TAIWAN KOLIN CORPORATION v. KOLIN ELECTRONICS CO., GR No.

209843, 2015-03-25

Facts:

The assailed issuances effectively denied petitioner's trademark application for the use of "KOLIN" on its
television and DVD players.

Taiwan Kolin filed with the Intellectual Property Office (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).

Application... 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... with petitioner electing Class 9 as the subject of its application, particularly:
television sets, cassette recorder, VCD Amplifiers, camcorders and other audio/video electronic
equipment, flat iron, vacuum cleaners, cordless handsets,... videophones, facsimile machines,
teleprinters, cellular phones and automatic goods vending machine. The application would in time be
duly published.[... respondent Kolin Electronics Co., Inc. (Kolin Electronics) opposed petitioner's revived
application,... As argued, the mark Taiwan Kolin seeks to register is identical, if not confusingly similar,
with its "KOLIN"... mark registered on November 23, 2003, 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

"KOLIN" registration was, as it turns out, the subject of a prior legal dispute

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

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 on November 23, 2003 for its products.[6]
Subsequently, the CA, on July 31, 2006, affirmed[7] the Decision of the Director General.

In answer to respondent's opposition... etitioner argued that it should be accorded the benefits of a
foreign-registered mark under Secs. 3 and 131.1 of Republic Act No. 8293, otherwise known as the
Intellectual Property Code of the

Philippines (IP Code);[8] 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 (Paris Convention) 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.

Ruling of the BLA-IPO... the BLA-IPO denied petitioner's application... hus, petitioner appealed the above
Decision to the Office of the Director General of the IPO.

Ruling of the IPO Director General... the IPO Director General rendered a Decision[15] reversing that of
the BLA-IPO in the following wise:... hereby GIVEN DUE COURSE subject to the use limitation or
restriction for the goods "television and DVD player"

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. As held, the mere fact that one person has adopted and used a
particular trademark for his goods does not prevent the adoption and use of the same trademark by
others on articles of a different... description.[16]

Aggrieved, respondent elevated the case to the CA.

he CA found for Kolin Electronics, on the strength of the following premises: (a) the mark sought to be
registered by Taiwan Kolin is confusingly similar to the one already registered in favor of Kolin
Electronics; (b) there are no other designs,... special shape or easily identifiable earmarks that would
differentiate the products of both competing companies;[17] and (c) the intertwined use of television
sets with amplifier, booster and voltage regulator bolstered the fact that televisions can be... considered
as within the normal expansion of Kolin Electronics,[

Respondent avers that Kolin Electronics' and Taiwan Kolin's products are closely-related not only
because both fall under Class 9 of the NCL, but mainly because they both relate to electronic products,
instruments, apparatus, or appliances.[34] Pushing the... point, respondent would argue that Taiwan
Kolin and Kolin Electronics' goods are inherently similar in that they are all plugged into electric sockets
and perform a useful function.[3

Issues:

The Issue

The primordial issue to be resolved boils down to whether or not petitioner is entitled to its trademark
registration of "KOLIN" over its specific goods of television sets and DVD players. Petitioner postulates,
in the main, that its goods are not closely related to those of

Kolin Electronics. On the other hand, respondent hinges its case on the CA's findings that its and
petitioner's products are closely-related. Thus, granting petitioner's application for trademark
registration, according to respondent, would cause confusion as to the... public.

Ruling:

The petition is impressed with merit.

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

The parties admit that their respective sets of goods belong to Class 9 of the NCL, which includes the
following:[22]

Class 9

Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling,

checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments
for conducting, switching, transforming, accumulating, regulating or... controlling electricity; apparatus
for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs;
compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash
registers, calculating machines, data... processing equipment, computers; computer software; fire-
extinguishing apparatus.

But 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.

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.[2

Taiwan Kolin's goods are classified as home appliances as opposed to Kolin Electronics' goods which are
power supply and audio equipment accessories;

Taiwan Kolin's television sets and DVD players perform distinct function and purpose from Kolin
Electronics' power supply and audio equipment; and

Taiwan Kolin sells and distributes its various home appliance products on wholesale and to accredited
dealers, whereas Kolin Electronics' goods are sold and flow through electrical and hardware stores.

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

While both competing marks refer to the word "KOLIN" written in upper case letters and in bold font,
the Court at once notes the distinct visual and aural differences between them: Kolin Electronics' mark is
italicized and colored black while that of Taiwan Kolin is white in... pantone red color background. The
differing features between the two, though they may appear minimal, are sufficient to distinguish one
brand from the other.

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

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.

Principles:

Citing Sec. 123(d) of the IP Code,[11] 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.

But 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.

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.[27]... whether or not the products of the parties involved are related the
doctrine in Mighty Corporation is authoritative. There, the Court held that the goods should be tested
against several factors before arriving at... a sound conclusion on the question of relatedness. Among
these are:

(a) the business (and its location) to which the goods belong;

(b) the class of product to which the goods belong;

(c) the product's quality, quantity, or size, including the nature of the package, wrapper or container;

(d) the nature and cost of the articles;

(e) the descriptive properties, physical attributes or essential characteristics with reference to their
form, composition, texture or quality;

(f) the purpose of the goods;

(g) whether the article is bought for immediate consumption, that is, day-to-day household items;

(h) the fields of manufacture;

(i) the conditions under which the article is usually purchased; and
(j) the channels of trade through which the goods flow, how they are distributed, marketed, displayed
and sold.[3

Expensive and valuable items are normally bought only after deliberate, comparative and analytical...
investigation. But mass products, low priced articles in wide use, and matters of everyday purchase
requiring frequent replacement are bought by the casual consumer without great care x x x.(emphasis
added)

MIGHTY CORP. vs. E&J GALLO

MIGHTY CORP. vs. E&J GALLO
G.R. NO. 154342
July 14, 2004
PONENTE CORONA; J.

FACTS:
On March 12, 1993, E. & J. GALLO WINERY and THE ANDRESONS GROUP, INC (respondents) sued
MIGHTY CORPORATION and LA CAMPANA FABRICA DE TABACO, INC. (petitioners) in the RTC-Makati for
trademark and trade name infringement and unfair competition, with a prayer for damages and
preliminary injunction.

They claimed that petitioners adopted the Gallo trademark to ride on Gallo Winery’s and Gallo and
Ernest & Julio Gallo trademark’s established reputation and popularity, thus causing confusion,
deception and mistake on the part of the purchasing public who had always associated Gallo and Ernest
and Julio & Gallo trademarks with Gallo Winery’s wines.

In their answer, petitioners alleged, among other affirmative defenses that: petitioners Gallo cigarettes
and Gallo Winery’s wine were totally unrelated products. To wit:
1. Gallo Winery’s GALLO trademark registration certificates covered wines only, and not cigarettes;
2. GALLO cigarettes and GALLO wines were sold through different channels of trade;
3. the target market of Gallo Winery’s wines was the middle or high-income bracket while Gallo
cigarette buyers were farmers, fishermen, laborers and other low-income workers;
4. that the dominant feature of the Gallo cigarette was the rooster device with the manufacturer’s name
clearly indicated as MIGHTY CORPORATION, while in the case of Gallo Winery’s wines, it was the full
names of the founders-owners ERNEST & JULIO GALLO or just their surname GALLO;

The Makati RTC denied, for lack of merit, respondent’s prayer for the issuance of a writ of preliminary
injunction. CA likewise dismissed respondent’s petition for review on certiorari.

After the trial on the merits, however, the Makati RTC held petitioners liable for committing trademark
infringement and unfair competition with respect to the GALLO trademark.

On appeal, the CA affirmed the Makati RTC’s decision and subsequently denied petitioner’s motion for
reconsideration.

ISSUE/S: Whether GALLO cigarettes and GALLO wines were identical, similar or related goods for the
reason alone that they were purportedly forms of vice.
RULING: NO.
Wines and cigarettes are not identical, similar, competing or related goods.

In resolving whether goods are related, several factors come into play:
· the business (and its location) to which the goods belong
· the class of product to which the good belong
· the product’s quality, quantity, or size, including the nature of the package, wrapper or container
· the nature and cost of the articles
· the descriptive properties, physical attributes or essential characteristics with reference to their
form, composition, texture or quality
· the purpose of the goods
· whether the article is bought for immediate consumption, that is, day-to-day household items
· the field of manufacture
· the conditions under which the article is usually purchased and
· the articles of the trade through which the goods flow, how they are distributed, marketed,
displayed and sold.

The test of fraudulent simulation is to the likelihood of the deception of some persons in some measure
acquainted with an established design and desirous of purchasing the commodity with which that design
has been associated. The simulation, in order to be objectionable, must be as appears likely to mislead
the ordinary intelligent buyer who has a need to supply and is familiar with the article that he seeks to
purchase.

The petitioners are not liable for trademark infringement, unfair competition or damages.

Developers Group of Companies, Inc. vs. Shangri-la International Hotel Management, Inc. et. al. CA- G. R.
CVNo. 53351

FACTS:

Petitioner was the owner of the “Shangri-La” and the “S” Logo since 1962 and is internationally well-
known but is not doing business in the Philippines since early 1980s. Respondent, on the other hand,
was the registered owner of the Shangri-la and S logo since 1983 and is using them since then. Petitioner
prayed for the granting of its application for registration in the Philippines while respondent filed for
infringement against petitioner.

RULING:

Since IPC of 1988 (RA 8293) did not provide for retroactive application, the Court held that petitioner
cannot claim protection under the Paris Convention and ruled that provisions under RA 166 should be
applied. Thus, for not meeting the requirement of actual use of commerce in the Philippines(Sec 2, RA
166, requirement for registration), petitioner’s registration cannot be granted.

The Court also ruled that respondent also failed to meet the same requirement when it had the marks
registered. Not only that, respondent could not even be deemed the owner of the mark since ownership
under Sec 2-A of RA 166 require that the name or mark used must not be appropriated to another and it
does not require actual use of a trademark within the Philippines in contradistinction to Sec2. Petitioner
was proven to be the owner and originator of the marks even if petitioner failed to comply with Sec2
since it had been using said marks earlier and longer than respondent; such fact respondent knew.
Petitioner could not, therefore, be guilty of infringement for a mark which originally came from it.

PROSOURCE INTERNATIONAL, INC. v. HORPHAG RESEARCH MANAGEMENT SA. G.R. No. 180073.
November 25, 2009
FACTS:

Respondent is a corporation and owner of trademark PYCNOGENOL, a food. Respondent later

discovered that petitioner was also distributing a similar food supplement using the mark PCO-GENOLS
since 1996. This prompted respondent to demand that petitioner cease and desist from using the
aforesaid mark.

Respondent filed a Complaint for Infringement of Trademark with Prayer for Preliminary Injunction
against petitioner, in using the name PCO-GENOLS for being confusingly similar. Petitioner appealed
otherwise.

The RTC decided in favor of respondent. It observed that PYCNOGENOL and PCO-GENOLS have the same
suffix "GENOL" which appears to be merely descriptive and thus open for trademark registration by
combining it with other words and concluded that the marks, when read, sound similar, and thus
confusingly similar especially since they both refer to food supplements.

On appeal to the CA, petitioner failed to obtain a favorable decision. The appellate court explained that
under the Dominancy or the Holistic Test, PCO-GENOLS is deceptively similar to PYCNOGENOL.

ISSUE: Whether the names are confusingly similar.

RULING:

Yes. There is confusing similarity and the petition is denied. Jurisprudence developed two test to prove
such.

The Dominancy Test focuses on the similarity of the prevalent features of the competing trademarks
that might cause confusion and deception, thus constituting infringement. If the competing trademark
contains the main, essential and dominant features of another, and confusion or deception is likely to
result, infringement takes place. Duplication or imitation is not necessary; nor is it necessary that the
infringing label should suggest an effort to imitate. The question is whether the use of the marks
involved is likely to cause confusion or mistake in the mind of the public or to deceive purchasers. Courts
will consider more the aural and visual impressions created by the marks in the public mind, giving little
weight to factors like prices, quality, sales outlets, and market segments.

The Holistic Test entails a consideration of the entirety of the marks as applied to the products, including
the labels and packaging, in determining confusing similarity. Not only on the predominant words
should be the focus but also on the other features appearing on both labels in order that the observer
may draw his conclusion whether one is confusingly similar to the other.
SC applied the Dominancy Test.Both the words have the same suffix "GENOL" which on evidence,
appears to be merely descriptive and furnish no indication of the origin of the article and hence, open
for trademark registration by the plaintiff through combination with another word or phrase. When the
two words are pronounced, the sound effects are confusingly similar not to mention that they are both
described by their manufacturers as a food supplement and thus, identified as such by their public
consumers. And although there were dissimilarities in the trademark due to the type of letters used as
well as the size, color and design employed on their individual packages/bottles, still the close
relationship of the competing products’ name in sounds as they were pronounced, clearly indicates that
purchasers could be misled into believing that they are the same and/or originates from a common
source and manufacturer.

COFFEE PARTNERS V. SAN FRANCISCO COFFEE & ROASTERY (G.R. NO. 169504)

Facts:

Petitioner Coffee Partners entered into a franchise agreement with Coffee Partners Ltd. to operate
coffee shops in the country using the trademark ‘San Francisco Coffee.’ Respondent on the other hand,
is a local corporation engaged in the wholesale and retail sale of coffee and uses the business name ‘San
Francisco Coffee & Roastery’ registered with the DTI. Later, respondent filed an infringement and/or
unfair competition complaint against petitioner alleging that the latter was about to open a coffee shop
under the name ‘San Francisco Coffee’ causing confusion in the minds of the public as it bore a similar
name and is engaged also in selling of coffee. Petitioner contended no infringement would arise because
respondent’s tradename was not registered.

Issue:

Whether or not petitioner’s trademark would infringe respondent’s tradename.

Ruling: YES.

In Prosource International, Inc. v. Horphag Research Management SA, this Court laid down what
constitutes infringement of an unregistered trade name, thus:

(1) The trademark being infringed is registered in the Intellectual Property Office; however, in
infringement of trade name, the same need not be registered;

(2) The trademark or trade name is reproduced, counterfeited, copied, or colorably imitated by the
infringer;

(3) The infringing mark or trade name is used in connection with the sale, offering for sale, or advertising
of any goods, business or services; or the infringing mark or trade name is applied to labels, signs, prints,
packages, wrappers, receptacles, or advertisements intended to be used upon or in connection with
such goods, business, or services;

(4) The use or application of the infringing mark or trade name is likely to cause confusion or mistake or
to deceive purchasers or others as to the goods or services themselves or as to the source or origin of
such goods or services or the identity of such business; and
(5) It is without the consent of the trademark or trade name owner or the assignee thereof.

RA 8293, which took effect on 1 January 1998, has dispensed with the registration requirement. Section
165.2 of RA 8293 categorically states that trade names shall be protected, even prior to or without
registration with the IPO, against any unlawful act including any subsequent use of the trade name by a
third party, whether as a trade name or a trademark likely to mislead the public.

It is the likelihood of confusion that is the gravamen of infringement. Applying the dominancy test or the
holistic test, petitioner’s “SAN FRANCISCO COFFEE” trademark is a clear infringement of respondent’s
“SAN FRANCISCO COFFEE & ROASTERY, INC.” trade name. The descriptive words “SAN FRANCISCO
COFFEE” are precisely the dominant features of respondent’s trade name. Petitioner and respondent
are engaged in the same business of selling coffee, whether wholesale or retail. The likelihood of
confusion is higher in cases where the business of one corporation is the same or substantially the same
as that of another corporation. In this case, the consuming public will likely be confused as to the source
of the coffee being sold at petitioner’s coffee shops.

G.R. No. 169440 November 23, 2011

GEMMA ONG A.K.A. Maria Teresa Gemma Catacutan, Petitioner,
vs.
PEOPLE OF THE PHILIPPINES, Respondent.
FACTS:

On September 2003, the Regional Trial Court of Manila convicted Gemma Ong for Infringement under
Sec. 155 in relation to Sec. 170 of Republic Act. No. 8293 or the Intellectual Property Code. This decision
was assailed based on facts established that Gemma Ong was engaged in the distribution, sale and
offering for sale of counterfeit Marlboro cigarettes which caused confusion and deception to public and
without permit or authority from the Telengtan Brothers and Sons Inc., the exclusive manufacturer of
Malboro cigarette in the Philippines and from the Philip Morris Products, Inc. (PMPI) which is the
registered owner and proprietor of the MARLBORO trademark.

The decision of the RTC Manila was affirmed by the Court of Appeals and hence this appeal by certiorari
by Gemma Ong praying that the decision of RTC and CA to be set aside and reverse.

ISSUE:

Whether or not Gemma Ong, setting aside the issue of alleged mistaken identity, is guilty beyond
reasonable doubt of Infringement under the Intellectual Property Code.

RULING:

The Supreme Court AFFIRMED the decision of Court of Appeals.

In McDonald’s Corporation and McGeorge Food Industries, Inc. v. L.C. Big Mak Burger, Inc., Supreme
Court held:
To establish trademark infringement, the following elements must be shown:
(1) the validity of plaintiff’s mark;
(2) the plaintiff’s ownership of the mark; and
(3) the use of the mark or its colorable imitation by the alleged infringer results in "likelihood of
confusion." Of these, it is the element of likelihood of confusion that is the gravamen of trademark
infringement.
A mark is valid if it is distinctive and not barred from registration. Once registered, not only the mark’s
validity, but also the registrant’s ownership of the mark is prima facie presumed.
Anent the element of confusion, both the RTC and the Court of Appeals have correctly held that the
counterfeit cigarettes seized from Gemma’s possession were intended to confuse and deceive the public
as to the origin of the cigarettes intended to be sold, as they not only bore PMPI’s mark, but they were
also packaged almost exactly as PMPI’s products.
The prosecution was able to establish that the trademark "Marlboro" was not only valid for being
neither generic nor descriptive, it was also exclusively owned by PMPI, as evidenced by the certificates
of registration issued by the Intellectual Property Office of the Department of Trade and Industry.