Ginebra belongs to the public domain — Ginebra Kapitan

Insisting that generic words like "ginebra" belong to the public domain, lawyers for Ginebra Kapitan told the Court of Appeals that Tanduay Distillers, Inc. and other local companies have the right to use the same to describe their respective gin products.

Claiming there can be no trademark infringement nor unfair competition over the use of a generic, non-registrable mark, they also asked the appellate court to prohibit Judge Edwin Sorongon of the Mandaluyong Regional Trial Court from hearing the case filed by Ginebra San Miguel, Inc. against Ginebra Kapitan maker Tanduay Distillers, Inc. until the CA’s final disposition of the case.

During oral arguments at the CA’s second division Tuesday, Ginebra Kapitan counsel Eduardo R. Ceniza said that to grant San Miguel exclusive use of the generic word "ginebra" is to "grant San Miguel a monopoly over a team in the public domain, thus destroying competition which is contrary to public policy."

"Infringement of a generic word is a contradiction in terms for there can be no infringement of something that is free for all to use," Ceniza stressed.

In convincing the appellate court to grant its petition for a writ of preliminary injunction, Ginebra Kapitan’s counsel also argued that:

• Since the generic word "ginebra" was disclaimed by San Miguel, it cannot be considered part of San Miguel’s registered trademark, least of all the dominant feature of said mark. He explained that the original Spanish word "ginebra", like many other Hispanic terms, became part of the Filipino lexicon after Spain’s 300-year rule over the Philippine islands;

• The survey commissioned by San Miguel is not evidence of passing off Ginebra Kapitan as a San Miguel product nor does it prove unfair competition. All that the said survey shows is that Ginebra San Miguel is better known because of its large market share and huge advertising budget;

• San Miguel does not have the exclusive right to use a clear glass bottle with a round shape since these are functional bottle features available to anyone. Ginebra Kapitan’s bottle which features a tamper-proof resealable screw cap, is more superior and is likewise different in dimensions, design and label compared to Ginebra San Miguel’s. Ceniza said there is established jurisprudence that no one has a monopoly on the color, shape or size of containers, in referring to the round, clear glass "flint" bottle used by most gin makers in the Philippines;

• Aside from San Miguel and Tanduay, there are many other local companies with their own ginebra brands. In fact, Ceniza said, San Miguel and its predecessor La Tondeña Distillers, Inc. were not even the original owners of the trademark Ginebra San Miguel, as it was owned and first used as early as 1834 by Ginebra San Miguel de Ayala in competition with La Tondeña’s Ginebra Cruz de Oro, Ginebra Tres Campanas, Ginebra Rizal and Ginebra Honrada; and

• Judge Sorongon showed manifest bias towards San Miguel and acted with grave abuse of discretion when he practically decided the case on the merits upon issuance of a temporary restraining order and, later, writ of preliminary injunction against Ginebra Kapitan, on the basis of hearsay evidence and a self-serving survey of NFO Trends which is not reflective, in any way, of the real buying situation.