May 18, 2015
An opposition will be dismissed if an Opposer fails to submit original documents supporting its case at the time the opposition is filed. This was the ruling of the Court of Appeals in a recent decision which it issued affirming the dismissal of the opposition by the Director General and the Bureau of Legal Affairs. This decision was issued on a consolidated Rule 43 petition for review filed by both parties in a bid to protect their respective trademark rights after battling it out at the Intellectual Property Office for over a decade. At the center of the dispute is the trademark “KOLIN”.
The case of Kolin Electronics Co., Inc. vs. Taiwan Kolin Corp, Ltd. (CA-G.R. SP No. 122566), involved two unrelated companies, each one using the disputed mark “KOLIN” as part of its corporate name, and each one being involved in the same industry, which is the manufacture, assembly and sale of electronics products.
For practitioners, the case is noteworthy as it applies strictly Sections 7.1 and 7.3 of Office Order No. 79 (Series 2005), which revised the 1998 Rules and Regulations on Inter Partes Proceedings. Under the rules, parties must submit only original documents in opposition and cancellation proceedings. Certified copies of public documents may be admitted in lieu of originals.
In this case, the party whose opposition was dismissed belatedly filed most of the original documents but the Director General was not convinced that this was sufficient compliance with the rules and decided to dismiss the opposition based on Sections 7.1 and 7.3 of Office Order No. 79. The appeal invoked liberal application of technical rules of proceedings citing a case where such opinion was expressed by the Supreme Court. The appeal likewise cited a labor case where the submission of documents in a Motion for Reconsideration was ruled by the Supreme Court as sufficient compliance with the rules. The Court of Appeals disagreed with the Opposer on both points. Emphasizing that unlike in labor cases, inter partes proceedings are summary in nature. It also expressed the view that the liberal application of the rules cannot apply here because the cases cited in the petition for review related to the issue of the failure to make a formal offer of exhibits, which is not required by the rules on inter partes cases. According to the Court of Appeals, the rule at issue is very clear in terms of the submission of original documents as opposed to mere photocopies. This requirement must be complied strictly according to the Court.
The case was also interesting particularly on the Director General’s decision to allow the co-existence of trademark registrations in the name of two unrelated entities for the same exact/identical trademark (“KOLIN”) covering what others may view as competing goods and services.
The Court of Appeals decision narrates the decade-old rivalry of the parties over the KOLIN trademark. One party, (“Kolin Electronics” or “KE”), was a domestic corporation and the other was a Taiwanese corporation (“Taiwan Kolin” or “TK”). The latter used KOLIN outside the Philippines since 1976 in connection with home and electric appliances and started using it in the Philippines only from 1996.
KE sought to register KOLIN for Class 9 products in 1993. TK opposed but the opposition was dismissed based on a finding that KE used the trademark in the Philippines first. The dismissal became final in 2002.
Five years later, in 2007, TK successfully obtained 2 trademark registrations for KOLIN, one in Class 11 and another in Class 21. These were not opposed by KE, which by then already had Class 9 registration for an identical trademark.
In an apparent bid to protect its rights after TK obtained registrations in Classes 11 and 12, KE obtained a registration for KOLIN in Class 35. This was not opposed. KE also applied for another application for “www.kolin.ph” also for Class 35 but the latter was opposed by TK. This is the opposition that was dismissed by the Bureau of Legal Affairs and the Director General based on technical grounds.
Thus, on appeal at the Court of Appeals, the second issue is whether KE’s registration for “www.kolin.ph” in Class 35 did not violate TK’s registrations for Class 11 and 21. The Court of Appeals agreed with the Director General who admonished TK to respect KE’s right to use “www.kolin.ph” for Class 35 and for KE to respect TK’s right to use KOLIN in Classes 11 and 21. In other words, the Court of Appeals affirmed the co-existence of the parties’ registrations for identical trademark KOLIN.
The Court of Appeals intoned the usual respect for the Director General’s determination on this second issue saying that administrative agencies, such as the IPO, by reason of their special knowledge and expertise over matters falling under their jurisdiction, are in a better position to pass judgment on the issue.
What is the takeaway? In this case, the Intellectual Property Office took a very narrow view of the scope of the Class 35 services, which KE filed after TK has already registered the identical trademark “KOLIN” for Classes 11 and 21.
KE’s KOLIN registration covered the following Class 35 services: “business of manufacturing, importing, assembling, selling products as air conditioning units, television sets, audio/video electronic equipment, refrigerators, electric fans and other electronic equipment or product of similar nature.” TK’s “KOLIN” registrations on the other hand included the following Class 11 goods: “air conditioners, refrigerators, electric fans, dehumidifier, washing machines, refrigerators, rice cooker, microwave ovens, gas stoves, gas range, dish dryer, over toaster, dish washing machine, bottle sterilizer, electric air pot, water heater, grillers and roasters, coffee and tea makers, turbo broiler, juice maker blender and other electrical appliances.” And TK’s KOLIN registration in Class 21 includes water dispensers.
KE’S Class 35 registration for KOLIN included sale of some of the goods described in the Class 11 goods of TK’s registration for KOLIN. But this notwithstanding, the Court of Appeals and the Director General saw nothing wrong with the overlap of the goods and services, a scenario which will almost certainly create confusion on the part of the consumers.
Are we confident that consumers will not associate the Class 11 and 21 goods of TK to the business of distribution of these same goods by KE where both of them are using an identical trademark “KOLIN”? Are the consumers the real losers in this scenario? Who will protect the consumers from being deceived or confused?