Case Digest (G.R. No. 218652)
Facts:
Kolin Electronics Co., Inc. (KECI) filed a Petition for Review on Certiorari under Rule 45 of the Rules of Court to challenge the Court of Appeals’ Decision of February 16, 2016 and Resolution of August 11, 2016 in CA-G.R. SP No. 131918. KECI, through its predecessor, began using the KOLIN trademark for Class 9 electronic goods on February 17, 1989 and secured registration of KOLIN (Class 9) on August 17, 1993. Thereafter, Taiwan Kolin Co., Ltd. (TKC), an affiliate of respondent Kolin Philippines International, Inc. (KPII), unsuccessfully opposed KECI’s Class 9 mark and then obtained registration of KOLIN (Class 9) for televisions and DVD players. KECI eventually registered KOLIN for Class 35 services on December 22, 2008. Meanwhile, KPII filed Trademark Application No. 4-2002-011003 on December 27, 2002 for the mark KOLIN under Class 35 covering the business of manufacturing, importing, assembling, and selling air-conditioning units, television sets, audio/video electronic equiCase Digest (G.R. No. 218652)
Facts:
- Prior Trademark Disputes
- KECI Ownership Case (CA-G.R. SP No. 80641, July 31, 2006)
- KECI’s predecessor filed Trademark Application No. 4-1993-087497 for “KOLIN” covering Class 9 goods on August 17, 1993.
- Taiwan Kolin Co., Ltd. (TKC) filed Application No. 4-1996-106310 for “KOL I N” (Class 9 goods) on February 29, 1996, and opposed KECI’s mark.
- Court of Appeals held KECI’s predecessor had used “KOLIN” since February 17, 1989; dismissed TKC’s opposition and confirmed KECI as owner of KOLIN (Class 9).
- Taiwan Kolin Case (G.R. No. 209843, March 25, 2015)
- TKC’s “KOL I N” (Application No. 4-1996-106310) covering color televisions, refrigerators, air conditioners, fans, water dispensers was allowed registration.
- KECI opposed before IPO; Court of Appeals reversed IPO, but Supreme Court reinstated IPO, finding no confusion with KECI’s Class 9 registration.
- En Banc Kolin Case (G.R. No. 228165, February 9, 2021)
- KPII applied for stylized “k ol i n” (Class 9); IPO agencies favored KECI, CA allowed KPII.
- Supreme Court en banc reversed CA, rejected KPII’s application for causing damage to KECI.
- Present Controversy
- KPII’s Application (Serial No. 4-2002-011003, December 27, 2002)
- Mark: “KOL I N” for Class 35 services—manufacturing, importing, assembling, selling air-conditioning units, TVs, audio/video equipment, refrigerators, fans, other electronic equipment.
- Opposition and Proceedings
- KECI opposed on April 20, 2006, alleging damage from confusion with its KOLIN (Class 9), KOLIN (Class 35) registrations, identity with its trade name, bad faith, and curtailment of business expansion.
- KPII answered, claiming trade-name use authorized by TKC, no bad faith, no confusion, different classification.
- IPO-BLA (June 29, 2007) rejected KPII’s application; ODG (September 12, 2013) affirmed; CA (February 16, 2016) reversed citing Taiwan Kolin; CA Resolution (August 11, 2016) denied reconsideration.
- Rule 45 Petition
- KECI sought review, arguing inapplicability of Taiwan Kolin, identity with trade name, relatedness of services to its goods, and damage under IP Code.
Issues:
- Whether the doctrine of stare decisis applies, binding this case to the Taiwan Kolin decision.
- If stare decisis is inapplicable, whether KECI will be damaged by registration of KPII’s “KOL I N” in Class 35.
Ruling:
- (Subscriber-Only)
Ratio:
- (Subscriber-Only)
Doctrine:
- (Subscriber-Only)