Summary: United States company isn’t content with just appropriating the Magnolia ice-cream brand from the Filipino originator, Ramar USA also wants to prevent San Miguel Philippines from selling Magnolia-branded butter, margarine and cheese in the United States.
United States Court of Appeals for the Ninth Circuit
Case Name: San Miguel Pure Foods Co., et al v. Ramar Int’l Corp., et al
Case Number: 13-55537
Case Panel: NELSON, TASHIMA, CLIFTON
Hearing Location: Pasadena, CA
Hearing Date: 04/07/2015
Ramar International Corp. asked the Ninth Circuit to broaden an injunction in the fight over its “Magnolia” trademark, saying that allowing rival San Miguel Pure Foods Co. to sell certain dairy products under the “Magnolia” name is diluting its trademark.
JUDGE NELSON: “Does the record show why Ramar waited so long to object to San Miguel’s use
of the label on butter, margarine, and cheese? How can San Miguel’s infringement be willful if San Miguel knew that Ramar knew of the products and didn’t object?”
LAWYER: “We didn’t know… We challenged San Miguel in the 1990s on ice cream… We sued their distributor… San Miguel sued us in the 1990s… We found a distributor in the 1990s… The first time we found out about the butter, margarine and cheese was in 2009 when Susie Quesada was sent information about various other products. Her testimony was that, ‘We were absolutely stunned… been through this with them before.'”
JUDGE CLIFTON: “How did your client come up with the Magnolia name and the trademark?”
LAWYER: “We adopted the Magnolia name in the early 1970s.”
JUDGE CLIFTON: “Where did it come from? They liked a certain kind of trees?”
LAWYER: “No, Your Honor. It came from the fact that there was a Magnolia product in the Philippines starting in the 1920s, and that product was not available for sale here, so my clients who were immigrants adopted the mark because they were selling ice-cream products that had flavors that reminded Filipinos of the flavors they could get at home.”
JUDGE CLIFTON: “Or it helps you… Because let’s face it. Your client is surfing on the goodwill established 40 years ago. Now it may have developed the brand past that, but it’s not like they think the Magnolia trademark used by somebody else is a drag on them. Because they picked it up from San Miguel’s usage in the first place.”
Ramar’s lawyer insinuates before the court that San Miguel will be selling “moldy cheese” under the Magnolia brand in the United States. Though repeatedly being reminded that product quality is of no relevance to the legal points being debated, Ramar’s lawyer keeps sneaking in the innuendo that products made by San Miguel, a major Philippine company with a long history of consumer trust in Asia, are inferior.
TRANSCRIPTION TO BE POSTED IN FULL. CURRENTLY ONLY EXCERPTS ON THIS PAGE.
RECAP OF THE MAGNOLIA ISSUE HERE
U.S. Circuit Judges Dorothy Wright Nelson, Richard Clifton and A. Wallace Tashima sat on the panel for the Ninth Circuit.
San Miguel is represented by Allan Gabriel, Walead Esmail and Craig Nevin Hentschel of Dykema Gossett PLLC.
Ramar is represented by Mark A. Lemley and Alex J. Feerst of Durie Tangri LLP, and Rachel R. Davidson, Holly Hogan and J. Michael Keyes of K&L Gates LLP.
The case is San Miguel Pure Foods Co. et. al. v. Ramar International Corp. et al., case number 13-55537, in the U.S. Court of Appeals for the Ninth Circuit.
13-55965 San Miguel Pure Foods Co. v. Ramar Int’l Corp. – Ramar International Corp. appeals, and San Miguel Pure Foods Co. and others cross-appeal, the district court’s judgment on claims of infringement of “Magnolia” trademarks for ice cream and other foods. [2:11-cv-09747-RGK-FMO]
2015-04-07 9:00 am Courtroom 2, Richard H. Chambers US Court of Appeals, Pasadena
Before: D.W. NELSON, TASHIMA and CLIFTON, Circuit Judges