A.M. No. RTJ-20-2584 - Cayabyab vs. Pangili, Jr.

Kolin Electronics Co., Inc. (KECI) is a Philippine corporation engaged in manufacturing, assembling, and marketing various electronic products since 1989. It is the registered owner of the trademark "KOLIN" under Classes 9 and 35 of the Nice Classification. Certificates of Registration Nos. 4-1993-087497 and 4-2007-005421 cover these registrations.
Taiwan Kolin Corporation Ltd. (Taiwan Kolin), represented by Kolin Philippines International, Inc. (KPII), is a Taiwan-based company manufacturing and distributing home appliances such as television sets, air conditioners, washing machines, refrigerators, rice cookers, etc. Taiwan Kolin has used the "KOLIN" trademark for its products since 1976 and has been selling products under this brand in the Philippines since 1996. It owns registrations for "KOLIN" under Classes 11 and 21 of the Nice Classification.

In 1993, KECI filed an application to register the "KOLIN" mark for electronic products under Class 9, which Taiwan Kolin opposed. The Bureau of Legal Affairs (BLA) denied the opposition, and the Court of Appeals (CA) upheld the denial, recognizing KECI's prior use since 1989. The CA decision became final in 2007, affirming KECI’s exclusive right to use "KOLIN" on certain electronic goods.
In 2015, the Supreme Court allowed Taiwan Kolin to register the "KOLIN" mark for television sets and DVD players (Class 9), finding no likelihood of confusion with KECI’s mark for other electronic goods.
In 2021, the Supreme Court en banc denied registration of KPII for certain goods under Class 9, holding the marks were confusingly similar and that KECI’s rights in Class 9 goods were broader than previously held. It clarified limitations on use and registration of various forms of the "KOLIN" mark.

On May 29, 2007, KECI filed a trademark application for "KOLIN" under Class 35 for the business of manufacturing, assembling, importing, and selling electronic equipment or apparatus; this registration was unopposed and granted on December 22, 2008.
On August 16, 2007, KECI filed Trademark Application No. 20-2007-000009 for the domain name mark "kolin.ph" under Class 35. Taiwan Kolin filed an Opposition on May 12, 2008, alleging:

Violation of Section 123.1(d) of the Intellectual Property Code (IP Code) by registering a mark identical to a registered mark owned by a different proprietor with prior rights;
Injury to Taiwan Kolin's goodwill and business due to registration of the domain name mark;
The trademark application violated the Implementing Rules and Regulations (IRR) requiring specific description of goods and services;
The domain name "kolin.ph" does not function as a trademark.

Taiwan Kolin’s Opposition was dismissed by the BLA due to failure to attach original or certified true copies of documentary exhibits as required. Taiwan Kolin’s motion for reconsideration was denied.
Taiwan Kolin’s appeal to the IPO Director General was also denied, upholding dismissal based on non-compliance with procedural rules.
The Court of Appeals affirmed the IPO Director General’s ruling and dismissal of Taiwan Kolin’s Opposition in its January 27, 2015 Decision and denied motions for reconsideration on November 4, 2015.

KECI filed a Petition for Review on Certiorari to challenge the limitation of its mark registration to certain goods/services.
Taiwan Kolin also filed a Petition for Review on Certiorari alleging improper dismissal of Opposition and improper grant of domain name registration to KECI.

Whether Taiwan Kolin’s failure to submit original or certified true copies of documentary exhibits with its Opposition justified outright dismissal.
Whether KECI has the right to register and use the mark "kolin.ph" consistent with its exclusive right to use the "KOLIN" mark under Class 35.
Whether the IPO Director General erred in ruling that Taiwan Kolin’s trademark applications and registrations for the "KOLIN" mark refer to goods and services unrelated to those covered by KECI's "kolin.ph" Class 35 trademark application, and that KECI’s registration is limited to services covered by its Class 35 application.