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While the survey evidence attests to the popularity and reputation of "GINEBRA" as the product of GSMI in the current market, it was the continuous marketing and advertisement of "GINEBRA," for more than 180 years, to the general populace that solidified public perception that such distinctive mark refers to the gin products of GSMI and its predecessors.

Distinctiveness of GINEBRA;
non-applicability of the doctrine
of foreign equivalents

Based on the totality of evidence, 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.

It is lamentable in G.R. No. 196372 that the CA, IPO Director General and BTO simply discarded all the evidence of GSMI after it opened a page of the dictionary as to the translation of "GINEBRA." Again, the doctrine of foreign equivalents is not an absolute rule and should only be considered as a guideline. Generally, a dictionary entry defining a word as a generic name of a class of products is reasonable evidence that the public perceives said word as such.^[299] However, if any of the exceptions to the doctrine of foreign equivalents exists, such as the alternate meaning of mark and marketplace circumstances or the commercial setting in which the mark is used to demonstrate a different meaning, then said doctrine shall not be applied.

Ultimately, public perception based on the primary significance test shall determine whether a term is generic. Reference to a dictionary is only one of the various benchmarks to determine public perception based on the peculiar circumstances of each case. Dictionary definitions, though relevant and sometimes persuasive to the genericness inquiry based on the assumption that such definitions generally reflect the public's perception of a word's meaning, are not necessarily dispositive or controlling.^[300] Further, there is likely to be a delay between a word's acceptance into common usage and its entry in a dictionary. Dictionary entries also reflect lexicographical judgment and editing which may distort a word's meaning or importance. A court accepting a dictionary entry at face value is in effect adopting the lexicographical judgment as its own, even though such a judgment might be based on printed matter which, if offered in evidence, would not be controlling.^[301]

Direct consumer evidence, such as consumer surveys and testimony, is preferable to indirect forms of evidence, such as dictionaries, trade journals, and other publications.^[302] If the doctrine of foreign equivalents is to be applied, an analysis of the evidence of record, including translation evidence, the nature of the foreign and English combined-wording, and any other relevant facts and evidence should be considered.^[303]

Here, the entirety of the evidence presented by GSMI shows the public perception with respect to the term, "GINEBRA" and it cannot be gainsaid that an ordinary Filipino purchaser would "stop and translate the foreign word into its English equivalent." As stated by Project Bookman, which is a direct consumer survey, 90% of the respondents readily associated the word "GINEBRA" with the gin product of GSMI. Evidently, the doctrine of foreign equivalents is not applicable. Almost the entire consuming public will not stop and translate the Spanish word "GINEBRA" to its English equivalent based on the dictionary. Instead, the consuming public immediately associates "GINEBRA" with the gin product of GSMI because of the primary significance the public associate with the mark.

On the other hand, TDI merely presented Rosales, the Vice-President of J. Salcedo and Associates, Inc., who coined "GINEBRA KAPITAN," to testify that based on the opinion of five people, without any substantial, empirical, and supporting evidence, the word "GINEBRA" is a generic term because its English-translation is "gin,'' to wit:

x x x x

Atty. Da Costa: Who said that the word GINEBRA is used to identify the product itself that is GIN, who among the five of you?

Mr. Rosales: Actually, the five of us agreed GINEBRA because we believe that Ginebra is a common name that is generic.

Q: What is your basis for saying that Mr. Witness?
A: It's just like Ginebra is a Spanish name, equivalent to Gin.

Q: Do you speak Spanish, Mr. Witness?
A: No [h]abla espanol.^[304]

As aptly opined by the CA in G.R. No. 219632, mere reference to the dictionary meaning of a contested mark, to determine whether or not "GINEBRA" is a generic term to ultimately solve the issue of trademark infringement is too simplistic. To resolve an issue, which is likely to go down in the annals of trademark history and legal jurisprudence, by just glancing at a dictionary will not suffice. Neither should the resolution of such a monumental issue be left to the whims of a five-person discussion between Rosales and TDI executives to subjectively decide that the term "GINEBRA" is generic.^[305]

Further, as keenly elucidated by Justice Caguioa, "Spanish may be common in the Philippines several years ago, but it no longer is now. In fact, it is no longer considered as one of the Philippines' official languages. That some may still speak and understand Spanish is not enough to disallow GSMI's application. It must also be proven that the relevant consumers, specifically the gin buyers and drinkers nowadays, identify "GINEBRA" as a Spanish word for gin. Again, no evidence was presented to prove this. On the other hand, GSMI presented overwhelming evidence to prove that the relevant consumers now already associate the word GINEBRA to GSMI's gin product."^[306]

The Court finds that "GINEBRA," based on public perception under the primary significance test, is not a generic term. Rather, it is considered a descriptive mark because it characterizes the gin product of GSMI, which may be registerable under the doctrine of secondary meaning due to the long usage of "GINEBRA" and it coming to be known by the consuming public as specifically and particularly designating the gin product of GSMI.

Doctrine of secondary meaning

Under the doctrine of secondary meaning, a word or a phrase that is "originally incapable of exclusive appropriation" may nonetheless be used as a trademark of an enterprise if such word or phrase—by reason of the latter's long and exclusive use thereof with reference to its article—has "come to mean that such article was [its] product."^[307] The doctrine was articulated in our jurisdiction in the case of Philippine Nut Industry Inc. v. Standard Brands, Inc.:^[308]

This Court held that the doctrine is to the effect that a word or phrase originally incapable of exclusive appropriation with reference to an article on the market, because geographically or otherwise descriptive, might nevertheless have been used so long and so exclusively by one producer with reference to his article that, in that trade and to that branch of the purchasing public, the word or phrase has come to mean that the article was his product.

By way of illustration, is the word "Selects" which according to this Court is a common ordinary term in the sense that it may be used or employed by any one in promoting his business or enterprise, but which once adopted or coined in connection with one's business as an emblem, sign or device to characterize its products, or as a badge of authenticity, may acquire a secondary meaning as to be exclusively associated with its products and business, so that its use by another may lead to confusion in trade and cause damage to its business.

The applicability of the doctrine of secondary meaning to the situation now before Us is appropriate because there is oral and documentary evidence showing that the word PLANTERS has been used by and closely associated with Standard Brands for its canned salted peanuts since 1938 in this country. Not only is that fact admitted by petitioner in the amended stipulation of facts, but the matter has been established by testimonial and documentary evidence consisting of invoices covering the sale of "PLANTERS cocktail peanuts". In other words, there is evidence to show that the term PLANTERS has become a distinctive mark or symbol insofar as salted peanuts are concerned, and by priority of use dating as far back as 1938, respondent Standard Brands has acquired a preferential right to its adoption as its trademark warranting protection against its usurpation by another. Ubi jus ibi remedium. Where there is a right there is a remedy. Standard Brands has shown the existence of a property right and respondent Director has afforded the remedy.^[309]

On the other hand, in Lyceum of the Philippines, Inc. v. Court of Appeals,^[310] the Court explained that under the doctrine of secondary meaning, a word or phrase originally incapable of exclusive appropriation with reference to an article in the market, because geographical or otherwise descriptive, might nevertheless have been used so long and so exclusively by one producer with reference to this article that, in that trade and to that group of the purchasing public, the word or phrase has come to mean that the article was his produce. This circumstance has been referred to as the distinctiveness into which the name or phrase has evolved through the substantial and exclusive use of the same for a considerable period of time. Consequently, the same doctrine or principle cannot be made to apply where the evidence did not prove that the business has continued for so long a time that it has become of consequence and acquired a good will of considerable value such that its articles and produce have acquired a well-known reputation, and confusion will result by the use of the disputed name.^[311]

To repeat, Sec. 123 of R.A. No. 8293 states that descriptive marks are generally not registrable as trademarks, viz.:

SECTION 123. Registrability. — 123.1. A mark cannot be registered if it:

x x x x

(j) Consists exclusively of signs or of indications that may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin, time or production of the goods or rendering of the services, or other characteristics of the goods or services;

(k) Consists of shapes that may be necessitated by technical factors or by the nature of the goods themselves or factors that affect their intrinsic value;

(l) Consists of color alone, unless defined by a given form;

Nevertheless, Sec. 123.2 of R.A. No. 8293 embodies the doctrine of secondary meaning, to wit:

123.2. As regards signs or devices mentioned in paragraphs (j), (k), and (l), nothing shall prevent the registration of any such sign or device which has become distinctive in relation to the goods for which registration is requested as a result of the use that have been made of it in commerce in the Philippines. The Office may accept as prima facie evidence that the mark has become distinctive, as used in connection with the applicant's goods or services in commerce, proof of substantially exclusive and continuous use thereof by the applicant in commerce in the Philippines for five (5) years before the date on which the claim of distinctiveness is made. (emphasis supplied)

In Shang Properties Realty Corp. v. St. Francis Development Corp.,^[312] the Court enumerated the specific requirements that have to be met in order to conclude that a geographically-descriptive mark has acquired secondary meaning, to wit: (a) the secondary meaning must have arisen as a result of substantial commercial use of a mark in the Philippines; (b) such use must result in the distinctiveness of the mark insofar as the goods or the products are concerned; and (c) proof of substantially exclusive and continuous commercial use in the Philippines for five (5) years before the date on which the claim of distinctiveness is made. Unless secondary meaning has been established, a geographically-descriptive mark, due to its general public domain classification, is perceptibly disqualified from trademark registration.^[313]

In this case, "GINEBRA" may be considered a descriptive mark because the term is more accurately translated to "Genever" or "Jenever," the juniper berry-flavored grain spirit which originated from the Netherlands in the 17th century, a specific kind of gin.^[314]

There are different kinds of gin. Juniper-flavored spirit drink is a type of gin produced by flavoring ethyl alcohol of agricultural origin and or grain spirit and/or grain distillate with juniper. Traditional gin is produced by flavoring organoleptically suitable ethyl alcohol of agricultural origin with juniper berries. Distilled gin is another type of gin produced exclusively by redistilling organoleptically suitable ethyl alcohol of agricultural origin of an appropriate quality. Finally, London gin is style of gin obtained exclusively from ethyl alcohol of agricultural origin, whose flavor is introduced exclusively through redistillation.^[315]

The styles of gin may further be classified based on its country of origin. Juniper-flavored spirit drinks originating from the Netherlands, Belgium, France, or Germany, are called Genièvre/Jenever/Genever. If the country of origin is the United Kingdom, the Juniper-flavored spirit drink is called Plymouth Gin.^[316]

Indeed, when a mark describes the kind of gin, it may be subject to trademark protection under the doctrine of secondary meaning. In the US case of United States v. Thirty-Six Bottles of London Dry Gin,^[317] the term "LONDON DRY GIN" was considered as a descriptive and distinct kind of gin. It was held therein that the term describes a well-known liquor, having certain characteristics that identify it wherever it may be made.^[318]

Here, the term "GINEBRA" describes a particular kind of gin, "Genever" or "Jenever," the juniper berry-flavored grain spirit which originated in the Netherlands. Verily, it describes the kind of gin product of GSMI. Accordingly, this satisfies one of the requisites of the doctrine of secondary meaning.

Further, according to the US Trademark Manual of Examining Procedure, survey evidence, market research, and consumer reaction studies are relevant in establishing acquired distinctiveness and secondary meaning.^[319] Although survey evidence is not required, it is a valuable method of showing secondary meaning.^[320] To show secondary meaning, the survey must show that the consuming public views the proposed mark as an indication of the source of the product or service.^[321] Evidence of secondary meaning may be sufficient if it shows that a substantial portion of the consuming public associates the proposed mark with a single source.^[322] Although all evidence must be reviewed on a case-by-case basis, generally, survey results showing less than 10% consumer recognition are insufficient to establish secondary meaning, and results over 50% may be sufficient to establish secondary meaning.^[323] However, the probative value of a survey is significantly weakened, despite consumer recognition rates greater than 50%, if there are flaws in the way the survey is conducted.^[324]

As stated above, the survey evidence, along with the other documentary and testimonial evidence presented by GSMI, established that, while the term "GINEBRA" is a descriptive term for a gin product, said word had already become distinctive of the products of GSMI in view of the latter's extensive and substantive use of the term "GINEBRA" on its gin products for over one hundred eighty (180) years. To reiterate Project Bookman showed 90% of the respondents associated the word "GINEBRA" with GSMI as top-of-mind mention.^[325] In Project Georgia, the survey showed that 86% of the respondents correctly named GSMI as the manufacturer of the GINEBRA SAN MIGUEL product.^[326] This demonstrates that the prolonged use of the descriptive mark in commerce satisfied another requisite of the doctrine of secondary meaning.

Finally, the exclusive use of the descriptive mark was likewise established. As correctly observed by the CA in G.R. No. 219632, viz.:

Moreover, even if it may be true that there had been attempts by other entities to register the mark "GINEBRA" or market their products bearing the said mark, as [TDI] pointed out in the testimony of their witnesses, these entities have not actively utilized the term or that the consuming public was never saturated with products containing the mark "GINEBRA." In fine, one may make advertisements, issue circulars, distribute price list on certain goods, but these alone will not inure to the claim of ownership of the mark until the goods bearing the mark are sold to the public in the market. Against these pieces of evidence, [TDI] was unable to present countervailing evidence. [TDI] also failed to demonstrate by providing studies or any authority to discount GSMI's claim as to how effective its brand management and promotions were particularly on the aspect of the so called "emotional branding," or that "GINEBRA" has been "culturally branded" to demonstrate the Filipino spirit of resilience and never-say-die attitude.^[327] (emphasis supplied)

Aptly, GSMI's product was the only well-known "GINEBRA" brand in the market based on public perception under the primary significance test. While the competitors of GSMI contemplated to use the word "GINEBRA" in their products, nearly all of their attempts never materialized. It was only Webengton Distillery, which actually utilized "GINEBRA PINOY" but currently no longer available, and TDI, with "GINEBRA KAPITAN," which attempted to introduce their product in the market. To defend its interests, GSMI immediately instituted legal actions for infringement against both Webengton Distillery and, currently, TDI to protect its rights under the distinct mark of "GINEBRA."^[328]

As GSMI satisfied all the requisites of the doctrine of secondary meaning with respect to descriptiveness, prolonged commercial use, and exclusivity in the market, the descriptive mark "GINEBRA" can still be protected under the trademark laws and may be registered in favor of GSMI, to the exclusion of others. Indeed, even assuming that "GINEBRA" may be the descriptive term for a class of alcoholic drink, it does not detract from the fact that "GINEBRA," through its long usage in the Philippines, now commonly refers to the gin products of GSMI, in particular, to "GINEBRA SAN MIGUEL," a registered trademark of GSMI, which has already acquired a secondary meaning.^[329]

Notably, in the subsequent Decisions of the Director General of the IPO dated December 27, 2019^[330] and December 16, 2020,^[331] said Director General changed its earlier position and ruled that GSMI may use the word "GINEBRA" exclusively under the doctrine of secondary meaning, to wit:

This Office sees no cogent reason to overturn the finding of the Director of Legal Affairs and of this Office in earlier cases that GINEBRA is generic or descriptive.

However, the discussion should not stop there. As GINEBRA is likewise descriptive, the doctrine of secondary meaning under Sec. 123.2 may still apply, so long as [GSMI] is able to present "proof of substantially exclusive and continuous use-[of the mark] in commerce in the Philippines for five (5) years before the date on which the claim of distinctiveness is made."^[332]

x x x x

In addition to proof of the exclusive and continuous use of the term GINEBRA, [GSMI] was also able to provide evidence that such term has become distinctive and that the consuming public has associated GINEBRA with [GSMI] and its products. The July 2003 consumer survey Project Bookman presented by [GSMI] showed that 92% of the respondents associated the word GINEBRA with "Ginebra San Miguel" (the registered mark affixed to the gin products of its manufacturer, [GSMI], whose corporate name is also GINEBRA SAN MIGUEL), "San Miguel" (part of the names of the registered mark and the manufacturer), "La Tondeña" (the name of the predecessor of [GSMI]) or "Ginebra Blue" (another product of [GSMI]). From the survey, it is clear that the term GINEBRA is linked with [GSMI]'s gin products to which the registered marks are affixed, and eventually the same generic or descriptive term GINEBRA points to GINEBRA SAN MIGUEL, INC. as the origin of the goods.

All told, the use of the registered mark GINEBRA SAN MIGUEL already indicates that the gin product to which it is affixed comes from [GSMI]. However, by reason of the repeated implied association between the generic or descriptive term GINEBRA and the registered mark GINEBRA SAN MIGUEL in relation to the gin products, the use of such term eventually and inevitably performs the same function as the registered mark. GINEBRA SAN MIGUEL, therefore, has come to be equated to GINEBRA. The reverse is also true: GINEBRA to GINEBRA SAN MIGUEL.^[333]

Dissecting Sec. 123.2 of
R.A. No. 8293 and the doctrine
of secondary meaning

Assuming even further that "GINEBRA" was originally generic more than a century ago and does not have any protection under the trademark law, it does not forestall the possibility that the such mark evolved in the spectrum of distinctiveness, particularly, to a descriptive mark, that may be registrable based on the doctrine of secondary meaning under the primary significance test. Only when a term evolves into a higher rank in the spectrum of distinctiveness, such as a suggestive mark or even a descriptive mark, under the doctrine of secondary meaning, shall such term become registrable. Otherwise, if the term remains generic, despite the passage of time, under the primary significance test, then the generic mark remains unregistrable. To repeat, public perception is the ultimate factor to be considered in determining whether a particular word is generic or not.^[334]

Examining Sec. 123.2 of R.A. No. 8293, which is the statutory basis of the doctrine of secondary meaning, it can be discerned that the same is made up of two (2) clauses:

1.	The first clause, which reads: "[a]s regards signs or devices mentioned in paragraphs (j), (k), and (l), nothing shall prevent the registration of any such sign or device which has become distinctive in relation to the goods for which registration is requested as a result of the use that have been made of it in commerce in the Philippines."
2.	The second clause, which reads: "[t]he Office may accept as prima facie evidence that the mark has become distinctive, as used in connection with the applicant's goods or services in commerce, proof of substantially exclusive and continuous use thereof by the applicant in commerce in the Philippines for five (5) years before the date on which the claim of distinctiveness is made."

The first clause of the provision, though mentioning only descriptive terms and geographical names (i.e., those terms and names under paragraphs [j], [k] and [l] of Sec. 123.1 of R.A. No. 8293), is not a categorical statement that "only" such terms have the capacity to acquire secondary or distinctive meaning. The second clause of Sec. 123.2 of R.A. No. 8293, on the other hand, only allows the IPO to draw a prima facie presumption of distinctive meaning in favor of a prospective "mark" whenever it is proven that such mark had been used by an applicant in the specific manner and for a specific length of time as stated in the provision. Neither clause, however, explicitly precludes words with generic connotations from subsequently evolving after an extensive passage of time, and acquiring distinctive signification based on public perception.

At best, Sec. 123.2 of R.A. No. 8293 only authorizes the IPO to consider "proof of substantially exclusive and continuous use [of a descriptive term or geographical name] in commerce in the Philippines for five (5) years," as "prima facie evidence" that such descriptive term or geographical name has already become distinctive. The provision, however, neither explicitly precludes words with originally generic connotations a long time ago from subsequently evolving into a distinctive term, nor prevents the BOT or the IPO from admitting and appreciating evidence to that effect.

The absence of a categorical statement that "only" descriptive terms and geographical names may be registrable under Sec. 123.2 of R.A. No. 8293 shows that the provision does not foreclose the possibility that a generic term a century ago can change and evolve its meaning to the consuming public based on the primary significant test. However, it must be stressed that if the generic mark remains generic in the eyes of the consuming public despite the passage of time and wide-ranged marketing, such generic mark shall not benefit from the doctrine of secondary meaning and shall remain unregistrable because it is not distinctive.

Indeed, the law gives preferential treatment to those marks under paragraphs [j], [k] and [l] of Sec. 123.1 to receive prima facie evidence of distinctiveness. Nevertheless, marks may likewise evolve, transform, develop, and eventually becoming distinctive marks under the primary significance test.^[335] Only when these marks are distinctive may these be registered under R.A. No. 8293.

Again, the determination of the genericness of a mark depends on public perception based on the primary significance test. Under Sec. 151.1(b) of R.A. No. 8293, in determining whether a registered trademark has become generic, "the primary significance of the registered mark to the relevant public" is considered.^[336] As extensively discussed earlier, a generic term 100 years ago may evolve and become a distinctive mark today based on the shift of public perception based on the primary significance attributed to the term. Conversely, a distinctive mark 100 years ago, which could even be registered as a trademark back then, may devolve as a generic mark today based on the change of public perception. Accordingly, to determine whether a mark has altered its rank in the spectrum of distinctiveness, the applicant is allowed to present evidence to establish the distinctiveness of a mark, even if not originally covered by paragraphs [j],[k] and [l] of Sec. 123.1 of R.A. No. 8293.

In other words, there is nothing in R.A. No. 8293 that prevents a previous generic term a long time ago from evolving into a descriptive term and becoming registrable under the doctrine of secondary meaning. Genericness is not a perpetual determination in an unalterable and static market; it may change over time based on the primary significance attributed by the consuming public on the term. At the same time, if a term remains generic based on public perception under the primary significance test, despite the passage of time and change in public perception, then such term shall definitely not evolve as a descriptive term and shall not be registrable under the doctrine of secondary meaning.

Here, GSMI presented extensive evidence, consisting of empirical survey evidence, long periods of advertisement materials, and other documentary and testimonial evidence, and proved that "GINEBRA" has become a distinctive mark based on public perception under the primary significance test. An ordinary Filipino purchaser will not stop and translate the Spanish term "GINEBRA" to its English equivalent; rather, when the term "GINEBRA" is mentioned, the ordinary consumer immediately associates it with the gin product of GSMI. Indeed, based on the primary significance test, the term "GINEBRA" has now become a descriptive term, which is registrable under the doctrine of secondary meaning.

Trademark infringement

In G.R. Nos. 210224 and 219632, one of the issues raised is whether TDI committed trademark infringement against GSMI when it named its gin product "GINEBRA KAPITAN." In its August 15, 2003 Complaint,^[337] GSMI claimed that TDI used the mark "GINEBRA" in manufacturing, distributing and marketing its gin product "GINEBRA KAPITAN." The use of the said mark, coupled with the colorable imitation of GSMI's bottle and label designs for "Ginebra," caused confusion to, and deceived, the general public as they were made to believe that "Ginebra Kapitan" was being manufactured, distributed and sold by GSMI.^[338]

According to GSMI, it has registered several trademarks, such as "GINEBRA SAN MIGUEL" and "GINEBRA S. MIGUEL 65," and that "GINEBRA" is the dominant feature of these trademarks; and GSMI, by itself and through its predecessors-in-interest, have been continuously marketing and distributing throughout the Philippines the said trademarks since 1834, as evidenced by the special issue of the Manila Chronicle dated December 31, 1968.^[339] Thus, GSMI claims that TDI committed trademark infringement when it used "GINEBRA KAPITAN" in its gin products because the dominant feature "GINEBRA" was already being exclusively used by GSMI in its registered trademarks. Notably, even the term "GINEBRA" is included in the tradename of GSMI itself.

Trademark infringement is defined under R.A. No. 8293 as follows:

SECTION 155. Remedies; Infringement. — Any person who shall, without the consent of the owner of the registered mark:

155.1. Use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark or the same container or a dominant feature thereof in connection with the sale, offering for sale, distribution, advertising of any goods or services including other preparatory steps necessary to carry out the sale of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or

155.2. Reproduce, counterfeit, copy or colorably imitate a registered mark or a dominant feature thereof and apply such reproduction counterfeit, copy or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive, shall be liable in a civil action for infringement by the registrant for the remedies hereinafter set forth: Provided, That the infringement takes place at the moment any of the acts stated in Subsection 155.1 or this subsection are committed regardless of whether there is actual sale of goods or services using the infringing material.^[340] (emphasis supplied)

In Societe des Produits Nestle, S.A. v. Dy, Jr.,^[341] the Court held that the elements of infringement under the IP Code are:

1. The trademark being infringed is registered in the Intellectual Property Office; however, in infringement of trade name, the same need not be registered;

2. The trademark or trade name is reproduced, counterfeited, copied, or colorably imitated by the infringer;

3. The infringing mark or trade name is used in connection with the sale, offering for sale, or advertising of any goods, business or services; or the infringing mark or trade name is applied to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used upon or in connection with such goods, business or services;

4. The use or application of the infringing mark or trade name is likely to cause confusion or mistake or to deceive purchasers or others as to the goods or services themselves or as to the source or origin of such goods or services or the identity of such business; and

5. It is without the consent of the trademark or trade name owner or the assignee thereof.

In Superior Commercial Enterprises, Inc. v. Kunnan Enterprises Ltd.,^[342] the Court stated that to establish trademark infringement, the following elements must be proven: (1) the validity of plaintiff’s mark; (2) the plaintiff’s ownership of the mark; and (3) the use of the mark or its colorable imitation by the alleged infringer results in likelihood of confusion.

In Mang Inasal Philippines, Inc. v. IFP Manufacturing Corp., it was stated that the first condition of the proscription requires resemblance or similarity between a prospective mark and an earlier mark. Similarity does not mean absolute identity of marks. To be regarded as similar to an earlier mark, it is enough that a prospective mark be a colorable imitation of the former. Colorable imitation denotes such likeness in form, content, words, sound, meaning, special arrangement or general appearance of one mark with respect to another as would likely mislead an average buyer in the ordinary course of purchase.^[343]

Here, GSMI has several registered trademarks that contain the word "GINEBRA." Its own trade name is GINEBRA SAN MIGUEL, INC. On the other hand, TDI, subsequently also applied for trademark registration using the words "GINEBRA KAPITAN," and has also distributed its gin products to the market labelled as "GINEBRA KAPITAN." The Court is tasked to determine whether trademark infringement exists such that "GINEBRA" is the dominant feature in the registered trademarks of GSMI, and thus, cannot be appropriated by TDI.

In ABS-CBN Publishing, Inc. v. Director of the Bureau of Trademarks,^[344] the Court declared that in determining whether a mark is to be considered as "identical" or that which is confusingly similar with that of another, the Court has develop two (2) tests: the dominancy and holistic tests. While the Court has time and again ruled that the application of the tests is on a case-to-case basis, upon the passage of the R.A. No. 8293, the trend has been to veer away from the usage of the holistic test and to focus more on the usage of the dominancy test.^[345] As stated by the Court in the case of McDonald's Corporation v. L.C. Big Mak Burger, Inc.,^[346] the test of dominancy is now explicitly incorporated into law in Sec. 155.1 of the IPC, which defines infringement as the colorable imitation of a registered mark or a dominant feature thereof.^[347]

In the recent case of Kolin,^[348] the Court conclusively ruled that the dominancy test is the prevailing rule; while the holistic test has been abandoned, to wit:

Considering the adoption of the Dominancy Test and the abandonment of the Holistic Test, as confirmed by the provisions of the IP Code and the legislative deliberations, the Court hereby makes it crystal clear that the use of the Holistic Test in determining the resemblance of marks has been abandoned.^[349]

Under the dominancy test, in committing the infringing act, the infringer merely introduces negligible changes in an already registered mark, and then banks on these slight differences to state that there was no identity or confusing similarity, thus resulting in no infringement. This kind of act, which leads to confusion in the eyes of the public, is exactly the evil that the dominancy test refuses to accept. The small deviations from a registered mark are insufficient to remove the applicant mark from the ambit of infringement.^[350]

In this case, the RTC applied both the dominancy test and the holistic tests. It held that the dominant mark of "GINEBRA KAPITAN" is the composite mark, which is strategically placed in the middle of the label to emphasize the name of the product. On the other hand, the dominant feature of GSMI's "GINEBRA S. MIGUEL" is the image of an angel wielding a sword against a fallen devil, and not the word, "GINEBRA."^[351]

The RTC also ruled that employing the holistic test, it was evident that the labels and packaging of the competing products were not to likely cause confusion to the consuming public. The similarity between "GINEBRA KAPITAN" and "GINEBRA S. MIGUEL" pertained only to the transparent bottles of both products. According to the trial court, the labels and the bottle caps, on the other hand, were different from each other.^[352]

The Court finds that the RTC erred in applying the holistic test. As stated in Kolin, the holistic test has been conclusively abandoned in Our jurisdiction. Nevertheless, the Court likewise rules that the RTC erred in appreciating the dominancy test in declaring that there was no trademark infringement.

In National Federation of Hog Farmers, Inc. v. Board of Investments,^[353] the Court held that:

There should be objective, scientific, and economic standards to determine whether goods or services offered by two parties are so related that there is a likelihood of confusion. In a market, the relatedness of goods or services may be determined by consumer preferences. When two goods are proved to be perfect substitutes, where the marginal rate of substitution, or the "consumer's willingness to substitute one good for another while maintaining the same level of satisfaction" is constant, then it may be concluded that the goods are related for the purposes of determining likelihood of confusion. Even goods or services, which superficially appear unrelated, may be proved related if evidence is presented showing that these have significant cross-elasticity of demand, such that changes of price in one party's goods or services change the price of the other party's goods and services. Should it be proved that goods or services belong to the same relevant market, they may be found related even if their classes, physical attributes, or purposes are different.^[354] (emphases supplied)

Indeed, with respect to the requisite of likelihood of confusion in trademark infringement, it is not sufficient that a court applies a subjective analysis on whether there is likelihood of confusion among competing goods. There should be objective, scientific, and economic standards to determine whether goods or services offered by two parties are so related that there is a likelihood of confusion.^[355] As stated above, should it be proved that goods or services belong to the same relevant market, they may be found related even if their classes, physical attributes, or purposes are different.^[356]

The applicable test herein is the dominancy test based on Sec. 155 of R.A. No. 8293. The pictures of the competing products are reproduced below:^{[357] [358]}

(image supposed to be here)

On the surface, based merely on the visuals of the labels, the striking feature for "GINEBRA KAPITAN" seems to be the name and the label; while the prevalent feature for "GINEBRA S. MIGUEL" is the drawing on the label. On the other hand, the colors of the bottle caps are different. The labels depict attacking or charging scenes – the archangel Michael wielding a sword against the fallen devil for "GINEBRA S. MIGUEL" and a kapitan mounted on a horse leading his troops and pointing his bolo for "GINEBRA KAPITAN."^[359] Notably, in both marks, the central figure appears to be on the offensive, using a bladed weapon. Nevertheless, to achieve a more objective and empirical examination, it must be determined ho an ordinary purchaser would react to such marks and whether there would be confusing similarity between the two products in the light of public perception.

Survey evidence is meaningful to establish the likelihood of confusion.^[360] A consumer survey that measures consumer confusion is an effective way to ensure that trademark infringement cases are decided based on empirical facts about likely consumer confusion instead of on judicial assumptions about how consumers are likely to respond.^[361] Indeed, survey evidence can measure whether an appreciable number of relevant consumers are likely to be confused by a mark that may or may not already be in the marketplace, and offers an economical and systematic way to gather information and draw inferences about a large number of individuals.^[362]

In the recent case of Levi Strauss & Co. v. Sevilla,^[363] the Court considered the survey evidence presented, Project Cherokee 5, to support the finding that there was actual confusion between the goods branded as LEVI'S and LIVE'S, which resulted to the cancellation of the subsequent registration of LIVE's, to wit:

Here, there is evidence on record showing that there were already numerous instances of actual confusion between petitioner's and respondents' goods brought about by the similarity of their marks, labels, and products. As may be gleaned from the Final Report on Project Cherokee 5, 86% of the survey participants associated the "LIVE'S" mark with "LEVI'S;" and 90% of same participants read the stylized "LIVE'S" mark, as "LEVI'S."^[364]

In Project Bookman, 90% of the respondent gin-drinkers associate the word "GINEBRA" with GSMI's products.^[365] The same survey results showed that even when shown the front view of the bottle of "GINEBRA KAPITAN" majority of these respondents (86% in the GMA and 83% in South Luzon) perceived it as a product of San Miguel or Ginebra San Miguel/Ginebra or La Tondeña.^[366] The empirical results of the consumer surveys provide an objective analysis whether there is a likelihood of confusion between the two products.

In Project Georgia, it was demonstrated that by merely showing the "GINEBRA KAPITAN" product, 84% of the respondents stated that its manufacturer is GSMI.^[367] Evidently, the dominant mark of TDI's product is the "GINEBRA" term, which causes confusion among the survey respondents as to the origin of the product. "GINEBRA" is also the dominant mark of "GINEBRA S. MIGUEL" because an overwhelming majority of respondents of the survey immediately associated GSMI's gin products with the distinctive mark "GINEBRA."^[368] As such, the consuming public would just rely on the said dominant mark and not really take time to examine the difference between the two gin products. A consumer is less likely to notice the differences in the label and packaging of the two gins and would just look for the word "GINEBRA" as a product of GSMI without anymore examining whether the same was "SAN MIGUEL" or "KAPITAN."

Also, unlike in the label of "GINEBRA SAN MIGUEL" where the consumer can immediately identify the same as a product of GSMI, it is not immediately apparent from the label or bottle design of "GINEBRA KAPITAN" because it does not readily or promptly indicate it as a product of TDI. Hence, considering that "GINEBRA SAN MIGUEL" and "GINEBRA KAPITAN" are both gin products, it is very likely that the consuming public would be misled into thinking that "GINEBRA KAPITAN" is also a gin product of GSMI since it is the latter which is known to carry the distinctive mark of "GINEBRA." This is supported by the survey evidence, which showed that more than 80% of the respondents associated "GINEBRA KAPITAN" being a product of GSMI.^[369]

Further, in Project Georgia, the respondents explained why they were actually confused that GINEBRA KAPITAN was a product of GSMI. When shown the product of GINEBRA KAPITAN, its round bottle shape (45%), the predominant features in its label design (32%), and logo (13%) were the key specific elements that lead consumers into thinking that the group was drinking GINEBRA SAN MIGUEL.^[370] On the other hand, 40% of the respondents relied on its label design features, 40% on the round bottle shape, and 26% on the logo in correctly identifying the product when the GINEBRA SAN MIGUEL product was shown in the AVP.^[371] Evidently, the dominant features in the products of GSMI and TDI, particularly, the label design, logo, and bottle shape led the respondents to believe that GINEBRA KAPITAN was a product of GSMI. This is undoubtedly strong evidence of actual confusion, where the consumers are misled to believe that GINEBRA KAPITAN originated from GSMI. As shown in Levi Strauss & Co. v. Sevilla,^[372] survey evidence, which indicate actual or even only likelihood of confusion between competing goods, shall result in the cancellation or denial of the trademark registration of the infringer.

As meaningfully discussed by Justice Mario Lopez, "applying the Dominancy Test, the word 'GINEBRA' is the dominant feature of these marks. This reveals TDI's intention to use 'GINEBRA' as a distinctive term—not merely as a generic or descriptive term. This observation is consistent with the survey evidence showing that 90% of more than 6 million gin drinkers in Greater Manila Area, North Luzon, and South Luzon associated 'GINEBRA' with GINEBRA SAN MIGUEL, SAN MIGUEL, or LA TONDEÑA. Thus, 'GINEBRA' is a distinctive mark that distinguishes GSMI's gin products from other manufacturers."^[373]

To reiterate, the term "GINEBRA" has been so deeply ingrained in the general psyche of the Filipinos that it is conveniently and exceptionally associated with GSMI's "GINEBRA SAN MIGUEL" gin products, more particularly, "GINEBRA S. MIGUEL." Thus, an ordinary purchaser, even one accustomed to drinking gin, may likely be confused into buying a "GINEBRA KAPITAN" thinking it is a "GINEBRA" product of GSMI. The element of likelihood of confusion, which is the gravamen of trademark infringement,^[374] between the two products, since "GINEBRA KAPITAN" used the distinct mark "GINEBRA," has been fulfilled in this case.

Further, the Court disagrees with the view of the IPO Director General in G.R. No. 216104 that the public would buy GINEBRA KAPITAN, not because they associate this product as that of GSMI, but because they find this gin product suitable to their taste.^[375] The target market of these gin products was the class D and E consumers.^[376] When going to the store, there is no existing or objective evidence presented that an ordinary consumer from the said classes would conduct a taste-test before purchasing the gin product from the store to determine the product's taste. The subjective deduction of the IPO Director General regarding consumer preference for the competing products is out of touch.

Instead, it is more likely and highly probable that, when an ordinary purchaser from the target class buys a gin product in a store, that person would simply mention or look for the word "GINEBRA" without specifying whether he or she is buying a "GINEBRA SAN MIGUEL" or "GINEBRA KAPITAN". This was confirmed by the results of Project Georgia where more than 80% of the respondents were confused and believed that TDI's product was that of GSMI because of the distinctive mark of "GINEBRA."

The simple use of the word, "GINEBRA" in "GINEBRA KAPITAN" is sufficient to incite an average person, even a gin-drinker, to associate it with GSMI's gin product, in particular, "GINEBRA SAN MIGUEL" and/or "GINEBRA S. MIGUEL."^[377] Verily, TDI committed trademark infringement against GSMI.

Unfair competition

The claim of unfair competition is primarily factual in nature.^[378] The purpose of prosecuting unfair competition is to prohibit and restrict deception of the consuming public whenever persons or firms attempt to pass off their goods or services for another's. The underlying prohibition against unfair competition is that business competitors cannot do acts which deceive, or which are designed to deceive the public into buying their goods or availing their services instead.^[379] The relevant provisions of R.A. No. 8293 regarding unfair competition state:

SECTION 168. Unfair Competition, Rights, Regulation and Remedies. —

168.1. A person who has identified in the mind of the public the goods he manufactures or deals in, his business or services from those of others, whether or not a registered mark is employed, has a property right in the goodwill of the said goods, business or services so identified, which will be protected in the same manner as other property rights.

168.2. Any person who shall employ deception or any other means contrary to good faith by which he shall pass off the goods manufactured by him or in which he deals, or his business, or services for those of the one having established such goodwill, or who shall commit any acts calculated to produce said result, shall be guilty of unfair competition, and shall be subject to an action therefor.

168.3 In particular, and without in any way limiting the scope of protection against unfair competition, the following shall be deemed guilty of unfair competition:

(a) Any person, who is selling his goods and gives them the general appearance of goods of another manufacturer or dealer, either as to the goods themselves or in the wrapping of the packages in which they are contained, or the devices or words thereon, or in any other feature of their appearance, which would be likely to influence purchasers to believe that the goods offered are those of a manufacturer or dealer, other than the actual manufacturer or dealer, or who, otherwise, clothes the goods with such appearance as shall deceive the public and defraud another of his legitimate trade, or any subsequent vendor of such goods or any agent of any vendor engaged in selling such goods with a like purpose.

x x x x

The essential elements of an action for unfair competition are: (1) confusing similarity in the general appearance of the goods, and (2) intent to deceive the public and defraud a competitor. Unfair competition is always a question of fact.^[380]

Here, the first element of unfair competition has been established. There is confusing similarity between the "GINEBRA KAPITAN" of TDI and "GINEBRA SAN MIGUEL" of GSMI because both of them bear the distinctive mark "GINEBRA." An ordinary purchaser would be confused when confronted with the products bearing the distinct mark of "GINEBRA," which has been established to be associated with GSMI products by the consuming public.

As to the second element of unfair competition, there must be intent to deceive the public and defraud a competitor. The element of intent to deceive and to defraud may be inferred from the similarity of the appearance of the goods as offered for sale to the public. Actual fraudulent intent need not be shown;^[381] probable intent to deceive the consuming public is sufficient.

Protection against unfair competition is not intended to create or foster a monopoly and the court should always be careful not to interfere with free and fair competition, but should confine itself, rather, to preventing fraud and imposition resulting from some real resemblance in name or dress of goods. Nothing less than conduct tending to pass off one man's goods or business as that of another will constitute unfair competition. Actual or probable deception and confusion on the part of customers by reason of defendant's practices must always appear.^[382]

The Court finds that the second element of unfair competition was also satisfied. As in all other cases of colorable imitations, the unanswered riddle is why, of the millions of terms and combinations of letters available, TDI had to choose those so closely similar to another's trademark if there was no intent to take advantage of the goodwill generated by the other mark.^[383] During trial, TDI's witness, Rosales, admitted that they knew that GSMI has products with the label "GINEBRA,"^[384] which is obvious because of the popularity and iconic status of the "GINEBRA" brand of GSMI. Nevertheless, TDI still took the risk and continued to use the said term in its "GINEBRA KAPITAN" product, banking on the flawed argument that "GINEBRA" is a generic term.^[385]

Verily, TDI erred in its marketing decision to use the word "GINEBRA" in its products and caused confusion to the consuming public regarding their products with those of GSMI. The evidence of GSMI showed that an overwhelming number of respondents have mistakenly believed that "GINEBRA KAPITAN" was the product of GSMI because of the improper use of the distinctive and dominant mark "GINEBRA." For that, TDI committed unfair competition against GSMI. The Court adopts with approval the cogent observation of the CA on the matter in G.R. No. 210224, thus:

In the case at bench, it cannot be denied that TDI knew fully well that GSMI has been using the mark/word "GINEBRA" in its gin products and that GSMI's "GINEBRA SAN MIGUEL" had already obtained, over the years, a considerable number of loyal consumers who associate the mark "GINEBRA" with San Miguel. Yet, it chose to use the same mark/word in launching the same gin product. TDI's choice of the word "GINEBRA" as part of the trademark of its "GINEBRA KAPITAN" gin tended to show their intention to pass off their gin as that of GSMI and ultimately to ride on the popularity and established goodwill of "Ginebra San Miguel." Such act clearly constitutes unfair competition.^[386]

As persuasively articulated by Justice Caguioa, "intent to pass off should be presumed in the instant case. If there was no intent to palm off TDI's gin products as those of GSMI, it is uncanny that aside from the use of the same word "GINEBRA", the general appearance of the two competing products are also strikingly similar, as established above. Therefore, TDI should be held liable for unfair competition. If TDI had really wanted to make its products distinctive, TDI could have employed a totally different trade dress to set its products apart from GSMI's products."^[387]

Remedies and Damages

The following are the statutory provisions for damages whenever trademark infringement and unfair competition are committed:

SECTION 156. Actions, and Damage's and Injunction for Infringement. —

156.1. The owner of a registered mark may recover damages from any person who infringes his rights, and the measure of the damages suffered shall be either the reasonable profit which the complaining party would have made, had the defendant not infringed his rights, or the profit which the defendant actually made out of the infringement, or in the event such measure of damages cannot be readily ascertained with reasonable certainty, then the court may award as damages a reasonable percentage based upon the amount of gross sales of the defendant or the value of the services in connection with which the mark or trade name was used in the infringement of the rights of the complaining party.

156.2. On application of the complainant, the court may impound during the pendency of the action, sales invoices and other documents evidencing sales.

156.3. In cases where actual intent to mislead the public or to defraud the complainant is shown, in the discretion of the court, the damages may be doubled.

156.4. The complainant, upon proper showing, may also be granted injunction.

SECTION 157. Power of Court to Order Infringing Material Destroyed. —

157.1. In any action arising under this Act, in which a violation of any right of the owner of the registered mark is established, the court may order that goods found to be infringing be, without compensation of any sort, disposed of outside the channels of commerce in such a manner as to avoid any harm caused to the right holder, or destroyed; and all labels, signs, prints, packages, wrappers, receptacles and advertisements in the possession of the defendant, bearing the registered mark or trade name or any reproduction, counterfeit, copy or colorable imitation thereof, all plates, molds, matrices and other means of making the same, shall be delivered up and destroyed.

157.2. In regard to counterfeit goods, the simple removal of the trademark affixed shall not be sufficient other than in exceptional cases which shall be determined by the Regulations, to permit the release of the goods into the channels of commerce.

Based on the foregoing, the owner of a registered mark may recover damages from the infringer either: (1) the reasonable profit which the complaining party would have made, had the defendant not infringed his rights, or (2) the profit which the defendant actually made out of the infringement, or (3) in the event such measure of damages cannot be readily ascertained with reasonable certainty, the court may award as damages a reasonable percentage based upon the amount of gross sales or the value of the services in connection with the infringement.^[388] Nevertheless, it must be emphasized that the award of damages is subject to the discretion and findings of the court.

Here, in G.R. No. 210224, the CA ordered TDI: (1) to render an accounting of the gross sales of its GINEBRA KAPITAN products from the time of the filing of the instant case up to the finality of this judgment and to pay GSMI an amount equivalent to fifty percent (50%) of the total gross sales; and (2) to pay to GSMI P2,000,000.00 as exemplary damages and P500,000.00 as attorney's fees.^[389]

The Court finds that awards of damages should be tempered because of the peculiar circumstances in this case. The crux of these consolidated cases is whether "GINEBRA" is a generic mark. These cases underwent different tribunals and courts for several years, and the outcome of each decision varies. Indeed, the determination of distinctiveness of "GINEBRA" involves contentious and complex questions of facts and laws. Only the Court could once and for all settle the controversy by meticulously dissecting and resolving the issue. In the perspective of TDI, it was not immediately apparent that they were committing trademark infringement because of the difficulty in determining whether "GINEBRA" is a distinctive mark in favor of GSMI, to the exclusion of others.

In addition, the records are bereft of credible evidence presented by GSMI to establish that it has suffered calculable or tangible damages, foregone profit, or loss of sales due to the actions of TDI. Neither was there evidence presented that TDI took any considerable market share from GSMI by riding on its goodwill. Absent evidence to the contrary, the actual damage caused by TDI for utilizing "GINEBRA" against GSMI's business is doubtful.

In San Miguel Pure Foods Company, Inc. v. Foodsphere, Inc.,^[390] which involves trademark infringement and unfair competition, the registered owner failed to present evidence to prove its claim of foregone income or sales, or to present evidence to show loss of profit or reduced sales. The Court held that since the claim for lost profit or unrealized income was not properly substantiated, there is no basis to award the same. Nevertheless, nominal damages in the amount of P100,000.00 were awarded therein in order to vindicate or recognize the rights of the registered owner which had been violated or invaded by the infringer.

On the other hand, in Sambar v. Levi Strauss & Co.,^[391] which involves trademark infringement, the Court awarded temperate damages in the amount of P50,000.00, instead of nominal damages to the affected party. It was explained that:

However, we agree with petitioner that it was error for the Court of Appeals to affirm the award of nominal damages combined with temperate damages by the Regional Trial Court of Makati. What respondents are entitled to is an award for temperate damages, not nominal damages. For although the exact amount of damage or loss can not be determined with reasonable certainty, the fact that there was infringement means they suffered losses for which they are entitled to moderate damages. We find that the award of P50,000.00 as temperate damages fair and reasonable, considering the circumstances herein as well as the global coverage and reputation of private respondents Levi Strauss & Company and Levi Strauss (Phil.), Inc.^[392] (citations omitted, emphasis supplied)

Similarly, in Co v. Spouses Yeung,^[393] the Court found that the petitioner committed unfair competition. It was explained that, although there was an indeed a pecuniary loss from the unfair competition committed, the actual damages suffered by the respondent was not established with certainty. Hence, the award of P300,000.00 as temperate damages was affirmed, to wit:

Unfair competition is defined as the passing off (or palming off) or attempting to pass off upon the public of the goods or business of one person as the goods or business of another with the end and probable effect of deceiving the public. This takes place where the defendant gives his goods the general appearance of the goods of his competitor with the intention of deceiving the public that the goods are those of his competitor.

Here, it has been established that Co conspired with the Laus in the sale/distribution of counterfeit Greenstone products to the public, which were even packaged in bottles identical to that of the original, thereby giving rise to the presumption of fraudulent intent. In light of the foregoing definition, it is thus clear that Co, together with the Laus, committed unfair competition, and should, consequently, be held liable therefor. To this end, the Court finds the award of P300,000.00 as temperate damages to be appropriate in recognition of the pecuniary loss suffered by Sps. Yeung, albeit its actual amount cannot, from the nature of the case, as it involves damage to goodwill, be proved with certainty. x x x^[394] (citations omitted)

The Court finds that the GSMI should be awarded temperate damages. Temperate or moderate damages, which are more than nominal but less than compensatory damages, may be recovered where the court finds that some pecuniary loss has been suffered but its amount cannot, from the nature of the case, be proved with certainty.^[395]

In view of the failure of GSMI to substantiate its claim of loss of profit or sales due to the actions of TDI, the award of actual or compensatory damages must be deleted. Instead, temperate damages are awarded due to the loss suffered even if the exact amount thereof cannot be ascertained with reasonable certainty.^[396] TDI undoubtedly used "GINEBRA" in its products, which caused actual or likelihood of confusion among the consumers and caused prejudice to GSMI as the proprietor of such registrable mark. Nevertheless, GSMI failed to substantiate and prove the exact amount of loss of profit or sales it sustained due to the actions of TDI.^[397] Consequently, temperate damages should instead be awarded as the amount lost by GSMI cannot be ascertained from the trademark infringement committed by TDI. Based on the prevailing rates on the award of temperate damages involving trademark infringement and unfair competition, the Court determines that the award of P300,000.00 in favor of GSMI by way of temperate damages is just and appropriate.

Likewise, the award of exemplary damages must be deleted. Art. 2233 of the Civil Code provides that exemplary damages cannot be recovered as a matter of right; the court will decide whether or not they should be adjudicated while Art. 2234 thereof provides that while the amount of the exemplary damages need not be proven, the plaintiff must show that he is entitled to moral, temperate or compensatory damages before the court may consider the question of whether or not exemplary damages should be awarded.^[398]

Time and again, the Court held that exemplary damages may be awarded for as long as the following requisites are present: (1) they may be imposed, by way of example, only in addition, among others, to compensatory damages, only after the claimant's right to them has been established, and cannot be recovered as a matter of right, their determination depending upon the amount of compensatory damages that may be awarded to the claimant; (2) the claimant must first establish his right to moral, temperate, liquidated or compensatory damages; and (3) the act must be accompanied by bad faith or done in a wanton, fraudulent, oppressive or malevolent manner.^[399]

It bears stressing that the award of temperate damages does not ipso facto warrant the grant of exemplary damages. The Court finds that GSMI failed to establish by clear, convincing, and credible evidence that the infringement committed by TDI was done in a wanton, fraudulent, oppressive or malevolent manner. In San Miguel Pure Foods Co., Inc. v. Foodsphere, Inc.,^[400] the Court similarly did not grant exemplary damages for failure to establish the requisites for such award: Accordingly, the award of exemplary damages herein must be deleted.

Also, the Court deems it proper to modify the award for attorney's fees. As a rule, an award of attorney's fees should be deleted where the award of moral and exemplary damages are not granted. Nonetheless, attorney's fees may be awarded where the court deems it just and equitable even if moral and exemplary damages are unavailing.^[401] In this case, the Court finds that the award of attorney's fees should be sustained but reasonably decreased to an amount of P200,000.00, in the light of the foregoing discussions.

In addition, the Court affirms the application of Sec. 157.1 of R.A. No. 8293. It provides that the court may order goods found to be infringing be disposed of outside the channels of commerce in such a manner as to avoid any harm caused to the right holder, or be destroyed, without compensation of any sort.^[402]

Consequently, to protect the trademark of GSMI for the distinctive mark "GINEBRA," TDI should remove from the market all its gin products bearing the name/mark "GINEBRA" and all the infringing or unfairly competing goods in the possession of its employees, agents, representatives, dealers including, all bottles, labels, signs, prints, packages, wrappers, receptacles and advertisements bearing the mark "GINEBRA" and that the same be destroyed or be disposed of outside the channels of commerce. TDI must also cease-and-desist from using the word or mark "GINEBRA" in any of its gin products.

While TDI is still free to produce and promote any of its gin products, it is prohibited from adapting and utilizing the distinct mark "GINEBRA," which rightfully belongs to GSMI, in any part of its labels, signs, products, goods, or services.

Final Note

It is fervently desired that this decision shall shed light on the difficult questions regarding trademark law, particularly, on the issues of spectrum of distinctiveness, genericness, primary significance test, doctrine of foreign equivalence, consumer survey evidence, doctrine of secondary meaning, trademark infringement, and unfair competition. It is high time for the courts to develop and enrich the field of trademark and, in the broader sense, intellectual property law. Adjudication regarding intellectual property must shift to the objective, scientific, and economic standards; rather, than the subjective and inconsistent beliefs of the few.

In the robust and ever-changing arena of commerce, globalization, digitalization, and online transactions, the field of intellectual property must be safeguarded and, at the same time, promoted. Legitimate intellectual creations must be protected against scrupulous infringers, and illegitimate marks which sow confusion; create monopolies, and destroy market competition should be struck down. Let this serve as a reminder and a challenge to the courts and the legal profession that the branch of intellectual property law is a continuing and growing field that must be stimulated, expanded, and protected.

WHEREFORE, the Court resolves as follows:

SO ORDERED.

Hernando, Inting, Gaerlan, Rosario, Dimaampao, Marquez, Kho, Jr., and Singh, JJ., concur.
Leonen, SAJ., I dissent. See separate opinion.
Caguioa, J., see concurring and dissenting opinion.
Lazaro-Javier, J., see dissent.
Zalameda,^* J., no part.
M. Lopez,^** J., on official leave but left his vote. See concurring and dissenting opinion.
J. Lopez, J., with concurring opinion.

^** On official leave.

^[1] Rollo (G.R. No. 196372), pp. 12-105; Rollo (G.R. No. 210224), pp. 3-48; Rollo (G.R. No. 216104), pp. 8-46; Rollo (G.R. No. 219632), pp. 8-62.

^[2] Formerly La Tondeña Distilleries, Inc. In March 2003, the company was renamed Ginebra San Miguel, Inc. See rollo (G.R. No. 196372), p. 864.

^[3] Also docketed as Application No. 4-2003-001682 in some parts of the rollo, (Rollo, pp. 23 and 870).

^[4] Rollo (G.R. No. 196372), p. 80.

^[5] World Intellectual Property Organization Global Brand Database https://branddb.wipo.int/branddb/ph/en/showData.jsp?ID=PHTM.42003001682 [last accessed: May 18, 2022]

^[6] Rollo (G.R. No. 196372), p. 863.

^[7] Id. at 864-869.

^[8] Id. at 864.

^[9] Id. at 867.

^[10] Id. at 868.

^[11] Id. at 869.

^[12] Id. at 870.

^[13] Id. at 872.

^[14] Id. at 871-875; penned by Dir. General Adrian S. Cristobal, Jr.

^[15] Id. at 874.

^[16] Id. at 873-875.

^[17] Id. at 115-120; penned by Associate Justice Estela M. Perlas-Bernabe (now a retired Member of the Court) with Associate Justices Bienvenido B. Reyes (now a retired Member of the Court) and Elihu A. Ybañez, concurring.

^[18] Id. at 117.

^[19] Id. at 117-118.

^[20] Id. at 118.

^[21] The CA cited the World Intellectual Property Organization (WIPO) definition of doctrine of foreign equivalents as a rule that requires the translation of foreign words used in trademarks into their common English meaning in usage for purposes of determining whether they are generic or descriptive, or confusingly similar to an English mark (Rollo [G.R. No. 196372], p. 118).

^[22] Rollo (G.R. No. 196372), p. 119.

^[23] Id. at 119.

^[24] Id. at 122.

^[25] Id. at 729-730.

^[26] Id. at 732-757.

^[27] Id. at 759-773.

^[28] Id. at 775-776.

^[29] Id. at 777-798.

^[30] Id. at 881-882.

^[31] Rollo (G.R. No. 214104), pp. 1774-1789.

^[32] Id. at 1778-1782.

^[33] Id. at 1782.

^[34] Id. at 1786.

^[35] Rollo (G.R. No. 210224), p. 82.

^[36] Id. at 84.

^[37] Id. at 90.

^[38] The case is entitled Tanduay Distillers Inc. v. Ginebra San Miguel, Inc., 612 Phil. 1020 (2009).

^[39] Id. at 1041, 1043.

^[40] Rollo (G.R. No. 210224), pp. 80-117; penned by Presiding Judge Ofelia L. Calo.

^[41] Id. at 107-108.

^[42] Id. at 108-109.

^[43] Id. at 116.

^[44] Id. at 116-117.

^[45] Id. at 117.

^[46] Id.

^[47] Id. at 118-121.

^[48] Rollo (G.R. No. 219632), p. 88.

^[49] Id.

^[50] Id.

^[51] Rollo (G.R. No. 210224), pp. 143-148.

^[52] Id. at 151-171; penned by Associate Justice Isaias P. Dicdican with Associate Justices Nina G. Antonio-Valenzuela and Victoria Isabel A. Paredes, concurring.

^[53] Id. at 162.

^[54] Id.

^[55] Id. at 163.

^[56] Id.

^[57] Id. at 166.

^[58] Id. at 166-167.

^[59] Id. at 167-168.

^[60] Id. at 169-170.

^[61] Rollo (G.R. No. 219632), pp. 90-91.

^[62] To recall, CA-G.R. CV No. 100332 is an ordinary appeal and not a petition for review that is sanctioned by the Intellectual Property Code.

^[63] Rollo (G.R. No. 219632), p. 92.

^[64] Id. at 72-118; penned by Associate Justice Rodil V. Zalameda (now a Member of the Court) with Associate Justices Romeo Barza and Maria Elisa Sempio Diy, concurring.

^[65] Id. at 99-100.

^[66] Id. at 100-101.

^[67] Id. at 101.

^[68] Id. at 102.

^[69] Id. at 103.

^[70] Id. at 104.

^[71] Id. at 111.

^[72] Id. at 113.

^[73] Id.

^[74] Id. at 114.

^[75] Id. at 116-118.

^[76] Rollo (G.R. No. 216104), p. 57.

^[77] World Intellectual Property Organization (WIPO) Global Brand Database, https://branddb.wipo.int/branddb/ph/en/showData.jsp?ID=PHTM.42006008715 [last accessed May 25, 2022]

^[78] Rollo (G.R. No. 216104), pp. 57-58.

^[79] Id. at 59.

^[80] Id. at 242-252; penned by the Director of Bureau of Legal Affairs, Atty. Estrellita Beltran-Abelardo.

^[81] Id. at 248-250.

^[82] Id. at 251.

^[83] Id. at 255-257.

^[84] Id. at 311-318; penned by Director General Ricardo R. Blancaflor.

^[85] Id. at 316.

^[86] Id. at 317.

^[87] Id. at 55-69; penned by Associate Justice Isaias P. Dicdican, with Associate Justices Michael P. Elbinias and Victoria Isabela A. Paredes, concurring.

^[88] Id. at 64-66.

^[89] Id. at 66.

^[90] Id. at 67.

^[91] Id. at 68.

^[92] Id. at 68-69.

^[93] Id. at 72-73.

^[94] Id. at 1054-1061.

^[95] Id. at 1064-1083.

^[96] Id. at 1055-1058.

^[97] Id. at 1088-1089.

^[98] Rollo (G.R. No. 216104), pp. 2464-2468.

^[99] Id. at 2470-2473.

^[100] Id. at 2465-2466.

^[101] Rollo (G.R. No. 196372), p. 84.

^[102] Id. at 85-86.

^[103] Id. at 87.

^[104] Id.

^[105] Id. at 88.

^[106] Id.

^[107] Id. at 94.

^[108] Id. at 98.

^[109] Id. at 104.

^[110] Rollo (G.R. No. 210224), pp. 10-13.

^[111] Id. at 14-16.

^[112] Id. at 16.

^[113] Id. at 20.

^[114] Id. at 24.

^[115] Id. at 26.

^[116] Id. at 27.

^[117] Id. at 29-30, 35-36.

^[118] Id. at 30-43.

^[119] Id. at 44-47.

^[120] Rollo (G.R. No. 219632), p. 21.

^[121] Id. at 23.

^[122] A.M. No. 10-3-10-SC, October 18, 2011.

^[123] This provision has been retained in 2020 Revised Rules of Procedure for Intellectual Property Rights Cases, A.M. No. 10-3-10-SC, October 6, 2020.

^[124] Republic of the Phils. v. Heirs of Evaristo Tiotioen, 589 Phil. 145, 155 (2008).

^[125] Societe Des Produits, Nestle, S.A. v. Puregold Price Club, 817 Phil. 1030, 1044 (2017).

^[126] Dy v. Court of Appeals, 807 Phil. 819, 828 (2017).

^[127] G.R. No. 211850, September 8, 2020.

^[128] R.A. No. 8293, approved June 6, 1997

SECTION 121. Definitions. — As used in Part III, the following terms have the following meanings:

121.1. "Mark" means any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise and shall include a stamped or marked container of goods[.]

^[129] Id. SEC. 123. Registrability. — 123.1. A mark cannot be registered if it: x x x

^[130] 537 F.2d 4 (2nd Cir. 1976).

^[131] G.R. No. 228165, February 9, 2021.

^[132] 1 Gilson on Trademarks §2.04 (2020).

^[133] Id.

^[134] Id.

^[135] Id.

^[136] GSIS Family Bank — Thrift Bank v. BPI Family Bank, 770 Phil. 158, 173 (2015).

^[137] 119 Phil. 829, 832 (1964).

^[138] 1 Gilson on Trademarks §2.04 (2020).

^[139] Supra note 136.

^[140] Id. at 174-175.

^[141] 4 Computer Contracts II (2020).

^[142] 296 Phil. 298, 314 (1993).

^[143] See Lyceum of the Philippines, Inc. v. Court of Appeals, 292 Phil. 609, 618 (1993), citing Philippine Nut Industry Inc. v. Standard Brands, Inc., 160 Phil. 581, 592-593 (1975).

^[144] Trademark Manual and Examination Procedures of the United States Patent and Trademark Office (USPTO), October 2017 edition, Chapter 1200, §1209.01(c).

^[145] Kolin Electronics Co., Inc. v. Kolin Philippines International, Inc., supra note 131.

^[146] Id.

^[147] See Sec. 121.1., R.A. No. 8293.

^[148] Societe des Produits Nestle, S.A. v. Court of Appeals, 408 Phil. 307, 325 (2001).

^[149] Sec. 123, R.A. No. 8293.

^[150] (b) At any time, if the registered mark becomes the generic name for the goods or services, or a portion thereof, for which it is registered, or has been abandoned, or its registration was obtained fraudulently or contrary to the provisions of this Act, or if the registered mark is being used by, or with the permission of, the registrant so as to misrepresent the source of the goods or services on or in connection with which the mark is used. If the registered mark becomes the generic name for less than all of the goods or services for which it is registered, a petition to cancel the registration for only those goods or services may be filed. A registered mark shall not be deemed to be the generic name of goods or services solely because such mark is also used as a name of or to identify a unique product or service. The primary significance of the registered mark to the relevant public rather than purchaser motivation shall be the test for determining whether the registered mark has become the generic name of goods or services on or in connection with which it has been used.

^[151] See Coffee Partners, Inc. v. San Francisco Coffee & Roastery, Inc., 628 Phil. 13, 24 (2010).

^[152] Patent and Trademark Office v. Booking.com B. V., 140 S. Ct. 2298, 207 L. Ed. 2d 738 (2020).

^[153] See Bayer v. United Drug, 272 F. 505 (S.D.N.Y 1921 ). Ctf. Sec. 151 (b) of R.A. No. 8293.

^[154] Id.

^[155] Id.

^[156] Levy, Marc C., From Genericism to Trademark Significance: Deconstructing the De Facto Secondary Meaning Doctrine, Volume 95, No. 6, The Trademark Reporter (November-December 2005).

^[157] Id.

^[158] See Genessee Brewing Co., Inc. v. Stroh Brewing Co., 124 F.3d 137, 144 (2d Cir. 1997).

^[159] 15 U.S.C. §1064(3).

^[160] Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 118 (1938).

^[161] Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358, 1367 (Fed. Cir. 2018).

^[162] See Glover v. Ampak, Incorporated, 74 F.3d 57 (4th Cir. 1996)

^[163] Id.

^[164] Princeton Vanguard, LLC v. Frito-Lay North America, Inc., 786 F.3d 960 (2015).

^[165] Berner Intern. Corp. v. Mars Sales Co., 987 F.2d 975 (3d Cir. 1993); cf Filipino Yellow Pages, Inc. v. Asian Journal Publ'ns, Inc., 198 F.3d 1143, 1148 (9th Cir. 1999).

^[166] Mark P. McKenna, The Normative Foundations of Trademark Law, 82 Notre Dame L. Rev. 1839 (2013).

^[167] Id. However, it has also been said that trademark law serves to protect manufacturers' brands against potential misappropriation by other entities. (See Hoopes, Neal, Reclaiming the Primary Significance Test: Dictionaries, Corpus Linguistics, and Trademark Genericide, [2016]. [Available at: https://ssrn.com/abstract=3025850 or http://dx.doi.org/10.2139/ssrn.3025850, last accessed on November 30, 2020]).

^[168] Sec. 151.1, R.A. No. 8293.

^[169] Id.

^[170] 163 U.S. 169, 16 S. Ct. 1002 (1896).

^[171] 109 F. Supp. 623 (S.D. Cal. 1952).

^[172] Patent and Trademark Office v. Booking.com B. V., 140 S. Ct. 2298, (2020).

^[173] Id.

^[174] Id. at 2304.

^[175] 1 Gilson on Trademarks §2.02 (2020).

^[176] 272 F. 505 (1921).

^[177] Concurring and Dissenting Opinion of Justice Caguioa, pp. 25-26.

^[178] Trademark Manual and Examination Procedures of the United States Patent and Trademark Office (USPTO), supra note 144, §1209.03(g), citing In re N. Paper Mills, 64 F.2d 998, 1002, 17 USPQ 492, 493 (C.C.P.A. 1933).

^[179] The Foreign Equivalents Doctrine ... In English?, 28 Tex. Intell. Prop. L.J. 129, 134.

^[180] 1 Gilson on Trademarks §2.02 (2020).

^[181] 6 Gilson on Trademarks Examination Guide 1-08 (2020).

^[182] 1 Gilson on Trademarks §2.02 (2020).

^[183] 64 F.2d 998, (C.C.P.A. 1933).

^[184] 290 F.2d 845, (C.C.P.A. 1961), 129 U.S.P.Q. (BNA) 411.

^[185] 987 F. Supp. 783, (N.D. Cal. 1997).

^[186] Supra note 143 at 617-620.

^[187] 832 Phil. 495, 507 (2018).

^[188] 8 Trademark Manual of Examining Procedure 1207 (2019).

^[189] See Hoopes, Neal, Reclaiming the Primary Significance Test: Dictionaries, Corpus Linguistics, and Trademark Genericide (2016). (Available at: https://ssrn.com/abstract=3025850 or http://dx.doi.org/10.2139/ssrn.3025850, last accessed on November 30, 2020).

^[190] Id. cf Filipino Yellow Pages, Inc. v. Asian Journal Publ'ns, Inc., 198 F.3d 1143, 11 48 (9th Cir. 1999).

^[191] 396 F.3d 1369 (Fed. Cir. 2005).

^[192] 563 F.3d 1347 (Fed. Cir. 2009).

^[193] 8 Trademark Manual of Examining Procedure 1207 (2019).

^[194] 6 Gilson on Trademarks Examination Guide 1-08 (2020).

^[195] Id.

^[196] 494 F.2d 1395, (C.C.P.A. 1974).

^[197] 6 Gilson on Trademarks Examination Guide 1-08 (2020).

^[198] 190 USPQ 109, 110 (TTAB 1976).

^[199] Sec. 151.1 (b) of R.A. No. 8293.

^[200] See 8 Trademark Manual of Examining Procedure 1207 (2019).

^[201] Central Bank of the Philippines v. Castro, 514 Phil. 425, 436 (2005).

^[202] Cathay Pacific Steel Corp. v. Uy, Jr., G.R. No. 219317, June 28, 2021.

^[203] RULES OF COURT, Rule 128, Sec. 3 states:

Section 3. Admissibility of evidence. — Evidence is admissible when it is relevant to the issue and is not excluded by the law or these rules. (3a)

^[204] Disini v. Republic of the Philippines, G.R. No. 205172, June 15, 2021.

^[205] W Land Holding, Inc. v. Starwood Hotels and Resorts Worldwide, Inc., 822 Phil. 23, 46-47 (2017).

^[206] 3 Gilson on Trademarks §8.03 (2020).

^[207] Supra note 172.

^[208] Id.

^[209] Exxon Corp. v. Texas Motor Exch. of Houston, Inc., 628 F.2d 500, 506 (5th Cir. 1980).

^[210] 3 Gilson on Trademarks §8.03 (2020).

^[211] See Du Pont Cellophane Co. v. Waxed Prods. Co., 6 F. Supp. 859, 885 (E.D.N.Y. 1934), modified, 85 F.2d 75 (2 Cir.), cert. denied, E. I. Du Pont De Nemours & Co. v. Waxed Products Co., 299 U.S. 601, 57 S. Ct. 194, 81 L. Ed. 443 (1936); Elgin Nat'l Watch Co. v. Elgin Clock Co., 26 F.2d 376 (D.Del. 1928).

^[212] 216 F. Supp. 670 (1963).

^[213] Id. at 682-683.

^[214] Zippo Manufacturing Company v. Rogers Imports, Inc., 216 F. Supp. 670 (1963).

^[215] Manual for Complex Litigation, §11.493., p. 102 (Federal Judicial Center 4th ed. 2004).

^[216] Rule 803 of the Federal Rules of Evidence, as amended.

^[217] Manual for Complex Litigation, §11.493., p. 103 (Federal Judicial Center 4th ed. 2004).

^[218] Id. at 104.

^[219] Rollo (G.R. No. 219632), p. 102.

^[220] Arriola v. People, G.R. No. 199975, February 24, 2020.

^[221] Rollo (G.R. No. 219632), p. 103.

^[222] A.M. No. 10-3-10-SC, October 6, 2020.

^[223] Id., Rule 18, Sec. 9.

^[224] Manual for Complex Litigation, §11.493., p. 103 (Federal Judicial Center 4th ed. 2004).

^[225] The Federal Judicial Center is the research and education agency of the judicial branch of the U.S. government. See Federal Judicial Center https://www.fjc.gov/ [last accessed: May 26, 2022].

^[226] See McCarthy, Trademarks and Unfair Competition §32:53 (1973), 4 Louisell and Mueller, Federal Evidence §472 at 957 (1979), Manual for Complex Litigation, 116 (5th Ed. 1981), and 3 Gilson on Trademarks §8.03 (2020), citing Manual for Complex Litigation, Fourth (2004) §11.493.

^[227] In other cases, they add an eight factor that "the sample and the interviews were conducted independently of the attorneys in the case." See G. Heileman Brewing Co. v. Anheuser-Busch, Inc., 873 F.2d 985 (7th Cir. 1989).

^[228] Toys R US, Inc. v. Canarsie Kiddie Shop, Inc., 559 F. Supp. 1189 (E.D.N.Y. 1983), Nestle Co., Inc. v. Chester's Market, Inc., 571 F. Supp. 763 (D. Conn. 1983), Consumers Union of US, Inc. v. New Regina Corp., 664 F. Supp. 753 (S.D.N.Y. 1987), Weight Watchers Intern., Inc. v. Stouffer Corp., 744 F. Supp. 1259 (S.D.N.Y. 1990), Gillette Co. v. Norelco Consumer Products Co., 69 F. Supp. 2d 246 (D. Mass. 1999), National Distillers Products v. Refreshment Brands, 198 F. Supp. 2d 474 (S.D.N.Y. 2002).

^[229] 3 Gilson on Trademarks §8.03 (2020), citing Manual for Complex Litigation, Fourth (2004) § 11.493.

^[230] Weight Watchers Intern., Inc. v. Stouffer Corp., 744 F. Supp. 1259 (S.D.N.Y. 1990).

^[231] See Weight Watchers Intern., Inc. v. Stouffer Corp., 744 F. Supp. 1259, 1276 (S.D.N.Y. 1990).

^[232] 1212.06(d) Survey Evidence, Market Research and Consumer Reaction Studies, Trademark Manual of Examining Procedure.

^[233] Id. See Am. Flange & Mfg. Co. v. Rieke Corp., 80 USPQ2d 1397, 1415 (TTAB 2006).

^[234] Id.

^[235] Rollo (G.R. No. 196372), p. 501.

^[236] Id. at 523.

^[237] Id. at 503.

^[238] Id. at 513.

^[239] Id. at 539.

^[240] Id. at 503.

^[241] Id. at 502.

^[242] Id. at 503.

^[243] Id. at 396.

^[244] Id.

^[245] Id. at 508.

^[246] Id. at 511.

^[247] Id. at 512.

^[248] Id. at 397.

^[249] Id. at 398.

^[250] Id. at 502.

^[251] Id. at 393 and 395.

^[252] Id. at 504.

^[253] Id. at 398.

^[254] Id. at 505.

^[255] Id. at 508.

^[256] Id. at 509.

^[257] Id. at 508.

^[258] Id. at 507.

^[259] Id. at 511.

^[260] Id.

^[261] Id. at 510.

^[262] Id. at 512.

^[263] Id.

^[264] Id.

^[265] Id. at 398.

^[266] Id.

^[267] Id.

^[268] Id. at 394.

^[269] Id. at 523, 537.

^[270] Id. at 523.

^[271] Id. at 526.

^[272] Id.

^[273] Id. at 524.

^[274] Id. at 525.

^[275] Id.

^[276] Id. at 528.

^[277] Id. at 529.

^[278] Id. at 528.

^[279] Id.

^[280] Id. at 530.

^[281] Id.

^[282] Id.

^[283] Id. at 533.

^[284] Id. at 535.

^[285] Id.

^[286] Id. at 526.

^[287] Id. at 398.

^[288] Id. at 507.

^[289] Id. at 535.

^[290] Id.

^[291] Id. at 392-401.

^[292] 1^st par., 1212.06(b). Advertising Expenditures, Trademark Manual of Examining Procedure.

^[293] 2^nd par., 1212.06(b). Advertising Expenditures, Trademark Manual of Examining Procedure.

^[294] 3^rd par., 1212.06(b). Advertising Expenditures, Trademark Manual of Examining Procedure.

^[295] Rollo (G.R. No. 219632), pp. 289-298.

^[296] Rollo (G.R. No. 196372), pp. 24-26.

^[297] Id. at 26-27.

^[298] Rollo (G.R. No. 210224), p. 162.

^[299] See Hoopes, Neal, Reclaiming the Primary Significance Test: Dictionaries, Corpus Linguistics, and Trademark Genericide (2016). (Available at: https://ssrn.com/abstract=3025850 or http://dx.doi.org/10.2139/ssrn.3025850, last accessed on November 30, 2020).

^[300] Booking.Com B. V. v. US Patent & Trademark Office, 915 F.3d 171 (4th Cir. 2019).

^[301] Berner Intern. Corp. v. Mars Sales Co., 987 F.2d 975 (3d Cir. 1993), citing Gilson, §2.02 at 2-35.

^[302] Booking.com. B.V. v. Matal, 278 F. Supp. 3d 891 (E.D. Va. 2017), citing Berner Intern. Corp. v. Mars Sales Co., 987 F.2d 975 (3d Cir. 1993).

^[303] See 8 Trademark Manual of Examining Procedure 1207 (2019).

^[304] Rollo (G.R. No. 219632), p. 98. (CA Decision dated November 7, 2014 in CA-G.R. CV No. 100332).

^[305] Id.

^[306] Concurring and Dissenting Opinion of Justice Caguioa, p. 20.

^[307] See Lyceum of the Philippines v. Court of Appeals, citing Philippine Nut Industry Inc. v. Standard Brands, Inc., supra note 143 at 618.

^[308] Supra note 143.

^[309] Id. at 592-594.

^[310] Supra note 143.

^[311] Id. at 619.

^[312] 739 Phil. 244 (2014).

^[313] Id. at 258.

^[314] Rollo (G.R. No. 196372), p. 117 (CA Decision dated August 13, 2010 in CA-G.R. SP No. 112005).

^[315] Official Journal of the European Union. Definitions of Categories of Alcoholic Beverages 110/2008, M(b), 2008, pp. 38-39. https://eur-lex.europa.eu/legal-content/EN/TXT/PDF/?uri=OJ:L:2008:039:FULL&from=EN [last accessed November 30, 2020]

^[316] Id. at 39-51.

^[317] 205 F. 111, 1913 U.S. Dist. LEXIS 1533.

^[318] Id.

^[319] 1212.06(d) Survey Evidence, Market Research and Consumer Reaction Studies, Trademark Manual of Examining Procedure.

^[320] Id.; I. P. Lund Trading ApS v. Kohler Co., 1 63 F.3d 27, 42, 49 (1st Cir. 1998).

^[321] Id.; See Nextel Commc'ns, Inc. v. Motorola, Inc., 91 USPQ2d 1393, 1402-03 (TTAB 2009).

^[322] Id.; See Perini Corp. v. Perini Constr., Inc., 915 F.2d 121, 125 (4th Cir. 1990).

^[323] Id.; citing In re Owens-Corning Fiberglas Corp., 774 F.2d at 1127-28.

^[324] Id.; See Stuart Spector Designs Ltd. v. Fender Musical Instruments Corp., 94 USPQ2d 1549, 1569-71 (TTAB 2009).

^[325] Rollo (G.R. No. 196372), p. 508.

^[326] Id. at 535.

^[327] Rollo (G.R. No. 219632), pp. 100-101.

^[328] Id. at 83.

^[329] Id. at 100.

^[330] Rollo (G.R. No. 216104), pp. 2444-2463.

^[331] Id. at 2469-2473.

^[332] Id. at 2456.

^[333] Id. at 2459.

^[334] See Bayer v. United Drug, 272 F. 505 (S.D.N.Y 1921). Ctf. Sec. 151(b) of R.A. No. 8293.

^[335] The primary significance test under Sec. 151.1(b) of R.A. No. 8293 states that the primary significance of the registered mark to the relevant public rather than purchaser motivation shall be the test for determining whether the registered mark has become the generic name of goods or services on or in connection with which it has been used.

^[336] Sec. 151.1 (b) of R.A. No. 8293.

^[337] Rollo (G.R. No. 216104), pp. 1774-1789.

^[338] Id. at 1778-1782.

^[339] Id. at 75-80.

^[340] Intellectual Property Code of the Philippines, R.A. No. 8293, June 6, 1997, Sec. 155 (155.1-155.2).

^[341] 641 Phil. 345, 357-358 (2010).

^[342] 632 Phil. 546, 569 (2010).

^[343] 811 Phil. 261, 272 (2017).

^[344] 833 Phil. 791 (2018).

^[345] Id. at 802-803.

^[346] 480 Phil. 402 (2004).

^[347] Id. at 435.

^[348] Supra note 131.

^[349] Id.

^[350] ABS-CBN Publishing, Inc. v. Director of the Bureau of Trademarks, supra note 344 at 804.

^[351] Rollo (G.R. No. 219632), p. 110. (CA Decision dated November 7, 2014 in CA-G.R. CV No. 100332).

^[352] Id. at 111.

^[353] G.R. No. 205835, June 23, 2020, citing J. Leonen, Concurring Opinion in Asia Pacific Resources International Holdings, Ltd. v. Paperone, Inc., 845 Phil. 85 (2018).

^[354] Id.

^[355] Id.

^[356] Id.

^[357] Rollo (G.R. No. 210224), p. 681.

^[358] Id. at 1090.

^[359] Rollo (G.R. No. 219632), p. 112. (CA Decision dated November 7, 2004 in CA-G.R. CV No. 100332).

^[360] Quality Inns International, Inc. v. McDonald's Corp., 695 F. Supp. 198 (D. Md. 1988).

^[361] David Franklyn and Shari Seidman Diamond, Trademark Surveys: An Undulating Path, 92 Tex. L. Rev. 2029 (2014).

^[362] Id. at 2037, citing Shari Seidman Diamond, Reference Guide on Survey Research, in REFERENCE MANUAL ON SCIENTIFIC EVIDENCE 359, 364 (3d ed. 2011).

^[363] G.R. No. 219744, March 1, 2021.

^[364] Id.

^[365] Rollo (G.R. No. 196372), p. 508.

^[366] Id. at 512.

^[367] Id. at 535.

^[368] Id. at 508.

^[369] Id. at 535.

^[370] Id. at 530.

^[371] Id.

^[372] Supra note 363.

^[373] Concurring and Dissenting Opinion of Justice M. Lopez, p. 9.

^[374] Societe Des Produits Nestle, S.A. v. Dy, Jr., supra note 343 at 358.

^[375] Rollo (G.R. No. 216104), p. 317.

^[376] Rollo (G.R. No. 196372), pp. 501 and 523.

^[377] Rollo (G.R. No. 219632), p. 113 (CA Decision dated November 7, 2014 in CA-G.R. No. 100332).

^[378] National Federation of Hog Farmers, Inc. v. Board of Investments, supra note 353.

^[379] Id.

^[380] Asia Pacific Resources International Holdings, Ltd. v. Paperone, Inc., 845 Phil. 85, 94 (2018).

^[381] Id. at 101.

^[382] National Federation of Hog Farmers, Inc. v. Board of Investments, supra note 353.

^[383] American Wire & Cable Co. v. Director of Patents, 142 Phil. 523, 530-531 (1970).

^[384] Rollo (G.R. No. 219632), p. 193.

^[385] Id. at 423-424.

^[386] Rollo (G.R. No. 210224), pp. 70-71 (CA Decision dated August 15, 2013 in CA-G.R. SP No. 127255).

^[387] Concurring and Dissenting Opinion of Justice Caguioa, p. 19.

^[388] Sec. 156, R.A. No. 8293.

^[389] Rollo (G.R. No. 210224), p. 73 (CA Decision dated August 15, 2013 in CA-G.R. SP No. 127255).

^[390] 833 Phil. 771 (2018).

^[391] 428 Phil. 425 (2002).

^[392] Id. at 436-437.

^[393] 742 Phil. 803 (2014).

^[394] Id. at 808-809.

^[395] CIVIL CODE, Art. 2224.

^[396] Barbosa v. People, 814 Phil. 16, 23 (2017).

^[397] See note 386.

^[398] San Miguel Pure Foods Co., Inc. v. Foodsphere, Inc., 833 Phil. 771, 786 (2018).

^[399] Id.

^[400] Id. at 786-787.

^[401] Prosource International, Inc. v. Horphag Research Management SA, 620 Phil. 539, 553 (2009).

^[402] Sec. 157.1, R.A. No. 8293.