GR 228165 Leonen (Digest)
G.R. No. 228165 , February 9, 2021
KOLIN ELECTRONICS CO., INC., PETITIONER, VS. KOLIN PHILIPPINES INTERNATIONAL, INC., RESPONDENT.
FACTS
Kolin Electronics Co., Inc. (petitioner) holds a valid trademark registration for “KOLIN” in Class 9 (Registration No. 4-1993-087497). Kolin Philippines International, Inc. (respondent) filed an application for the identical mark “KOLIN” in the same class (Application No. 4-2006-010021). The petitioner opposed the application. The Intellectual Property Office-Bureau of Legal Affairs and the Director-General sustained the opposition, finding a likelihood of confusion, evidenced by consumer queries to the petitioner about the respondent’s goods. A prior Supreme Court decision, Taiwan Kolin Corp. Ltd. v. Kolin Electronics Co., Inc., involving the respondent’s affiliate company, was held not to constitute res judicata in this case.
ISSUE
The primary issue addressed in the Separate Concurring Opinion is whether the established jurisprudential tests for determining “likelihood of confusion” in trademark cases should be re-examined and clarified, notwithstanding the agreement that the respondent’s application should be rejected based on the petitioner’s prior registration and the proven likelihood of confusion.
RULING
Justice Leonen concurred in the result, agreeing that the respondent’s trademark application should be rejected due to the petitioner’s prior valid registration and the likelihood of confusion. He also agreed that the prior Taiwan Kolin case was not res judicata. However, he expressed a separate opinion advocating for the abandonment of the “dominancy” and “holistic” tests traditionally used to determine likelihood of confusion. He argued that these tests, developed under a repealed law, are inconsistent with the current Intellectual Property Code ( Republic Act No. 8293 ). The Code’s statutory definition in Section 155.1 focuses on whether the use of a similar sign is “likely to deceive or cause confusion.” He proposed that jurisprudence should align strictly with this statutory standard, emphasizing that the core inquiry is whether the challenged use is likely to result in consumer confusion regarding the origin of the goods or services, without rigid adherence to the older, multi-factor tests.