Kolin Electronics Co v. Kolin Philippines International

DECISION CAGUIOA, J.:

This is a Petition for Review on Certiorari1 (Petition) under Rule 45 of the Rules of Court assailing the Decision2 dated February 16, 2016 and Resolution3 dated August 11, 2016 of the Court of Appeals (CA) in CA-G.R. SP No. 131918. The Facts To contextualize the legal landscape in which this controversy is to be decided, it is important to note that the parties and/or their affiliates here already had previous disputes relating to other marks. In G.R. No. 228165, entitled Kolin Electronics Co., Inc. v. Kolin Philippines International, Inc.4 (en banc Kolin case), the Court summarized the resolved disputes as follows: 1.

The KECI Ownership Case [Taiwan Kolin Co., Ltd. v. Kolin Electronics Co., Inc., CA-G.R. SP No. 80641, July 31, 2006] On August 17, 1993, [the predecessor of petitioner Kolin Electronics Co., Inc. (KECI)] filed with the Bureau of Patents, Trademarks and Technology Transfer (BPTTT; now known as the Intellectual Property Office or IPO) an application for registration of Trademark Application No. 87497 for KOLIN covering the following products under Class 9: automatic voltage regulator, converter, recharger, stereo booster, AC-DC regulated power supply, step-down transformer, and PA amplifier AC-DC [(KOLIN (Class 9)5]. x x x [KECI's predecessor] assigned in favor of KECI all the assets x x including its pending application for registration of the [KOLIN (Class 9)] mark. x x x On February 29, 1996, Taiwan Kolin Co., Ltd. (TKC)[, an affiliate of respondent Kolin Philippines International, Inc. (KPII),] filed with the BPTTT Trademark Application No. 4-1996-106310 for KOLIN initially covering the following goods: "color television, refrigerator, window-type air conditioner, split-type air conditioner, electric fan, and water dispenser".

x x x TKC filed a verified Notice of Opposition on July 22, 1998 against KECI's trademark application for [KOLIN (Class 9)]. x x x x x x x On July 31, 2006, the CA issued a Decision against TKC and in favor of KECI. The CA clarified that the Trademark Law was applicable since it was still in effect at the time of the filing and during the pendency of the trademark applications of both parties.

Accordingly, the CA held that there must be actual use thereof in commerce to acquire ownership of a mark. The CA found as undisputed that x x x the predecessor-in-interest of KECI, had been using the [KOLIN (Class 9)] mark in the Philippines since February 17, 1989, prior to the filing of the trademark application for [KOLIN (Class 9)] in 1993. x x x On the issue of priority being claimed by TKC, the CA agreed with fee decision of [the Office of the Director General of the IPO (ODG)] that, whether under the Trademark Law or the Intellectual Property Code (IP Code), TKC's "claim of x x x priority right is unavailing."

Accordingly, the CA dismissed TKC's petition for lack of merit. x x x x x x [O]n September 26, 2007, a Resolution was issued by the Court considering the case "CLOSED and TERMINATED." In an Entry of Judgment, the Resolution was considered final and executory on November 16, 2007 (the KECI ownership case).

Thus, by virtue of the KECI ownership case , KECI is the adjudicated owner of the [ KOLIN Class 9)] mark under the Trademark Law as against TKC. 2.The Taiwan Kolin case [(Taiwan Kolin Corp., Ltd. v. Kolin Electronics Co., Inc. G.R. No. 209843, March 25, 2015)6] However, in another case that went up to the Court, the registration of another KOLIN mark not owned by KECI was allowed. In G.R. No. 209843 x x x the Court gave due course to TKC's Trademark Application for KOLIN.

To recall, before filing an opposition case against KECI's application for [KOLIN (Class 9)], TKC had filed on February 29, 1996 Trademark Application No. 4-1996-106310 for KOLIN initially covering the following goods: "color television, refrigerator, window-type air conditioner, split-type air conditioner, electric fan, and water dispenser." x x x x KECI filed an opposition against TKC's application with the [IPO-Bureau of Legal Affairs (BLA)] on July 13, 2006 based on the fact that it is the registered owner of the [KOLIN (Class 9)] mark, which it claimed was confusingly similar to TKC's application for KOLIN. x x x x x x TKC filed an Answer to the Opposition, claiming, among others, that its Trademark Application x x x "later became Trademark Application No. 4-2002-011002 filed on [December 27, 2002 when it was re-filed/revived after the handling lawyer delayed the submission of requirements for the first application."

x x x x It is important to highlight that there were three (3) marks involved in the Taiwan Kolin case (1) KECI's [KOLIN (Class 9)] trademark registration No. 4-1993-087497; (2) TKC's trademark application No. 4-1996-106310, which was opposed by KECI; and (3) TKC's trademark application No. 4-2002-011002, which was allegedly the "revived" version of TKC's application. For ease of reference, the subject marks are included in the following table: KECI's mark TKC's opposed trademark application TKC's "revived"

application Marks [(Class 9)] Application No. 4-1993-087497 4-1996-106310 4-2002-011002 Filing Date August 17, 1993 February 29, 1996 December 27, 2002 Current Status Registered Registered Refused for non-filing of DAU/DNU Class Covered 9 9 9 Goods Covered Automatic Voltage Regulator, Converter, Recharger, Stereo Booster, AC-DC Regulated Power Supply, Step-Down Transformer, PA Amplified AC-DC Television and DVD player Television Sets, Audio/Video Electronic Equipment and Similar Appliances x x x x Keeping this in mind, the Taiwan Kolin case ruled in favor of TKC. x x x x x x x [The Court] then made a side-by-side comparison of the marks to state that the ordinary intelligent buyer is not likely to be contused. For reference, the side-by-side comparison used in the case is shown below: x x x x x x x [T]he Court's Third Division concluded that KECI's trademark registration not only covers unrelated goods but is also incapable of deceiving the ordinary buyer in relation to TKC's application.

Accordingly, TKC's petition was granted, the CA decision was reversed and set aside, and the [ODG] Decision, which gave due course to TKC's Trademark Application No. 4-1996-106310 for KOLIN, was reinstated.7 (Additional emphasis supplied; italics and underscoring in the original) In the recently decided en banc Kolin case, the Court also resolved another controversy between Kolin Electronics Co., Inc. (KECI) and Kolin Philippines International, Inc. (KPII) - the same parties in this case - involving the following marks: KECI's mark (Class 9) Automatic Voltage Regulator, Converter,Recharger, Stereo Booster, AC-DC Regulated Power Supply, Step-Down Transformer, PA Amplified AC-DC vs. KPII's application Television and DVD player 8 The Bureau of Legal Affairs (BLA) and the Office of the Director General (ODG) ruled in favor of KECI and rejected KPII's application for koli n. However, the CA reversed the decision in line with the Taiwan Kolin case.

Eventually, the Court reversed and set aside the CA Decision and rejected the registration of KPII's koli n mark because it causes damage to KECI. As will be explained below, the Court's pronouncements in the en banc Kolin case heavily impact how the Court resolves the instant dispute.