Ramar Loses Magnolia BMC Issue To San Miguel

August 27, 2015

The “Butter, Margarine and Cheese” (BMC) Issue:

Northern California’s Ramar Foods Has Been Trying For Years to Prevent San Miguel of the Philippines From Using the Magnolia Brand in the United States

The Ninth Circuit Court reverses the injunction entered in favor of Ramar and affirms the balance of the judgment in favor of San Miguel.

San Miguel Corporation, San Miguel Pure Foods Company, Magnolia Inc., Arko Foods International, Inc., and Rayland Enterprises LLC (collectively, “San Miguel”) filed an action against Ramar International seeking a declaratory judgment that San Miguel’s use of the “Magnolia” trademark on certain food products did not constitute trademark infringement.

Ramar counterclaimed against San Miguel for trademark infringement, false designation of origin and false representation, and unfair competition under California law.

The district court granted partial summary judgment in favor of Ramar, concluding that San Miguel’s use of the Magnolia trademark constituted infringement, subject to affirmative defenses. The issues of whether San Miguel’s infringement was willful and whether damages should be awarded were tried to a jury and resulted in a verdict in favor of San Miguel, concluding that the infringement was not willful and awarding no damages. San Miguel also prevailed before the district court on one of its affirmative defenses, the equitable defense of laches, based on Ramar’s delay in objecting to San Miguel’s use of the trademark on butter, margarine, and cheese products (“BMC”) sold in the United States. In the end, San Miguel prevailed for the most part, but the district court did grant Ramar a limited prospective injunction against San Miguel’s use of the Magnolia mark in the United States for food services and products other than the BMC products.

Ramar appealed, challenging the district court’s denial of its motion for judgment as a matter of law as to willful infringement, the jury’s verdict finding no willful infringement, the district court’s judgment in favor of San Miguel on its laches defense, and the BMC exception to the permanent injunction against San Miguel’s use of the Magnolia trademark. San Miguel cross-appealed, disputing the permanent injunction in favor of Ramar.

The Ninth Circuit Court reverses the injunction entered in favor of Ramar and affirms the balance of the judgment in favor of San Miguel.

Download a PDF file of the court’s decision.

This post will be greatly expanded after further perusal of the court’s judgement.