San Miguel isn’t allowed to sell its Magnolia ice cream in the United States.
Do you know why?
Magnolia is a Philippine ice-cream brand whose origins clearly go back to the 1920s. It has belonged to the San Miguel Corporation for most of its history.
IP Philippines Registration No. 42004005904
San Miguel Corporation, Philippines
In the 1970s, a completely unaffiliated Filipino American family in Northern California started marking their own ice-cream products with the “Magnolia” name in order to surf on the goodwill that the original Magnolia had developed among Filipinos from the old country. (This assertion was voiced by U.S. federal judge Richard Clifton himself during oral arguments in Case No. 13-55537.)
The Quesada family, operating as the Ramar company, filed a trademark application in the early 1990’s claiming the Magnolia mark for their exclusive use in the United States, based on their use of that name and logo for decades. The fact that San Miguel had been using the Magnolia name and logo for much longer in the Philippines and was the originator of that brand name was irrelevant under U.S. law.
USA trademark serial number: 74297882
Ramar Foods, California, USA
To this day, many Filipino Americans assume that the Magnolia ice-cream they eat in the United States is related to the Magnolia in the Philippines. It is not.
The U.S. brand name and company logo are strikingly similar to the homeland’s original, but it is California’s Ramar Foods, and not the Philippines’ San Miguel, that’s profiting. Ramar’s rationale behind the appropriation is that San Miguel “did not have the vision to know they could sell to Filipinos here.” In effect, brand-name piracy is considered smart business sense in the United States. It may be unethical, but it’s legal.
In 2005, the Wall Street Journal focused on this particular brand-name piracy issue, in which companies in the United States appropriate trademarks from overseas. The article noted that the trend has been buoyed by U.S. immigrants who favor buying the traditional brands they cherished in their home countries. Not surprisingly, these consumers are quick to assume that a product in the U.S. with a name from home is the product they grew up with. In this case, it is not.
There have been many legal cases involving Ramar vs. Magnolia, including Ramar’s recent efforts to prevent San Miguel from selling Magnolia butter, margarine, and cheese in the United States. It is a classic example of using U.S. law to bully a non-USA company, and even the judges in the Ninth Circuit Court of Appeals in California appear to recognize it as such.
903.01 Date of First Use Anywhere
The date of first use anywhere is the date when the goods were first sold or transported or the services were first rendered under the mark, if such use is bona fide and in the ordinary course of trade. For every applicant, whether foreign or domestic, the date of first use of a mark is the date of the first use anywhere, in the United States or elsewhere, regardless of whether the nature of the use was local or national, intrastate or interstate, or of another type.
In its trademark filing for the Magnolia name, RAMAR made the following declarations:
First Use Anywhere: 1/1/1972
First Use In Commerce: 1/1/1972
There has never been a licensing agreement between the U.S. company Ramar, which started using the Magnolia trade dress in the 1970s, and the Philippine company San Miguel, which had developed the Magnolia brand for many decades earlier.
Sources and Further Reading:
San Miguel battles Magnolia trademark holder to sell in US (2012)
The San Miguel Group is battling a Filipino-American food manufacturer in California, which had beaten it in securing an identical Magnolia trademark in the United States.
In 2000, the Philippine Islands’ largest conglomerate, San Miguel Corp., lost a long legal fight to stop a California company, Ramar Foods, from selling Magnolia ice cream, a brand San Miguel owned. From its Oakland factory, Ramar produced flavors that were nearly identical to Magnolia’s — lychee, avocado, corn-cheese and ube — and used packaging and logos very similar to the Filipino company’s. However, there has never been a licensing agreement between Ramar and San Miguel. Ramar was able to get away with making profits off Magnolia’s trade name and trademark logo, because Ramar had filed an application for those in the United States and asserted that it had been using that name and logo for decades. The fact that San Miguel had been using the Magnolia name and logo for much longer in the Philippines and was the originator of that brand identity was overlooked by the U.S. trademark examiners.
San Miguel was founded in 1890 and is one of the Philippines’ most diversified conglomerates, with a workforce of over 15,000 generating close to three percent of the country’s gross national product. The company is perhaps best known for San Miguel Beer, its flagship product, which is among the top ten beer brands in the world. One of San Miguel’s better known brands is Magnolia, its dairy product subsidiary. From its start in 1925, Magnolia branded ice cream was one of the most recognizable and enduring brands in the Philippines and is the oldest Asian ice cream.
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 assertion that products made by San Miguel, a major Philippine company with a long history of consumer trust in Asia, are inferior.