Taiwan Kolin Co., Ltd., v. Kolin Electronics Co., Inc. (2015)

Doctrines: 

• Emphasis should be on the similarity of the products involved and not on the arbitrary classification or general description of their properties or characteristics. The mere fact that one person has adopted and used a trademark on his goods would not, without more, prevent the adoption and use of the same trademark by others on unrelated articles of a different kind.
• In trademark cases, particularly in ascertaining whether one trademark is confusingly similar to another, no rigid set rules can plausible be formulated. Each case must be decided on its merits, with due regard to the goods or services involved, the usual purchaser’s character and attitude, among others. In such cases, even more than in any other litigation, precedent must be studied in the light of the facts of a particular case.

Facts: Taiwan Kolin filed with the IPO, then Bureau of Patents, Trademarks, and Technology Transfer, a trademark application for the use of "KOLIN" on a combination of goods, including colored televisions, refrigerators, window-type and split-type air conditioners, electric fans and water dispensers. Said goods allegedly fall under Classes 9, 11, and 21 of the Nice Classification (NCL). The would eventually be considered abandoned for Taiwan Kolin’s failure to respond to IPO’s Paper No. 5 requiring it to elect one class of good for its coverage. However, the same application was subsequently revived through another application, with petitioner electing Class 9. The application would in time be duly published.

Kolin Electronics opposed petitioner’s revived application. The mark Taiwan Kolin seeks to register is identical, if not confusingly similar, with its "KOLIN" mark, covering the following products under Class 9 of the NCL: automatic voltage regulator, converter, recharger, stereo booster, AC-DC regulated power supply, step-down transformer, and PA amplified AC-DC.

To digress a bit, Kolin Electronics’ "KOLIN" registration was, as it turns out, the subject of a prior legal dispute between the parties before the IPO. In the said case, Kolin Electronics’ own application was opposed by Taiwan Kolin, being, as Taiwan Kolin claimed, the prior registrant and user of the "KOLIN" trademark, having registered the same in Taipei, Taiwan on December 1, 1988. The Bureau of Legal Affairs of the IPO (BLA-IPO), however, did not accord priority right to Taiwan Kolin’s Taipei registration absent evidence to prove that it has already used the said mark in the Philippines as early as 1988. On appeal, the IPO Director General affirmed the BLA-IPO’s Decision. Taiwan Kolin elevated the case to the CA, but without injunctive relief, Kolin Electronics was able to register the "KOLIN" trademark for its products. CA affirmed the Decision.

In answer to respondent’s opposition, petitioner argued that it should be accorded the benefits of a foreign-registered mark under Secs. 3 and 131.1 of Republic Act No. 8293 (IP Code); that it has already registered the "KOLIN" mark in the People’s Republic of China, Malaysia and Vietnam, all of which are parties to the Paris Convention for the Protection of Industrial Property and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS); and that benefits accorded to a well-known mark should be accorded to petitioner.

BLA-IPO denied petitioner’s application. Citing Sec. 123(d) of the IP Code, the BLA-IPO held that a mark cannot be registered if it is identical with a registered mark belonging to a different proprietor in respect of the same or closely-related goods. The BLA-IPO also noted that there was proof of actual confusion in the form of consumers writing numerous e-mails to respondent asking for information, service, and complaints about petitioner’s products.

Petitioner moved for reconsideration but the same was denied. Thus, petitioner appealed the above Decision to the Office of the Director General of the IPO.

IPO Director reversed the Decision of the BLA-IPO. In so ruling, the IPO Director General ratiocinated that product classification alone cannot serve as the decisive factor in the resolution of whether or not the goods are related and that emphasis should be on the similarity of the products involved and not on the arbitrary classification or general description of their properties or characteristics.

Aggrieved, respondent elevated the case to the CA. The appeal was granted. Petitioner moved for reconsideration but was denied.

Issue: Whether or not petitioner is entitled to its trademark registration of "KOLIN" over its specific goods of television sets and DVD players.

Held: Identical marks may be registered for products from the same classification.

Mere uniformity in categorization, by itself, does not automatically preclude the registration of what appears to be an identical mark, if that be the case. In fact, this Court, in a long line of cases, has held that such circumstance does not necessarily result in any trademark infringement.

Verily, whether or not the products covered by the trademark sought to be registered by Taiwan Kolin, on the one hand, and those covered by the prior issued certificate of registration in favor of Kolin Electronics, on the other, fall under the same categories in the NCL is not the sole and decisive factor in determining a possible violation of Kolin Electronics’ intellectual property right should petitioner’s application be granted. It is hornbook doctrine, as held in the above-cited cases, that emphasis should be on the similarity of the products involved and not on the arbitrary classification or general description of their properties or characteristics. The mere fact that one person has adopted and used a trademark on his goods would not, without more, prevent the adoption and use of the same trademark by others on unrelated articles of a different kind. The CA erred in denying petitioner’s registration application.

The intertwined use, the same classification of the products as class 9 under the NICE Agreement, and the fact that they generally flow through the same channel of trade clearly establish that Taiwan Kolin’s television sets and DVD players are closely related to Kolin Electronics’ goods. As correctly pointed out by the BLA-IPO, allowing Taiwan Kolin’s registration would only confuse consumers as to the origin of the products they intend to purchase. Accordingly, protection should be afforded to Kolin Electronics, as the registered owner of the "KOLIN" trademark.

a. The products covered by petitioner’s application and respondent’s registration are unrelated

A certificate of trademark registration confers upon the trademark owner the exclusive right to sue those who have adopted a similar mark not only in connection with the goods or services specified in the certificate, but also with those that are related thereto.

It was erroneous for respondent to assume over the CA to conclude that all electronic products are related and that the coverage of one electronic product necessarily precludes the registration of a similar mark over another. In this digital age wherein electronic products have not only diversified by leaps and bounds, and are geared towards interoperability, it is difficult to assert readily, as respondent simplistically did, that all devices that require plugging into sockets are necessarily related goods.

b. The ordinarily intelligent buyer is not likely to be confused

In trademark cases, particularly in ascertaining whether one trademark is confusingly similar to another, no rigid set rules can plausible be formulated. Each case must be decided on its merits, with due regard to the goods or services involved, the usual purchaser’s character and attitude, among others. In such cases, even more than in any other litigation, precedent must be studied in the light of the facts of a particular case. That is the reason why in trademark cases, jurisprudential precedents should be applied only to a case if they are specifically in point. For a clearer perspective and as matter of record, the following image on the left is the trademark applied for by petitioner, while the image juxtaposed to its right is the trademark registered by respondent:

The differing features between the two, though they may appear minimal, are sufficient to distinguish one brand from the other.

It cannot be stressed enough that the products involved in the case at bar are, generally speaking, various kinds of electronic products. These are not ordinary consumable household items, like catsup, soy sauce or soap which are of minimal cost. The products of the contending parties are relatively luxury items not easily considered affordable. Accordingly, the casual buyer is predisposed to be more cautious and discriminating in and would prefer to mull over his purchase. Confusion and deception, then, is less likely.

All told, We are convinced that petitioner's trademark registration not only covers unrelated good, but is also incapable of deceiving the ordinary intelligent buyer. The ordinary purchaser must be thought of as having, and credited with, at least a modicum of intelligence to be able to see the differences between the two trademarks in question.

Dispositive Portion: WHEREFORE, in view of the foregoing, the petition is hereby GRANTED. The Decision and the Resolution of the Court of Appeals in CA-G.R. SP No. 122565, dated April 30, 2013 and November 6, 2013, respectively, are hereby REVERSED and SET ASIDE. Accordingly, the Decision of the Intellectual Property Office Director General in Inter Partes Case No. 14-2006-00096, dated November 23, 2011, is hereby REINSTATED.