In Taiwan Kolin Corporation, Ltd. vs. Kolin Electronics Co., Inc. (G.R. No. 209843, 25 March 2015), the Supreme Court explained that mere uniformity in Classification alone does not ipso facto equate to relatedness of the goods and/or services. According to the High Court, the following factors must be considered in determining whether the goods and/or services of the competing marks are related:
The business (and its location) to which the goods belong;
The class of product to which the goods belong;
The product’s quality, quantity or size, including the nature of the package, wrapper or container;
The nature and cost of the articles;
The descriptive properties, physical attributes or essential characteristics with reference to their form, composition, texture or quality;
The purpose of the goods;
Whether the article is bought for immediate consumption, that is, day-to-day household items;
The field of manufacture;
The conditions under which the article is usually purchased; and
The channels of trade through which the goods flow, how they are distributed, marketed, displayed and sold.
As will be seen above, identity in classification is only one of many factors in addressing the issue on relatedness.
In Kolin, Taiwan Kolin Corporation, Ltd. (“Taiwan Kolin”) sought to register the trademark “KOLIN” in Class 9 for the following goods: television sets, cassette recorder, VCD Amplifiers, camcorders and other audio/video electronic equipment, flat iron, vacuum cleaners, cordless handsets, videophones, facsimile machines, teleprinters, cellular phones and automatic goods vending machine. Kolin Electronics Co., Inc. (“Kolin Electronics”) opposed Taiwan Kolin’s application for registration on the ground that it is identical/confusingly similar with its registered trademark “KOLIN” which was likewise categorized in Class 9 for automatic voltage regulator, converter, recharger, stereo booster, AC-DC regulated power supply, step-down transformer, and PA amplified AC-DC.
According to Kolin Electronics, the goods associated with Taiwan Kolin’s trademark application are closely-related and inherently similar with the goods covered by Kolin Electronics’ registered trademark since they are all plugged into electric sockets and perform a useful function, and thus, will create confusion.
On the other hand, Taiwan Kolin asserts that the goods of the competing marks are not related because (a) its goods pertain to home appliances while Kolin Electronics’ goods involves power supply and audio equipment accessories; (b) said goods perform distinct functions and purposes; and (c) Taiwan Kolin sells and distributes its various home appliance products on wholesale and to accredited dealers as opposed to Kolin Electronics’ goods which are sold in electrical and hardware stores.
In ruling in favor of Taiwan Kolin, the Supreme Court ruled that : “Emphasis should be on the similarity or relatedness of the goods and/or services involved and not on the arbitrary classification or general description of their properties or characteristics”.
The Supreme Court found that Class 9 goods can be sub-categorized into five classifications and the goods of the competing marks belong in different categories. Taiwan Kolin’s goods are categorized as power supply audio equipment accessories. On the other hand, Kolin Electronics’ goods fall under devices for controlling the distribution and use of electricity. Thus, although the goods of the competing marks belong in the same class (Class 9), they are not related since their purpose, channels of trade and nature are different.
In determining that there is NO likelihood of confusion between the competing marks, the Supreme Court likewise noted that said marks have distinct visual and aural differences and, given that their goods are deemed as relatively luxury items, the consumers of said goods are predisposed to be more discerning, cautious and discriminating.