The Supreme Court allows the registration of identical trademarks for use

on electronic products in the same Class.

July 15th, 2015

In Taiwan Kolin Corporation, Ltd. vs. Kolin Electronics Co., Inc. (G.R. No.
209843, 25 March 2015), the Supreme Court explained that mere uniformity in
Classification alone does not ipso facto equate to relatedness of the goods
and/or services. According to the High Court, the following factors must be
considered in determining whether the goods and/or services of the competing
marks are related:

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

The class of product to which the goods 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 channels of trade through which the goods flow, how they are distributed,
marketed, displayed and sold.

As will be seen above, identity in classification is only one of many factors in

addressing the issue on relatedness.

In Kolin, Taiwan Kolin Corporation, Ltd. (“Taiwan Kolin”) sought to register the
trademark “KOLIN” in Class 9 for the following goods: 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. Kolin Electronics Co., Inc. (“Kolin Electronics”) opposed Taiwan
Kolin’s application for registration on the ground that it is identical/confusingly
similar with its registered trademark “KOLIN” which was likewise categorized in
Class 9 for automatic voltage regulator, converter, recharger, stereo booster,
AC-DC regulated power supply, step-down transformer, and PA amplified AC-
DC.

According to Kolin Electronics, the goods associated with Taiwan Kolin’s

trademark application are closely-related and inherently similar with the goods
covered by Kolin Electronics’ registered trademark since they are all plugged
into electric sockets and perform a useful function, and thus, will create
confusion.

On the other hand, Taiwan Kolin asserts that the goods of the competing
marks are not related because (a) its goods pertain to home appliances while
Kolin Electronics’ goods involves power supply and audio equipment
accessories; (b) said goods perform distinct functions and purposes; and (c)
Taiwan Kolin sells and distributes its various home appliance products on
wholesale and to accredited dealers as opposed to Kolin Electronics’ goods
which are sold in electrical and hardware stores.

In ruling in favor of Taiwan Kolin, the Supreme Court ruled that : “Emphasis
should be on the similarity or relatedness of the goods and/or services involved
and not on the arbitrary classification or general description of their properties
or characteristics”.

The Supreme Court found that Class 9 goods can be sub-categorized into five
classifications and the goods of the competing marks belong in different
categories. Taiwan Kolin’s goods are categorized as power supply audio
equipment accessories. On the other hand, Kolin Electronics’ goods fall under
devices for controlling the distribution and use of electricity. Thus, although
the goods of the competing marks belong in the same class (Class 9), they are
not related since their purpose, channels of trade and nature are different.

In determining that there is NO likelihood of confusion between the competing

marks, the Supreme Court likewise noted that said marks have distinct visual
and aural differences and, given that their goods are deemed as relatively
luxury items, the consumers of said goods are predisposed to be more
discerning, cautious and discriminating.

Taiwan Kolin vs Kolin Electronics

Case Digest GR 209843 March 25 2015
→ Full Text ←

Facts:

Taiwan Kolin Corp sought to register the trademark “KOLIN” in Class 9 on the
following combination of goods: 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.

Kolin Electronics opposed the application on the ground that the trademark
“KOLIN” is identical, if not confusingly similar, with its registered trademark
“KOLIN” which covers the following products under Class 9 of the Nice
Classification (NCL): automatic voltage regulator, converter, recharger, stereo
booster, AC-DC regulated power supply, step-down transformer, and PA
amplified AC-DC. Kolin Electronics argued that the products are not only
closely-related because they fall under the same classification, but also
because they are inherently similar for being electronic products and are
plugged into electric sockets and perform a useful function.

Issue: W/N the products are closely-related

Held:

No, the products are not related and the use of the trademark KOLIN on them
would not likely cause confusion. To confer exclusive use of a trademark,
emphasis should be on the similarity or relatedness of the goods and/or
services involved and not on the arbitrary classification or general description
of their properties or characteristics.

First, products classified under Class 9 can be further classified into five
categories. Accordingly, the goods covered by the competing marks between
Taiwan Kolin and Kolin Electronics fall under different categories. Taiwan
Kolin’s goods are categorized as audio visual equipments, while Kolin
Electronics’ goods fall under devices for controlling the distribution and use of
electricity. Thus, it is erroneous to assume that all electronic products are
closely related and that the coverage of one electronic product necessarily
precludes the registration of a similar mark over another.

Second, the ordinarily intelligent buyer is not likely to be confused. The distinct
visual and aural differences between the two trademarks “KOLIN”, although
appear to be minimal, are sufficient to distinguish between one brand or
another. The casual buyer is predisposed to be more cautious, discriminating,
and would prefer to mull over his purchase because the products involved are
various kind of electronic products which are relatively luxury items and not
considered affordable. They are not ordinarily consumable items such as soy
sauce, ketsup or soap which are of minimal cost. Hence, confusion is less
likely.