Alcantara v.
COMELEC(Short title) RULING & RATIO
G.R. No. 103543 | 224 SCRA 437 | July 5, 1993
Petitioner: ASIA BREWERY, INC.,
Respondents: CA and SAN MIGUEL CORPORATION
DOCTRINE
A word or a combination of words which is merely descriptive of an article of trade, or
of its composition, characteristics, or qualities, cannot be appropriated and protected
as a trademark to the exclusion of its use by others.
FACTS
1. On September 15, 1988, San Miguel Corporation (SMC) filed a complaint
against Asia Brewery Inc. (ABI) for infringement of trademark and unfair
competition because of the latter's BEER PALE PILSEN or BEER NA BEER
product which has been competing with SMC's SAN MIGUEL PALE PILSEN
2. Trial Court dismissed the complaint of SMC because ABI has not committed
infringement or unfair competition against SMC. Hence, SMC appealed to
CA.
o It observed that the word "BEER" does not appear in SMC's
trademark, just as the words "SAN MIGUEL" do not appear in ABI's
trademark. Hence, there is absolutely no similarity in the dominant
features of both trademarks.
3. CA reversed the decision of Trial Court. CA restrained ABI from
manufacturing the “Beer Pale Pilsen”. It also ordered ABI to pay P5M, which
were the estimated profit of ABI from selling the “Beer Pale Pilsen”. It further
ordered to recall all the “Beer Pale Pilsen”.
4. Upon the MR of ABI, the CA modified its decision. Thus, CA removed the
order to pay SMC P5M.
Hence, this petition.
Dominant Features
SMC:
- SAN MIGUEL PALE PILSEN, written in white Gothic letters with elaborate serifs at
the beginning and end of the letters "S" and "M" on an amber background across the
upper portion of the rectangular design.
ABI:
- BEER PALE PILSEN, with the word "Beer" written in large amber letters, larger than
any of the letters found in the SMC label.
ISSUE/S
1. W/N the words “pale pilsen” in ABI’s trademark infringes SMC’s trademark on
“San Miguel Pale Pilsen”.
1. NO
2. The fact that the words “pale Pilsen” are part of ABI's trademark does not
constitute an infringement of SMC's trademark.
3. "pale pilsen" are generic words descriptive of the color ("pale"), of a type of
beer ("pilsen"), which is a light bohemian beer with a strong hops flavor that
originated in the City of Pilsen in Czechoslovakia.
4. "Pilsen" is a "primarily geographically descriptive word," hence, non-
registerable and not appropriable by any beer manufacturer.
5. A word or a combination of words which is merely descriptive of an article of
trade, or of its composition, characteristics, or qualities, cannot be
appropriated and protected as a trademark to the exclusion of its use by
others.
6. ABI has printed its name all over the bottle of its beer product: on the label,
on the back of the bottle, as well as on the bottle cap. Hence, the visible
differences between the two products, is quite unlikely that a customer of
average intelligence would mistake a bottle of BEER PALE PILSEN for SAN
MIGUEL PALE PILSEN.
7. The fact that BEER PALE PILSEN like SAN MIGUEL PALE PILSEN is
bottled in amber-colored steinie bottles of 320 ml. capacity and is also
advertised in print, broadcast, and television media, does not necessarily
constitute unfair competition.
DISPOSITION
WHEREFORE, finding the petition for review meritorious, the same is hereby granted.
The decision and resolution of the Court of Appeals in CA-G.R. CV No. 28104 are
hereby set aside and that of the trial court is REINSTATED and AFFIRMED. Costs
against the private respondent.
SMC’s trademark:
- a rectangular design bordered by what appears to be minute grains arranged in
rows of three in which there appear in each corner hop designs.
- The dominant feature is the phrase "San Miguel" written horizontally at the upper
portion.
- Below are the words "Pale Pilsen" written diagonally across the middle of the
rectangular design
ABI’s trademark:
- a rectangular design bordered by what appear to be buds of flowers with leaves.
-The dominant feature is "Beer" written across the upper portion of the rectangular
design.
- The phrase "Pale Pilsen" appears immediately below in smaller block letters.Error!
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