G.R. No. 228165 , February 9, 2021
KOLIN ELECTRONICS CO., INC., PETITIONER, VS. KOLIN PHILIPPINES INTERNATIONAL, INC., RESPONDENT.

FACTS

This is a Concurring Opinion by Chief Justice Peralta in the case. The opinion addresses the prior case of Taiwan Kolin Corp., Ltd. (TKC) v. Kolin Electronics, Co., Inc. (KECI) (the Taiwan Kolin case), in which Justice Peralta was a concurring member. He acknowledges the shortcomings of that decision as identified in the present ponencia by Justice Caguioa. The core issue revolves around the determination of confusing similarity between trademarks, specifically between KECI’s “KOLIN” mark and the mark of the respondent, Kolin Philippines International, Inc. (KPII). The prior Taiwan Kolin case failed to apply the Dominancy Test to assess confusing similarity and also failed to determine confusion of business (source or origin confusion).

ISSUE

The primary legal issue addressed in this concurring opinion is whether the prior ruling in the Taiwan Kolin case was correct in its methodology for determining trademark infringement, specifically its failure to apply the Dominancy Test and its consideration of the Nice Classification (NCL) subcategorization as a factor in determining the relatedness of goods.

RULING

Justice Peralta concurs with the ponencia’s finding that the Dominancy Test should have been applied. Applying this test, KECI’s “KOLIN” mark is confusingly similar to KPII’s mark because the word “KOLIN” is the prevalent feature and is reproduced entirely. The marks are phonetically identical, and aural similarity alone can support a finding of confusing similarity. The opinion also agrees that the prior case failed to consider confusion of business, where consumers might assume a connection between the two parties due to the identical marks, even if their goods are not identical.
Furthermore, the concurring opinion explicitly corrects a legal error from the Mighty Corporation v. E. & J. Gallo Winery case, which was perpetuated in the Taiwan Kolin case. It holds that the classification of goods under the Nice Classification (or its subcategories) should not be used as a factor in determining the relatedness or similarity of goods for trademark confusion analysis. The NCL serves a purely administrative purpose for the convenience of trademark office administration and does not limit or extend an applicant’s rights. Citing various sources including U.S. case law (Jean Patou, Inc. v. Theon, Inc.), the U.S. Trademark Manual of Examining Procedure (TMEP), and the Intellectual Property Code of the Philippines (Section 144.2 of R.A. No. 8293 ), the opinion establishes that similarity or dissimilarity of goods cannot be based on their appearance in the same or different classes of the NCL. Therefore, the Taiwan Kolin case erred in considering Class 9 subcategorization as a factor.