Former Liloan, Cebu mayor Vincent Franco “Duke” D. Frasco scored a victory after the Intellectual Property Office of the Philippines (IPOPHIL) rejected the opposition to his bid to use his surname as trademark for his bottled water products.
A ruling issued on January 30, 2019 dismissed the claim of Ginebra San Miguel, Inc. that it is the rightful and lawful owner of the trademark “Frasco”, which it uses on gin products in “cuatro cantos” bottles.
Adjudication officer Z’sa May B. Subejano-Pe Lim of the IPOPHIL Bureau of Legal Affairs said the former mayor may be allowed to register “Frasco” as his trademark for bottled water since “confusion, much more deception, is highly unlikely in this case because of the disparity of the goods involved.”
“The Opposer (Ginebra San Miguel) cannot extend the protection afforded by its trademark registration to water and non-alcoholic drinks. Although both involve kinds of beverage, the two are not related products and the target consumers and channels of trade are different,” the ruling stated.
In essence, it is highly unlikely that consumers would be confused, misled and/or deceived into thinking that the “Frasco" bottled water, which the former mayor produces and distributes, is in any way related to the gin that Ginebra San Miguel produces.
Read: Full IPOPHIL decision
Frasco’s applications, filed on October 6, 2016, cover the trademarks “Frasco”, “Frasco Premium Water”, “Frasco Water This is the Life”, and “Frasco Water”.
These marks are used on purified and aerated water and other non-alcoholic drinks and beverages that Frasco launched in October 2015 and currently supplies to upscale establishments in Cebu.
Ginebra San Miguel, in its opposition to the former mayor’s application, said it was granted registration to use the mark “Frasco” on April 8, 2010. It said the former mayor should not be allowed to use the same brand because it is “confusingly similar” to its own registered mark.
Frasco, for his part, denied Ginebra San Miguel’s contention, saying the latter uses the mark for gin while he uses it for bottled water.
He argued that Ginebra San Miguel uses the mark “Frasco” only to identify its 700ml bottle and that the mark does not appear on all gin bottles.
Frasco also pointed out that he cannot be precluded from using his surname as a trademark
The case was initially referred to mediation. But no settlement was reached and a preliminary conference was held, after which Ginebra San Miguel and Frasco were directed to submit their respective position papers. Both filed their papers on January 3, 2019.
The ruling may still be appealed before the director of the Bureau of Legal Affairs within 10 days after receipt of the decision. (Ventures Cebu)