Case Summary (G.R. No. 226444)
Prior Trademark Disputes
KECI and TKC previously litigated three applications involving KOLIN and KOLIN variants, resulting in:
• Final determination of KECI’s ownership of KOLIN (Class 9) under the old Trademark Law (2006)
• Registration of TKC’s KOLIN mark for televisions and DVD players (2015) after reversal of CA decision
• En banc SC decision reaffirming KECI’s exclusive rights against KPII’s similar Class 9 application
Present Opposition
KECI opposed KPII’s Class 35 application on grounds that registration would damage KECI by:
• Causing likelihood of confusion with KOLIN (Class 9) and KOLIN (Class 35)
• Being identical to KECI’s trade name (“KOLIN ELECTRONICS CO., INC.”)
• Curtailing KECI’s prior ownership of KOLIN (Class 9)
Procedural History
• BLA (2007): Rejected KPII’s application, finding confusion likely under Class 9 comparison
• ODG (2013): Dismissed KPII’s appeal citing CA’s ruling in related TKC case
• CA Thirteenth Division (2016): Granted KPII’s Rule 43 petition, applying the Taiwan Kolin case to allow KOLIN (Class 35) registration
• SC Rule 45 Petition (2021): KECI challenged CA’s reliance on a non-identical precedent and failure to consider damage aspects
Issues
- Whether stare decisis compels application of the Taiwan Kolin case
- Whether KPII’s registration would damage KECI
Applicability of Stare Decisis
The Court held that stare decisis applies only to identical legal issues and highly similar facts. The Taiwan Kolin case (Class 9 vs. DVD players) involved different mark coverage, employed the disfavored holistic test, and predated KECI’s Class 35 registration. Thus, CA’s wholesale adoption of that precedent was erroneous.
Likelihood of Confusion with KOLIN (Class 9)
Applying the multifactor test (1987 Constitution; IP Code; IPR Rules):
• Resemblance: Under the dominancy test, KOLIN and KOLIN (stylized) are visually, phonetically, and conceptually identical as word marks
• Relatedness: KECI’s electronic accessories and KPII’s services involving sales of televisions and other appliances are legally related and complementary, creating confusion of business
• Sophistication: Even discriminating buyers may mistake the common “KOLIN” brand across related goods and services
• Strength: KOLIN is a fanciful mark; high distinctiveness means appropriation by another triggers confusion
• Bad Faith: KPII, managed by TKC, filed immediately after KECI’s prior decisions and knew of KECI’s rights; authorization from TKC did not authorize KPII to preempt KECI’s mark
Likelihood of Confusion with KOLIN (Class 35)
A presumption of confusion arises when identical marks cover identical services. Both registrations use “KOLIN” for “manufacturing, importing, assembling, or selling electronic equipment,” mandating rejection.
Identity with Trade Name
Trade names require no registration for protection under S
...continue readingCase Syllabus (G.R. No. 226444)
Facts of the Case
- Petitioner Kolin Electronics Co., Inc. (KECI) and respondent Kolin Philippines International, Inc. (KPII) are affiliates with prior trademark disputes over the mark “KOLIN.”
- KECI’s predecessor filed TM Application No. 4-1993-087497 for KOLIN (Class 9) on August 17, 1993, covering regulators, converters, power supplies, amplifiers, etc., based on use since February 17, 1989.
- Taiwan Kolin Co., Ltd. (TKC) opposed KECI’s Class 9 application in 1998; the Court of Appeals (CA) and Supreme Court (2006) held KECI’s predecessor the owner of KOLIN (Class 9).
- TKC’s own TM Application No. 4-1996-106310 for KOLIN on TVs, refrigerators, air-conditioners, etc., was later allowed by the Supreme Court (2015, G.R. No. 209843) after the CA found no confusion with KOLIN (Class 9).
- In the en banc Kolin case (G.R. No. 228165, 2021), the Supreme Court rejected KPII’s application for “kolin” on TVs/DVD players, reaffirming KECI’s rights and finding confusion.
Present Controversy
- On December 27, 2002, KPII filed TM Application No. 4-2002-011003 for “KOLIN” under Class 35 covering services of manufacturing, importing, assembling, selling air-conditioning units, TVs, audio/video equipment, refrigerators, fans, and similar electronic products.
- KECI opposed (April 20, 2006), alleging damage by:
Likelihood of confusion with its KOLIN (Class 9) registration.Likelihood of confusion with its later-filed KOLIN (Class 35) registration (filed May 29, 2007).Confusion with its trade name “KOLIN ELECTRONICS CO., INC.”Impairment of its existing rights under the Trademark Law and IP Code.
- KPII answered (August 20, 2006), contending:
It sought trade-name registration (authorized by TKC), not a trademark.No likelihood of confusion; goods/services are unrelated and consumers ar