"x x x.
Before an injunctive writ is issued, it is essential that the following requisites are present: (1) the existence of a right to be protected and (2) the acts against which the injunction is directed are violative of the right. The onus probandi is on the movant to show that the invasion of the right sought to be protected is material and substantial, that the right of the movant is clear and unmistakable, and that there is an urgent and paramount necessity for the writ to prevent serious damage.
San Miguel claims that the requisites for the valid issuance of a writ of preliminary injunction were clearly established. The clear and unmistakable right to the exclusive use of the mark “Ginebra” was proven through the continuous use of “Ginebra” in the manufacture, distribution, marketing and sale of gin products throughout the Philippines since 1834. To the gin-drinking public, the word “Ginebra” does not simply indicate a kind of beverage; it is now synonymous with San Miguel’s gin products.
San Miguel contends that “Ginebra” can be appropriated as a trademark, and there was no error in the trial court’s provisional ruling based on the evidence on record. Assuming that “Ginebra” is a generic word which is proscribed to be registered as a trademark under Section 123.1(h) of Republic Act No. 8293 or the Intellectual Property Code (IP Code), it can still be appropriated and registered as a trademark under Section 123.1(j) in relation to Section 123.2 of the IP Code, considering that “Ginebra” is also a mark which designates the kind of goods produced by San Miguel. San Miguel alleges that although “Ginebra,” the Spanish word for “gin,” may be a term originally incapable of exclusive appropriation, jurisprudence dictates that the mark has become distinctive of San Miguel’s products due to its substantially exclusive and continuous use as the dominant feature of San Miguel’s trademarks since 1834. Hence, San Miguel is entitled to a finding that the mark is deemed to have acquired a secondary meaning. San Miguel states that Tanduay failed to present any evidence to disprove its claims; thus, there is no basis to set aside the grant of the TRO and writ of preliminary injunction.
San Miguel states that its disclaimer of the word “Ginebra” in some of its registered marks is without prejudice to, and did not affect, its existing or future rights over “Ginebra,” especially since “Ginebra” has demonstrably become distinctive of San Miguel’s products. San Miguel adds that it did not disclaim “Ginebra” in all of its trademark registrations and applications like its registration for “Ginebra Cruz de Oro,” “Ginebra Ka Miguel,” “Ginebra San Miguel” bottle, “Ginebra San Miguel,” and “Barangay Ginebra.”
Tanduay asserts that not one of the requisites for the valid issuance of a preliminary injunction is present in this case. Tanduay argues that San Miguel cannot claim the exclusive right to use the generic word “Ginebra” for its gin products based on its registration of the composite marks “Ginebra San Miguel,” “Ginebra S. Miguel 65,” and “La Tondeña Cliq! Ginebra Mix,” because in all of these registrations, San Miguel disclaimed any exclusive right to use the non-registrable word “Ginebra” for gin products. Tanduay explains that the word “Ginebra,” which is disclaimed by San Miguel in all of its registered trademarks, is an unregistrable component of the composite mark “Ginebra San Miguel.” Tanduay argues that this disclaimer further means that San Miguel does not have an exclusive right to the generic word “Ginebra.” Tanduay states that the word “Ginebra” does not indicate the source of the product, but it is merely descriptive of the name of the product itself and not the manufacturer thereof.
Tanduay submits that it has been producing gin products under the brand names Ginebra 65, Ginebra Matador, and Ginebra Toro without any complaint from San Miguel. Tanduay alleges that San Miguel has not filed any complaint against other liquor companies which use “Ginebra” as part of their brand names such as Ginebra Pinoy, a registered trademark of Webengton Distillery; Ginebra Presidente and Ginebra Luzon as registered trademarks of Washington Distillery, Inc.; and Ginebra Lucky Nine and Ginebra Santiago as registered trademarks of Distileria Limtuaco & Co., Inc. Tanduay claims that the existence of these products, the use and registration of the word “Ginebra” by other companies as part of their trademarks belie San Miguel’s claim that it has been the exclusive user of the trademark containing the word “Ginebra” since 1834.
Tanduay argues that before a court can issue a writ of preliminary injunction, it is imperative that San Miguel must establish a clear and unmistakable right that is entitled to protection. San Miguel’s alleged exclusive right to use the generic word “Ginebra” is far from clear and unmistakable. Tanduay claims that the injunction issued by the trial court was based on its premature conclusion that “Ginebra Kapitan” infringes “Ginebra San Miguel.”
In Levi Strauss & Co. v. Clinton Apparelle, Inc., we held:
While the matter of the issuance of a writ of preliminary injunction is addressed to the sound discretion of the trial court, this discretion must be exercised based upon the grounds and in the manner provided by law. The exercise of discretion by the trial court in injunctive matters is generally not interfered with save in cases of manifest abuse. And to determine whether there was grave abuse of discretion, a scrutiny must be made of the bases, if any, considered by the trial court in granting injunctive relief. Be it stressed that injunction is the strong arm of equity which must be issued with great caution and deliberation, and only in cases of great injury where there is no commensurate remedy in damages.
The CA upheld the trial court’s ruling that San Miguel has sufficiently established its right to prior use and registration of the word “Ginebra” as a dominant feature of its trademark. The CA ruled that based on San Miguel’s extensive, continuous, and substantially exclusive use of the word “Ginebra,” it has become distinctive of San Miguel’s gin products; thus, a clear and unmistakable right was shown.
We hold that the CA committed a reversible error. The issue in the main case is San Miguel’s right to the exclusive use of the mark “Ginebra.” The two trademarks “Ginebra San Miguel” and “Ginebra Kapitan” apparently differ when taken as a whole, but according to San Miguel, Tanduay appropriates the word “Ginebra” which is a dominant feature of San Miguel’s mark.
It is not evident whether San Miguel has the right to prevent other business entities from using the word “Ginebra.” It is not settled (1) whether “Ginebra” is indeed the dominant feature of the trademarks, (2) whether it is a generic word that as a matter of law cannot be appropriated, or (3) whether it is merely a descriptive word that may be appropriated based on the fact that it has acquired a secondary meaning.
The issue that must be resolved by the trial court is whether a word like “Ginebra” can acquire a secondary meaning for gin products so as to prohibit the use of the word “Ginebra” by other gin manufacturers or sellers. This boils down to whether the word “Ginebra” is a generic mark that is incapable of appropriation by gin manufacturers.
In Asia Brewery, Inc. v. Court of Appeals, the Court ruled that “pale pilsen” are generic words, “pale” being the actual name of the color and “pilsen” being the type of beer, a light bohemian beer with a strong hops flavor that originated in Pilsen City in Czechoslovakia and became famous in the Middle Ages, and hence incapable of appropriation by any beer manufacturer. Moreover, Section 123.1(h) of the IP Code states that a mark cannot be registered if it “consists exclusively of signs that are generic for the goods or services that they seek to identify.”
In this case, a cloud of doubt exists over San Miguel’s exclusive right relating to the word “Ginebra.” San Miguel’s claim to the exclusive use of the word “Ginebra” is clearly still in dispute because of Tanduay’s claim that it has, as others have, also registered the word “Ginebra” for its gin products. This issue can be resolved only after a full-blown trial.
In Ong Ching Kian Chuan v. Court of Appeals, we held that in the absence of proof of a legal right and the injury sustained by the movant, the trial court’s order granting the issuance of an injunctive writ will be set aside, for having been issued with grave abuse of discretion.
We find that San Miguel’s right to injunctive relief has not been clearly and unmistakably demonstrated. The right to the exclusive use of the word “Ginebra” has yet to be determined in the main case. The trial court’s grant of the writ of preliminary injunction in favor of San Miguel, despite the lack of a clear and unmistakable right on its part, constitutes grave abuse of discretion amounting to lack of jurisdiction.
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