•INTELLECTUAL PROPERTYP H I L I P P I N E S

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KOLIN ELECTRONICS CO., INC., }Opposer, }

}- versus - }

}KOLIN PHILIPPINES }INTERNATIONAL, INC. }

Respondent-Applicant . }x------------------------------------------------x

IPC No. 14-2006-00064Opposition to :Serial No. 4-2002-011003Date Filed: 27 December 2002

Trademark : " KOLIN"Class : 35

Decision No. 2007 - _Z?

DECISIO N

This pertains to an Opposition Case filed on 20 April 2006 by hereinOpposer, KOLIN ELECTRONICS CO . INC., a domestic corporation duly organizedand existing under the laws of the Republic of the Philippines, with businessaddress at 2788 Anacleto Extension, Tondo, Metro-Manila, as against theapplication for registration of the trademark "KOLIN" bearing Application SerialNo . 4-2002-011003 filed on 27 December 2002 for goods falling under Class 35 ofthe Nice Classification of Goods, for the business of manufacturing, importing,assembling, selling products as air conditioning units, television sets, audio/videoelectronic equipment, refrigerators, electric fans and other electronic equipmentor product of similar nature, by KOLIN PHILIPPINES INTERNATIONAL, INC .,herein Respondent-Applicant, likewise a domestic corporation duly organized andexisting under the laws of the Republic of the Philippines, with registered addressat Kolin Building, EDSA corner Magallanes Avenue, Magallanes Village, Makati City .

The subject trademark application was published for opposition in theIntellectual Property Office Official Gazette which was officially released forcirculation on 21 December 2005 .

The antecedent facts and the grounds of the instant Opposition are asfollows, to wit :

1 . Opposer will be damaged by the registration of the subjectmark "KOLIN" in the name of Kolin Philippines International Inc .,herein Respondent-Applicant, considering that it is similar to themark "KOLIN" owned by Opposer .

2. Opposer's ownership over the mark "KOLIN" has been settledby the Intellectual Property Office (IPO) in Inter Partes Case (IPC)No. 14-1998-00050, whereby Taiwan Kolin Co ., Ltd. (Taiwan Kolin ,for brevity) opposed herein Opposer's Trademark Application IJo .

Republic of the PhilippinesINTELLECTUAL PROPERTY OFFIC E

351 Sen . Gil Puyat Ave., Makati City 1200 Philippines • www.ipophil .gov.phTelephone: +632-7525450 to 65 • Facsimile: +632-8904862 • email: mail@ipophil .gov.ph

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84797 for the mark "KOLIN", adjudging herein Opposer as the prioruser and adopter of the mark "KOLIN" in the Philippines andgranting a Certificate of Registration No . 4-1993-087497 for themark "KOLIN" dated 23 November 2003 . A certified copy of whichis attached to the Opposition as Exhibit "C" . Thus, Respondent-Applicant cannot appropriate said mark as its own .

3. Taiwan Kolin is the majority stockholder of Respondent-Applicant, evidenced by the certified true copies of the latter'sArticles of Incorporation and General information Sheet for 2005,and attached to the Opposition as Exhibits "D" and "E", respectively .Thus, the commercial interest of Respondent-Applicant in the instantcase is likewise the interest of Taiwan Kolin .

4. Taiwan Kolin participates in the management, supervision orcontrol of Respondent-Applicant, as admitted by Taiwan Kolin inparagraph 3 of its Reply dated 22 December 2003, as attached tothe Opposition as Exhibit "F" and filed before the Court of Appeals in"Taiwan Kolin Co . Ltd. vs Kolin Electronics Co., Ltd ." docketed asCA-GR S.P. No. 80641 .

5 . Moreover, Taiwan Kolin has performed acts of managementand control tantamount to doing business without license in thePhilippines, evidenced by the transcript of stenographic notes on 07July 1999 in IPC No. 14-1998-00050; cf. pages 32-33, 52-70 andattached to the Opposition as Exhibit "G" .

6. The Decision of the Bureau of Legal Affairs (BLA), Exhibit "H"of the Opposition, denied Taiwan Kolin's Opposition and gave duecourse to herein Opposer's Trademark Application No . 87497 basedon evidence proving the date of first use of the same mark in 1989,which is ahead of Taiwan Kolin's use in the Philippines in 1996 .Thereafter, in an appeal to the IPO Director General, BLA's rulingwas affirmed in a Decision dated 06 November 2003, attached tothe Opposition as Exhibit "I" .

7. Taiwan Kolin filed a Petition for Review with Application forPreliminary Injunction and/or Temporary Restraining Order dated 20November 2003 with the Court of Appeals, docketed as CA-GR S .P .No. 80641, which, to date, is still pending with the Court of Appeals .

8. The IPO in its Resolution dated 01 July 2004, attached to theOppostion as Exhibit "J", issued a Writ of Execution to enforce thesaid Decision . It was implemented in Order No . 2004-397 dated 21

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July 2004, attached as Exhibit "K" of the Opposition, issuingCertificate of Registration No. 4-1993-087497 for the mark "KOLIN"for Opposer under Class 9 .

9 . Opposer's Philippine use of the mark "KOLIN" dates back asearly as 17 February 1989, during the effectivity of Republic Act No .166, where use was the basis of ownership of trademarks . [cf. PhilipMorris, Inc . vs Court of Appeals, 224 SCRA 576 (1993)], as providedin Section 2-A of RA 166. In the case of Unno CommercialEnterprises, Incorporated, vs General Milling Corporation, et al ., 120SCRA 804 (1983), the Supreme Court held that it is the prior userwho is entitled to registration .

10 . Thus, the subject application was filed in utter bad faithconsidering that Respondent-Applicant was fully aware of Opposer'sprior use of the same mark in Philippine commerce since 1989 .Opposer's Trademark Application No . 87497 was filed on 17 August1993 and published on 23 June 1998, which earlier dates than the27 December 2002 filing date of the subject mark .

11 . It must be pointed out that Opposer has also filed anOpposition to Respondent-Applicant's Trademark Application No . 4-2002-011001 for the mark "KOLIN" under goods in Class 11 . Thiswas filed on 27 December 2002 which was simultaneously filed withthe instant application . The said applications were filed on the sameday the BLA rendered its Decision denying the opposition in IPC No .14-1998-00050 .

12 . The registration of Respondent-Applicant's mark "KOLIN" willresult in an utter violation of the right of Opposer as the registeredowner of the same mark and is violative of the provisions of the IPCode, citing Sections 123 (d) and (g) thereof which proscribes theregistration of a mark if it is identical with a registered markbelonging to a different proprietor in respect of the same goods orservices or closely related goods or services or if it nearly resemblessuch a mark as to be likely to deceive or cause confusion .

13 . It is undeniable that the subject mark is identical with themark "KOLIN" registered in the name of Opposer under Certificateof Registration No . 4-1993-087497. The likelihood of confusion isinevitable considering that the application opposed covers thefollowing services : "manufacturing, importing, assembling andselling products" which, in fact is related to electronic products someof which fall under International Class 9. This causes confusio n

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since Opposer itself manufactures and distributes electronicproducts bearing identical mark in the distribution of Audioequipment such as power amplifiers, public address system, mic-linemixers, programmable sequential & dancing lights controller, stereobooster, loudspeakers, PA speakers, stereo amplifiers, ElectronicEquipment such as automatic voltage regulator, regulated powersupply, AC-DC converters, transformers, DC-AC inverters withcharger. Original product brochures, fliers and posters showcasingOpposer's list of products are attached in the Opposition as Exhibits"L" to "L-2", respectively .

14 . Thus, the filing of the instant application for services underClass 35 was a mere ruse to escape an objection from the IPO onthe ground of confusing similarity with Opposer's registered markfor goods under International Class 9 .

15 . There is confusion because Respondent-Applicant's goods areinevitably introduced to the public as "KOLIN" products, offered forsale in the same channels of trade where Opposer also distributesits products of the same mark . As a result, some of the customersof the former are under the impression that contending parties areone and the same company . Opposer has received inquiries forproducts that are manufactured or distributed by the latter .Opposer even received requests for service or maintenance ofappliances of the former. In an effort to lessen confusion as to thesource of the goods and to protect its reputation, Opposer wasconstrained to issue disclaimers to the public in newspapers ofgeneral circulation such as the 29 November 2004 issue of thePhilippine Daily Inquirer, attached to the Opposition as Exhibit "M" .

16. To this end, Section 147 .1 of the IP Code provides .that theregistered owner of the mark "KOLIN" shall have the exclus;ve rightto prevent all third parties not having the owner's consent fromusing in the course of trade, identical or similar signs of containersfor goods or services which are identical or similar to those inrespect of which the trademark is registered where such use wouldresult in a likelihood or confusion.

17. Assuming arguendo that the subject mark covers servicesthat are not closely related to Opposer's goods under RegistrationNo . 4-1993-087497, the registration of the subject mark is stillproscribed because it will effectively prevent Opposer fromexpanding its business into its natural, potential and logical zone . Infact, Opposer already plans to go into the business of selling and

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distributing more audio and visual equipments and other appliancesas supplement to the existing goods carried by Opposer .

18. Considering that the use of the subject mark has resulted andwill continue to result irreparable damage and injury to the rights ofOpposer as registered owner of the mark "KOLIN", it is thereforeinevitable that the application thereof for services underInternational Class 35 cannot be given due course and mustnecessarily be denied in this Opposition .

In Respondent-Applicant's Answer filed on 20 August 2006, pursuant toSection 8 and Subsection 8 .1 of Office Order No. 79, series of 2005, the followingare stated, in sum, to wit :

1 . Respondent-Applicant's application for the registration of"KOLIN" at the IPO, strictly speaking, is use and adoption of"KOLIN" as a trade name, to identify the business as aptly indicatedin its application, and not as a trademark for goods, as attached inthe Answer and marked as Exhibit "1" .

2 . The fact that the word or symbol, "KOLIN" is used or adoptedby the Opposer on goods falling in International Class "9", does notprevent the use or adoption by another as a trade name forbusiness . A trade name refers to the business and its goodwill ; atrademark refers to the goods . Trade name is not synonymous withtrademark . (Canon Kabushiki Kaisha vs Court of Appeals, 336 SCRA266 [2001] )

3 . The application for the subject mark "KOLIN" is for use toidentify the business as appearing "in letterheads, calling cards,sales documents, envelopes, boxes, etc .", with Respondent-Applicant being primarily engaged in the marketing, selling anddistribution of KOLIN-branded home/household appliances ofTaiwan Kolin of Taiwan, Republic of China, on wholesale basis, inthe Philippines .

4. Taiwan Kolin has given its authorization and/or consent toherein Resondent-Applicant to register "KOLIN" in the Philippines foruse in business in connection with the marketing, selling anddistribution of "all" KOLIN-branded household/home appliances inthe Philippines, specifically : Class "9": television sets, air-conditioners; Class "11": refrigerators, electric fans, desk fans,dehumidifiers, microwave ovens, rice cookers, flat irons ; and Class"21" water dispensers, proof of which is appended mark as Exhibit

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"2-b". Relative to Taiwan Kolin's trademark protection in thePhilippines for the mark "KOLIN" on its goods or products, they aresubject of Taiwan Kolin's trademark applications .

5 . Taiwan Kolin's application for registration of the mark"KOLIN" for Class "9" has Application No . 4-1996-106310 filed onFebruary 29, 1996 before then Bureau of Patents, trademark andTechnology Transfer ("BPTTT" for brevity), now IPO, which after itwas re-filed/revived became Trademark Application No . 4-2002-011002 flied on December 27, 2002 .

6. Taiwan Kolin's application for registration of the mark"KOLIN" for Class "11" is originally Trademark Application No . 4-1996-106310 flied on February 29, 1996 before the BPTTT, whichlater became Trademark Application No . 4-1999-06890 filed onSeptember 14, 1999 relative to BPTTT Order No . 2, after whichTaiwan Kolin elected Class "9" goods for its original application .Trademark Application No . 4-1999-06890 for the mark "KOLIN" forClass "11" goods became Trademark Application 4-2002-011001flied on December 27, 2002 when it was re-filed/revived . Thisapplication is now subject of an opposition by herein Opposer in IPCNo. 14-2004-000105, and submitted for decision by the BLA .

7. Taiwan Kolin's application for registration of the mark"KOLIN" for Class "21" goods is also originally Trademark ApplicationNo. 4-1996-106310 flied on February 29, 1996 before the BPTTT,which later became Trademark Application No . 4-1999-16888 filedon September 14, 1999 relative to BPTTT Order No . 2, after whichTaiwan Kolin elected Class"9" goods for its original application .Trademark Application No. 4-1999-06888 for the mark "KOLIN" forClass "21" goods became Trademark Application 4-2002-011004flied on December 27, 2002 when it was re-filed/revived .

8 . Thus, the above-shown applications for registration of"KOLIN", were not filed in bad faith nor a mere ruse to escapeobjection by the IPO as now being maliciously imputed by theOpposer .

9. Kolin Philippine's application for the registration of "KOLIN"was filed as Trademark Application No . 4-1999-06889 on September14, 1999, as Exhibit 1 of the Answer . It was re-filed/revived underthe instant subject mark application, after the handling lawyerdelayed the submission of requirements . /

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10 . The subject application had been filed and pending beforethe BPTTT, as early as 14 September 1999, prior to the rendition ofDecision No. 2002-46 dated 27 December 2002, the Decision dated06 November 2003, the Resolution No. 2004-07 dated 01 July 2004,and the Order No. 2004-397 dated 22 July 2004, marked asOpposer's Exhibits H, I, J and K ("Decision" for brevity) in IPC No .14-1998-00050 .

11 . Records will show that Respondent-Applicant had beennotified of said Decision only on 21 January 2003 when it received acopy thereof from IPO or after the date of its re-filing/revival ofapplication which was done to pursue its application to avoidabandonment thereof .

12. The Decision in IPC No. 14-1998-00050 is not conclusiveupon this case and herein parties . It concerns herein Opposer's (asRespondent-Applicant therein) application of the mark "KOLIN" foruse and adoption on goods, not as a trade name . Trademark is notsynonymous with tradename . (Canon Kabushiki Kaisha vs Court ofAppeals, 336 SCRA 266 [2002]) It concerns application on specifiedClass "9" goods : automatic voltage regulator, converter, rechargerstereo bolster, ac-dc regulated power supply, step-down transformerand PA amplified AC-DC under Trademark Application No . 87497 .

13 . The Decision in IPC No. 14-1998-00050 only adjudged hereinOpposer to be entitled to the registration of the mark "KOLIN" forClass "9" goods under its Trademark Application No . 87497, and notin respect of Class "35" services .

14 . Assuming therefore that Respondent-Applicant, as TaiwanKolin's affiliate in the Philippines engaged in the marketing, sellingand distribution of KOLIN-branded household/home appliances inthe Philippines, represents the same commercial interests in relationto said goods or products protected by Taiwan Kolin, the Decision inIPC No. 14-1998-00050 only adjudged herein Opposer's entitlementto the registration of the mark "KOLIN" for the specified Class "9",and not in respect of all other classes of goods, like Class " 11" andClass "21" goods. Said Decision is not final and executory incontemplation of law . It is in fact, appealed before the Court ofAppeals as CA-G .R. No . 80641 : Taiwan Kolin Co ., Ltd., Petitioner vsKolin Electronics Co ., Inc., Respondent .

15 . The execution of this Decision, allowing the issuance of aCertificate of Registration to herein Opposer, was a discretionary

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execution pending appeal and conditioned upon Opposer's postingof bond to answer for damages in the event of reversal thereof .

16 . Assuming for the sake of argument that the said Decision isfinal and executory, Opposer's Certificate of Registration conferredto it the exclusive right to use its KOLIN mark only to the goodsspecified in its certificate, that is, Class "9" goods, or goods relatedthereto, or other Class "9" goods .

17. A Certificate of Registration confers upon the trademarkowner an exclusive right to use its own symbol only in relation togoods specified in the certificate and those related thereto . Theowner's right is to prevent third parties not having the owner'sconsent from using in the course of trade identical or similar tothose goods in respect of which the trademark is registered .(Sections 138 and 147 .1, RA 8293 ; Canon Kabushiki Kaisha vsCourt of Appeals, 336 SCRA 266 [2000] ; Faberge Incorporated vsIntermediate Appellate Court, 215 SCRA 316 [1992] ; Pearl & Dean(Phil.), Incorporated vs Shoemart Incorporated, 409 SCRA 231[2003]) Respondent-Applicant does not carry nor deal with anyClass "9" goods of the kind/type whether of KOLIN brand orotherwise, because they are not home or household appliances .

18 . Opposer's mark "KOLIN" is not a well-known mark, nor was itqualified to be a well-known mark . Only an owner of a well-knownmark can claim to have an exclusive right to use its own symbol ongoods or services other than those stated in the certificate ofregistration . (Section 147.2, RA 8293 )

19 . Assuming for the sake of argument that Respondent-Applicant, as Taiwan Kolin's affiliate in the Philippines, representsthe same commercial interests in relation to said goods or productsof Taiwan Kolin, as well as the interests of Taiwan Kolin beinglitigated under Inter Partes Case No. 14-1998-00050 for the mark"KOLIN" under Class "9" goods, and before the Court of Appeals inCA-G.R. No. 80641, the instant case should be abated on theground of litis pendentia of said Inter Partes Case No . 14-1998-00050, now CA-G .R. No. 80641 .

20. Assuming further that Respondent-Applicant, as TaiwanKolin's affiliate, represents the same commercial interests in relationto said goods or products of Taiwan Kolin, as well as its interestsbeing litigated under IPC No . 14-2004-000105 for the mark "KOLIN"under Class "11" goods claimed by herein Opposer, the latter doe s

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not car ry nor deal with any of Classes "11" and "21"goods; neitherhas it ventured upon any of Classes "11" and "21" goods to this day .

21 . Opposer, as shown in its Exhibit A, has a minute authorizedcapital stock of P 1 .0 Million, of which only P250,000 has beensubscribed and paid-up by the stockholders inevitably defeating itsintention of expanding business to the existing KOLIN brandedhome/household appliances being carried by Respondent-Applicantfor marketing, sale and distribution in the Philippines .

22. Taiwan Kolin's Classes "11" and "21" goods carried byRespondent-Applicant for marketing, sale and distribution in thePhilippines, is not the zone of potential or natural and logicalexpansion from Opposer's mere "audio and electrical equipment" orparaphernalia which is an entirely new and distinct business ventureon the part of Opposer, and which, incidentally, is not covered by itsTrademark Application No . 87497/Certificate of Registration forClass "9" goods only .

23 . The KOLIN-branded home appliances of Respondent-Applicant, and Opposer's audio and electrical equipment, are notmarketed, sold and distributed through the channels of grocerystores, supermarkets or sari-sari stores where confusion as tosource or origin is likely to occur, where consumers are lessdiscerning when buying the products sold thereat like, catsup, soysauce, shampoo, soap and the like . On the other hand, goodscarried by both parties are costly or expensive items where thebuying public or consumers are normally cautious and discriminatingand prefer to study the costly or expensive items before making apurchase; hence, confusion and deception in the latter case is lesslikely to occur. (Emerald Garment Manufacturing Corp . vs Court ofAppeals, 251 SCRA 600 [1996] )

24. The more commercially-prominent KOLIN-brandedhousehold/home appliances being carried for marketing, sale anddistribution in the Philippines by Kolin Philippines, and the Opposer'saudio and electrical equipment do not also actually compete with,but they complement each other .

25. Respondent-Applicant had been engaged in the nationwidemarketing, sale, distribution, aggressive promotion andadvertisement of all KOLIN-branded goods of Taiwan Kolin in thePhilippines, including Class "11" and "21" goods, since 1996, as wellas exhibited in its business operations the mark "KOLIN" in its

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letterheads, calling cards, sales documents, envelopes, signages,billboards and other similar representations, evincing actual use oradoption of "KOLIN" for business and for establishing goodwill in thePhilippines, proof of which are appended collectively as Exhibits "3"and "4" of the Answer .

26 . In conjunction with the subject mark application forregistration, Respondent-Applicant has filed a Declaration of ActualUse with the IPO, attached as Exhibits "2" and "2-a" of the Answer .

27. Respondent-Applicant does not nor intend to carry, market,sell and/or distribute goods relating to any "automatic voltageregulator, converter, recharger, stereo booster, AC-DS regulatedpower supply, step-down tansformer and PA amplified AC-DC" orthe Opposer's Class "9" goods listed in its Certificate of RegistrationNo. 4-1993-087497 .

28 . Finally, the mere fact that Taiwan Kolin has made investmentas a shareholder of Respondent-Applicant, exercised its rights assuch, and/or has nominee directors or officers thereat and/or hasappointed Respondent-Applicant as a representative or distributor inthe Philippines transacting business in its own name and account,are not deemed "doing business" in the Philippines, contrary to theallegations of the Opposer and pursuant to Investment Act of 1991(Republic Act No. 7041), and Section 1 (f) of its Implementing Rulesand Regulations, which provides for acts not be deemed "doingbusiness" in the Philippines : (1) Mere investment as a shareholderby a foreign entity in domestic corporations duly registered to dobusiness, and/or the exercise of rights as such investor ; (2) havinga nominee director or officer to represent its interest in suchcorporation; and, (3) appointing a representative or distributordomiciled in the Philippines which transacts business in therepresentative's or distributor's own name and account .

By way of Reply, Opposer specifically denied the allegations in the Answer,stressing on relevant points, to wit :

1 . Respondent-Applicant seeks to mislead the Honorable Officeby attempting to pass off its application for registration of a mark asan application for registration of a trade name .

2 . The instant opposition case should not be abated on theground of litis pendentia because Respondent-Applicant failed toprove, or argue the reasons thereof.

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3. Opposer repleads by reference the allegations in the VerifiedNotice of Opposition .

Thereafter, this Bureau called for a Preliminary Conference on 24 January2007, which was re-set on 08 March 2007 . Respondent-Applicant's non-appearance resulted to the termination of the Preliminary Conference and thewaiver of its right to file Position Paper .

Respondent-Applicant filed an Ex-Parte Motion For Leave and to AdmitPosition Paper . Verily, finding the reasons adduced therein as meritorious, thesame was granted by this Bureau in Order No. 2007 - 653 dated 23 April 2007 .

Hence, this Opposition case is deemed submitted for decision with thefollowing evidence of the Opposer and the Respondent-Applicant respectively, incompliance to Office Order No . 79, series of 2005, to wit :

Opposer's Exhibits

EXHIBIT DESCRIPTION

"A" Articles of Incorporation and By-Laws of KolinElectronics Company, Incorporate d

"B" IPO Trademark Electronic Gazette for Kolinunder Serial No . 4200201100 3

„c„Certified True Copy of Certificate of Registra-tion No. 4-1993-087497 for the trademarkKOLIN of KOLIN Electronics Co ., Inc.

"D" Amended Articles of Incorporation of KolinPhilippines International, Inc .

"E" General Information Sheet of Kolin PhilippinesInternational, Inc .

"F" Reply to Comments to the Petition for Revie w

"G" Transcript of Stenographic Notes on 07 July1999 in IPC No. 14-1998-00050

"H" Decision No. 2002-46 dated 27 December 200of the BLA

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„I „

„J „

„K„

Decision of the Office of Director General, IPOin Appeal No. 14-03-24 of Decision No . 2002-46

Resolution No. 2004-07 dated 01 July 2004of the BLA

Order No . 2004-397 dated 21 July 2004 of theBLA

"L", "L-1" Brochures, fliers and posters of Opposer's& "L-2" products

"M" 29 November 2004 issue of the Philippine DailyInquirer

"N" Secretary's Certificate

Respondent-Applicant's Exhibit s

„1 „

„2„

Certified True Copy of Application forRegistration of KOLIN, KOLIN PhilippinesInternational, Inc .

Certification of True Copy of Declaration ofActual Use (DAU) of mark KOLIN

"2-a" Proof of Actual Use, as attached to the DAU,Business Card of G Gamboa, Kolin PhilippinesInternational, Inc .

"2-b" Certified true copy of Taiwan Kolin's Secreta ry 'sCertificate dated June 4, 2004

„3„ Certified true copy of several advertisements,affidavits, Sales Invoices, Catalogues,Letterhead, Scanned Photograph s

"4" Certified true copy of Applicant's letter datedSeptember 27, 2004 with attached labels,instruction manual, product warranty certificateand invoice s

"4-a" Respondent's envelop bearing the word,KOLI N

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„5„

C

Respondent's Secretary's Certificate datedAugust 11, 2006

The issues are as follows :

Whether or not Decision No . 2002-46 dated 27 December2002 adjudging herein Opposer as the prior user andadopter of the mark "KOLIN", settle with finality Opposer'sownership of such mark to apply in this instant case .

Whether or not the instant Opposition case may bedismissed on the ground of litis pendentia .

Whether or not there is confusing similarity on the marksof Opposer and Respondent-Applicant under the Classes9 and 35, respectively .

Let us tackle the first issue, posed by herein Opposer . The contention issimple, Decision No. 2002-46 dated 27 December 2002, of this Bureau, whichruled in favor of Opposer as the prior user and adopter of the mark "KOLIN",settles with finali ty on its behalf the issue of ownership over said subject mark, toapply in this instant opposition case .

We do not agree . It is not simple as it appears to be .

Prescinding from the foregoing, Opposer is devoid of any legal basis toclaim ownership over the mark "KOLIN" with finality . Firstly, there is no identityof parties. A perusal of evidence presented that while herein Respondent-Applicant is the majority stockholder of Taiwan Kolin Co ., Ltd., who is the Opposerin IPC No. 14-1998-00050 in the referred Decision No. 2002-46, "it is invested bylaw with a personality separate and distinct from that of the persons composing itas well as from any other legal entity to which it may be related ." (Emilio CanoEnterprises, Inc. vs CIR, 13 SCRA 290) .

Thus, this Bureau opines that Respondent-Applicant, even as majoritystockholder of Taiwan Kolin Co ., Ltd., with ownership of all or nearly all of thecapital stock of the latter corporation is not a sufficient ground to conclude thatthe interest represented by Respondent-Applicant and that of Taiwan Kolin is oneand the same .

However, this corporate personali ty may be pierced in cases where it isused as a cloak, or cover for fraud and justify wrong . This fact should be clearlyand convincingly established . Otherwise, the distinct and separate leg al

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personality of the corporation and the stockholders who compose it is recognizedand respected by the law .

Secondly, there is no identity of subject matter and cause of action . Whilethis instant case and the referred case docketed as IPC No . 14-1998-00050 areboth Inter Partes Case involving the opposition of the mark "KOLIN", the instantcase involves Class 35, whereas the latter case covers Class 9, both of the NiceClassification of Goods .

Opposer's move is a simple varied form of seeking the protective mantleof res judicata or the principle of conclusiveness of judgment. Sadly though, thisis not applicable in the instant case .

Relative hereto is the basic law and as the maxim goes, res inter alios actaalteri nocere non debet, which states: "The rights of a party cannot be prejudicedby an act, declaration, or omission of another, except as hereinafter provided ."(Section 28, Rule 130, Revised Rules of Court) Since Respondent-Applicant was a third party in the aforementioned case docketed as IPC No . 14-1998-00050, then, it cannot be prejudiced nor affected by any declaration,omission or act in that proceeding, to affect this instant proceeding .

Anent the second issue, now posed by herein Respondent-Litigant, thisBureau finds no merit to dismiss the instant Opposition case on the ground of litispendentia .

Litis pendentia requires the following concurring elements: (1) identity ofparties, or at least such parties who represent the same interest in both actions ;(2) identity of rights asserted and prayed for, the relief being founded on thesame facts; and (3) the identity, with respect to the two preceding particulars inthe two cases, is such that any judgment that may be rendered in the pendingcase, regardless of which party is successful, would amount to res judicata in theother. (Hyatt Industrial Mfg . Corp. vs Asia Dynamic Electrix Corp . et al .GR No. 163597, July 20, 2005 )

Indeed, litis pendentia is not applicable under the circumstances becausefirst, there is no identity of parties as discussed in the preceding paragraphs .Second, while there is the identity of mark in the cases as referred to, there is noidentity of rights asserted considering the good covered in the two (2) Oppositioncases are different. Third, litis pendentia determines the existence of two cases inany court or quasi-judicial agency with the power to determine rights andobligations. Res judicata, as a necessary element of litis pendentia, exists onlyupon a final judgment on the merits is rendered by a court of competen tjurisdiction . IPC Nos. 14-1998-00050 and 14-2004-000105 are still pendin g

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before the Court of Appeals and the Director General of IPO, respectively . Thus,there is yet no final judgment to consider .

Therefore, the final determination of this Opposition case rests on the thirdissue posed by both parties - confusing similarity .

Before this transcendental issue, this Bureau finds it necessary to resolve,another ground raised by Respondent-Applicant for the dismissal of this instantcase. Accordingly, its application for subject mark registration is the adoption anduse of "KOLIN" as a trade name for business and not as trademark for goods orproducts. It further advances its argument by citing the case of Canon KabushikiKaisha vs Court of Appeals (GR No . 120900, July 20, 2000), emphasizing that, atrade name refers to the business and its goodwill ; a trademark refers to thegoods.

As a legal terminology, a trade name is defined differently from atrademark, as provided in RA 8293 or the New Intellectual Property Code .However, a trademark is almost always confused with a trade namesince a word may be used both as a trademark and a trade name . In theold case of US vs Kyburz (GR No. 9458, November 24, 1914), theHonorable Supreme Court ruled :

"Trade names have been frequently confused withtrademarks and broadly speaking they includenames which may constitute trade marks ; butaccurately speaking trade names are names which areused in trade to designate a particular business of certainindividuals considered somewhat as an entity, or the placeat which a business is located, or of a class of goods, butwhich are not technical trademarks either because notapplied or affixed to goods sent into the market, orbecause not capable of exclusive appropriation by anyoneas trademarks" .

Respondent-Applicant's arguments to effect the denial of this instantOpposition, albeit sound, are scant of justification . It must be noted that theBureau of Trademarks of the Intellectual Property Office, where the subjectapplication was filed, has the function of search and examination of theapplications for the registration of marks, geographic indications and other marksof ownership and the issuance of the certificates of registration . (Section 9, R.A.8293) 1 /

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The foregoing makes no mention of registration of trade name for business .Verily, the ratiocination of Respondent-Applicant that it applied for registration oftrade name for business and not for registration of trademark is inconsistent . Ifthe intention of Respondent-Applicant is to seek registration of trade name forbusiness, application should have been filed with the Department of Trade andIndustry . In this instant case, Respondent-Applicant filed its application for tradename with the IPO .

At any rate, an application for registration of either a trademark, tradename or service mark with IPO are afforded similar protection for they serve thesame purpose, they are symbols or devices used in trade and commerce todistinguish goods, business and services from those of others, to protect themanufacturer against invasion of property rights and the public against deceptionof purchasing goods or services of one person as those of another .

Finally, on the issue of confusing similarity, this Bureau finds for theOpposer .

The ownership of a trademark or trade name is a property right that theowner is entitled to protect. (CONVERSE RUBBER CORPORATION vsUNIVERSAL RUBBER PRODUCTS, INC . 147 SCRA 154) As provided underthe Trademark Law, RA No . 8293, Section 138, a certificate of registration is aprima facie evidence of the registrant's ownership of the mark, and of theexclusive right to use the same in connection with the goods or services specifiedin the certificate and those that are related thereto . However, when a trademarkis used by a party on a product in which the other party does not deal, the use ofthe same trademark on the latter's product cannot be validly objected to. (ESSOSTANDARD EASTERN, INC . vs COURT OF APPEALS, 116 SCRA 336 )

The issue on confusion of marks and trade names are split into two types :(1) confusion of goods or services and (2) confusion of business or of origin . Inthe first type, "the ordinary prudent purchaser would be induced to purchase oneproduct or service because of the similarity of the marks or trade names usedthereon. x x x In confusion of goods or services, the confusingly similar marksor trade names are used on the same kind of products or services . (SterlingProducts International, Inc . vs Farbenfabriken Bayer Aktiengesellschaft,27 SCRA 1214)

The second type of confusion exists, "when one party's product or service,though different from that of another, is such as might reasonably be assumed tooriginate from the latter, and the public would then be deceived into that belief orinto the belief that there is some connection or business association between theparties which, in fact, is absent. x x x the goods or services on which th e

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identical or similar marks or trade names are employed are different in kind arenon-competing . (ibid. .. Ang vs Teodoro, 74 Phil . 50)

The instant case revealed confusing similarity of business or of origin .

The trademark application subject of opposition was filed during theeffectivity of Republic Act No . 8293 otherwise known as the Intellectual PropertyCode of the Philippines . Thus, the applicable provision of law in resolving theissue involved is Sec. 123.1 (d) of R.A. 8293, which provides :

"Sec. 123 . Registrability. - 123.1 . A mark cannot beregistered if it :

xx x

(d) Is identical with a registered mark belonging toa different proprietor or a mark with an earlierfiling or priority date, in respect of :

(i) The same goods or services, o r(ii) Closely related goods or services, o r(iii) If it nearly resembles such a mark as to

be likely to deceive or cause confusion;

(Emphasis Ours .)xx x

The fact is that both parties use exactly the same or identical word"KOLIN". With respect to their goods, this Bureau has to agree to Respondent-Applicant that the contending goods belong to different classes . This isevidenced by Opposer's Philippine Trademark Registration No . 4-1993-087497issued by the IPO for goods falling under Class 9, and, Respondent's subjectapplication under Class 35, both of the International Classification of Goods .

However, the dissimilarity of classes do not determine the non-confusion tothe general public. While it is true that there is no competition or relatedness asto electronic goods and to the business of manufacturing, importing, assemblingand selling home appliances, it is not far from clear that purchasers of Opposer'selectronic products will relate Respondent-Applicant as its service provider, andvice versa. Furthermore, the purchasers of Opposer's home appliance and theconsumers who avail service of electronic goods are usually the general public ,families and domestics, who are not very discriminative since home appliance an d

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electronic goods now a days, are considered common household needs. In fact,almost always, these are interchangeably used . Home appliances are related toelectronic appliance, in the sense that home appliance are electronically operatedand are sometimes operated using electronic gadgets such as converter, voltageregulator and transformers .

Similarly, electronic products are also used at home, making them homeproducts although not exactly as home appliance . As decided in a string oftrademark cases that in a contest involving registration of trademark, thedeterminative factor is not whether the challenged mark would actually causeconfusion or deception of the purchasers but whether the use of the mark wouldlikely cause confusion or mistake on the part of the buying public . Theassumption therefore is that they originate from one manufacturer or serviceprovider .

Thus, while it is also true that the consumers of the goods or service arenot those who do not exercise discretion, the likelihood of confusion is stillprobable because of its identical name or mark and the relatedness of Opposer'sproducts to Respondent-Applicant's products of service.

The element of relatedness is confirmed by the allegation of Respondent-Applicant that the products "complement each other" . This is the same assaying that one product makes up for the deficiency or supplement the other .

The doctrine of confusion of origin is based on cogent reasons of equityand fair dealing . It has to be realized that there can be unfair dealing by havingone's business reputation confused with another . "The owner of a trademark ortrade name has a property right in which he is entitled to protection, since thereis damage to him from confusion of reputation or goodwill in the mind of thepublic. x x x" (Ang vs Teodoro, 74 Phil . 50)

One final point . Respondent-Applicant has a boundless choice of words,phrases and symbols to adopt as a mark sufficient unto itself to distinguish itsproducts from those of Opposer's and other's mark . There is no reasonableexplanation for Respondent-Applicant's choice of the mark "KOLIN" from a field sobroad, especially so that Opposer's acquired mark is continuously into distributionand sale in the Philippines of its products bearing the mark "KOLIN" .

In view of all the foregoing, the instant Opposition is as, it is herebySUSTAINED. Accordingly, application bearing Serial No. 4-2002-011003 for themark "KOLIN" filed in the name of KOLIN PHILIPPINES INTERNATIONAL, INC .on 27 December 2002 under Class 35 of the Nice Classification of Goods is herebyREJECTED. /

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Let the file wrapper of "KOLIN", subject matter of this case be forwardedto the Bureau of Trademarks (BOT) for appropriate action in accordance with thisDecision .

SO ORDERED .

Makati City, 29 June 2007 .

4LLITA BELTRAN-ABELARD Orector, Bureau of Legal Affairs

,

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