TAIWAN KOLIN

CORPORATION, LTD. vs. KOLIN

ELECTRONICS CO., INC.
G.R. No. 209843, March 25, 2015
J. Velasco, Jr.
 FACTS
 Taiwan Kolin filed with the IPO, then BPTTT, a trademark
application, for the use of “KOLIN” on a combination of goods,
including colored televisions, refrigerators, window-type and split-
type air conditioners, electric fans and water dispensers with
Taiwan Kolin electing Class 9 as the subject of its application.
 Kolin Electronics opposed Taiwan Kolin’s application arguing that
the mark Taiwan Kolin seeks to register is identical, if not
confusingly similar, with its registered “KOLIN” mark covering
products under Class 9 of the NCL.
 BLA-IPO denied Taiwan Kolin’s application, citing Sec. 123(d) of the IP Code
that a mark cannot be registered if it is identical with a registered mark
belonging to a different proprietor in respect of the same or closely-related
goods.
 Accordingly, Kolin Electronics, as the registered owner of the mark “KOLIN”
for goods falling under Class 9 of the NCL, should then be protected against
anyone who impinges on its right, including Taiwan Kolin who seeks to
register an identical mark to be used on goods also belonging to Class 9 of
the NCL.
 Taiwan Kolin appealed the above Decision to the Office of the Director
General of the IPO which gave due course to the appeal ratiocinating that
product classification alone cannot serve as the decisive factor in the
resolution of whether or not the goods are related and that emphasis should
be on the similarity of the products involved and not on the arbitrary
classification or general description of their properties or characteristics.
 Kolin Electronics elevated the case to the CA which found for Kolin
Electronics on the strength of the following premises:

 (a) the mark sought to be registered by Taiwan Kolin is

confusingly similar to the one already registered in favor of
Kolin Electronics
 (b) there are no other designs, special shape or easily
identifiable earmarks that would differentiate the products of
both competing companies
 (c) the intertwined use of television sets with amplifier, booster
and voltage regulator bolstered the fact that televisions can be
considered as within the normal expansion of Kolin
Electronics, and is thereby deemed covered by its trademark
as explicitly protected under Sec. 138 of the IP Code.
ISSUE
Whether or not Taiwan Kolin is entitled to its
trademark registration of “KOLIN” over its
specific goods of television sets and DVD
players.
 RULING
 Yes, Taiwan Kolin is entitled.
 Whether or not the products covered by the trademark sought to be
registered by Taiwan Kolin, on the one hand, and those covered by the
prior issued certificate of registration in favor of Kolin Electronics, on the
other, fall under the same categories in the NCL is not the sole and
decisive factor in determining a possible violation of Kolin Electronics’
intellectual property right should Taiwan Kolin’s application be granted.
 It is hornbook doctrine that emphasis should be on the similarity of the
products involved and not on the arbitrary classification or general
description of their properties or characteristics. The mere fact that one
person has adopted and used a trademark on his goods would not,
without more, prevent the adoption and use of the same trademark by
others on unrelated articles of a different kind.
 It must be noted that the products covered by Taiwan
Kolin’s application and Kolin Electronics’ registration are
unrelated.
 A certificate of trademark registration confers upon the
trademark owner the exclusive right to sue those who have
adopted a similar mark not only in connection with the
goods or services specified in the certificate, but also with
those that are related thereto.
 In resolving one of the pivotal issues in this case––
whether or not the products of the parties involved are
related––the doctrine in Mighty Corporation is authoritative.
There, the Court held that the goods should be tested against several
factors before arriving at a sound conclusion on the question of
relatedness. Among these are:
 (a) the business (and its location) to which the goods belong
 (b) the class of product to which the goods belong;
 (c) the product’s quality, quantity, or size, including the nature of
the package, wrapper or container;
 (d) the nature and cost of the articles;
 (e) the descriptive properties, physical attributes or essential
characteristics with reference to their form, composition, texture
or quality;
 (f) the purpose of the goods;
 (g) whether the article is bought for immediate
consumption, that is, day-today household items;
 (h) the fields of manufacture;
 (i) the conditions under which the article is usually
purchased; and (j) the channels of trade through which
the goods flow, how they are distributed, marketed,
displayed and sold.
 As mentioned, the classification of the products
under the NCL is merely part and parcel of the
factors to be considered in ascertaining whether
the goods are related
 It is not sufficient to state that the goods
involved herein are electronic products under
Class 9 in order to establish relatedness
between the goods, for this only accounts for
one of many considerations enumerated in
Mighty Corporation.
 Clearly then, it was erroneous for Kolin Electronics to
assume over the CA to conclude that all electronic
products are related and that the coverage of one
electronic product necessarily precludes the
registration of a similar mark over another.
 In this digital age wherein electronic products have
not only diversified by leaps and bounds, and are
geared towards interoperability, it is difficult to assert
readily, as Kolin Electronics simplistically did, that all
devices that require plugging into sockets are
necessarily related goods.
 Cast in this particular controversy, the ordinary
purchaser is not the “completely unwary consumer” but
is the “ordinarily intelligent buyer” considering the type
of product involved .
 All told, We are convinced that Taiwan Kolin’s trademark
registration not only covers unrelated good, but is also
incapable of deceiving the ordinary intelligent buyer.
 The ordinary purchaser must be thought of as having,
and credited with, at least a modicum of intelligence to
be able to see the differences between the two
trademarks in question.
As a matter of fact, while both competing marks refer to the word “KOLIN”
written in upper case letters and in bold font, the Court at once notes the distinct
visual and aural differences between them:

 Kolin Electronics’ mark is italicized and colored black

while that of Taiwan Kolin is white in pantone red color
background.
 The differing features between the two, though they
may appear minimal, are sufficient to distinguish one
brand from the other
 Finally, in line with the foregoing discussions, more
credit should be given to the “ordinary purchaser.”
THANK YOU FOR LISTENING!

Loreto A Iguiron Jr.