G.R. No.

164324               August 14, 2009 that it engaged the services of an advertising firm to develop a
brand name and a label for its new gin product. The brand name
TANDUAY DISTILLERS, INC., Petitioner, eventually chosen was "Ginebra Kapitan" with the representation
vs. of a revolutionary Kapitan on horseback as the dominant feature
GINEBRA SAN MIGUEL, INC., Respondent. of its label. Tanduay points out that the label design of "Ginebra
Kapitan" in terms of color scheme, size and arrangement of text,
DECISION and other label features were precisely selected to distinguish it
from the leading gin brand in the Philippine market, "Ginebra San
Miguel." Tanduay also states that the "Ginebra Kapitan" bottle
CARPIO, J.:
uses a resealable twist cap to distinguish it from "Ginebra San
Miguel" and other local gin products with bottles which use the
The Case crown cap or tansan.6

Tanduay Distillers, Inc. (Tanduay) filed this Petition for Review on After filing the trademark application for "Ginebra Kapitan" with
Certiorari1 assailing the Court of Appeals’ Decision dated 9 the Intellectual Property Office (IPO) and after securing the
January 20042 as well as the Resolution dated 2 July 2004 3 in approval of the permit to manufacture and sell "Ginebra Kapitan"
CA-G.R. SP No. 79655 denying the Motion for Reconsideration. from the Bureau of Internal Revenue, Tanduay began selling
In the assailed decision, the Court of Appeals (CA) affirmed the "Ginebra Kapitan" in Northern and Southern Luzon areas in May
Regional Trial Court’s Orders4 dated 23 September 2003 and 17 2003. In June 2003, "Ginebra Kapitan" was also launched in
October 2003 which respectively granted Ginebra San Miguel, Metro Manila.7
Inc.’s (San Miguel) prayer for the issuance of a temporary
restraining order (TRO) and writ of preliminary injunction. The
On 13 August 2003, Tanduay received a letter from San Miguel’s
Regional Trial Court of Mandaluyong City, Branch 214 (trial
counsel. The letter informed Tanduay to immediately cease and
court), enjoined Tanduay "from committing the acts complained
desist from using the mark "Ginebra" and from committing acts
of, and, specifically, to cease and desist from manufacturing,
that violate San Miguel’s intellectual property rights.8
distributing, selling, offering for sale, advertising, or otherwise
using in commerce the mark "Ginebra," and manufacturing,
producing, distributing, or otherwise dealing in gin products which On 15 August 2003, San Miguel filed a complaint for trademark
have the general appearance of, and which are confusingly infringement, unfair competition and damages, with applications
similar with," San Miguel’s marks, bottle design, and label for its for issuance of TRO and Writ of Preliminary Injunction against
gin products.5 Tanduay before the Regional Trial Court of Mandaluyong. The
case was raffled to Branch 214 and docketed as IP Case No.
MC-03-01 and Civil Case No. MC-03-073.9
The Facts
On 25 and 29 August and 4 September 2003, the trial court
Tanduay, a corporation organized and existing under Philippine
conducted hearings on the TRO. San Miguel submitted five
laws, has been engaged in the liquor business since 1854. In
affidavits, but only one affiant, Mercedes Abad, was presented for
2002, Tanduay developed a new gin product distinguished by its
cross-examination because the trial court ruled that such
sweet smell, smooth taste, and affordable price. Tanduay claims
examination would be inconsistent with the summary nature of a
TRO hearing.10 San Miguel submitted the following pieces of San Miguel to be the manufacturer of "Ginebra Kapitan"
evidence:11 due to the use of the dominant feature "Ginebra."

1. Affidavit of Mercedes Abad, President and Managing Tanduay filed a Motion to Strike Out Hearsay Affidavits and
Director of the research firm NFO Trends, Inc. (NFO Evidence, which motion was denied by the trial court. Tanduay
Trends), to present, among others, market survey results presented witnesses who affirmed their affidavits in open court,
which prove that gin drinkers associate the term as follows:12
"Ginebra" with San Miguel, and that the consuming public
is being misled that "Ginebra Kapitan" is a product of San 1. Ramoncito Bugia, General Services Manager of
Miguel; Tanduay. Attached to his affidavit were various
certificates of registration of trademarks containing the
2. Market Survey results conducted by NFO Trends to word "Ginebra" obtained by Tanduay and other liquor
determine the brand associations of the mark "Ginebra" companies, to prove that the word "Ginebra" is required to
and to prove that the consuming public is confused as to be disclaimed by the IPO. The affidavit also attested that
the manufacturer of "Ginebra Kapitan"; there are other liquor companies using the word
"Ginebra" as part of their trademarks for gin products
3. Affidavit of Ramon Cruz, San Miguel’s Group Product aside from San Miguel and Tanduay.
Manager, to prove, among others, the prior right of San
Miguel to the mark "Ginebra" as shown in various 2. Herbert Rosales, Vice President of J. Salcedo and
applications for, and registrations of, trademarks that Associates, Inc., the advertising and promotions company
contain the mark "Ginebra." His affidavit included hired by Tanduay to design the label of "Ginebra
documents showing that the mark "Ginebra" has been Kapitan." His affidavit attested that the label was designed
used on San Miguel’s gin products since 1834; to make it "look absolutely different from the Ginebra San
Miguel label."
4. Affidavits of Leopoldo Guanzon, Jr., San Miguel’s
Trade and Promo Merchandising Head for North Luzon On 23 September 2003, the trial court issued a TRO prohibiting
Area, and Juderick Crescini, San Miguel’s District Sales Tanduay from manufacturing, selling and advertising "Ginebra
Supervisor for South Luzon-East Area, to prove, among Kapitan."13 The dispositive portion reads in part:
others, that Tanduay’s salesmen or distributors
misrepresent "Ginebra Kapitan" as San Miguel’s product WHEREFORE, the application for temporary restraining order is
and that numerous retailers of San Miguel’s gin products hereby GRANTED and made effective immediately. Plaintiff is
are confused as to the manufacturer of "Ginebra Kapitan"; directed to post a bond of ONE MILLION PESOS (Php
and 1,000,000.00) within five (5) days from issuance hereof,
otherwise, this restraining order shall lose its efficacy.
5. Affidavit of Jose Reginald Pascual, San Miguel’s Accordingly, defendant Tanduay Distillers, Inc., and all persons
District Sales Supervisor for the North-Greater Manila and agents acting for and in behalf are enjoined to cease and
Area, to prove, among others, that gin drinkers confuse desist from manufacturing, distributing, selling, offering for sale
and/or advertising or otherwise using in commerce the mark parties to appear for a hearing on 6 January 2004 to determine
"GINEBRA KAPITAN" which employs, thereon, or in the the need for the issuance of a writ of preliminary injunction.20
wrappings, sundry items, cartons and packages thereof, the mark
"GINEBRA" as well as from using the bottle design and labels for On 9 January 2004, the CA rendered a Decision dismissing
its gin products during the effectivity of this temporary restraining Tanduay’s petition and supplemental petition. On 28 January
order unless a contrary order is issued by this Court.14 2004, Tanduay moved for reconsideration which was denied in a
Resolution dated 2 July 2004.21
On 3 October 2003, Tanduay filed a petition for certiorari with the
CA.15 Despite Tanduay’s Urgent Motion to Defer Injunction Aggrieved by the decision dismissing the petition and
Hearing, the trial court continued to conduct hearings on 8, 9, 13 supplemental petition and by the resolution denying the Motion
and 14 October 2003 for Tanduay to show cause why no writ of for Reconsideration, Tanduay elevated the case before this
preliminary injunction should be issued.16 On 17 October 2003, Court.
the trial court granted San Miguel’s application for the issuance of
a writ of preliminary injunction. 17 The dispositive portion of the The Trial Court’s Orders
Order reads:
In the Order dated 23 September 2003, the trial court stated that
WHEREFORE, the plaintiff’s application for a writ of preliminary during the hearings conducted on 25 and 29 August and on 4 and
injunction is GRANTED. Upon plaintiff’s filing of an injunctive 11 September 2003, the following facts have been established:
bond executed to the defendant in the amount of ₱20,000,000.00
(TWENTY MILLION) PESOS, let a Writ of Preliminary Injunction
1. San Miguel has registered the trademark "Ginebra San
issue enjoining the defendant, its employees, agents,
Miguel";
representatives, dealers, retailers or assigns, and any all persons
acting on its behalf, from committing the acts complained of, and,
specifically, to cease and desist from manufacturing, distributing, 2. There is a close resemblance between "Ginebra San
selling, offering for sale, advertising, or otherwise using in Miguel" and "Ginebra Kapitan";
commerce the mark "GINEBRA", and manufacturing, producing,
distributing or otherwise dealing in gin products which have the 3. The close similarity between "Ginebra San Miguel" and
general appearance of, and which are confusingly similar with, "Ginebra Kapitan" may give rise to confusion of goods
plaintiff’s marks, bottle design and label for its gin products. since San Miguel and Tanduay are competitors in the
business of manufacturing and selling liquors; and
SO ORDERED.18
"Ginebra," which is a well-known trademark, was adopted by
On 22 October 2003, Tanduay filed a supplemental petition in the Tanduay to benefit from the reputation and advertisement of the
CA assailing the injunction order. On 10 November 2003, the CA originator of the mark "Ginebra San Miguel," and to convey to the
issued a TRO enjoining the trial court from implementing its public the impression of some supposed connection between the
injunction order and from further proceeding with the case.19 On manufacturer of the gin product sold under the name "Ginebra
23 December 2003, the CA issued a resolution directing the San Miguel" and the new gin product "Ginebra Kapitan."22
Based on these facts, the trial court concluded that San Miguel would actually cause confusion on the part of the purchasers.
had demonstrated a clear, positive, and existing right to be Thus, Tanduay’s choice of "Ginebra" as part of the trademark of
protected by a TRO. Otherwise, San Miguel would suffer "Ginebra Kapitan" tended to show Tanduay’s intention to ride on
irreparable injury if infringement would not be enjoined. Hence, the popularity and established goodwill of "Ginebra San Miguel."26
the trial court granted the application for a TRO and set the
hearing for preliminary injunction.23 The trial court held that to constitute trademark infringement, it
was not necessary that every word should be appropriated; it was
In the Order dated 17 October 2003, the trial court granted the sufficient that enough be taken to deceive the public in the
application for a writ of preliminary injunction. The trial court ruled purchase of a protected article.27
that while a corporation acquires a trade name for its product by
choice, it should not select a name that is confusingly similar to The trial court conceded to Tanduay’s assertion that the term
any other name already protected by law or is patently deceptive, "Ginebra" is a generic word; hence, it is non-registrable because
confusing, or contrary to existing law.24 generic words are by law free for all to use. However, the trial
court relied on the principle that even if a word is incapable of
The trial court pointed out that San Miguel and its predecessors appropriation as a trademark, the word may still acquire a
have continuously used "Ginebra" as the dominant feature of its proprietary connotation through long and exclusive use by a
gin products since 1834. On the other hand, Tanduay filed its business entity with reference to its products. The purchasing
trademark application for "Ginebra Kapitan" only on 7 January public would associate the word to the products of a business
2003. The trial court declared that San Miguel is the prior user entity. The word thus associated would be entitled to protection
and registrant of "Ginebra" which has become closely associated against infringement and unfair competition. The trial court held
to all of San Miguel’s gin products, thereby gaining popularity and that this principle could be made to apply to this case because
goodwill from such name.25 San Miguel has shown that it has established goodwill of
considerable value, such that its gin products have acquired a
The trial court noted that while the subject trademarks are not well-known reputation as just "Ginebra." In essence, the word
identical, it is obviously clear that the word "Ginebra" is the "Ginebra" has become a popular by-word among the consumers
dominant feature in the trademarks. The trial court stated that and they had closely associated it with San Miguel.28
there is a strong indication that confusion is likely to occur since
one would inevitably be led to conclude that both products are On the other hand, the trial court held that Tanduay failed to
affiliated with San Miguel due to the distinctive mark "Ginebra" substantiate its claim against the issuance of the injunctive
which is readily identified with San Miguel. The trial court relief.29
concluded that ordinary purchasers would not examine the
letterings or features printed on the label but would simply be The Ruling of the Court of Appeals
guided by the presence of the dominant mark "Ginebra." Any
difference would pale in significance in the face of evident In resolving the petition and supplemental petition, the CA stated
similarities in the dominant features and overall appearance of that it is constrained to limit itself to the determination of whether
the products. The trial court emphasized that the determinative the TRO and the writ of preliminary injunction were issued by the
factor was whether the use of such mark would likely cause
confusion on the part of the buying public, and not whether it
trial court with grave abuse of discretion amounting to lack of court as affirmed by the CA. For this reason, we shall deal only
jurisdiction.30 with the questioned writ and not with the merits of the case
pending before the trial court.
To warrant the issuance of a TRO, the CA ruled that the affidavits
of San Miguel’s witnesses and the fact that the registered The Ruling of the Court
trademark "Ginebra San Miguel" exists are enough to make a
finding that San Miguel has a clear and unmistakable right to Clear and Unmistakable Right
prevent irreparable injury because gin drinkers confuse San
Miguel to be the manufacturer of "Ginebra Kapitan."31 Section 1, Rule 58 of the Rules of Court defines a preliminary
injunction as an order granted at any stage of a proceeding prior
The CA enumerated the requisites for an injunction: (1) there to the judgment or final order, requiring a party or a court, agency,
must be a right in esse or the existence of a right to be protected or a person to refrain from a particular act or acts.
and (2) the act against which the injunction is to be directed is a
violation of such right. The CA stated that the trademarks A preliminary injunction is a provisional remedy for the protection
"Ginebra San Miguel" and "Ginebra Kapitan" are not identical, but of substantive rights and interests. It is not a cause of action in
it is clear that the word "Ginebra" is the dominant feature in both itself but merely an adjunct to the main case. Its objective is to
trademarks. There was a strong indication that confusion was prevent a threatened or continuous irreparable injury to some of
likely to occur. One would be led to conclude that both products the parties before their claims can be thoroughly investigated and
are affiliated with San Miguel because the distinctive mark advisedly adjudicated. It is resorted to only when there is a
"Ginebra" is identified with San Miguel. It is the mark which draws pressing need to avoid injurious consequences which cannot be
the attention of the buyer and leads him to conclude that the remedied under any standard compensation.34
goods originated from the same manufacturer.32
Section 3, Rule 58 of the Rules of Court provides:
The CA observed that the gin products of "Ginebra San Miguel"
and "Ginebra Kapitan" possess the same physical attributes with
SECTION 3. Grounds for issuance of a writ of preliminary
reference to their form, composition, texture, or quality. The CA
injunction.—A preliminary injunction may be granted when it is
upheld the trial court’s ruling that San Miguel has sufficiently
established:
established its right to prior use and registration of the mark
"Ginebra" as a dominant feature of its trademark. "Ginebra" has
been identified with San Miguel’s goods, thereby, it acquired a (a) That the applicant is entitled to the relief demanded,
right in such mark, and if another infringed the trademark, San and the whole or part of such relief consists in restraining
Miguel could invoke its property right.33 the commission or continuance of the act or acts
complained of, or in requiring the performance of an act
or acts, either for a limited period or perpetually;
The Issue
(b) That the commission, continuance or non-
The central question for resolution is whether San Miguel is
performance of the act or acts complained of during the
entitled to the writ of preliminary injunction granted by the trial
litigation would probably work injustice to the applicant; or
 (c) That a party, court, agency or a person is doing, its substantially exclusive and continuous use as the dominant
threatening, or is attempting to do, or is procuring or feature of San Miguel’s trademarks since 1834. Hence, San
suffering to be done, some act or acts probably in Miguel is entitled to a finding that the mark is deemed to have
violation of the rights of the applicant respecting the acquired a secondary meaning.42 San Miguel states that Tanduay
subject of the action or proceeding, and tending to render failed to present any evidence to disprove its claims; thus, there is
the judgment ineffectual. no basis to set aside the grant of the TRO and writ of preliminary
injunction.43
Before an injunctive writ is issued, it is essential that the following
requisites are present: (1) the existence of a right to be protected San Miguel states that its disclaimer of the word "Ginebra" in
and (2) the acts against which the injunction is directed are some of its registered marks is without prejudice to, and did not
violative of the right. The onus probandi is on the movant to show affect, its existing or future rights over "Ginebra," especially since
that the invasion of the right sought to be protected is material "Ginebra" has demonstrably become distinctive of San Miguel’s
and substantial, that the right of the movant is clear and products.44 San Miguel adds that it did not disclaim "Ginebra" in
unmistakable, and that there is an urgent and paramount all of its trademark registrations and applications like its
necessity for the writ to prevent serious damage.35 registration for "Ginebra Cruz de Oro," "Ginebra Ka Miguel,"
"Ginebra San Miguel" bottle, "Ginebra San Miguel," and
San Miguel claims that the requisites for the valid issuance of a "Barangay Ginebra."45
writ of preliminary injunction were clearly established. The clear
and unmistakable right to the exclusive use of the mark "Ginebra" Tanduay asserts that not one of the requisites for the valid
was proven through the continuous use of "Ginebra" in the issuance of a preliminary injunction is present in this case.
manufacture, distribution, marketing and sale of gin products Tanduay argues that San Miguel cannot claim the exclusive right
throughout the Philippines since 1834. To the gin-drinking public, to use the generic word "Ginebra" for its gin products based on its
the word "Ginebra" does not simply indicate a kind of beverage; it registration of the composite marks "Ginebra San Miguel,"
is now synonymous with San Miguel’s gin products.36 "Ginebra S. Miguel 65," and "La Tondeña Cliq! Ginebra Mix,"
because in all of these registrations, San Miguel disclaimed any
San Miguel contends that "Ginebra" can be appropriated as a exclusive right to use the non-registrable word "Ginebra" for gin
trademark, and there was no error in the trial court’s provisional products.46 Tanduay explains that the word "Ginebra," which is
ruling based on the evidence on record. Assuming that "Ginebra" disclaimed by San Miguel in all of its registered trademarks, is an
is a generic word which is proscribed to be registered as a unregistrable component of the composite mark "Ginebra San
trademark under Section 123.1(h)37 of Republic Act No. 8293 or Miguel." Tanduay argues that this disclaimer further means that
the Intellectual Property Code (IP Code),38 it can still be San Miguel does not have an exclusive right to the generic word
appropriated and registered as a trademark under Section "Ginebra."47 Tanduay states that the word "Ginebra" does not
123.1(j)39 in relation to Section 123.240 of the IP Code, considering indicate the source of the product, but it is merely descriptive of
that "Ginebra" is also a mark which designates the kind of goods the name of the product itself and not the manufacturer thereof.48
produced by San Miguel.41 San Miguel alleges that although
"Ginebra," the Spanish word for "gin," may be a term originally Tanduay submits that it has been producing gin products under
incapable of exclusive appropriation, jurisprudence dictates that the brand names Ginebra 65, Ginebra Matador, and Ginebra
the mark has become distinctive of San Miguel’s products due to Toro without any complaint from San Miguel. Tanduay alleges
that San Miguel has not filed any complaint against other liquor ruled that based on San Miguel’s extensive, continuous, and
companies which use "Ginebra" as part of their brand names substantially exclusive use of the word "Ginebra," it has become
such as Ginebra Pinoy, a registered trademark of Webengton distinctive of San Miguel’s gin products; thus, a clear and
Distillery; Ginebra Presidente and Ginebra Luzon as registered unmistakable right was shown.
trademarks of Washington Distillery, Inc.; and Ginebra Lucky
Nine and Ginebra Santiago as registered trademarks of Distileria We hold that the CA committed a reversible error. The issue in
Limtuaco & Co., Inc.49 Tanduay claims that the existence of these the main case is San Miguel’s right to the exclusive use of the
products, the use and registration of the word "Ginebra" by other mark "Ginebra." The two trademarks "Ginebra San Miguel" and
companies as part of their trademarks belie San Miguel’s claim "Ginebra Kapitan" apparently differ when taken as a whole, but
that it has been the exclusive user of the trademark containing according to San Miguel, Tanduay appropriates the word
the word "Ginebra" since 1834. "Ginebra" which is a dominant feature of San Miguel’s mark.

Tanduay argues that before a court can issue a writ of preliminary It is not evident whether San Miguel has the right to prevent other
injunction, it is imperative that San Miguel must establish a clear business entities from using the word "Ginebra." It is not settled
and unmistakable right that is entitled to protection. San Miguel’s (1) whether "Ginebra" is indeed the dominant feature of the
alleged exclusive right to use the generic word "Ginebra" is far trademarks, (2) whether it is a generic word that as a matter of
from clear and unmistakable. Tanduay claims that the injunction law cannot be appropriated, or (3) whether it is merely a
issued by the trial court was based on its premature conclusion descriptive word that may be appropriated based on the fact that
that "Ginebra Kapitan" infringes "Ginebra San Miguel."50 it has acquired a secondary meaning.

In Levi Strauss & Co. v. Clinton Apparelle, Inc.,51 we held: The issue that must be resolved by the trial court is whether a
word like "Ginebra" can acquire a secondary meaning for gin
While the matter of the issuance of a writ of preliminary injunction products so as to prohibit the use of the word "Ginebra" by other
is addressed to the sound discretion of the trial court, this gin manufacturers or sellers. This boils down to whether the word
discretion must be exercised based upon the grounds and in the "Ginebra" is a generic mark that is incapable of appropriation by
manner provided by law. The exercise of discretion by the trial gin manufacturers.
court in injunctive matters is generally not interfered with save in
cases of manifest abuse. And to determine whether there was In Asia Brewery, Inc. v. Court of Appeals,53 the Court ruled that
grave abuse of discretion, a scrutiny must be made of the bases, "pale pilsen" are generic words, "pale" being the actual name of
if any, considered by the trial court in granting injunctive relief. Be the color and "pilsen" being the type of beer, a light bohemian
it stressed that injunction is the strong arm of equity which must beer with a strong hops flavor that originated in Pilsen City in
be issued with great caution and deliberation, and only in cases Czechoslovakia and became famous in the Middle Ages, and
of great injury where there is no commensurate remedy in hence incapable of appropriation by any beer
damages.52 manufacturer.54 Moreover, Section 123.1(h) of the IP Code states
that a mark cannot be registered if it "consists exclusively of signs
The CA upheld the trial court’s ruling that San Miguel has that are generic for the goods or services that they seek to
sufficiently established its right to prior use and registration of the identify."
1avvphi1

word "Ginebra" as a dominant feature of its trademark. The CA

In this case, a cloud of doubt exists over San Miguel’s exclusive well as legal authorities, to warrant the trial court’s preliminary
right relating to the word "Ginebra." San Miguel’s claim to the findings of fact.58
exclusive use of the word "Ginebra" is clearly still in dispute
because of Tanduay’s claim that it has, as others have, also The instructive ruling in Manila International Airport Authority v.
registered the word "Ginebra" for its gin products. This issue can Court of Appeals59 states:
be resolved only after a full-blown trial.
Considering the far-reaching effects of a writ of preliminary
In Ong Ching Kian Chuan v. Court of Appeals, 55 we held that in injunction, the trial court should have exercised more prudence
the absence of proof of a legal right and the injury sustained by and judiciousness in its issuance of the injunction order. We
the movant, the trial court’s order granting the issuance of an remind trial courts that while generally the grant of a writ of
injunctive writ will be set aside, for having been issued with grave preliminary injunction rests on the sound discretion of the court
abuse of discretion. taking cognizance of the case, extreme caution must be observed
in the exercise of such discretion. The discretion of the court a
We find that San Miguel’s right to injunctive relief has not been quo to grant an injunctive writ must be exercised based on the
clearly and unmistakably demonstrated. The right to the exclusive grounds and in the manner provided by law. Thus, the Court
use of the word "Ginebra" has yet to be determined in the main declared in Garcia v. Burgos:
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 "It has been consistently held that there is no power the exercise
right on its part, constitutes grave abuse of discretion amounting of which is more delicate, which requires greater caution,
to lack of jurisdiction. deliberation and sound discretion, or more dangerous in a
doubtful case, than the issuance of an injunction. It is the strong
Prejudging the Merits of the Case arm of equity that should never be extended unless to cases of
great injury, where courts of law cannot afford an adequate or
Tanduay alleges that the CA, in upholding the issuance of the writ commensurate remedy in damages.
of preliminary injunction, has prejudged the merits of the case
since nothing is left to be decided by the trial court except the Every court should remember that an injunction is a limitation
amount of damages to be awarded to San Miguel.56 upon the freedom of action of the defendant and should not be
granted lightly or precipitately. It should be granted only when the
San Miguel claims that neither the CA nor the trial court court is fully satisfied that the law permits it and the emergency
prejudged the merits of the case. San Miguel states that the CA demands it." (Emphasis in the original)
did not rule on the ultimate correctness of the trial court’s
evaluation and appreciation of the evidence before it, but merely We believe that the issued writ of preliminary injunction, if
found that the assailed Orders of the trial court are supported by allowed, disposes of the case on the merits as it effectively
the evidence on record and that Tanduay was not denied due enjoins the use of the word "Ginebra" without the benefit of a full-
process.57 San Miguel argues that the CA only upheld the trial blown trial. In Rivas v. Securities and Exchange
court’s issuance of the TRO and writ of preliminary injunction Commission,60 we ruled that courts should avoid issuing a writ of
upon a finding that there was sufficient evidence on record, as preliminary injunction which would in effect dispose of the main
case without trial. The issuance of the writ of preliminary quoting Government Service Insurance System v.
injunction had the effect of granting the main prayer of the Florendo,67 held:
complaint such that there is practically nothing left for the trial
court to try except the plaintiff’s claim for damages. x x x a writ of injunction should never issue when an action for
damages would adequately compensate the injuries caused. The
Irreparable Injury very foundation of the jurisdiction to issue the writ of injunction
rests in the probability of irreparable injury, inadequacy of
Tanduay points out that the supposed damages that San Miguel pecuniary compensation and the prevention of the multiplicity of
will suffer as a result of Tanduay’s infringement or unfair suits, and where facts are not shown to bring the case within
competition cannot be considered irreparable because the these conditions, the relief of injunction should be refused.
damages are susceptible of mathematical computation. Tanduay
invokes Section 156.1 of the IP Code61 as the basis for the Based on the affidavits and market survey report submitted
computation of damages.62 during the injunction hearings, San Miguel has failed to prove the
probability of irreparable injury which it will stand to suffer if the
San Miguel avers that it stands to suffer irreparable injury if the sale of "Ginebra Kapitan" is not enjoined. San Miguel has not
manufacture and sale of Tanduay’s "Ginebra Kapitan" are not presented proof of damages incapable of pecuniary estimation. At
enjoined. San Miguel claims that the rough estimate of the most, San Miguel only claims that it has invested hundreds of
damages63 it would incur is simply a guide for the trial court in millions over a period of 170 years to establish goodwill and
computing the appropriate docket fees. San Miguel asserts that reputation now being enjoyed by the "Ginebra San Miguel" mark
the full extent of the damage it would suffer is difficult to measure such that the full extent of the damage cannot be measured with
with any reasonable accuracy because it has invested hundreds reasonable accuracy. Without the submission of proof that the
of millions over a period of 170 years to establish goodwill and damage is irreparable and incapable of pecuniary estimation, San
reputation now being enjoyed by the "Ginebra San Miguel" Miguel’s claim cannot be the basis for a valid writ of preliminary
mark.64 San Miguel refutes Tanduay’s claim that the injury which injunction.
San Miguel stands to suffer can be measured with reasonable
accuracy as the legal formula to determine such injury is provided Wherefore, we GRANT the petition. We SET ASIDE the
in Section 156.1 of the IP Code. San Miguel reasons that if Decision of the Court of Appeals dated 9 January 2004 and the
Tanduay’s claim is upheld, then there would never be a proper Resolution dated 2 July 2004 in CA-G.R. SP No. 79655. We
occasion to issue a writ of preliminary injunction in relation to declare VOID the Order dated 17 October 2003 and the
complaints for infringement and unfair competition, as the injury corresponding writ of preliminary injunction issued by Branch 214
which the owner of the mark suffers, or stands to suffer, will of the Regional Trial Court of Mandaluyong City in IP Case No.
always be susceptible of mathematical computation.65 MC-03-01 and Civil Case No. MC-03-073.

In Levi Strauss & Co. v. Clinton Apparelle, Inc.,66 this Court The Regional Trial Court of Mandaluyong City, Branch 214, is
upheld the appellate court’s ruling that the damages Levi Strauss directed to continue expeditiously with the trial to resolve the
& Co. had suffered or continues to suffer may be compensated in merits of the case.
terms of monetary consideration. This Court,
SO ORDERED.