INTELLECTUAL PROPERTY

IDENTICAL MARKS MAY BE REGISTERED FOR PRODUCTS FROM THE SAME CLASSIFICATION

 

May an application for registration of the mark “KOLIN” over the following specific goods under Class 9 of the Nice Classification (NCL): television sets and DVD players, be allowed despite the existence of a trademark registration for “KOLIN”, by another entity, covering the following products under Class 9 of the NCL:  automatic voltage regulator, converter, stereo booster, AC-DC regulated power supply?

 

In allowing the registration, the Philippine Supreme Court held that “mere uniformity in categorization, by itself, does not automatically preclude the registration of what appears to be an identical mark.” “(E)mphasis 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.”

 

The High Court ruled that it is erroneous to conclude that all electronic products are related simply because such devices require plugging into sockets.   In differentiating “television sets and DVD players” from “automatic voltage regulator, converter, stereo booster, AC-DC regulated power supply”, the collegiate body noted that the products belong to different sub-categories of goods found in Class 9 of the Nice Classification.  The first falls under sub-classification “audio visual equipment”, whereas the second generally belongs to sub-classification “apparatus and devices for controlling the distribution and use of electricity”.

 

It was also emphasized that the products involved in the case are not “ordinary consumable household items” which are of minimal costs.  The subject goods are “relatively luxury items not easily considered affordable”, thus the casual buyer “is predisposed to be more cautious and discriminating” before purchasing.  Confusion and deception, therefore, are less likely.

 

(Taiwan Kolin Corporation, Ltd. vs. Kolin Electronics Co., Inc., G.R. No. 209843, 25 March 2015)

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