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Also, the matters contained in the following were written in accordance with the law, rules, and jurisprudence prevailing at the time of writing and posting, and do not include any future developments on the subject matter under discussion.
AT A GLANCE:
The Dominancy Test focuses on the similarity of the prevalent features of the competing trademarks which might cause confusion or deception, and thus infringement. If the competing trademark contains the main, essential or dominant features of another, and confusion or deception is likely to result, infringement takes place. Duplication or imitation is not necessary; nor is it necessary that the infringing label should suggest an effort to imitate. The question is whether the use of the marks involved is likely to cause confusion or mistake in the mind of the public or deceive purchasers.
In the case of Kolin v. Kolin, G.R. No. 103543, February 9, 2021, On August 17, 1993, Kolin Electronics Industrial Supply (KEIS), owned by a certain Miguel Tan, filed with the Bureau of Patents, Trademarks and Technology Transfer (BPTTT; now known as the Intellectual Property Office or IPO) an application for registration of Trademark Application No. 87497 for KOLIN covering the following products under Class 9: automatic voltage regulator, converter, recharger, stereo booster, AC-DC regulated power supply, step-down transformer, and PA amplifier AC-DC.
In a Deed of Assignment of Assets, Tan assigned in favor of KECI all the assets. and merchandise stocks of KEIS, including its pending application for registration of the KOLIN mark. The trademark has been continuously used in various products under the said classification, and the products are being offered for sale at KECI’s business establishments.
On February 29, 1996, Taiwan Kolin Co., Ltd. (TKC) filed with the BPTTT Trademark Application No. 4-1996-106310[8] for KOLIN initially covering the following goods: “color television, refrigerator, window-type air conditioner, split-type air conditioner, electric fan, and water dispenser”.
During the pendency of its application, TKC filed a verified Notice of Opposition against KECI’s trademark application for KOLIN. TKC claimed that it is the owner of Taiwan registrations for KOLIN and KOLIN SOLID SERIES and that it has a pending application for KOLIN, thus the grant of the KOLIN application would cause TKC grave and irreparable damage to its business reputation and goodwill because KOLIN is identical, if not confusingly similar, to TKC’s marks. TKC further claimed that if KECI’s application for KOLIN would be granted, this would likely mislead the public as to the nature, quality, and characteristics of its goods or products bearing the “KOLIN” trademark.
The Supreme Court held that the dominancy test considers the dominant features in the competing marks in determining whether they are confusingly similar. Under the dominancy test, courts give greater weight to the similarity of the appearance of the product arising from the adoption of the dominant features of the registered mark, disregarding minor differences. Courts will consider more the aural and visual impressions created by the marks in the public mind, giving little weight to factors like prices, quality, sales outlets and market segments.
Applying the Dominancy Test here, 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.
Another consideration is the type of marks used. Logically, this may affect the determination of resemblance of the marks in terms of their visual, aural, or connotative aspects, which are key areas to consider in using the Dominancy Test.
There is no doubt that the minor differences between kolin and KOLIN mark should be completely disregarded. The fact that KPII’s trademark application possesses special characteristics (e.g., the italicized orange letter “i”) not present in KECI’s KOLIN word mark makes no difference in terms of appearance, sound, connotation, or overall impression because the “KOLIN” word itself is the subject of KECI’s registration.
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- Trademark Regulations of 2023
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Alburo Alburo and Associates Law Offices specializes in business law and labor law consulting. For inquiries regarding legal services, you may reach us at info@alburolaw.com, or dial us at (02)7745-4391/ 09175772207/ 09778050020.
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