Outcome:

The Supreme Court granted the petition of Ginebra San Miguel, Inc. (GSMI), reversing the decision of the Court of Appeals, and reinstating GSMI’s trademark application with the Intellectual Property Office (IPO). It ruled that the word “GINEBRA” is considered a descriptive mark which may be registerable under the doctrine of secondary meaning due to long usage and it coming to be known by the consuming public as specifically and particularly designating the gin product of GSMI.

Facts:

GSMI filed with the IPO an application for the registration of the mark "GINEBRA" for its gin products in February 2003.

The Bureau of Trademarks (BOT) examiner informed GSMI that the mark sought to be registered is identical to five (5) other marks, so the registration of "GINEBRA" as trademark is proscribed under R.A. No. 8293 or the Intellectual Property Code of the Philippines (IP Code).

GSMI stated that the word "GINEBRA" is the Spanish term for "gin" and 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 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.

The BOT examiner rejected the application for registration on the ground that the mark "GINEBRA" is a generic term, and the IPO Director General dismissed GSMI's appeal.

GSMI filed a petition for review with the Court of Appeals (CA) but the same was dismissed, applying the Doctrine of Foreign Equivalents, holding that 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.

GSMI moved for reconsideration, but the CA denied it.

The Supreme Court initially denied the petition in its Second and Third Division. GSMI filed a Manifestation with Motion for Relief from Judgment, seeking the reconsideration of the Court's Resolutions.

The Supreme Court En Banc granted GSMI’s petition.

Decision:

The Court held that "GINEBRA" is not a generic mark. It stated that the ultimate factor in determining whether a particular word is generic is public perception.

The Court ruled that 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.

Inversely, 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.

The Court further held that a generic term a century ago may become a distinctive mark today because of the change in its primary significance based on public perception, and the same works inversely.

The Court said the doctrine of foreign equivalents is not an absolute rule and should only be considered as a guideline. 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 Court ruled that 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.

GSMI’s presentation of two consumer survey evidence (Project Bookman and Project Georgia) are given weight 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.

The Court held that 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.

The Court asserts that the doctrine of foreign equivalents is not applicable in this case as almost the entire consuming public will not stop and translate the Spanish word "GINEBRA" to its English equivalent based on the dictionary. The consuming public immediately associates "GINEBRA" with GSMI’ gin product because of the primary significance the public associate with the mark.