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

(2009)
TANDUAY DISTILLERS, INC., petitioner, vs.
GINEBRA SAN MIGUEL, INC., respondent.
G.R. No. 164324, August 14, 2009.
FACTS:
Tanduay developed a new gin product distinguished by its sweet smell, smooth taste, and affordable price. The brand
name eventually chosen for the gin product was Ginebra Kapitan with the representation of a revolutionary Kapitan on
horseback as the dominant feature of its label. Tanduay points out that the label design of Ginebra Kapital in terms of
color scheme, size and arrangement of text, and other label features were precisely selected to distinguish it from the
leading gin brand in the Philippine market, Ginebra San Miguel. Tanduay filed a trademark application for Ginebra
Kapitan with the Intellectual Property Office (IPO). After which, Tanduay began selling Ginebra Kapitan in the Luzon
areas including Metro Manila. Eventually, Tanduay received a letter from San Miguel informing the former to
immediately cease and desist from using the mark Ginebra. San Miguel filed a complaint for trademark infringement,
unfair competition and damages, with applications for the issuance of a TRO and a writ of preliminary injunction
against Tanduay before the RTC of Mandaluyong.
(Developments in the trial court and the CA I have laid out in bullet form for easy reading. The events could get a little
confusing from here.)

The trial court issued a TRO prohibiting Tanduay from manufacturing, selling and advertising Ginebra Kapitan.

Tanduay filed a petition for certiorari with the CA and an Urgent Motion to Defer Injunction Hearing before the
trial court.

Despite the motion filed by San Miguel, the trial court conducted hearings for Tanduay to show cause why no
writ of preliminary injunction should be issued.

The trial court granted San Miguels application for issuance of a writ of preliminary injunction.

Tanduay filed a supplemental petition in the CA assailing the injunction order.

The CA issued a TRO enjoining the trial court from implementing the injunction order and further proceeding
with the case.

Finally, the CA rendered a decision dismissing Tanduays petition for certiorari and supplemental petition. Its
motion for reconsideration was likewise denied.
ISSUE:
Whether San Miguel is entitled to the writ of preliminary injunction granted by the trial court as affirmed by the CA
RULING:
No. (The Court decided to deal only with the questioned writ and not with the merits of the case pending before the
trial court. Please note that what was issued by the trial court was a writ of preliminary injunction. It had not yet
disposed of the issues on unfair competition and trademark infringement.)
San Miguel contends that Ginebra can be appropriated as a trademark, and there was no error in the trial courts
provisional ruling based on the evidence on record. Assuming that Ginebra is a generic word which is proscribed to be
registered as a trademark under Section 123.1(h) of Republic Act No. 8293 or the Intellectual Property Code (IP Code),
it can still be appropriated and registered as a trademark under Section 123.1(j) in relation to Section 123.2 of the IP
Code, considering that Ginebra is also a mark which designates the kind of goods produced by San Miguel. San Miguel
alleges that although Ginebra, the Spanish word for gin, may be a term originally incapable of exclusive appropriation,
jurisprudence dictates that the mark has become distinctive of San Miguels products due to its substantially exclusive
and continuous use as the dominant feature of San Miguels trademarks since 1834. Hence, San Miguel is entitled to a
finding that the mark is deemed to have acquired a secondary meaning.
San Miguel states that Tanduay failed to present any evidence to disprove its claims; thus, there is no basis to set
aside the grant of the TRO and writ of preliminary injunction.
San Miguel states that its disclaimer of the word Ginebra in some of its registered marks is without prejudice to, and
did not affect, its existing or future rights over Ginebra, especially since Ginebra has demonstrably become distinctive
of San Miguels products.
Tanduay asserts that not one of the requisites for the valid issuance of a preliminary injunction is present in this case.
Tanduay argues that San Miguel cannot claim the exclusive right to use the generic word Ginebra for its gin products
based on its registration of the composite marks Ginebra San Miguel, Ginebra S. Miguel 65, and La Tondea Cliq!
Ginebra Mix, because in all of these registrations, San Miguel disclaimed any exclusive right to use the non-registrable
word Ginebra for gin products.
Tanduay explains that the word Ginebra, which is disclaimed by San Miguel in all of its registered trademarks, is an
unregistrable component of the composite mark Ginebra San Miguel. Tanduay argues that this disclaimer further
means that San Miguel does not have an exclusive right to the generic word Ginebra. Tanduay states that the word
Ginebra does not indicate the source of the product, but it is merely descriptive of the name of the product itself and
not the manufacturer thereof.

Tanduay submits that it has been producing gin products under the brand names Ginebra 65, Ginebra Matador, and
Ginebra Toro without any complaint from San Miguel. Tanduay alleges that San Miguel has not filed any complaint
against other liquor companies which use Ginebra as part of their brand names such as Ginebra Pinoy, a registered
trademark of Webengton Distillery; Ginebra Presidente and Ginebra Luzon as registered trademarks of Washington
Distillery, Inc.; and Ginebra Lucky Nine and Ginebra Santiago as registered trademarks of Distileria Limtuaco & Co., Inc.
Tanduay claims that the existence of these products, the use and registration of the word Ginebra by other companies
as part of their trademarks belie San Miguels claim that it has been the exclusive user of the trademark containing the
word Ginebra since 1834.
Tanduay argues that before a court can issue a writ of preliminary injunction, it is imperative that San Miguel must
establish a clear and unmistakable right that is entitled to protection. San Miguels alleged exclusive right to use the
generic word Ginebra is far from clear and unmistakable. Tanduay claims that the injunction issued by the trial court
was based on its premature conclusion that Ginebra Kapitan infringes Ginebra San Miguel.
The CA upheld the trial courts ruling that San Miguel has sufficiently established its right to prior use and registration
of the word Ginebra as a dominant feature of its trademark. The CA ruled that based on San Miguels extensive,
continuous, and substantially exclusive use of the word Ginebra, it has become distinctive of San Miguels gin products;
thus, a clear and unmistakable right was shown.
We hold that the CA committed a reversible error. The issue in the main case is San Miguels right to the exclusive use
of the mark Ginebra. The two trademarks Ginebra San Miguel and Ginebra Kapitan apparently differ when taken as a
whole, but according to San Miguel, Tanduay appropriates the word Ginebra which is a dominant feature of San
Miguels mark.
It is not evident whether San Miguel has the right to prevent other business entities from using the word Ginebra. It is
not settled (1) whether Ginebra is indeed the dominant feature of the trademarks, (2) whether it is a generic word that
as a matter of law cannot be appropriated, or (3) whether it is merely a descriptive word that may be appropriated
based on the fact that it has acquired a secondary meaning.
The issue that must be resolved by the trial court is whether a word like Ginebra can acquire a secondary meaning for
gin products so as to prohibit the use of the word Ginebra by other gin manufacturers or sellers. This boils down to
whether the word Ginebra is a generic mark that is incapable of appropriation by gin manufacturers.
In this case, a cloud of doubt exists over San Miguels exclusive right relating to the word Ginebra. San Miguels claim to
the exclusive use of the word Ginebra is clearly still in dispute because of Tanduays claim that it has, as others have,
also registered the word Ginebra for its gin products. This issue can be resolved only after a full-blown trial.
We find that San Miguels right to injunctive relief has not been clearly and unmistakably demonstrated. The right to
the exclusive use of the word Ginebra has yet to be determined in the main case. The trial courts grant of the writ of
preliminary injunction in favor of San Miguel, despite the lack of a clear and unmistakable right on its part, constitutes
grave abuse of discretion amounting to lack of jurisdiction.
We believe that the issued writ of preliminary injunction, if allowed, disposes of the case on the merits as it effectively
enjoins the use of the word ginebra without the benefit of a full-blown trial.

Skechers, U.S.A. vs. Inter Pacific Industrial Trading Corporation,

et.al. [GR No. 164321, March 23, 2011]
Post under case digests, Commercial Law at Friday, January 15, 2016 Posted by Schizophrenic Mind

FACTS: Petitioner Skechers USA has registered the trademark "Skechers" and the trademark "S" (with an oval design)
with the IPO. Pursuant to a search warrant, more than 6,000 pairs of shoes bearing the "S" logo were seized.
Respondents moved to quash the search warrant arguing that there was no confusing similarity between petitioner's
"Skechers" rubber shoes and its "Strong" rubber shoes. RTC applying the Holistic Test ordered the quashing of the
warrant which was affirmed by the CA. RTC noted the following differences: 1) the mark "S" is not enclosed in an oval
design; 2) the hang tags and labels bear the word "Strong" for respondent and "Skechers USA" for petitioner; 3) Strong
shoes are modestly priced compared to Skechers shoes.

ISSUE: Whether or not respondents are guilty of Infringement

RULING: Yes. Applying the Dominancy Test, even if respondents did not use the oval design, the mere fact that it used
the same stylized "S" (same font and size of the lettering) the same being the dominant feature of petitioner's trademark
constitutes infringement. Applying the Holistic Test, the dissimilarities between the shoes are too trifling and frivolous that
it is indubitable that respondent's products will cause confusion and mistakes in the eyes of the public. Respondent's
shoes may not be an exact replica of the petitioner's shoes, but the features and overall design are so similar and alike
that confusion is higly likely. Registeredtrademark owner may use its mark on the same or similar products, in different
segments of the market, and at different price levels depending on variations of the products for specific segments of the
market. The purchasing public might be mistaken in thinking that petitioner had ventured into a lower market segment
which scenario is plausible especially since both petitioner and respondent manufacture rubber shoes.

G.R. No. 192294

November 21, 2012

GREAT WHITE SHARK ENTERPRISES, INC., Petitioner,

vs.
DANILO M. CARALDE, JR., Respondent.
TOPIC: Registrability, Dominancy Test
FACTS:
Caralde, respondent, filed before the Bureau of Legal Affairs (BLA) IPO a trademark application
for SHARK & LOGO for his manufactured goods consisting of slippers, shoes and sandals. This
was opposed by the petitioner, Great White Shark Enterprises, Inc. (Great White Shark), a foreign
corporation domiciled in Florida, USA and was issued a Certificate Registration for trademark
application for clothing, headgear and footwear, including socks, shoes and its components in
the Philippines. Petitioner alleges among other things that there is a confusing similarity between
the two (2) marks which is likely to deceive or confuse the purchasing public into believing that
respondents goods are produced by or originated from the petitioner, or are under its
sponsorship, to the petitioners damage and prejudice; that since petitioner was first in applying
for registration of the mark, the same should be favoured with respondents mark to be denied of
its application.
BLA Director ruled in favour of petitioner. The BLA observed that prominent in both marks are the
illustration of a shark, that although there are some differences, dominant features are of such
degree that overall it creates an impression of striking similarity with one another.
IPO Director General on appeal by respondent, affirmed the decision by the BLA Director that
there is indeed confusing similarity between the two mark; that there is similarity between the
two marks as to content, word, sound and meaning barring respondents registration under Sec
123.1(d) of RA 8293 of the IP Code.
The Court of Appeals, upon petition for review by respondent, reversed and set aside the
decision by the BLA Director and IPO Director General on its finding that there is in fact no
confusing similarity between the two marks; that respondents mark is more fanciful and
colourful and contains several elements which are easily distinguishable from that on the
petitioner.
The case was then elevated to the Supreme Court by petitioner, hence this petition.

ISSUES:
1. WON the two (2) marks can be considered identical, applying Sec. 123.1(d) of the IP Code,
which is likely to deceive or cause confusion.

HELD:
No. The two marks are not identical and there is no confusing similarity likely to deceive or cause
confusion between them.
A trademark device is 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. Apart from its commercial utility, the benchmark of trademark
registrability is distinctiveness. (Thus, a generic figure, as that of a shark in this case,
if employed and designed in a distinctive manner, can be a registrable trademark device,
subject to the provisions of the IP Code.)In connection with the registrability of
trademarks, Section 123.1(d) of the IP Code provides, among others, a mark which
cannot be registered, to wit:
Section 123. Registrability.
123.1 A mark cannot be registered if it:

(d) Is identical with a registered mark belonging to a different proprietor or a

mark with an earlier filing or priority date, in respect of:
(i)

The same goods or services, or

(ii)

Closely related goods or services, or

(iii)
If it nearly resembles such a mark as to be likely to
deceive or cause confusion;

xxx
The mark will therefore be registrable if it is distinct or if it does not nearly resembles
another mark to deceive or cause confusion.
The court used Dominancy Test (although Holistic or Totality Test was defined in the
case, this was not used in the analysis) for this purpose and confirmed that there is no
confusing similarity between the marks; that, further, there was a distinct visual and
aural differences between them.
In Great White Shark's "GREG NORMAN LOGO," there is an outline of a shark
formed with the use of green, yellow, blue and red 16lines/strokes; The shark in
Caralde's "SHARK & LOGO" mark 17 is illustrated in l et t er s outlined in the
form of a shark with the letter "S" forming the head, the letter "H" forming the
fins, the letters "A" and "R" forming the body, and the letter "K" forming the
tail. In addition, the latter mark includes several more elements such as the

word "SHARK" in a different font underneath the shark outline, layers of

waves, and a tree on the right side, and liberally used the color blue with
some parts in red, yellow, green and white. 18 The whole design is enclosed in
an elliptical shape with two linings.

The visual dissimilarities between the two (2) marks are evident and significant, negating
the possibility of confusion in the minds of the ordinary purchaser, especially considering
the distinct aural difference between the marks.

APPENDIX
1. Great White Shark (GWS) also alleged that its trademark is a world famous and wellknown mark since its mark registered in different countries, in order to better his position
that Caralde just copied GWSs mark to be able to ride on its goodwill. Both BLA Director
and IPO Director General however found the same without merit due to insufficiency of
evidence. IPO Dir-Gen further noted that it failed to meet the other criteria under Rule
102 of the Rules and Regulations on Trademarks, Service Marks, Trade Names
and Marked or Stamped Containers to be considered as well-known. Finally, SC no
longer ruled on this matter (,being mooted,) since it already found that there was no
confusing similarity between the two marks.
2. The Dominancy Test focuses on the similarity of the dominant features of the
competing trademarks that might cause confusion, mistake, and deception in the mind
of the ordinary purchaser, and gives more consideration to the aural and visual
impressions created by the marks on the buyers of goods, giving little weight to factors
like prices, quality, sales outlets, and market segments.
The Holistic or Totality Test considers the entirety of the marks as applied to the
products, including the labels and packaging, and focuses not only on the predominant
words but also on the other features appearing on both labels to determine whether one
is confusingly similar to the other 14 as to mislead the ordinary purchaser. The "ordinary
purchaser" refers to one "accustomed to buy, and therefore to some extent familiar with,
the goods in question."15
Levi Strauss & Co. v. Clinton Apparelle, GR No. 138900 September 20, 2005
FACTS: The Complaint alleged that LS & Co., a foreign corporation duly organized and existing
under the laws of the State of Delaware, USA and engaged in the apparel business, is the owner
by prior adoption and use since 1986 of the internationally famous Dockers and Design
trademark. This ownership is evidenced by its valid and existing registrations in various member
countries if Paris Convention. In the Philippines, it has a Certificate of Registration No. 46619 in
the Principal Register for use of said trademark on pants, shirts, blouses, skirts, shorts,
sweatshirts and jackets under Class 25. The Dockers and Design trademark was first used in
the Philippines in or about May 1988, by LSPI, a domestic corporation engaged in the
manufacture, sale and distribution of various products bearing trademarks owned by LS & Co. To
date, LSPI continues to manufacture and sell Dockers Pants with the Dockers and Design
Trademark. LS & Co and LSPI alleged that they discovered the presence in the local market of
jeans under the brand name Paddocks using a device which is substantially, if not exactly,
similar to the Dockers and Design trademark owned and registered in their name, without their
consent. Based on their belied, they added Clinton Apparelle manufactured and continues to

manufacture such Paddocks jeans and other apparel. However, since LS & Co. and LSPI are
unsure if both or just one of impleaded defendants is behind the manufacture and sale of the
Paddocks jeans complained of, they brought this suit under Sec. 13 Rule 3 of the 1997 Rules of
Court.
The evidence considered by the trial court in granting injunctive relief were as follows: (1) a
certified true copy of the certificate of trademark registration for Dockers and Design (2) a pair
of DOCKERS pants bearing the trademark (3) a pair of Paddocks pants bearing the respondents
assailed logo; (4) the trends MBL Survey Report purportedly proving that there was confusing
similarity between two marks; (5) the affidavit of one Bernabe Alajar which recounted petitioners
prior adoption, use and registration of the Dockers and Design Trademark and (6) the affidavit
of Mercedes Abad of Trends MBL Inc which detailed the methodology and procedure used in their
survey and results thereof.
The trial court issued a writ of preliminary injunction, which prompted Clinton Apparelle to file a
petition for certiorari, prohibition and mandamus with the Court of Appeals. Whereby the
Appellate Court granted the petition of Clinton Apparelles petition; holding that the trial court
did not follow the procedure required by law. Thus, holding the issuance of the writ of preliminary
injunction is questionable after petitioners failure to sufficiently establish its material and
substantial right to have the writ issued. Moreover, the Court of Appeals strongly believes that
the implementation of the questions writ would effectively shut down respondents shut down.
Hence this petition.
ISSUE: whether or not the single registration of the trademark Dockers and Design confers on
the owner the right to prevent the use of a fraction thereof.
HELD: Given the single registration of the trademark Dockers and Design and considering that
respondent only uses the assailed device but a different word mark, the right to prevent the
latter from using the challenged Paddocks device is far from clear. Stated otherwise, it is not
evident whether the single registration of the trademark Dockers and Design confers on the
owner the right to prevent the use of a fraction thereof in the course of trade. It is also unclear
whether the use without the owners consent of a portion of a trademark registered in its entirety
constitutes material or substantial invasion of the owners right.
It is likewise not settled whether the wing-shaped logo, as opposed to the word mark, is the
dominant or central feature of petitioners trademarkthe feature that prevails or is retained in
the minds of the publican imitation of which creates the likelihood of deceiving the public and
constitutes trademark infringement. In sum, there are vital matters which have yet and may only
be established through a full-blown trial.
From the above discussion, we find that petitioners right to injunctive relief has not been
clearly and unmistakably demonstrated. The right has yet to be determined. Petitioners also
failed to show proof that there is material and substantial invasion of their right to warrant the
issuance of an injunctive writ. Neither were petitioners able to show any urgent and permanent
necessity for the writ to prevent serious damage.
Petitioners wish to impress upon the Court the urgent necessity for injunctive relief, urging
that the erosion or dilution of their trademark is protectable. They assert that a trademark owner
does not have to wait until the mark loses its distinctiveness to obtain injunctive relief, and that
the mere use by an infringer of a registered mark is already actionable even if he has not yet
profited thereby or has damaged the trademark owner.
Trademark dilution is the lessening of the capacity of a famous mark to identify and distinguish
goods or services, regardless of the presence or absence of: (1) competition between the owner
of the famous mark and other parties; or (2) likelihood of confusion, mistake or deception.
Subject to the principles of equity, the owner of a famous mark is entitled to an injunction

against another persons commercial use in commerce of a mark or trade name, if such use
begins after the mark has become famous and causes dilution of the distinctive quality of the
mark. This is intended to protect famous marks from subsequent uses that blur distinctiveness
of the mark or tarnish or disparage it.
Based on the foregoing, to be eligible for protection from dilution, there has to be a finding
that: (1) the trademark sought to be protected is famous and distinctive; (2) the use by
respondent of Paddocks and Design began after the petitioners mark became famous; and (3)
such subsequent use defames petitioners mark. In the case at bar, petitioners have yet to
establish whether Dockers and Design has acquired a strong degree of distinctiveness and
whether the other two elements are present for their cause to fall within the ambit of the invoked
protection. The Trends MBL Survey Report which petitioners presented in a bid to establish that
there was confusing similarity between two marks is not sufficient proof of any dilution that the
trial court must enjoin.
After a careful consideration of the facts and arguments of the parties, the Court finds that
petitioners did not adequately prove their entitlement to the injunctive writ. In the absence of
proof of a legal right and the injury sustained by the applicant, an order of the trial court granting
the issuance of an injunctive writ will be set aside for having been issued with grave abuse of
discretion. Conformably, the Court of Appeals was correct in setting aside the assailed orders of
the trial court.