MANILA, OCTOBER 2, 2003  (MALAYA) Tanduay Distillers Inc. (Tanduay) is seeking P112 million in actual and exemplary damages from arch-rival Ginebra San Miguel Inc. (GSMI) for filing a "baseless suit" that stopped Tanduay from producing and selling Ginebra Kapitan.

Claiming that GSMI's suit "was filed for no apparent purpose except to embarrass, annoy and inconvenience defendant (Tanduay) and to besmirch its reputation," lawyers for Ginebra Kapitan asked Judge Edwin Sorongon of the Mandaluyong regional trial court branch 214 to immediately dismiss GSMI's suit.

The lawyers maintained that the marks, labels and product containers of Ginebra Kapitan and Ginebra San Miguel are not similar to each other.

Since GSMI has no exclusive right over the generic word "ginebra," including its bottle shape, it has no cause of action against Ginebra Kapitan whether for trademark infringement, unfair competition or damages, the lawyers stressed in a 13-page answer with compulsory counterclaim.

In the same pleading, Ginebra Kapitan's lawyers maintained that:

* GSMI is not the registered owner of the word "ginebra." Under the records of the Intellectual Property Office (IPO), no person or juridical entity is the registered owner of the said word.

As the Spanish word for gin, "ginebra," is a generic word which pertains to the name of the product itself. GSMI has absolutely no right to appropriate as its own a generic word that belongs to the public domain. In fact, in the five registrations of GSMI at the IPO, the firm disclaimed the word "ginebra" when taken apart from the other names of its products. By issuing the disclaimer, GSMI is estopped from asserting any right over the word "ginebra."

* A comparison of the two competing products would show that the labels are totally different. The colors, words, as well as sounds, shapes, forms, illustrations, layout, font types and sizes, and brands of the labels are absolutely different.

The name Ginebra Kapitan and its corresponding label were conceptualized and designed by Tanduay's advertising and marketing firm in late 2002. Copyright for the label was registered in June 2003, while the trademark "Ginebra Kapitan" was registered with the IPO and the Bureau of Internal Revenue in January and May 2003, respectively.

* Ginebra Kapitan's bottles are not identical or similar to Ginebra San Miguel's. Ginebra Kapitan's bottle is taller, slimmer and sealed with a pilfer-proof twist cap which is superior to Ginebra San Miguel's crown or "tansan" cap.

In view of the absolute difference in the trademarks, labels and bottles of the competing brands, there is no confusing similarity. Tanduay Distillers is not passing off Ginebra Kapitan as Ginebra San Miguel, the lawyers said.

Reported by: Sol Jose Vanzi

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