IP News

SC Voids Preliminary Injunction Against Tanduay

August 18, 2009

The Supreme Court of the Philippines declared void the writ of preliminary injunction issued by Branch 214 of the Mandaluyong City Regional Trial Court enjoining the sale of “Ginebra Kapitan” gin products by Tanduay Distillers, Inc.

In a 23-page decision penned by Justice Antonio T. Carpio, the High Court set aside a Court of Appeals decision affirming the orders of the trial court and declared void the writ of preliminary injunction issued in favor of Ginebra San Miguel Inc. (GSMI).

The Court also directed the Mandaluyong RTC to “continue expeditiously” with the trial of the infringement and unfair competition case filed by GSMI against Tanduay over the use of “Ginebra” in the latter’s products.

The injunction previously directed Tanduay to cease and desist from manufacturing, distributing, selling, offering for sale, advertising, or otherwise using in commerce the mark ‘Ginebra,’ and manufacturing, producing, distributing, or otherwise dealing in gin products which have the general appearance of, and which are confusingly similar with,” San Miguel’s marks, bottle design, and label for its gin products. San Miguel was required to put up a PhP20 million injunctive bond.

The Court held that the CA committed a reversible error, stressing that the issue in the main case was San Miguel’s 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.

It further held that the issue that must be resolved by the RTC was whether a word like “Ginebra” can acquire secondary meaning for gin products so as to prohibit the use of the word “Ginebra” by other gin manufacturers. In fact, the main issue is whether the word “Ginebra” is a generic mark incapable of appropriation by gin manufacturers.

“We find that San Miguel’s right to injunctive relief has not been clearly and unmistakably demonstrated. The right to exclusive use of the word ‘Ginebra’ has yet to be determined in the main case. The trial court’s 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,” the Court said.

The High Court pointed out that “[i]n this case, a cloud of doubt exists over San Miguel’s exclusive right relating to the word ‘Ginebra.’ San Miguel’s claim to the exclusive use of the word ‘Ginebra’ is clearly still in dispute because of Tanduay’s claim that it has, as others have, also registered the word ‘Ginebra’ for its gin products.”

The High Court held 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.”

(Tanduay Distillers, Inc. v. Ginebra San Miguel, Inc., GR No. 164324, August 14, 2009)

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