Appellate court favors Ginebra in trademark lawsuit

THE COURT of Appeals (CA) has sided with Ginebra San Miguel, Inc. by barring a Cebu lawmaker from registering the gin product “FRASCO” for his nonalcoholic beverages.

In a decision promulgated on Dec. 13, the appellate court’s Seventh Division reversed the order of the Intellectual Property Office-Office of the Director General (IPO-ODG) that allowed Cebu Rep. Vincent Franco D. Frasco to register the FRASCO trademark for bottled water and nonalcoholic drinks.

Ginebra already uses FRASCO in its gin products, and allowing the congressman to use the trademark could confuse and deceive consumers given their visual and phonetic similarities, the appellate court said.

“The likelihood of confusion is already considered a damage that would be sufficient to sustain the opposition and rejection of [Mr. Frasco’s] trademark application,” according to the eight-page ruling written by Associate Justice Mary Charlene V. Hernandez-Azura.

The court said the trademarks share identical letters and sounds, as well as similar fonts, lettering and background. It added that the marks are associated with beverages with a clear liquid appearance.

“It can be concluded that the respondent’s mark nearly resembles the petitioner’s mark that it is likely to deceive or cause confusion,” it added.

The case stemmed from the lawmaker’s application for several trademarks using the mark FRASCO for “purified and aerated waters and other nonalcoholic drinks and beverages” under Class 32 of the Nice Classification.

Ginebra San Miguel, the petitioner, opposed the trademark applications, saying it is the rightful and lawful owner of the FRASCO mark, which it uses for its gin products.

The director of the Intellectual Property Office’s Bureau of Legal Affairs ruled in favor of Ginebra San Miguel, barring Mr. Frasco from registering the trademark. But in January 2024, the office reconsidered on appeal.

The IPO-ODG said Ginebra San Miguel and Mr. Frasco’s products were distinct, and consumers would likely be able to differentiate the origins of the goods, minimizing the risk of confusion.

The gin maker then elevated the case to the appellate court, arguing the IPO-ODG’s ruling did not tackle the similarities of the FRASCO marks.

It said this would likely lead to confusion since the competing marks are intended for beverage products targeting the same demographic.

It noted that these products would likely be displayed in the same areas within stores, increasing the potential for consumer misunderstanding.

Mr. Frasco, in his defense, argued that Ginebra San Miguel’s use of FRASCO does not qualify as a trademark deserving protection, claiming it merely describes a specific bottle type for its gin products.

He also said his FRASCO mark is a grade mark intended to differentiate quality levels or categories of goods. The potential for confusion, whether of goods or business origins, was minimal, he added. — Chloe Mari A. Hufana