Philippines – On your mark, get set, go (Round 2)!

2 July 2021
 

Recalling my 23 November 2020 article with the same title, I will discuss another precedent-setting Supreme Court (SC) decision in the field of Trademark Law.
 

In said article, I referred to the doctrinal pronouncement in Zuneca v. Naprapharm that the only mode of acquiring ownership of a trademark is through a bona fide registration (and not actual use).
 

On 9 February 2021, but uploaded only in the SC website on 15 June 2021, the Supreme Court, in an en banc decision, laid down another groundbreaking ruling when it abandoned the Holistic Test as a tool to determine likelihood of confusion between similar yet competing trademarks.
 

The case is entitled Kolin Electronics Co. Inc. v. Kolin Philippines International Inc., G.R. No. 228165,
 

In this Kolin case, KPII filed a trademark application for the “kolin” mark covering televisions and DVD players. KECI, a different entity, filed an opposition on the ground that it is the registered owner of the subject mark; and if registered, KPII’s mark will cause confusion among the consumers.
 

KPII countered that KECI’s ownership over the “kolin” mark is limited only to goods such as automatic voltage, regulator, stereo booster and the like. The Intellectual Property Office (IPO) sided with KECI.
 

The Court of Appeals (CA), however, disagreed with the IPO.
 

Relying heavily on the earlier Taiwan Kolin case (G.R. No. 209843, 25 March 2015), wherein the SC allowed KPII’s affiliated entity Taiwan Kolin Corporation Ltd. (TKC) to register the “kolin” mark, the CA equally allowed KPII to have the “kolin” mark registered on the ground that the Taiwan Kolin case amounted to res judicata.

 

Surprisingly, the SC reversed the CA. The Court, through Justice Caguioa, noted that jurisprudence has flip-flopped over the years between the Holistic and Dominancy Tests to determine similarity and likelihood of confusion in trademarks. The Dominancy Test focuses on the similarity of the prevalent features of the competing marks.
 

Meanwhile, the Holistic Test requires that the entirety of the marks in question be considered in resolving confusing similarity. There was no hard and fast rule in determining which test should be applied.
 

There are more Supreme Court decisions that applied the Dominancy Test.
 

Nevertheless, the Holistic Test was adopted in significant decisions, consistently, in fact, when it comes to jeans, and notably, in the classic San Miguel Brewery v. Asia Brewery case involving the trademark “BEER Pale Pilsen.” In fact, jurisprudence likewise abounds on the application of both tests in resolving likelihood of confusion in the use of trademark.

 

In this 2021 Kolin case, the SC En Banc made it crystal clear that it is abandoning the Holistic Test in determining the resemblance of similar marks.
 

The SC noted that only the Dominancy Test is incorporated in the Intellectual Property (IP) Code, particularly Section 155.1 thereof which defines trademark infringement as the “colorable imitation of a registered mark… or a dominant feature thereof (italics supplied).
 

” Citing legislative deliberations leading to the enactment of the IP Code, the Supreme Court concluded that the exclusion of the Holistic Test was intentional and that the Dominancy Test should be adopted to put an end to the debate, once and for all.
 

Thus, applying the Dominancy Test, the SC held that KPII’s “kolin” mark resembles KECI’s “KOLIN” mark because the word “KOLIN” is the prevalent feature of both marks.
 

“Phonetically or aurally, the marks are exactly the same. Surely, the manner of pronouncing the word ‘KOLIN’ does not change just because KPII’s mark is in lowercase and contains an italicized orange letter ‘i.’ In terms of connotation and overall impression, there seems to be no difference between the two marks,” said the ponencia.

 

But how did the SC resolve the issue of the res judicata and the seemingly inconsistent ruling in the 2015 Taiwan Kolin case? Also, in the present Kolin case, it is worthy to mention that the SC En Banc abandoned another well-established doctrine in Trademark Law. I will discuss more of this in the next round of “On your mark, get set, go!”