SMC wins case vs Tanduay

MANILA, Philippines - Beverage firm Ginebra San Miguel Inc.(GSMI) has again won before the Court of Appeals (CA) in its infringement case against Tanduay Distillers Inc. (TDI) over the latter’s use of “Ginebra Kapitan” brand in its gin product.

In a 47-page decision promulgated last Nov. 7, the special 16th division of the appellate court granted the petition of GSMI assailing the Oct. 5, 2012 ruling of the Mandaluyong City regional trial court which dismissed its complaint for unfair competition, infringement and damages against TDI.

“The mere use of ‘Ginebra’ by Tanduay in its ‘Ginebra Kapitan’ gin products is trademark infringement by itself,” read the ruling penned by Associate Justice Rodil Zalameda.

In finding TDI liable for trademark infringment and unfair competition, the CA cited the earlier decision of its special former 13th division dated of Aug. 15, 2013 on the same case. 

The court then reiterated the earlier order directing TDI  to pay Ginebra San Miguel Inc. (GSMI) 50 percent of the total gross sales of its “Ginebra Kapitan” products from the time of the filing of the case before the RTC in 2003 up to the finality of the judgment.

The CA also ordered TDI to pay GSMI the amount of P2 million as exemplary damages and P500,000 as attorney’s fees and remanded the case to the Mandaluyong RTC for purpose  only of the accounting of the gross sales of TDI’s ‘Ginebra Kapitan’ and for the determination of the amount of actual and compensatory damages to be awarded to GSMI.

It likewise directed TDI to remove from the market all its gin products bearing the mark “Ginebra” including all bottles, labels, signs, prints, packages, wrappers, receptables and advertisements bearing the said mark. 

Lastly, the court told TDI to cease and desit from using “Ginebra” in any of its gin products.

The CA held that through its long use in the country, Ginebra has become “singularly synonymous” with GSMI’s gin products and GSMI itself as the manufaturer, thus, the mark has already acquired a secondary meaning in trademark laws. 

“After almost two centuries of usage, effective tri-media promotions and advertisments ghas beestowed upon ‘Ginebra’ a secondary meaning exclusively identifiable to GSMI and its gin products,” read the latest ruling.