G.R. No. 221347 , December 01, 2021
KOLIN ELECTRONICS CO., INC., PETITIONER, VS. TAIWAN KOLIN CORP. LTD., RESPONDENT. [G.R. Nos. 221360-61] TAIWAN KOLIN CORP. LTD., REPRESENTED BY KOLIN PHILIPPINES INTERNATIONAL, INC., PETITIONER, VS. KOLIN ELECTRONICS CO., INC., RESPONDENT.

FACTS

Kolin Electronics Co., Inc. (KECI), a domestic corporation engaged in electronics since 1989, is the registered owner of the “KOLIN” trademark under Classes 9 and 35. Taiwan Kolin Corp. Ltd. (Taiwan Kolin), a Taiwanese corporation engaged in home appliances since 1976, also owns registrations for the “KOLIN” mark, including under Classes 11 and 21, and its products have been available in the Philippines since 1996. On August 16, 2007, KECI filed Trademark Application No. 20-2007-000009 for the mark “www.kolin.ph” under Class 35 for use in its business of manufacturing, assembling, importing, and selling electronic equipment or apparatus. Taiwan Kolin filed an Opposition on May 12, 2008, arguing that the application violates Section 123.1(d) of the Intellectual Property Code (proscribing registration of a mark identical with a registered mark of a different proprietor with an earlier filing date), will cause injury to its goodwill, violates rules requiring specific description of goods, and that “www.kolin.ph” does not function as a mark. The Bureau of Legal Affairs (BLA) dismissed the Opposition for Taiwan Kolin’s failure to comply with procedural rules requiring originals or certified true copies of attached documents, as its attachments were all photocopies. The Director General of the Intellectual Property Office affirmed the BLA’s dismissal. The Court of Appeals upheld the IPO’s denial of Taiwan Kolin’s Opposition.

ISSUE

Whether the Court of Appeals erred in upholding the denial of Taiwan Kolin’s Opposition to KECI’s application for trademark registration of the domain name “www.kolin.ph.”

RULING

The Supreme Court denied the petitions and affirmed the Court of Appeals Decision. The Court held that Taiwan Kolin’s failure to submit original or certified true copies of the documents supporting its Opposition, as required by the Inter Partes Regulations (Office Order No. 79, series of 2005), was a fatal procedural defect that warranted the dismissal of its Opposition. The Court emphasized that procedural rules are tools to facilitate the adjudication of cases and must be complied with strictly. Since Taiwan Kolin did not properly substantiate its claims with competent evidence, the BLA correctly dismissed the Opposition. The Court also noted that the determination of confusing similarity between marks involves a factual inquiry, and Taiwan Kolin’s failure to present proper evidence precluded such an analysis. Furthermore, the Court clarified that a domain name can function as a trademark if it serves to identify and distinguish the goods or services of one enterprise from others, and KECI’s application for “www.kolin.ph” under Class 35 was for its business activities, not merely as a web address. The Court found no reversible error in the appellate court’s decision.