on the left).
The December 14, 1960 issue of The Weekly Graphic Magazine featured the

292
P' par., 1212.06(b). Advertising Expenditures, Trademark Manual of Examining Procedure.
293
2"' par., l212.06(b). Advertising Expenditures, Trademark Manual of Examining Procedure.
294
3'' par., 1212.06(b). Advertising Expenditures, Trademark Manual of Examining Procedure.
295
Rollo (G.R. No. 219632), pp. 289-298.
Decision 60 . G.R. Nos. 196372, 210224,
216104 & 219632

story "The La Tondena Story," where "Ginebra San Miguel" was showcased
and photos of the plant where it was manufactured were shown296 (see below
photo on the right).

".·.1""'.-,,,.,. _. -~r~~M ~F:~~~~,. ----· ··-- ,,s:.,1>.,.,t~::::<1:_i~"·:_

r•-:- ... -~,.-· . . .,,,..,.."""" . . .

:: :i::.~-., ::,.::~ ~--~

On December 31, 1968, The Manila Chronicle published a special issue

entitled "The Don Carlos Palanca Story," about the founder and creator of
"Ginebra San Miguel," which was described as the "oldest brand of local
alcoholic drink" produced in the Philippines. 297 GSMI's evidence shows that
in the course of time, "Ginebra San Miguel" was featured in numerous print
and television advertisements. The foll'Owing are sample advertisements that
appeared in the 1990s:

296
Rollo (G.R. No. 196372), pp. 24-26.
297
Id. at 26-27.
Decision 61 G.R. Nos. 196372, 210224,
216104 & 219632

The advertising materials submitted by GSMI contribute to the latter's

long and consistent use of the word "GINEBRA" in marketing its brand of
gin over the years. GSMI's lengthy and consistent use of the word
"GINEBRA" in its advertisements, along with the fact that GSMI is the only
gin manufacturer in the Philippines to ever viably do so, 298 as well as the
inevitable decline of the Spanish language in public discourse, constituted the
perfect storm of circumstances that allowed the word "GINEBRA" to undergo
semantic shift and acquire a distinctive signification insofar as the Filipino
public is concerned. The change in meaning of the word "GINEBRA" has
already been empirically confirmed by Projects Bookman and Georgia.

While the survey evidence attests to the popularity and reputation of

"GINEBRA" as the product df GSMI in the current market, it was the
continuous marketing and advertisement of"GINEBRA," for more than 180
years, to the general populace that solidified public perception that such
distinctive mark refers to the gin products of GSMI and its predecessors.

Distinctiveness ofGINEBRA;
non-applicability of the doctrine
offoreign, equivalents

Based on the totality of evidence, GSMI presented overwhelming

proof, through empirical survey evidence, more than a century of
advertisement, and documentary and testimonial evidence, that public
perception views "GINEBRA" not as a generic English term for gin; rather,
"GINEBRA," through its long usage in the Philippines, now refers to the gin
products of GSMI to the public._

It is lamentable in G.R. No. 196372 that the CA, IPO Director General
and BTO simply discarded all the evidence of GSMI after it opened a page of
the dictionary as to the translation of "GINEBRA." Again, the doctrine of
foreign equivalents is not an absolute rule and should only be considered as a
guideline. Generally, a dictionary entry defining a word as a generic name of
a class of products is reasonable evidence that the public perceives said word
as such. 299 However, if any of the exceptions to the doctrine of foreign
equivalents exists, such as the alternate meaning of mark and marketplace
circumstances or the commercial setting in which the mark is used to
demonstrate a different meaning, then said doctrine shall not be applied.

298
Rollo (G.R. No. 2!0224), p. 162.
299
See Hoopes, Neal, Reclaiffling the Primary Significance Test: Dictionaries, Corpus Linguistics, and
Trademark Genericide (2016). · (Available at: https://ssm.com/abstract=3025850 or
""''"'"o;.o,W '"·"'"'=Oro>"so. ••• '"""" ~ Nmm"• ,o, WW). ~
Decision 62 G.R. Nos. 196372, 210224,
216104 & 219632 -

Ultimately, public perception based on the primary significance test

shall determine whether a term is generic. Reference to a dictionary is only
one of the various benchmarks to determine public perception based on the
peculiar circumstances of each case. Dictionary definitions, though relevant
and sometimes persuasive to the genericness inquiry based on the assumption
that such definitions generally reflect the public's perception of a word's
meaning, are not necessarily dispositive or controlling. 30 Further, there is °
likely to be a delay between a word's acceptance into common usage and its
entry in a dictionary. Dictionary entries also reflect lexicographical judgment
and editing which may distort a word's meaning or importance. A court
accepting a dictionary entry at face value is in effect adopting the
lexicographical judgment as its own, even though such a judgment might be
based on printed matter which, if offered in evidence, would not be
controlling. 301

Direct consumer evidence, such _as consumer surveys and testimony, is

preferable to indirect forms of evidence, such as dictionaries, trade journals,
and other publications. 302 If the doctrine of foreign equivalents is to be applied,
an analysis of the evidence of record, including translation evidence, the
nature of the foreign and English combined-wording, and any other relevant
facts and evidence should be considered. 303

Here, the entirety of the evidence presented by GSMI shows the public
perception with respect to the term, "GINEBRA" and it cannot be gainsaid
that an ordinary Filipino purchaser would "stop and translate the foreign word
into its English equivalent." As stated by Project Bookman, which is a direct
consumer survey, 90% of the respondents readily associated the word
"GINEBRA" with the gin product ofGSMI. Evidently, the doctrine of foreign
equivalents is not applicable. Almost the entire consuming public will not stop
and translate the Spanish word "GINEBRA" to its English equivalent based
on the dictionary. Instead, the consuming public immediately associates
"GINEBRA" with the gin product of GSMI because of the primary
significance the public associate with the mark.

On the other hand, TDI merely presented Rosales, the Vice-President

of J.. Salcedo and Associates, Inc., who coined "GINEBRA KAPITAN" , to
testify that based on the opinion of five people, without any substantial,
empirical, and supporting evidence, the word "GINEBRA" is a generic term
because its English-translation is "gin," to wit:

300
Booking.Com B. V. v. U.S. Patent & Trademark O)jfi_ce 915 F.3d 171 (4th Cir 2019)
301 ' . .
Berner Intern. Corp. v. Mars Sales Co., 987 F.2d 975 (3d Cir. 1993), citing Gilson, §2.02 at 2-35.
302
Booking.com. B.V. v. Mata/, 278 F. Supp. 3d 891 (E.D. Va. 2017), citing Berner Intern. Corp. v. Mars
Sales Co., 987 F.2d 975 (3d Cir. 1993). _
303
See 8 Trademark Manual of Examining Procedure 1207 (2019).
 Decision 63 G.R. Nos. 196372, 210224,
216104 & 219632

xxxx

Atty. Da Costa: Who said that the word GINEBRA is used to

identify the product itself that is GIN, who among the five of you?

Mr. Rosales: Actually, the five ofus agreed GINEBRA because we

believe that Ginebra is a common name that is generic.

Q: What is your basis for saying that Mr. Witness?

A: It's just like Ginebra is a Spanish name, equivalent to Gin.

Q: Do you speak Spanish, Mr. Witness?

A: No [h]abla espanol. 304

As aptly opined by the C_A in G.R. No. 219632, mere reference to the
dictionary meaning of a contested mark, to determine whether or not
"GINEBRA" is a generic term to ultimately solve the issue of trademark
infringement is too simplistic. To resolve an issue, which is likely to go down
in the annals of trademark history and legal jurisprudence, by just glancing at
a dictionary will not suffice. Neither should the resolution of such a
monumental issue be left to the whims of a five-person discussion between
Rosales and TDI executives to subjectively decide that the term "GINEBRA"
is generic. 305

Further, as keenly elucidated by Justice Caguioa, "Spanish may be

common in the Philippines several years ago, but it no longer is now. In fact,
it is no longer considered as one of the Philippines' official languages. That
some may still speak and understand Spanish is not enough to disallow
GSMI's application. It must also be proven that the relevant consumers,
specifically the gin buyers and drinkers nowadays, identify "GINEBRA" as a
Spanish word for gin. Again, no evidence was presented to prove this. On the
other hand, GSMI presented overwhelming evidence to prove that the relevant
consumers now already associate the word GINEBRA to GSMI's gin
product." 306

The Court finds that "GINEBRA," based on public perception under

the primary significance test, is not a generic term. Rather, it is considered a
descriptive mark because it characterizes the gin product of GSMI, which may
be registerable under the doctrine of secondary meaning due to the long usage
of "GINEBRA" and it coming to be known by the consuming public as
specifically and particularly designating the gin product of GSMI.

304
Rollo (G.R. No. 219632), p. 98. (CA Decision dated November 7, 2014 in CA-G.R. CV No. 100332).
305 Id.
306
Concurring and Dissenting Opinion of Justice Caguioa, p. 20.
Decision 64 G.R. Nos. 196372, 210224,
216104 & 219632

Doctrine ofsecondary meaning

Under the doctrine of secondary meaning, a word or a phrase that is

"originally incapable of exclusive appropriation" may nonetheless be used as
a trademark of an enterprise if such word or phrase-by reason of the latter's
long and exclusive use thereof with reference to its article~has "come to
mean that such article was [its] product." 307 The doctrine was articulated in
our jurisdiction in the case of Philippine Nut Industry Inc. v. Standard Brands,
Inc.:3os

This Court held that the doctrine is to the effect that a word or phrase
originally incapable of exclusive appropriation with reference to an article
on the market, because geographically or otherwise descriptive, might
nevertheless have been used so long and so exclusively by one producer
with reference to his article that, in. that trade and to that branch of the
purchasing public, the word or phrase has come to mean that the article was
his product.

By way of illustration, is the word "Selects" which according to this Court

is a common ordinary term in the sense that it may be used or employed by
any one in promoting his business or enterprise, but which once adopted or
coined in connection with one's business as an emblem, sign or device to
characterize its products, or as a badge of authenticity, may acquire a
secondary meaning as to be exclusively associated with its products and
business, so that its use by another may lead to confusion in trade and cause
damage to its business.

The applicability of the doctrine of secondary meaning to the situation now

before Us is appropriate because there is oral and documentary evidence
showing that the word PLANTERS has been used by and closely associated
with Standard Brands for its canned salted peanuts since 193 8 in this
country. Not only is that fact admitted by petitioner in the amended
stipulation of facts, but the matter has been established by testimonial and
documentary evidence consisting of invoices covering the sale of
"PLANTERS cocktail peanuts". In other words, there is evidence to show
that the term PLANTERS has become a distinctive mark or symbol insofar
as salted peanuts are concerned, and by priority of use dating as far back as
193 8, respondent Standard Brands has acquired a preferential right to its
adoption as its trademark warranting protection against its usurpation by
another. Ubi jus ibi remedium. Where there is a right there is a remedy.
Standard Brands has shown the existence of a property right and respondent
Director has afforded the remedy. 309

307
See Lyceum ofthe Philippines v. Court ofAppeals, c;:;iting Philippine Nut Industry Inc. v. Standard Brands,
Inc., supra note 143 at 618.
308
Supra note 143.

I
309
ld. at 592-594.

Mf
Decision 65 G.R. Nos. 196372, 210224,
216104 & 219632

On the other hand, in Lyceum of the Philippines, Inc. v. Court of

Appeals,310 the Court explained that under the doctrine of secondary meaning,
a word or phrase originally incapable of exclusive appropriation with
reference to an article in the market, because geographical or otherwise
descriptive, might nevertheless have been used so long and so exclusively by
one producer with reference to this article that, in that trade and to that group
of the purchasing public, the word or phrase has come to mean that the article
was his produce. This circumstance has been referred to as the distinctiveness
into which the name or phrase has evolved through the substantial and
exclusive use of the same for a considerable period of time. Consequently, the
same doctrine or principle canrtot be made to apply where the evidence did
not prove that the business has continued for so long a time that it has become
of consequence and acquired a·good will of considerable value such that its
articles and produce have acquired a well-known reputation, and confusion
will result by the use of the disputed name. 311

To repeat, Sec. 123 ofR.A. No. 8293 states that descriptive marks are
generally not registrable as trademarks, viz.:

SECTION 123. Registrability. - 123.1. A mark cannot be

registered if it:

xxxx

(j) Consists exclusively of signs or of indications that may serve in

trade to 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;

(k) Consists of shapes that may be necessitated by technical factors

or by the nature of the goods themselves or factors that affect their intrinsic
value;

(1) Consists of color alone, unless defined by a given form;

Nevertheless, Sec. 123.2 of R.A. No. 8293 embodies the doctrine of

secondary meaning, to wit:

123.2. As regards signs or devices mentioned in paragraphs (j), (k), and

(I), nothing shall prevent the registration of any such sign or device
which has become distinctive in relation to the goods for which
registration is requested as a result of the use that have been made of it
in commerce in the Philippines. The Office may accept as prima facie
evidence that the mark has become distinctive, as used in connection with
the applicant's goods or services in commerce, proof of substantially
exclusive and continuous use thereof by the applicant in commerce in the
310
Supra note 143.
311
ld.at619.
Decision 66 G.R. Nos. 196372, 210224,
216104 & 219632

Philippines for five (5) years before the date on which the claim of
distinctiveness is made. (emphasis supplied)

312
In Shang Properties Realty Corp. v. St. Francis Development Corp.,
the Court enumerated the specific requirements that have to be met in order
to conclude that a geographically-descriptive mark has acquired secondary
meaning, to wit: (a) the secondary meaning must have arisen as a result of
substantial commercial use of a mark in the Philippines; (b) such use must
result in the distinctiveness of the mark insofar as the goods or the products
are concerned; and (c) proof of substantially exclusive and continuous
commercial use in the Philippines for five (5) years before the date on which
the claim of distinctiveness is made. Unless secondary meaning has been
established, a geographically-descriptive mark, due to its general public
domain classification, 1s perceptibly disqualified from trademark
registration. 313

In this case, "GINEBRA" may be considered a descriptive mark

because the term is more accurately translated to "Genever" or "Jenever," the
juniper berry-flavored grain spirit which originated from the Netherlands in
the 17th century, a specific kind of gin:. 314

There are different kinds of gin: Juniper-flavored spirit drink is a type

of gin produced by flavoring ethyl alcohol of agricultural origin and or grain
spirit and/or grain distillate with juniper. Traditional gin is produced by
flavoring organoleptically suitable ethyl alcohol of agricultural origin with
juniper berries. Distilled gin is another type of gin produced exclusively by
redistilling organoleptically suitable ethyl alcohol of agricultural origin of an
appropriate quality. Finally, London gin is style of gin obtained exclusively
from ethyl alcohol of agricultural origin, whose flavor is introduced
exclusively through redistillation. 315

The styles of gin may further be classified based on its country of origin.
Juniper-flavored spirit drinks originating from the Netherlands, Belgium,
France, or Germany, are called Genievre/Jenever/Genever. If the country of
origin is the United Kingdom, the Juniper-flavored spirit drink is called
Plymouth Gin. 316

312
739 Phil. 244 (2014).
313
Id. at 258.
314
Rollo (G.R. No. 196372), p. 117 (CA Decision dated August 13, 2010 in CA-G.R. SP No. 112005).
315
Official JoW11al of the European Union. Definitions of Categories of Alcoholic Beverages 110/2008, M(b),
2008, pp. 38-39. https://eur-lex.europa.eu/legal-content/EN/TXT/PDF/?uri OJ:L:2008:039:FULL&from
~EN [last accessed November 30, 2020]
316
Id. at 39-51.
 Decision 67 G.R. Nos. 196372, 210224,
216104 & 219632

Indeed, when a mark describes the kind of gin, it may be subject to

trademark protection under the doctrine of secondary meaning. In the US case
of United States v. Thirty-Six Bottles of London Dry Gin, 317 the term
"LONDON DRY GIN" was considered as a descriptive and distinct kind of
gin. It was held therein that the term describes a well-known liquor, having
certain characteristics that identify it wherever it may be made. 318

Here, the term "GINEBRA" describes a particular kind of gin,

"Genever" or "Jenever," the juniper berry-flavored grain spirit which
originated in the Netherlands. Verily, it describes the kind of gin product of
GSMI. Accordingly, this satisfies one of the requisites of the doctrine of
secondary meaning.

Further, according to the US Trademark Manual of Examining

Procedure, survey evidence, market research, and consumer reaction studies
are relevant in establishing acquired distinctiveness and secondary
meaning. 319 Although survey evidence is not required, it is a valuable method
of showing secondary meaning. 320 To show secondary meaning, the survey
must show that the consuming public views the proposed mark as an
indication of the source of the product or service. 321 Evidence of secondary
meaning may be sufficient if it shows that a substantial portion of the
consuming public associates the proposed mark with a single source. 322
Although all evidence must be reviewed on a case-by-case basis, generally,
survey results showing less than 10% consumer recognition are insufficient to
establish secondary meaning, and results over 50% may be sufficient to
establish secondary meaning. 323 However, the probative value of a survey is
significantly weakened, despite consumer recognition rates greater than 50%,
if there are flaws in the way the survey is conducted. 324

As stated above, the survey evidence, along with the other documentary
and testimonial evidence presented by GSMI, established that, while the term
"GINEBRA" is a descriptive term for a gin product, said word had already
become distinctive of the products of GSMI in view of the latter's extensive
and substantive use of the term ''GINEBRA" on its gin products for over one
hundred eighty (180) years. To reiterate Project Bookman showed 90% of the
respondents associated the word "GINEBRA" with GSMI as top-of-mind

317
205 F. I I I, 1913 U.S. Dist. LEXIS 1533.
318 Id.
319
1212.06(d) Survey Evidence, Market Research and Consumer Reaction Studies, Trademark Manual of
Examining Procedure.
320
Id.; LP. Lund Trading ApS v. Kohler Co.,. 163 F.3d 27, 42, 49 (1st Cir. 1998).
321
ld.; See Nextel Commc'ns, Inc. v. Motomla. Inc., 91 USPQ2d 1393, 1402-03 (TTAB 2009).
322
Id.; See Perini Corp. v. Perini Constr., Inc., 915 F.2d 121, 125 (4th Cir. 1990).
323
324
Id.; citing In re Owens-Corning Fiberglas Corp., 774 F.2d at 1127-28.
ld.; See Stuart Spector Designs Ltd. v. Fender Musical Instruments Corp., 94 USPQ2d 1549 1569-71
(TTAB 2009). ,
Decision 68 G.R. Nos. 196372, 210224,
216104 & 219632

mention. 325 In Project Georgia, the survey showed that 86% of the
respondents correctly named GSMI as the manufacturer of the GINEBRA
SAN MIGUEL product. 326 This demonstrates that the prolonged use of the
descriptive mark in commerce satisfied another requisite of the doctrine of
secondary meaning.

Finally, the exclusive use of the descriptive mark was likewise

established. As correctly observed by the CA in G.R. No. 219632, viz.:

Moreover, even if it may be ·true that there had been attempts by

other entities to register the mark "GINEBRA" or market their products
bearing the said mark, as [TDI] pointed out in the testimony of their
witnesses, these entities have not actively utilized the term or that the
consuming public was never saturated with products containing the
mark "GINEBRA." In fine, one may make advertisements, issue
circulars, distribute price list on certain goods, but these alone will not
inure to the claim of ownership of the mark until the goods bearing the
mark are sold to the public in the market. Against these pieces of
evidence, [TDI] was unable to present countervailing evidence. [TDI] also
failed to demonstrate by providing studies or any authority to discount
GSMI's claim as to how effective its brand management and promotions
were particularly on the aspect of the so called "emotional branding," or that
"GINEBRA" has been "culturally branded" to demonstrate the Filipino
spirit ofresilience and never-say-die attitude. 327 ( emphasis supplied)

Aptly, GSMI's product was the only well-known "GINEBRA" brand

in the market based on public perception under the primary significance test.
While the competitors of GSMI contemplated to use the word "GINEBRA"
in their products, nearly all of their attempts never materialized. It was only
Webengton Distillery, which actually utilized "GINEBRA PINOY" but
currently no longer available, and TDI, with "GINEBRA KAPITAN," which
attempted to introduce their product in the market. To defend its interests,
GSMI immediately instituted legal actions for infringement against both
Webengton Distillery and, currently, TDI to protect its rights under the
distinct mark of"GINEBRA." 328

As GSMI satisfied all the requisites of the doctrine of secondary

meaning with respect to descriptiveness, prolonged commercial use, and
exclusivity in the market, the descriptive mark "GINEBRA" can still be
protected under the trademark laws and may be registered in favor of GSMI,
to the exclusion of others. Indeed, even assuming that "GINEBRA" may be
the descriptive term for a class of alcoholic drink, it does not detract from the

325
Rollo (G.R. No. 196372), p. 508.
326
Id. at 535.
327
Rollo (G.R. No. 219632), pp. 100-101.
328
Id. at 83.
Decision 69 G.R. Nos. 196372, 210224,
216104 & 219632

fact that "GINEBRA," through its long usage in the Philippines, now
commonly refers to the gin products of GSMI, in particular, to "GINEBRA
SAN MIGUEL," a registered trademark ofGSMI, which has already acquired
a secondary meaning. 329

Notably, in the subsequent Decisions of the Director General of the IPO

dated December 27, 2019330 and December 16, 2020, 331 said Director General
changed its earlier position and ruled that GSMI may use the word
"GINEBRA" exclusively under the doctrine of secondary meaning, to wit:

This Office sees no cogent reason to overturn the finding of the

Director of Legal Affairs and of this Office in earlier cases that GINEBRA
is generic or descriptive.

However, the discussion should not stop there. As GINEBRA is

likewise descriptive, the doctrine of secondary meaning under Sec. 123 .2
may still apply, so long as [GSMI] is able to present "proof of substantially
exclusive and continuous use [of the mark] in commerce in the Philippines
for five (5) years before the date on which the claim of distinctiveness is
made_,,332

xxxx

In addition to proof of the exclusive and continuous use of the term

GINEBRA, [GSMI] was alsq able to provide evidence that such term has
become distinctive and that the consuming public has associated GINEBRA
with [GSMI] and its products. The July 2003 consumer survey Project
Bookman presented by [GSMI] showed that 92% of the respondents
associated the word GINEBAA with "Ginebra San Miguel" (the registered
mark affixed to the gin products of its manufacturer, [GSMI], whose
corporate name is also GINEBRA SAN MIGUEL), "San Miguel" (part of
the names of the registered m_ark and the manufacturer), "La Tondefta" (the
name of the predecessor of [GSMI]) or "Ginebra Blue" (another product of
[GSMI]). From the survey, it is clear that the term GINEBRA is linked with
[GSMI]'s gin products to which the registered marks are affixed, and
eventually the same generic or descriptive term GINEBRA points to
GINEBRA SAN MIGUEL, INC. as the origin of the goods.

All told, the use of the registered mark GINEBRA SAN MIGUEL
already indicates that the gin product to which it is affixed comes from
[GSMI]. However, by reason of the repeated implied association between
the generic or descriptive term GINEBRA and the registered mark
GINEBRA SAN MIGUEL in relation to the gin products, the use of such
term eventually and inevitably performs the same function as the registered
mark. GINEBRA SAN MIGUEL, therefore, has come to be equated to

329
Id. at I 00.
330
Rollo (G.R. No. 216104), pp. 2444-2463.
331
Id. at 2469-2473.
332
Id. at 2456.

k
 +

Decision 70 G.R. Nos. 196372, 210224,

216104 & 219632

GINEBRA. The reverse 1s also true: GINEBRA to GINEBRA SAN

MIGUEL. 333

Dissecting Sec. 123.2 of

R.A. No. 8293 and the doctrine
ofsecondary meaning

Assuming even further that "GINEBRA" was originally generic more

than a century ago and does not have any protection under the trademark law,
it does not forestall the possibility that the such mark evolved in the spectrum
of distinctiveness, particularly, to a descriptive mark, that may be registrable
based on the doctrine of secondary meaning under the primary significance
test. Only when a term evolves into a higher rank in the spectrum of
distinctiveness, such as a suggestive mark or even a descriptive mark, under
the doctrine of secondary meaning, ·shall such term become registrable.
Otherwise, if the term remains generic, despite the passage of time, under the
primary significance test, then the generic mark remains unregistrable. To
repeat, public perception is the ultimate factor to be considered in determining
whether a particular word is generic or not. 334

Examining Sec. 123.2 ofR.A. No. 8293, which is the statutory basis of
the doctrine of secondary meaning, it can be discerned that the same is made
up of two (2) clauses:

1. The first clause, which reads: "[a]s regards signs or devices

mentioned in paragraphs (j), (k), and (!), nothing shall prevent
the registration of any such sign or device which has become
distinctive in relation to the goods for which registration is
requested as a result of the use that have been made of it in
commerce in the Philippines."

2. The second clause, which reads: "[t]he Office may accept as

prima facie evidence that the mark has become distinctive, as
used in connection with the applicant's goods or services in
commerce, proof of substantially exclusive and continuous use
thereof by the applicant in commerce in the Philippines for five
(5) years before the date on which the claim of distinctiveness is
made."

The first clause of the provision, though mentioning only descriptive

terms and geographical names (i.e., those terms and names under paragraphs

333
Id. at 2459.
334
See Bayer v. United Drug. 272 F. 505 (S.D.N.Y 1921). Ctf Sec. 151(b) ofR.A. No. 8293.
 Decision 71 G.R. Nos. 196372, 210224,
216104 & 219632

[j], [k] and [l] of Sec. 123.1 ofR.A. No. 8293), is not a categorical statement
that "only" such terms have the capacity to acquire secondary or distinctive
meaning. The second clause of Sec. 123.2 of R.A. No. 8293, on the other
hand, only allows the IPO to draw a prima facie presumption of distinctive
meaning in favor of a prospective "mark" whenever it is proven that such
mark had been used by an applicant in the specific manner and for a specific
length of time as stated in the provision. Neither clause, however, explicitly
precludes words with generic connotations from subsequently evolving after
an extensive passage of time, and acquiring distinctive signification based on
public perception.

At best, Sec. 123.2 of R.A. No. 8293 only authorizes the IPO to
consider "proof of substantially exclusive and continuous use [of a descriptive
term or geographical name] in commerce in the Philippines for five (5) years,"
as "prima facie evidence" that such descriptive term or geographical name has
already become distinctive. The provision, however, neither explicitly
precludes words with originally generic connotations a long time ago from
subsequently evolving into a distinctive term, nor prevents the BOT or the
IPO from admitting and appreciating evidence to that effect.

The absence of a categorical statement that "only" descriptive terms

and geographical names may be,registrable under Sec. 123.2 ofR.A. No. 8293
shows that the provision does not foreclose the possibility that a generic term
a century ago can change and evolve its meaning to the consuming public
based on the primary significant test. However, it must be stressed that if the
generic mark remains generic in the eyes of the consuming public despite the
passage of time and wide-ranged marketing, such generic mark shall not
benefit from the doctrine of secondary meaning and shall remain unregistrable
because it is not distinctive.

Indeed, the law gives preferential treatment to those marks under

paragraphs [j], [k] and [l] of Sec. 123.1 to receive prima facie evidence of
distinctiveness. Nevertheless,. marks may likewise evolve, transform,
develop, and eventually becoming distinctive marks under the primary
significance test. 335 Only when these marks are distinctive may these be
registered under R.A. No. 8293.

Again, the determination of the genericness of a mark depends on

public perception based on the primary significance test. Under Sec. 151.1 (b)
ofR.A. No. 8293, in determining whether a registered trademark has become

335
The primary significance test under Sec. 151. l(b) ofR.A. No. 8293 states that the primary significance of
the registered mark to the relevant public rather than purchaser motivation shall be the test for deterrninino-
whether the registered mark has become the generic name of goods or services on or in connection with
which it has been used.
Decision 72 G.R. Nos. 196372, 210224,
216104 & 219632

generic, "the primary significance of the registered mark to the relevant

public" is considered. 336 As extensively discussed earlier, a generic term 100
years ago may evolve and become a distinctive mark today based on the shift
of public perception based on the primary significance attributed to the term.
Conversely, a distinctive mark 100 years ago, which could even be registered
as a trademark back then, may devolve as a generic mark today based on the
change of public perception. Accordingly, to determine whether a mark has
altered its rank in the spectrum of distinctiveness, the applicant is allowed to
present evidence to establish the distinctiveness of a mark, even if not
originally covered by paragraphs [j], [k] and [l] of Sec. 123.1 of R.A. No.
8293.

In other words, there is nothing in R.A. No. 8293 that prevents a

previous generic term a long time ago from evolving into a descriptive term
and becoming registrable under the doctrine of secondary meaning.
Genericness is not a perpetual determination in an unalterable and static
market; it may change over time based on the primary significance attributed
by the consuming public on the term, At the same time, if a term remains
generic based on public perception under the primary significance test, despite
the passage of time and change in public perception, then such term shall
definitely not evolve as a descriptive term and shall not be registrable under
the doctrine of secondary meaning.

Here, GSMI presented extensive evidence, cons1stmg of empirical

survey evidence, long periods of advertisement materials, and other
documentary and testimonial evidence, and proved that "GINEBRA" has
become a distinctive mark based on public perception under the primary
significance test. An ordinary Filipino purchaser will not stop and translate
the Spanish term "GINEBRA" to its Ertglish equivalent; rather, when the tenn
"GINEBRA" is mentioned, the ordinary consumer immediately associates it
with the gin product of GSMI. Indeed, based on the primary significance test,
the term "GINEBRA" has now become a descriptive term, which is
registrable under the doctrine of secondary meaning.

Trademark infringement

In G.R. Nos. 210224 and 219632, one of the issues raised is whether
TDI committed trademark infringement against GSMI when it named its gin
pro_duct "GINEBRA KAPITAN." In its August 15, 2003 Complaint, 337 GSMI
claimed that TDI used the mark "GINEBRA" in manufacturing, distributing
and marketing its gin product "GINEBRA KAPITAN." The use of the said
mark, coupled with the colorable imitation ofGSMI's bottle and label designs
336
Sec. 151.l(b) ofR.A. No. 8293.
337
Rollo (G.R. No. 216104), pp. 1774-1789.
Decision 73 G.R. Nos. 196372, 210224,
216104 & 219632

for "Ginebra," caused confusion to, and deceived, the general public as they
were made to believe that "Ginebra Kapitan" was being manufactured,
distributed and sold by GSMI. 338

According to GSMI, it has registered several trade1narks, such as

"GINEBRA SAN MIGUEL" and "GINEBRA S. MIGUEL 65," and that
"GINEBRA" is the dominant feature of these trademarks; and GSMI, by itself
and through its predecessors-in-interest, have been continuously marketing
and distributing throughout the Philippines the said trademarks since 1834, as
evidenced by the special issue of the Manila Chronicle dated December 31,
1968. 339 Thus, GSMI claims that TDI committed trademark infringement
when it used "GINEBRA KAPITAN" in its gin products because the
dominant feature "GINEBRA" ~as already being exclusively used by GSMI
in its registered trademarks. Notably, even the term "GINEBRA" is included
in the tradename of GSMI itself.

Trademark infringement is defined under R.A. No. 8293 as follows:

SECTION 155. Remedies; Infringement. -Any person who shall, without

the consent of the owner of the registered mark:

155.1. Use in commerce any· reproduction, counterfeit, copy, or colorable

imitation of a registered mark or the same container or a dominant feature
thereof in connection with the sale, offering for sale, distribution,
advertising of any goods or services including other preparatory steps
necessary to carry out the sale of any goods or services on or in connection
with which such use is likely to cause confusion, or to cause mistake, or to
deceive; or

155.2. Reproduce, counterfeit, copy or colorably imitate a registered mark

or a dominant feature thereof and apply such reproduction, counterfeit,
copy or colorable imitation to labels, signs, prints, packages, wrappers,
receptacles or advertisements intended to be used in commerce upon or in
connection with the sale, offering for sale, distribution, or advertising of
goods or services on or in connection with which such use is likely to cause
confusion, or to cause mistake, or to deceive, shall be liable in a civil action
for infringement by the registrant for the remedies hereinafter set forth:
Provided,. That the infringement takes place at the moment any of the acts
stated in Subsection 155.1 or this subsection are committed regardless of
whether there is actual sale of goods or services using the infringing
material. 340 ( emphasis supplied)

338
Id. at 1778-1782.
339
Id. at 75-80.
340
Intellectual Property Code of the Philippines, R.A. No. 8293, June 6, 1997, Sec. 155 (155.1-155.2).
Decision 74. G.R. Nos. 196372, 210224,
216104 & 219632

In Societe des Produits Nestle, SA. v. Dy, Jr., 341 the Court held that the
elements of infringement under the IP Code are:

1. The trademark being infringed is registered in the Intellectual

Property Office; however, in infringement of trade name, the same need not
be registered;

2. The trademark or trade name •is reproduced, counterfeited, copied,

or colorably imitated by the infringer;

3. The infringing mark or trade name is used in connection with the

sale, offering for sale, or advertising of any goods, business or services; or
the infringing mark or trade name is applied to labels, signs, prints,
packages, wrappers, receptacles or advertisements intended to be used upon
or in connection with such goods, business or services;

4. The use or application of the infringing mark or trade name is likely

to cause confusion or mistake or to deceive purchasers or others as to the
goods or services themselves or as to the source or origin of such goods or
services or the identity of such business; and

5. It is without the consent of the trademark or trade name owner or

the assignee thereof.

In Superior Commercial Enterprises, Inc. v. Kunnan Enterprises

Ltd., 342
the Court stated that to establish trademark infringement, the
following elements must be proven: (1) the validity of plaintiffs mark; (2) the
plaintiffs ownership of the mark; and (3) the use of the mark or its colorable
imitation by the alleged infringer results in likelihood of confusion.

In Mang !nasal Philippines, Inc. v. IFP Manufacturing Corp., it was

stated that the first condition of the proscription requires resemblance or
similarity between a prospective mark and an earlier mark. Similarity does not
mean absolute identity of marks. To be regarded as similar to an earlier mark,
it is enough that a prospective mark be a colorable imitation of the former.
Colorable imitation denotes such likeness in form, content, words, sound,
meaning, special arrangement or general appearance of one mark with respect
to another as would likely mislead an average buyer in the ordinary course of
purchase. 343

Here, GSMI has several registered trademarks that contain the word
"GINEBRA." Its own trade name is GINEBRA SAN MIGUEL, INC. On the
other hand, TDI, subsequently also applied for trademark registration using
the words "GINEBRA KAP ITAN," and has also distributed its gin products
341
641 Phil. 345, 357-358 (2010).
342
632 Phil. 546, 569 (20 I 0).
343
811 Phil. 261, 272 (2017).
Decision 75 G.R. Nos. 196372, 210224,
216104 & 219632

to the market labelled as "GINEBRA KAPITAN." The Court is tasked to

determine whether trademark infringement exists such that "GINEBRA" is
the dominant feature in the registered trademarks of GSMI, and thus, cannot
be appropriated by TDI.

In ABS-CBN Publishing, Inc. v. Director of the Bureau of

Trademarks,3 44 the Court declared that in determining whether a mark is to be
considered as "identical" or that which is confusingly similar with that of
another, the Court has develop two (2) tests: the dominancy and holistic tests.
While the Court has time and again ruled that the application of the tests is on
a case-to-case basis, upon the passage of the R.A. No. 8293, the trend has been
to veer away from the usage of the holistic test and to focus more on the usage
of the dominancy test. 345 As stated by the Court in the case of McDonald's
Corporation v. L.C. Big Mak Burger, Jnc., 346 the test of dominancy is now
explicitly incorporated into law in Sec. 155.1 of the IPC, which defines
infringement as the colorable imitation of a registered mark or a dominant
feature thereof. 347

In the recent case of Kolin, 348 the Court conclusively ruled that the
dominancy test is the prevailing rule; while the holistic test has been
abandoned, to wit:

Considering the adoption of the Dominancy Test and the

abandonment of the Holistic Test, as confirmed by the provisions of the IP
Code and the legislative deliberations, the Court hereby makes it crystal
clear that the use of the Holistic Test in determining the resemblance of
marks has been abandoned. 349

Under the dominancy test, in committing the infringing act, the

infringer merely introduces negligible changes in an already registered mark,
and then banks on these slight differences to state that there was no identity
or confusing similarity, thus resulting in no infringement. This kind of act,
which leads to confusion in the· eyes of the public, is exactly the evil that the
dominancy test refuses to accept. The small deviations from a registered mark
are insufficient to remove the applicant mark from the ambit of
infringement. 350

In this case, the RTC applied both the dominancy test and the holistic
tests. It held that the dominant mark of "GINEBRA KAPITAN'' is the

344
833 Phil. 791 (2018).
345
Id. at 802-803.
346
480 Phil. 402 (2004).
347
Id. at 435.
348
Supra note 131.
349 Id.
350
ABS-CBN Publishing, Inc. v. Director ofthe Bureau of Trademarks, supra note 344 at 804.
Decision 76 G.R. Nos. 196372, 210224,
216104 & 219632

composite mark, which is strategically placed in the middle of the label to

emphasize the name of the product. On the other hand, the dominant feature
of GSMI's "GINEBRA S. MIGUEL" is the image of an angel wielding a
351
sword against a fallen devil, and not the word, "GINEBRA."

The RTC also ruled that employing the holistic test, it was evident that
the labels and packaging of the competing products were not to likely cause
confusion to the consuming public. The similarity between "GINEBRA
K.APITAN" and "GINEBRA S. MIGUEL" pertained only to the transparent
bottles of both products. According to the trial court, the labels and the bottle
caps, on the other hand, were different from each other. 352

The Court finds that the RTC erred in applying the holistic test. As
stated in Kolin, the holistic test has been conclusively abandoned in Our
jurisdiction. Nevertheless, the Court likewise rules that the RTC erred in
appreciating the dominancy test in declaring that there was no trademark
infringement.

In National Federation ofHog Farmers, Inc. v. Board offnvestments,353

the Court held that:

There should be objective, scientific, and economic standards to

determine whether goods or services offered by two parties are so
related that there is a likelihood of confusion. In a market, the relatedness
of goods or services may be determined by consumer preferences. When
two goods are proved to be perfect substitutes, where the marginal rate of
substitution, or the "consumer's willingness to substitute one good for
another while maintaining the same level of satisfaction" is constant, then it
may be concluded that the goods are related for the purposes of determining
likelihood of confusion. Even goods or services, which superficially appear
unrelated, may be proved related if evidence is presented showing that these
have significant cross-elasticity of demand, such that changes of price in
one party's goods or services change the price of the other party's goods
and services. Should it be proved that goods or services belong to the
same relevant market, they may be found related even if their classes,
physical attributes, or purposes are different. 354 (emphases supplied)

Indeed, with respect to the requisite of likelihood of confusion in

trademark infringement, it is not sufficient that a court applies a subjective
analysis on whether there is likelihood of confusion among competing goods.
There should be objective, scientific, and economic standards to determine

351
Rollo (G.R. No. 219632), p. l 10. (CA Decision dated November 7, 2014 in CA-G.R. CV No. 100332).
352
Id. at 111.
353
G.R. No. 205835, June 23, 2020, citing J. Leorien, Concurring Opinion in Asia Pacific Resources
International Holdings, Ltd v. Paperone, Inc., 845 Phil. 85 (2018).
354 Id.
Decision 77 G.R. Nos. 196372, 210224,
216104 & 219632

whether goods or services offered by two parties are so related that there is a
likelihood of confusion. 355 As stated above, should it be proved that goods or
services belong to the same relevant market, they may be found related even
if their classes, physical attributes, or purposes are different. 356

The applicable test hereiµ is the dominancy test based on Sec. 155 of
R.A. No. 8293. The pictures .of the competing products are reproduced
below:357 358

On the surface, based merely on the visuals of the labels, the striking
feature for "GINEBRA KAPITAN" seems to be the name and the label; while
the prevalent feature for "GINEBRA S. MIGUEL" is the drawing on the label.
On the other hand, the colors ofthe bottle caps are different. The labels depict
attacking or charging scenes - the archangel Michael wielding a sword against
Jss Id.
356 Id.
357
Rollo (G.R. No. 210224), p. 681.
358
Id. at I 090.
Decision 78 G.R. Nos. 196372, 210224,
216104 & 219632

the fallen devil for "GINEBRA S. MIGUEL" and a kapitan mounted on a

359
horse leading his troops and pointing his bolo for "GINEBRA KAPITAN."
Notably, in both marks, the central figure appears to be on the offensive, using
a bladed weapon. Nevertheless, to achieve a more objective and empirical
examination, it must be determined how an ordinary purchaser would react to
such marks and whether there would be confusing similarity between the two
products in the light of public perception.

Survey evidence is meaningful to establish the likelihood of

confusion. 360 A consumer survey that measures consumer confusion is an
effective way to ensure that trademark infringement cases are decided based
on empirical facts about likely consumer confusion instead of on judicial
assumptions about how consumers are likely to respond. 361 Indeed, survey
evidence can measure whether an appreciable number of relevant consumers
are likely to be confused by a mark that may or may not already be in the
marketplace, and offers an economical and systematic way to gather
information and draw inferences about a large number ofindividuals. 362

In the recent case of Levi Strauss & Co. v. Sevilla, 363 the Court
considered tbe survey evidence presented, Project Cherokee 5, to support the
finding that there was actual confusion between tbe goods branded as LEVI'S
and LIVE'S, which resulted to the cancellation of the subsequent registration
ofLIVE's, to wit:

Here, there is evidence on record showing that there were already

numerous instances of actual confusion between petitioner's and
respondents' goods brought about by the similarity of their marks, labels,
and products. As may be gleaned from the Final Report on Project Cherokee
5, 86% of the survey participants associated the "LIVE'S" mark with
"LEVI'S;" and 90% of same participants read the stylized "LIVE'S" mark,
as "LEVI'S." 364

In Project Bookman, 90% of the respondent gin-drinkers associate the

word "GINEBRA" with GSMI's products. 365 The same survey results showed
that even when shown tbe front view of the bottle of"GINEBRA KAPITAN"
'
majority of these respondents (86% in the GMA and 83% in South Luzon)
perceived it as a product of San Miguel or Ginebra San Miguel/Ginebra or La

359
Rollo (G.R. No. 219632), p. 112. (CA Decision dated November 7, 2004 in CA-G.R. CV No. 100332).
'.'° Quality Inns International, Inc. v. McDonald's Corp., 695 F. Supp. 198 (D. Md. 1988).
061
David Franklyn and Shari Seidman Diamond, Trademark Surveys: An Undulating Path, 92 Tex. L. Rev.
2029 (20 I 4 ).
362
Id. at 2037, citing Shari Seidman Diamond, Reference Guide on Survey Research, in REFERENCE
MANUAL ON SCIENTIFIC EVIDENCE 359,364 (3d ed. 2011).
363
G.R. No. 219744, March I, 2021.
"' Id.
365
Rollo (G.R. No. 196372), p. 508.
 Decision 79 G.R. Nos. 196372, 210224,
216104 & 219632

Tondefia. 366 The empirical results of the consumer surveys provide an

objective analysis whether there is a likelihood of confusion between the two
products.

In Project Georgia, it was demonstrated that by merely showing the

"GINEBRA KAPITAN" product, 84% of the respondents stated that its
manufacturer is GSMI. 367 Evidently, the dominant mark of TDI's product is
the "GINEBRA" term, which causes confusion among the survey respondents
as to the origin of the product: "GINEBRA" is also the dominant mark of
"GINEBRA S. MIGUEL" because an overwhelming majority of respondents
of the survey immediately assoc_iated GSMI' s gin products with the distinctive
mark "GINEBRA." 368 As such, the consuming public would just rely on the
said dominant mark and not .really take time to examine the difference
between the two gin products. A consumer is less likely to notice the
differences in the label and packaging of the two gins and would just look for
the word "GINEBRA" as a product of GSMI without anymore examining
whether the same was "SAN MIGUEL" or "KAPITAN."

Also, unlike in the label of "GINEBRA SAN MIGUEL" where the

consumer can immediately identify the same as a product of GSMI, it is not
immediately apparent from the label or bottle design of "GINEBRA
KAPITAN'' because it does not readily or promptly indicate it as a product of
TDI. Hence, considering that "GINEBRA SAN MIGUEL" and "GINEBRA
KAPITAN" are both gin products, it is very likely that the consuming public
would be misled into thinking that "GINEBRA KAPITAN" is also a gin
product of GSMI since it is the latter which is known to carry the distinctive
mark of "GINEBRA." This is supported by the survey evidence, which
showed that more than 80% ·of the respondents associated "GINEBRA
KAPITAN'' being a product ofGSMI. 369

Further, in Project Georgia, the respondents explained why they were

actually confused that GINEBRA KAPITAN was a product ofGSMI. When
shown the product ofGINEBRA KAPITAN, its round bottle shape (45%), the
predominant features in its label design (32%), and logo (13%) were the key
specific elements that lead consumers into thinking that the group was
drinking GINEBRA SAN MIGUEL. 370 On the other hand, 40% of the
respondents relied on its label design features, 40% on the round bottle shape,
and 26% on the logo in correctly identifying the product when the GINEBRA
SAN MIGUEL product was shown in the AVP. 371 Evidently, the dominant

366
Id. at 512.
367
Id. at 535.
368
Id. at 508.
369
Id. at 535.
370
Id. at 530.
371 Id.
Decision 80 G.R. Nos. 196372, 210224,
216104 & 219632

features in the products of GSMI and TDI, particularly, the label design, logo,
and bottle shape led the respondents to believe that GINEBRA KAPITAN was
a product of GSMI. This is undoubtedly strong evidence of actual confusion,
where the consumers are misled to believe that GINEBRA KAPITAN
originated from GSMI. As shown in Levi Strauss & Co. v. Sevilla, 372 survey
evidence, which indicate actual or even only likelihood of confusion between
competing goods, shall result in the cancellation or denial of the trademark
registration of the infringer.

As meaningfully discussed by Justice Mario Lopez, "applying the

Dominancy Test, the word 'GINEBRA' is the dominant feature of these
marks. This reveals TDI's intention to use 'GINEBRA' as a distinctive term~
not merely as a generic or descriptive term. This observation is consistent with
the survey evidence showing that 90% of more than 6 million gin drinkers in
Greater Manila Area, North Luzon, and South Luzon associated 'GINEBRA'
with GINEBRA SAN MIGUEL, SAN MIGUEL, or LA TONDENA. Thus,
'GINEBRA' is a distinctive mark that distinguishes GSMI's gin products
from other manufacturers." 373

To reiterate, the term "GINEBRA" has been so deeply ingrained in the

general psyche of the Filipinos that it is conveniently and exceptionally
associated with GSMI's "GINEBRA_ SAN MIGUEL" gin products, more
particularly, "GINEBRA S. MIGUEL." 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 ofGSMI. The
element of likelihood of confusion, which is the gravamen of trademark
infringement, 374 between the two. products, since "GINEBRA KAPITAN"
used the distinct mark "GINEBRA," has been fulfilled in this case.

Further, the Court disagrees with the view of the IPO Director General
in G.R. No. 216104 that the public 'Vould buy GINEBRA KAPITAN, not
because they associate this product as that of GSMI, but because they find this
gin product suitable to their taste. 375 The target market of these gin products
was the class D and E consumers. 376 When going to the store, there is no
existing or objective evidence presented that an ordinary consumer from the
said classes would conduct a taste-test before purchasing the gin product from
the store to determine the product's taste. The subjective deduction of the IPO

372
Supra note 363.
373
Concurring and Dissenting Opinion of Justice M. Lopez, p. 9.
374
Societe Des Produits Nestle, S.A. v. Dy, Jr., supra note 343 at 358.
375
Rollo (G.R. No. 216104), p. 317.
376
Rollo (G.R. No. 196372), pp. 501 and 523.
Decision 81 G.R. Nos. 196372, 210224,
216104 & 219632

Director General regarding consumer preference for the competing products

is out of touch.

Instead, it is more likely and highly probable that, when an ordinary

purchaser from the target class buys a gin product in a store, that person would
simply mention or look for the word "GINEBRA" without specifying whether
he or she is buying a "GINEBRA SAN MIGUEL" or "GINEBRA KAP ITAN".
This was confirmed by the results of Project Georgia where more than 80%
of the respondents were confused and believed that TDI' s product was that of
GSMI because of the distinctive mark of"GINEBRA."

The simple use of the word, "GINEBRA" in "GINEBRA KAPITAN"

is sufficient to incite an average person, even a gin-drinker, to associate it with
GSMI's gin product, in particular, "GINEBRA SAN MIGUEL" and/or
"GINEBRA S. MIGUEL." 377 Verily, TDI committed trademark infringement
against GSMI.

Unfair competition

The claim of unfair competition is primarily factual in nature. 378 The

purpose of prosecuting unfair competition is to prohibit and restrict deception
of the consuming public whenever persons or firms attempt to pass off their
goods or services for another's. The underlying prohibition against unfair
competition is that business competitors cannot do acts which deceive, or
which are designed to deceive the public into buying their goods or availing
their services instead. 379 The relevant provisions ofR.A. No. 8293 regarding
unfair competition state:

SECTION 168. Unfair Competition, Rights, Regulation and Remedies. -

168.1. A person who has identified in the mind of the public the goods he
manufactures or deals in, his business or services from those of others,
whether or not a registered mark is employed, has a property right in the
goodwill of the said goods, business or services so identified, which will be
protected in the same manner as other properly rights.

168.2. Any person who shall employ deception or any other means contrary
to good faith by which he 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 such goodwill, or who shall commit any acts calculated to
produce said result, shall be guilty of unfair competition, and shall be
subject to an action therefor.

377
Rollo (G.R. No. 219632), p. 113 (CA Decision dated November 7, 2014 in CA-G.R. No. 100332).
378
National Federatfon of Hog Farmers, Inc. v. Board of Investments, supra note 353.
379
Id.
Decision 82 G.R. Nos. 196372, 210224,
216104 & 219632

168.3. In particular, and without in any way limiting the scope of protection
against unfair competition, the following shall be deemed guilty of unfair
competition:

(a) Any person, who is selling his goods and gives them the
general appearance of goods- of another manufacturer or dealer,
either as to the goods themselves or in the wrapping of the packages
in which they are contained, or the devices or words thereon, or in
any other feature of their appearance, which would be likely to
influence purchasers to believe that the goods offered are those of a
manufacturer or dealer, other than the actual manufacturer or dealer,
or who, otherwise, clothes the goods with such appearance as shall
deceive the public and defraud another of his legitimate trade, or any
subsequent vendor of such goods or any agent of any vendor
engaged in selling such goods with a like purpose.

xxxx

The essential elements of an action for unfair competition are: (1)

confusing similarity in the general appearance of the goods, and (2) intent to
deceive the public and defraud a competitor. Unfair competition is always a
question of fact. 380

Here, the first element of unfair competition has been established.

There is confusing similarity between the "GINEBRA KAPITAN'' of TDI
and "GINEBRA SAN MIGUEL" of GSMI because both of them bear the
distinctive mark "GINEBRA." An ordinary purchaser would be confused
when confronted with the products bearing the distinct mark of"GINEBRA,"
which has been established to be associated with GSMI products by the
consuming public.

As to the second element of unfair competition, there must be intent to

deceive the public and defraud a competitor. The element of intent to deceive
and to defraud may be inferred from the similarity of the appearance of the
goods as offered for sale to the public. Actual fraudulent intent need not be
shown; 381 probable intent to deceive the consuming public is sufficient.

Protection against unfair competition is not intended to create or foster

a monopoly and the court should always be careful not to interfere with free
and fair competition, but should confine itself, rather, to preventing fraud and
imposition resulting from some real resemblance in name or dress of goods.
Nothing less than conduct tending to p~ss off one man's goods or business as
that of another will constitute unfair competition. Actual or probable

380
Asia Pacific Resources International Holdings, Ltd v. Paperone, Inc., 845 Phil. 85, 94 (2018).
381
Id. at 101.
 Decision 83 G.R. Nos. 196372, 210224,
216104 & 219632

deception and confusion on the part of customers by reason of defendant's

practices must always appear. 382

The Court finds that the second element of unfair competition was also
satisfied. As in all other cases of colorable imitations, the unanswered riddle
is why, of the millions of terms and combinations ofletters available, TDI had
to choose those so closely similar to another's trademark if there was no intent
to take advantage of the goodwill generated by the other mark. 383 During trial,
TDI' s witness, Rosales, admitted that they knew that GSMI has products with
the label "GINEBRA," 384 which is obvious because of the popularity and
iconic status of the "GINEBRA" brand ofGSMI. Nevertheless, TDI still took
the risk and continued to use the said term in its "GINEBRA KAPITAN"
product, banking on the flawed argument that "GINEBRA" is a generic
term. 385

Verily, TDI erred in its marketing decision to use the word "GINEBRA"
in its products and caused confl,lsion to the consuming public regarding their
products with those of GSMI. The evidence of GSMI showed that an
overwhelming number of respondents have mistakenly believed that
"GINEBRA KAPITAN" was the product of GSMI because of the improper
use of the distinctive and dominant mark "GINEBRA." For that, TDI
committed unfair competition against GSMI. The Court adopts with approval
the cogent observation of the CA on the matter in G.R. No. 210224, thus:

In the case at bench, it cannot be denied that TDI knew fully well
that GSMI has been using the mark/word "GINEBRA" in its gin products
and that GSMI's ''GINEBRA SAN MIGUEL" had already obtained, over
the years, a considerable number ofloyal consumers who associate the mark
"GINEBRA" with San Migu-,1. Yet, it chose to use the same mark/word in
launching the same gin product. TDI's choice of the word "GINEBRA" as
part of the trademark of its "GINEBRA KAPITAN" gin tended to show
their intention to pass off their gin as that of GSMI and ultimately to ride on
the popularity and established goodwill of "Ginebra San Miguel." Such act
clearly constitutes unfair competition. 386

As persuasively articulated by Justice Caguioa, "intent to pass off

should be presumed in the instant case. If there was no intent to palm off TDI's
gin products as those of GSMI, it is uncanny that aside from the use of the
same word "GINEBRA", the general appearance of the two competing
products are also strikingly similar, as established above. Therefore, TDI
should be held liable for unfair competition. IfTDI had really wanted to make
382
National Federation of Hog Farmers, Inc. v. Board ofInvestments, supra note 353.
383
American Wire & Cable Co. v. Director ofPatents, 142 Phil. 523, 530-531 (I 970).
384
Rollo (G.R. No. 219632), p. 193.
385
Id. at 423-424.
386
Rollo (G.R. No. 210224), pp. 70-71 (CA Decision dated August 15, 2013 in CA-G.R. SP No. 127255).
Decision 84 G.R. Nos. 196372, 210224,
216104 & 219632

its products distinctive, TDI could have employed a totally different trade
dress to set its products apart from GSMI's products." 387

Remedies and Damages

The following are the statutory prov1s10ns for damages whenever

trademark infringement and unfair competition are committed:

SECTION 156. Actions, and Damages and Injunction for Infringement. -

156.1. The owner of a registered mark may recover damages from any
person who infringes his rights, and the measure of the damages suffered
shall be either the reasonable profit which the complaining party would have
made, had the defendant not infringed his rights, or the profit which the
defendant actually made out of the infringement, or in the event such
measure of damages cannot be readily ascertained with reasonable certainty,
then the court may award as damages a reasonable percentage based upon
the amount of gross sales of the defendant or the value of the services in
connection with which the mark or trade name was used in the infringement
of the rights of the complaining party.

156.2. On application of the complainant, the court may impound during the
pendency of the action, sales invoices and other documents evidencing sales.

156.3. In cases where actual intent to mislead the public or to defraud the
complainant is shown, in the discretion of the court, the damages may be
doubled.

156.4. The complainant, upon proper showing, may also be granted

injunction.

SECTION 157. Power of Court to Order Infringi.ng Material Destroyed. -

157. l In any action arising under this Act, in which a violation of any right
of the owner of the registered mark is established, the court may order that
goods found to be infringing be, without compensation of any sort, disposed
of outside the channels of commerce in such a manner as to avoid any harm
caused to the right holder, or destroyed; and all labels, signs, prints,
packages, wrappers, receptacles and advertisements in the possession of the
defendant, bearing the registered mark or trade name or any reproduction,
counterfeit, copy or colorable imitation thereof, all plates, molds, matrices
and ot.'1.er means of making the same, shall be delivered up and destroyed.

157.2. In regard to counterfeit goods, the simple removal of the trademark

affixed shall not be sufficient other than in exceptional cases which shall be

387
Concurring and Dissenting Opinion of Justice Cag~ioa, p. 19.
Decision 85 G.R. Nos. 196372, 210224,
216104 & 219632

determined by the Regulations, to permit the release of the goods into the
channels of commerce.

Based on the foregoing, ·_the owner of a registered mark may recover

damages from the infringer either: (1) the reasonable profit which the
complaining party would have made, had the defendant not infringed his
rights, or (2) the profit which the defendant actually made out of the
infringement, or (3) in the event such measure of damages cannot be readily
ascertained with reasonable certainty, the court may award as damages a
reasonable percentage based upon the amount of gross sales or the value of
the services in connection with the infringement. 388 Nevertheless, it must be
emphasized that the award of damages is subject to the discretion and findings
of the court.

Here, in G.R. No. 210224, the CA ordered TDI: (1) to render an

accounting of the gross sales of its GINEBRA KAPITAN products from the
time of the filing of the instant case up to the finality of this judgment and to
pay GSMI an amount equivalent to fifty percent ( 50%) of the total gross sales;
and (2) to pay to GSMI P2,000,000.00 as exemplary damages and
PS00,000.00 as attorney's fees} 89

The Court finds that awards of damages should be tempered because of

the peculiar circumstances in this case. The crux of these consolidated cases
is whether "GINEBRA" is a generic mark. These cases underwent different
tribunals and courts for several years, and the outcome of each decision varies.
Indeed, the determination of distinctiveness of "GINEBRA" involves
contentious and complex questions of facts and laws. Only the Court could
once and for all settle the controversy by meticulously dissecting and
resolving the issue. In the perspective ofTDI, it was not immediately apparent
that they were committing trademark infringement because of the difficulty in
determining whether "GINEBRA" is a distinctive mark in favor of GSMI, to
the exclusion of others.

In addition, the records are bereft of credible evidence presented by

GSMI to establish that it has suffered calculable or tangible damages,
foregone profit, or loss of sales_ due to the actions of TDI. Neither was there
evidence presented that TDI took any considerable market share from GSMI
by riding on its goodwill. Absent evidence to the contrary, the actual damage
caused by TDI for utilizing "GINEBRA" against GSMI' s business is doubtful.

388
Sec. 156, R.A. No. 8293.
389
Rollo (G.R. No. 210224), p. 73 (CA Decision dated August 15, 2013 in CA-G.R. SP No. 127255).
Decision 86 G.R. Nos. 196372, 210224,
216104 & 219632

In San Miguel Pure Foods Company, Inc. v. Foodsphere, Inc., 390 which
involves trademark infringement and unfair competition, the registered owner
failed to present evidence to prove its claim of foregone income or sales, or to
present evidence to show loss of profit or reduced sales. The Court held that
since the claim for lost profit or unrealized income was not properly
substantiated, there is no basis to award the same. Nevertheless, nominal
damages in the amount of Pl00,000.00 were awarded therein in order to
vindicate or recognize the rights of the registered owner which had been
violated or invaded by the infringer.

On the other hand, in Sambar v. Levi Strauss & Co., 391 which involves
trademark infringement, the Court awarded temperate damages in the amount
of PS0,000.00, instead of nominal damages to the affected party. It was
explained that:

However, we agree with petitioner that it was error for the Court of
Appeals to affirm the award of nominal damages combined with temperate
damages by the Regional Trial Court of Makati. What respondents are
entitled to is an award for temperate damages, not nominal damages. For
although the exact amount of damage or loss can not be determined
with reasonable certainty, the fact that there was infringement means
they suffered losses for which they are entitled to moderate damages.
We find that the award of PS0,000.00 as temperate damages fair and
reasonable, considering the circumstances herein as well as the global
coverage and reputation of private respondents Levi Strauss & Company
and Levi Strauss (Phil.), Inc. 392 (citations omitted, emphasis supplied)

Similarly, in Co v. Spouses Yeung, 393 the Court found that the petitioner
committed unfair competition. It was explained that, although there was an
indeed a pecuniary loss from the unfair competition committed, the actual
damages suffered by the respondent was not established with certainty. Hence,
the award of P300,000.00 as temperate damages was affirmed, to wit:

Unfair competition is defined as the passing off (or palming oft) or

attempting to pass off upon the public of the goods or business of one
person as the goods or business of another with the end and probable effect
of deceiving the public. This takes place where the defendant gives his
goods the general appearance of the goods of his competitor with the
intention of deceiving the public that the goods are those of his competitor.

Here, it has been established that Co conspired with the Laus in the
sale/distribution of counterfeit Greenstone products to the public, which

390
833 Phil. 771 (2018).
391
428 Phil. 425 (2002).
392
Id. at 436-437.
393
742 Phil. 803 (2014).
Decision 87 G.R. Nos. 196372, 210224,
216104 & 219632

were even packaged in bottles identical to that of the original, thereby

giving rise to the presumption of fraudulent intent. In light of the foregoing
definition, it is thus clear that Co, together with the Laus, committed unfair
competition, and should, consequently, be held liable therefor. To this end,
the Court finds the award of P300,000.00 as temperate damages to be
appropriate in recognition of the pecuniary loss suffered by Sps. Yeung,
albeit its actual amount cannot, from the nature of the case, as it involves
damage to goodwill, be proved with certainty. x x x394 ( citations omitted)

The Court finds that the GSMI should be awarded temperate damages.
Temperate or moderate damages, which are more than nominal but less than
compensatory damages, may b.e recovered where the court fmds that some
pecuniary loss has been suffered but its amount cannot, from the nature of the
case, be proved with certainty. 395

In view of the failure ofGSMI to substantiate its claim of loss of profit

or sales due to the actions of TDI, the award of actual or compensatory
damages must be deleted. Instead, temperate damages are awarded due to the
loss suffered even if the exact amount thereof cannot be ascertained with
reasonable certainty. 396 TDI undoubtedly used "GINEBRA" in its products,
which caused actual or likelihood of confusion among the consumers and
caused prejudice to GSMI as the proprietor of such registrable mark.
Nevertheless, GSMI failed to substantiate and prove the exact amount of loss
of profit or sales it sustained due to the actions of TDI. 397 Consequently,
temperate damages should instead be awarded as the amount lost by GSMI
cannot be ascertained from the trademark infringement committed by TDI.
Based on the prevailing rates on the award of temperate damages involving
trademark infringement and unfair competition, the Court determines that the
award ofr'300,000.00 in favor ofGSMI by way of temperate damages is just
and appropriate.

Likewise, the award of exemplary damages must be deleted. Art. 2233

of the Civil Code provides that exemplary damages cannot be recovered as a
matter of right; the court will decide whether or not they should be adjudicated
while Art. 2234 thereof provides that while the amount of the exemplary
damages need not be proven, the plaintiff must show that he is entitled to
moral, temperate or compensatory damages before the court may consider the
question of whether or not exemplary damages should be awarded. 398

Time and again, the Court held that exemplary damages may be
awarded for as long as the following requisites are present: (1) they may be
394
Id. at 808-809.
395 CIVIL CODE, Art. 2224.
396 Barbosa v. People, 814 Phil. 16, 23 (201'7).
397
See note 3 86.
398 San Miguel Pure Foods Co., Inc. v. Food.sphere, Inc., 833 Phil. 771, 786 (2018).
Decision 88 G.R. Nos. 196372, 210224,
216104 & 219632

imposed, by way of example, only in addition, among others, to compensatory

damages, only after the claimant's right to them has been established, and
cannot be recovered as a matter of right, their determination depending upon
the amount of compensatory damages that may be awarded to the claimant;
(2) the claimant must first establish his right to moral, temperate, liquidated
or compensatory damages; and (3) the act must be accompanied by bad faith
or done in a wanton, fraudulent, oppressive or malevolent manner. 399

It bears stressing that the award of temperate damages does not ipso
facto warrant the grant of exemplary damages. The Court finds that GSMI
failed to establish by clear, convincing, and credible evidence that the
infringement committed by TDI was done in a wanton, fraudulent, oppressive
or malevolent manner. In San Miguel Pure Foods Co., Inc. v. Foodsphere,
Jnc., 400 the Court similarly did not grant exemplary damages for failure to
establish the requisites for such award. Accordingly, the award of exemplary
damages herein must be deleted.

Also, the Court deems it proper t,o modify the award for attorney's fees.
As a rule, an award of attorney's fees should be deleted where the award of
moral and exemplary damages are not granted.. Nonetheless, attorney's fees
may be awarded where the court deems it just and equitable even if moral and
exemplary damages are unavailing. 401 In this case, the Court finds that the
award of attorney's fees should be sustained but reasonably decreased to an
amount of 1'200,000.00, in the light of the foregoing discussions.

In addition, the Court affirms the application of Sec. 157.1 ofR.A. No.
8293. It provides that the court may order goods found to be infringing be
disposed of outside the channels of commerce in such a manner as to avoid
any harm caused to the right holder, or be destroyed, without compensation
of any sort. 402

Consequently, to protect the trademark of GSMI for the distinctive

mark "GINEBRA," TDI should remove from the market all its gin products
bearing the name/mark "GINEBRA'·' and all the infringing or unfairly
competing goods in the possession of.its employees, agents, representatives,
dealers including, 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. TDI

"' Id.
400
Id. at 786-787.
401
4~
Prosource International, Inc. v. Horphag Research Management SA , 620 Phil. 539 , 553 (2009).
- Sec. 157.1, R.A. No. 8293.
Decision 89 G.R. Nos. 196372, 210224,
216104 & 219632

must also cease-and-desist from using the word or mark "GINEBRA" in any
of its gin products.

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.

· Final Note

It is fervently desired that this decision shall shed light on the difficult
questions regarding trademark law, particularly, on the issues of spectrum of
distinctiveness, genericness, primary significance test, doctrine of foreign
equivalence, consumer survey evidence, doctrine of secondary meaning,
trademark infringement, and unfair competition. It is high time for the courts
to develop and enrich the field of trademark and, in the broader sense,
intellectual property law. Adjudication regarding intellectual property must
shift to the objective, scientific, and economic standards; rather, than the
subjective and inconsistent beliefs of the few.

In the robust and ever-changing arena of commerce, globalization,

digitalization, and online transactions, the field of intellectual property must
be safeguarded and, at the same time, promoted. Legitimate intellectual
creations must be protected against scrupulous infringers, and illegitimate
marks which sow confusion; create monopolies, and destroy market
competition should be struck down. Let this serve as a reminder and a
challenge to the courts and the legal profession that the branch of intellectual
property law is a continuing and growing field that must be stimulated,
expanded, and protected.

WHEREFORE, the Court resolves as follows:

1. In G.R. No. 196372, the petition is GRANTED. The Decision

dated August 13, 2010 and Resolution dated March 25, 2011 of
the Court of Appeals in CA-G.R. SP No. 112005 are
REVERSED and SET ASIDE. The Director of the Bureau of
Trademarks is DIRECTED to:

a. REINSTATE Ginebra San Miguel Inc.'s Trademark

Application No. 4-2003-0001682;
Decision 90 G.R Nos. 196372, 210224,
216104 & 219632

b. CAUSE THE PUBLICATION of Ginebra San Miguel

Inc.'s Trademark Application No. 4-2003-0001682 pursuant
to Section 133.2 of Republic Act No. 8293; and, thereafter,

c. ACCORD DUE COURSE to Ginebra San Miguel Inc.'s

Trademark Application No. 4-2003-0001682.

2. In G.R. Nos. 210224 and 2_19632, the petitions are DENIED. The
Decision dated August 15, 2013 and Resolution dated November
22, 2013, in CA-G.R. SP No. 127255, and the Decision dated
November 7, 2014 and Resolution dated July 28, 2015, in CA-
G.R. CV No. 100332, of the Court of Appeals are AFFIRMED
with the following MODIFICATIONS:

a. Tanduay Distillers, Inc. shall PAY Ginebra San Miguel, Inc.:

1. Temperate damages in the amount of P300,000.00;

11. Attorney's fees in the amount of P200,000.00;

b. The other awards of damages against Tanduay Distillers, Inc.

are DELETED.

3. In G.R. No. 216104, the petition is DENIED. The Decision dated

July 23, 2014, and Resolution dated November 13, 2014 of the
Court of Appeals, in CA-G.R. SP No. 132441 are AFFIRMED
in toto.

SO ORDERED.

.GESMUNDO
 Decision 91 G.R. Nos. 196372, 210224,
216104 & 219632

WE CONCUR: ' .
<j-lJ.W-+d .~ ~ m

Senior Associate Justice .

AMY

(no part)
HEN . INTING RODIL V. ZALAMEDA
Associate Justice Associate Justice

U;f;.~AN
Associate Justice

~ W?~
RICA . ROSARIO JHOSE~(l,OPEZ ~ !
Ass ciate Justice Associate Justice

sociate Justice

~~"KHO,~ ~~H
Associate Justice UH~ ~ Associate Justice
Decision 92 G.R. Nos. 196372, 210224,
216104 & 2 19632

CERTIFICATION

Pursuant to Section 13, Article VIII of the Constitution, I hereby

certify that the conclusions in the above Decision had been reached in
consultation before the case was assigned to the writer of the opinion of the
Court.

( ---
,.
.......
J ,·

- -·, · '- ·~ - : C .. . . ~-t