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Supreme Court rules that “GINEBRA” is a descriptive mark subject to trademark protection under the doctrine of secondary meaning

In Ginebra San Miguel, Inc. v. Director of the Bureau of Trademarks, G.R. No. 196372/G.R. No. 210224/G.R. No. 216104/G.R. No. 219632, (9 August 2022), the Supreme Court held that “GINEBRA” is not a generic mark, but a descriptive mark that has become a distinctive mark through secondary meaning.

It was argued that “GINEBRA” cannot be registered since it is merely the Spanish word for “gin,” which is a generic term. Moreover, “GINEBRA” cannot acquire secondary meaning because the doctrine of secondary meaning applies only to descriptive marks under Sec. 123.2 of the Intellectual Property Code (IP Code).

The Supreme Court held that the ultimate factor in determining whether a particular word is generic, is public perception. Based on public perception, a word is regarded as generic if the relevant consuming public understands such word as referring merely to the general class of products it purports to represent as a mark. Conversely, if the relevant consuming public understands a word as pertaining to the product of a particular enterprise, such word is not considered as generic but a distinctive one. 

The Supreme Court also held that the while the doctrine of foreign equivalents stipulates that “generic or descriptive names for a product, in whatever language, belong in the public domain if the typical consumer would recognize those names as generic or descriptive,” there are limitations to the applicability of this doctrine. It is merely a guideline to determine the registrability of a mark and will not apply when, based on the test of primary significance pursuant to public perception, the relevant public has placed a different meaning to a foreign word.

The Court found that based on survey evidence, along with the other documentary and testimonial evidence presented by Ginebra San Miguel, Inc. (GSMI), the relevant public’s perception views “GINEBRA” not as a generic English term for gin.

Moreover, “GINEBRA” may be considered a descriptive mark because its accurate translation is “Genever” or “Jenever,” the juniper berry-flavored grain spirit which originated from the Netherlands in the 17th century, a specific kind of gin. It had already become distinctive of the products of GSMI in view of its extensive and substantive use of the term ”GINEBRA” on its gin products for over one hundred eighty (180) years. The exclusive use of the descriptive mark was likewise established. GSMI’s product was the only well-known “GINEBRA” brand in the market based on public perception. While the competitors of GSMI contemplated to use the word “GINEBRA” in their products, their attempts never materialized.

Under the doctrine of secondary meaning, a word or phrase that is originally incapable of exclusive appropriation may be used as a trademark if, by reason of the long and exclusive use thereof with reference to its article, it has come to mean that such article was its product.

As GSMI satisfied all the requirements of the doctrine of secondary meaning with respect to descriptiveness, prolonged commercial use, and exclusivity in the market, the descriptive mark “GINEBRA” can be protected and may be registered in favor of GSMI, to the exclusion of others.