Secondary Meaning: Proof is in the Chant

September 30, 2014

Basketball in the Philippines is a sport that generates intense passion. While local players do not yet stand on the same footing as world-class NBA players, they are still feted as heroes here. Any team that gets to the top of the heap acquires legendary status, and its name would seemingly echo in eternity. One such team is Ginebra San Miguel, which is owned by the popular maker of gin that is sold under the trademark GINEBRA SAN MIGUEL. And its loyal following, when egging on the players to demolish the other team, has only one monotonous chant to drown out all other noises in the coliseum, and that is “HEE-NE-BRA, HEE-NE-BRA HEE-NE-BRA”.

Claiming to have used GINEBRA SAN MIGUEL substantially and exclusively for its gin products since 1834, the owner which now goes by its corporate name “Ginebra San Miguel, Inc.” opposed the application for GINEBRA KAPITAN filed by Tanduay Distillers, Inc. Opposer claimed that GINEBRA has attained secondary meaning to designate exclusively its gin products, and to allow the registration of GINEBRA KAPITAN will sanction unfair competition where Applicant gets a free ride on the immense goodwill Opposer already enjoys under the GINEBRA SAN MIGUEL brand. The Applicant countered that “ginebra” is generic being the Spanish term for gin, and is therefore incapable of attaining secondary meaning. It pointed to the disclaimer entered by Opposer in its own application for GINEBRA SAN MIGUEL to support its generic claim.

The Bureau of Legal Affairs and the Director General both ruled that “GINEBRA” cannot be exclusively owned, as it is generic of gin, and that secondary meaning applies only to descriptive marks, not generic marks. The Court of Appeals overturned the ruling and held that even if the Director General concluded that the term GINEBRA is generic for gin based on a supposed dictionary definition, GINEBRA is nevertheless not considered generic in the Philippines because to the Filipino gin-drinking public, GINEBRA does not relate to the class of liquor or alcohol but, rather, it has come to refer specifically and exclusively to the gin products of the Opposer. The Court of Appeals further ruled that genericness must be determined based on the manner in which the word is actually understood and perceived by the gin-drinking public. That the point of view of the public is controlling in that the test for genericness is the primary significance of the term to the ordinary consumer. In this case, GINEBRA has come to refer specifically and exclusively to the gin products of the Opposer, Ginebra San Miguel. It cited with favor the survey results that prove this.

This decision teaches that surveys have great utility and weight to support a claim of popularity and secondary meaning. But seemingly this is not the noteworthy aspect of this case. We go back to basketball fever. Had the parties instead engaged basketball fans to lawyer for them, the case would have turned on only one evidence of secondary meaning: the chanting of HEE-NE-BRA by basketball fans.  It would be interesting to find out how the Director General would weigh this piece of evidence.

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