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Ginebra-San-Miguel-I IP PHL OFFICE OF THE PHILIPPINES GINEBRA SAN MIGUEL, INC., } IPC No. 14-2012-00275 Opposer, } Opposition to: } } Appln. Serial No. 4-2009-010063 -versus- } Date Filed: 05 October 2009 } } TM: MIGUEL I SOLERA MIXIMATE INTERNATIONAL INC., } GRAN RESERVA Respondent-Applicant. } Y V NOTICE OF DECISION ANGARA ABELLO CONCEPCION REGALA & CRUZ LAW OFFICES Counsel for Opposer 22nd Floor, ACCRA Tower, 2nd Avenue corner 30th St., Crescent Park West, Bonifacio Global City, Taguig OSCAR DIOKNO PEREZ Counsel for Respondent- Applicant Suite 313 F & L Centre Building (formerly Aguirre Bldg.,) 2211 Commonwealth Avenue, Quezon City GREETINGS: Please be informed that Decision No. 2016 - 4*"\K dated 23 December 2016 (copy enclosed) was promulgated in the above entitled case. Pursuant to Section 2, Rule 9 of the IPOPHL Memorandum Circular No. 16-007 series of 2016, any party may appeal the decision to the Director of the Bureau of Legal Affairs within ten (10) days after receipt of the decision together with the payment of applicable fees. Taguig City, 03 January 2017. MARILYN F. RETUTAL IPRS IV Bureau of Legal Affairs Republic of the Philippines INTELLECTUAL PROPERTY OFFICE Intellectual Property Center # 28 Upper McKinley Road, McKinley Hill Town Center, Fort Bonifacio, Taguig City 1634 Philippines »www.ipophil.aov.ph T: +632-2386300 • F: +632-5539480 »[email protected] IP PHL >FFICE OF Tt- PHILIPPINES GINEBRA SAN MIGUEL, INC., } IPC No. 14-2012-00275 Opposer, } } Opposition to: -versus- } Application No. 4-2009-010063 } Date Filed: 05 October 2009 } Trademark: "MIGUEL I SOLERA MIXIMATE INTERNATIONAL INC., } GRAN RESERVA" Respondent-Applicant. } x x Decision No. 2016- DECISION GINEBRA SAN MIGUEL, INC.1 ("Opposer") filed an opposition to Trademark Application Serial No. 4-2009-010063. The application, filed by Miximate International, Inc.2 ("Respondent-Applicant"), covers the mark "MIGUEL I SOLERA GRAN RESERVA" for use on "wines" under Class 33 of the International Classification of Goods and Services.3 The Opposer alleges: xxx "IV. GROUNDS "Opposer relies on the following grounds to support its Opposition: "4.1. The registration of Respondent-Applicant's mark 'MIGUEL I SOLERA GRAN RESERVA' is contrary to Sections 123.1 (d), (e), and (f) of the IP Code which prohibit the registration of a mark that: xxx "4.2. Respondent-Applicant's mark 'MIGUEL I SOLERA GRAN RESERVA' is identical with, or nearly resembles, Opposer's 'SAN MIGUEL' family of marks which were used and registered in the Philippines prior to the filing date accorded to Respondent-Applicant's application for the registration of the assailed mark. The identity and striking resemblance between Respondent-Applicant's mark 'MIGUEL F and Opposer's 'SAN MIGUEL' family of marks are likely to deceive or cause confusion among the relevant sector of the consuming public. Consequently, Opposer is entitled to protection under Section 123.1 (d) (iii) of the IP Code. "4.3. Opposer's 'SAN MIGUEL' family of marks are well-known and world famous. Respondent-Applicant's use of the 'MIGUEL I' mark on various goods under 'A corporation organized and existing under the laws of the Philippines with office address at San Miguel Properties Centre, St. Francis Avenue, Mandaluyong City, Metro Manila, Philippines. 2With address on record at 2464 F.B. Harrison Street, Pasay City, Metro Manila, Philippines. The Nice Classification is a classification of goods and services for the purpose of registering trademark and service marks, based on a multilateral treaty administered by the World Intellectual Property Organization. The treaty is called the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks concluded in 1957. Republic of the Philippines INTELLECTUAL PROPERTY OFFICE Intellectual Property Center # 28 Upper McKinley Road, McKinley Hill Town Center, Fort Bonifacio, Taguig City 1634 Philippines •www.ipophil.aov.ph T: +632-2386300 • F: +632-5539480 •[email protected] International Class 33, particularly alcoholic drinks, will undoubtedly indicate a connection between Respondent-Applicant's goods and Opposer's products bearing the brand named 'SAN MIGUEL' causing irreparable damage to the latter. Obviously Respondent-Applicant's adoption popularity and goodwill of Opposer's mark 'SAN MIGUEL', thereby causing incalculable and irreparable damage not only to Opposer but the consuming public as well. Accordingly, Respondent-Applicant's mark 'MIGUEL I' mark cannot be allowed to proceed to registration as provided for under Section 123 1 (e) and (f) of the IP Code. "4.4. Allowing the registration of Respondent-Applicant's 'MIGUEL I' mark will dilute the distinctiveness of Opposer's 'SAN MIGUEL' family of marks. "V. DISCUSSION "The 'San Miguel' brand grew out of a family-owned Spanish era distillery which, in 1834, introduced what was to become the company's flagship brand and the largest selling, first-ever Philippine gin in the world- Ginebra San Miguel. "Opposer's parent company, San Miguel Corporation, has a diversified range of business. Among its core businesses are beverages such as beer, hard liquor, and fruit juices. San Miguel Corporation is also involved in the food and drinks, airline, and agricultural businesses, as well as in packaging. "In 1986, San Miguel Corporation bought into La Tondena Incorporada (LTI, for brevity), the original owner of the mark 'GINEBRA SAN MIGUEL.' LTI was then renamed as La Tondena Distillers, Inc. (LTDI, for brevity). In March 2003, as a tribute to the then 169-year old gin product 'GINEBRA SAN MIGUEL' - the oldest brand of liquor in the Philippines - the name of the corporation was changed from LTDI to 'Ginebra San Miguel, Inc.'. "Apart from Opposer, San Miguel Corporation also has the subsidiary San Miguel Brewery, Inc. Said subsidiary has five (5) breweries strategically located across the Philippines and a highly developed distribution system serving approximately 471,000 retail outlets. Among San Miguel Brewery, Inc.'s subsidiary is Iconic Beverages, Inc. "San Miguel Corporation, San Miguel Brewery, Inc., Iconic Beverages, Inc., the Opposer, and the rest of the San Miguel Group of Companies are the owners of various applications and registrations, locally and abroad, bearing the well-known housemark 'SAN MIGUEL' and its derivatives. "The San Miguel Group of Companies produces and markets 'SAN MIGUEL' products extensively, such that said brand is now recognized as the world's largest selling brand of alcoholic drink and the third largest distilled spirit in the world, apart from being the Philippines' oldest and leading alcohol brand. "The San Miguel Group of Companies produces a wide selection of products-^ bearing the house mark 'SAN MIGUEL'. Specifically for alcoholic drinks, below areV> some of Opposer's and the San Miguel Group of Companies' marks: '"x" xxx "Further, the 'SAN MIGUEL' mark and its variants have been extensively used and advertised, as well as recognized, locally and abroad, among which are as follows: "a. In conjunction with the 'G.S.M. BLUE FLAIR IDOL AND DESIGN' nationwide G.S.M. BLUE FLAIR IDOL competition, TV program feature of the 2012 G.S.M. BLUE FLAIR IDOL champion on 29 April 2012 in the 'Good News Episode' episode hosted by ABS-CBN TV Host and News Anchor Ms. Korina Sanchez, TV feature of the 2012 G.S.M. BLUE FLAIR IDOL competition in PTV 4's TV program 'Asenso Pinoy' on 15 April 2012, and extensive advertising campaigns through print media such as newspapers and other print advertisements, as well as on-line blogs and news and tarpaulin promoting the 2012 G.S.M. BLUE FLAIR IDOL competition. "b. One of the earliest documented print advertisements caused to be published by GSMI (then LTI) for its 'GINEBRA SAN MIGUEL' gin product appeared in the 12 April 1948 issue of The Manila Times. "c. Through the years, The San Miguel Group of Companies has extensively advertised the 'SAN MIGUEL' brand for alcoholic drinks, as narrated below: "c.l. The 'GINEBRA SAN MIGEUL' gin product was featured in the 14 December 1960 issue of the article The Weekly Graphic Magazine, which was entitled 'The La Tondena Story.' The feature showed the sprawling GSMI (then LTI) plant where the 'GINEBRA SAN MIGEUL' gin product, which was already gaining popularity, was manufactured. In this feature article, the mark of GSMI's (then LTI's) 'GINEBRA SAN MIGUEL' gin product, which was described therein as 'the foremost gin product,' was prominently displayed and repeatedly mentioned therein. "c.2. The 1960's was witness to the sudden boom in broadcast television Responding to the potential of this new medium, the San Miguel Group of Companies stepped up their efforts on the television advertising front to solidify their stronghold of the gin drinking market nationwide. By then, an entire generation of Filipinos had already grown up with 'GINEBRA SAN MIGUEL.' The 'Ginebra San Miguel: Ang Inumin ng Tunay na Lalaki' campaign was launched in television during this decade. The central them that defined the campaign was the celebration of the hallmarks of a true Filipino man - a gentleman and a dignified, hardworking provider. "c.3. In light of the popularity and success gained at that time by 'GINEBRA SAN MIGUEL' gin products, The Manila Chronicle published a special issue on 31 December 1968 entitled 'The Don Carlos Palanca Story/ which was a tribute to the founder and creator of the 'GINEBRA SAMN MIGEUL'. GSMI's (then LTI's) flagship gin product, 'GINEBRA SAN MIGUEL,' was described in the special issue as 'the oldest brand of local alcohol drink' produced in the Philippines. "c.4. By the 1970's, television advertising was in full swing. 'GINEBRA SAN MIGUEL' had gone beyond reaching the consumers as still images on print. It had now gone to interact with its target market through the narratives in its television advertisements. "c.5. The 1970's saw the launch of the 'Ang Ginebrang Tunay na Pilipir« campaign wherein the 'GINEBRA SAN MIGUEL' mark continued to be equated wit being truly Filipino.
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