OFFICE OF THE DIRECTOR GENERAL GINEBRA SAN MIGUEL, INC., Appeal No, 04-2018-0012 Appellant, Application No. 4-2006-004183 sversus- Date Filed: 20 April 2006 Trademark: GINEBRA S. MIGUEL DIRECTOR OF BUREAU OF TRADEMARKS, Appellee. DECISION Ginebra San Miguel, Inc. ("Appellant’) appeals the decision of Atty. Leny B. Raz, Director of Bureau of Trademarks, (‘Director’) dated 20 December 2017 dismissing the Appellant's appeal from the refusal by the Examiner-in-Charge (‘Examiner’) to register the mark “GINEBRA S. MIGUEL” ‘The Appellant and the Mark The Appellant is a corporation duly organized and existing under the Philippine laws applying for the registration of the mark GINEBRA S. MIGUEL for use con gin under Class 33 of the Nice Classification’ Below is an illustration of the Appellant's mark: * The Nice Classification is a classification of goods and services for the purpose of registering trademarks and service marks based on a multilateral tealy administered by the World Intellectual Property Grganization. This ttealy is called the Nice Agreement Concerning the Intemational CCassitication of Goods and Services forthe Purposes ot the Rlagistration of Marks concluded in 1957. © woripoohiigovoh — @ latelectas Property Center © maigivonnigovoh #28 Upper MeKiiey Rose Peter Mekisey ti Town Center For sontacia Taguig Cty nb seaz-ss20400 1634 Prtppines ts ootAntecedent Facts In the course of the examination, the Examiner suggested to the Appellant to disclaim the word “GINEBRA" for being generic. The Appeliant did not disclaim the word GINEBRA when it filed its response. The Appellant maintained that the word GINEBRA is not generic but descriptive and while descriptive, it falls under the exception as it has gained secondary meaning {rom the time it was first used in 1834. As proof, the Appellant submitted a 2003 survey which found that 90% of the respondents assoviated the mark GINEBRA with GINEBRA SAN MIGUEL or La Tondefia and not necessarily as an alcoholic beverage. The Examiner maintained her findings that the word GINEBRA is generic and cannot acquire secondary meaning. Ruling of the Director On appeai to the Director, the latter sustained the findings of the Examiner in denying the registration of the mark GINEBRA S. MIGUEL. The Director cited its previous decision, which was affirmed by this Office, where it ruled that the word GINEBRA is a generic word and therefore, cannot be appropriated as it belongs to the public domain. The Director also contested the results of the survey. The Director was of the view that the survey question, “What brand comes to your mind when you see this (showcard with the word GINEBRA)?” is biased and leading. According to the Director, the question requires the answer to be a brand thereby, eliminating possible neutral answers such as “gin” or “alcohol.” ‘The Instant Appeal Aggrieved, the Appellant filed the instant appeal on 9 February 2018. The Appellant argues that GINEBRA is not generic as it has multiple meanings that does, not necessarily refer to gin. According to the Appellant, GINEBRA is also used to refer to the Swiss canton, Geneva. As to what should be regarded as generic, the Appellant contends that: In the present case, “GINEBRA® is not commonly used to desoribe “gin,” and neither does it refer to the genus of which “gin” is a species to. Finally, "GINEBRA" is not used to refer to the basic nature of gin products. The proper inference of what should be generic in this sense applies to “gin” under Class 33 (alcoholic drinks), and not “GINEBRA” The Appellant also maintains the argument that in view of its long, continuous, extensive and exclusive commercial use of GINEBRA for more than 180 years, it has acquired secondary meaning, Finally, the Appellant avers that the Court of Appeals, in several instances, has held that GINEBRA is capable of exclusive appropriation. See ‘Grebra Miguel page 2of 4‘On 22 March 2018, the Director filed her comment to the appeal maintaining her decision and added the following: If Applicant-Appeliant is given the exclusive right over the word *GINEBRA" which is generic, it would prevent the importation into the Philippines of gin products especially those coming from Spanish speaking countries that use "GINEBRA’ to designate their goods. This, in effect, ‘s anti-competitive which is precisely the rationale behind the proscription to the registration of generic terms. A generic word or term belongs to ‘the public domain and is available for everyone to use. ‘The Issue Whether or not the Appellant's trademark application for GINEBRA S. MIGUEL may be given due course. Our Ruling ‘The appeal is meritorious. The purpose of the law protecting a trademark cannot be overemphasized. ‘They are to point out distinctly the origin or ownership of the article to which it is affixed, to secure to him, who has been instrumental in bringing into a market a superior article of merchandise, the fruit of his industry and skill, and to prevent fraud and imposition? In this regard, this Office has recently ruled that GINEBRA is a generic or descriptive term and that the Appellant has shown proof of its ownership of this term, “In addition to proof of the exclusive and continuous use of the term GINEBRA, Appellant was also able to provide evidence that such term has become distinctive and that the consuming public has associated GINEBRA with Appellant and its products. The July 2003 consumer survey Project Bookman presented by Appeliant showed that 92% of the respondents associated the word GINEBRA with “Ginebra San Miguel’ (the registered mark affixed to the gin products of its manufacturer, the Appellant, whose corporate name is also GINEBRA SAN MIGUEL), "San Miguel * (part of the names of the registered mark and the manufacturer), "La Tondefia" (the name of the predecessor of Appellant) or "Ginebra Blue" (another product of Appellant). From the survey, it 's clear that the term GINEBRA js linked with Appellant's gin products to which the registered marks are affixed, and eventually the same generic or descriptive term GINEBRA ‘points to Appeliant 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 Btepha v. Director of Patents, G. R. No, L-20635, 31 March 1966. ‘grebras Migu page Sof 4from the Appellant. However, by reason of the repeated impied 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 GINEBRA. The reverse is also ‘true: GINEBRA to GINEBRA SAN MIGUEL.” Moreover, the prohibition on the registration of a mark being generic refers to signs that are exclusively generic which is not present in this case. Section 123.1 (h) ofthe IP Code states that: SEC. 123, Registrabilty.- 123.1. A mark cannot ke registered if it: (h) Consists exclusively of signs that are generic for goods or services that they seek to identity; In this instance, the Appellant is seeking the registration not exclusively of the generic or descriptive GINEBRA but of the mark GINEBRA S. MIGUEL. The Appellant is, thus, registering not exclusively the sign GINEBRA, but a mark that is consistent to the association of the generic or descriotive GINEBRA as being owned by the Appellant. As the Appellant has already established ownership of GINEBRA as a descriptive term on its gin products, the Appellan’s application to register GINEBRA S. MIGUEL for use on gin should be given due course. WHEREFORE, premises considered, the appeal is hereby granted and the decision of the Director is hereby set aside. Let a copy of this Decision as well as the records of this case be furnished and returned to the Director for appropriate action. Further, let a copy of this decision be furnished the library of the Documentation, Information and Technology Transter Bureau for information and records purposes. SO ORDERED. 16 DEC 2020 tasvis.cxx— ROWEL S. BARBA Director General ® Decision dated 27 December 2019 (Appeal No. 14-2016-0052), page 14 ‘Gnebra s Migu page 4014