Intellectual property owners and advocates on Tuesday criticized the Supreme Court for rendering a decision that allows the registration of a trademark against a similarly and legally existing one that has long been protected by intellectual property rights laws and regulations, including the Intellectual Property Code of the Philippines.
IPR owners, advocates and even lawyers questioned the ruling of the Court’s Third Division, which they warned would open the country’s floodgates to pirates and IPR violators that would transform the Philippines into a world-wide piracy haven.
One of the intellectual property firms in the country, Federis & Associates, was even baffled with the ruling of the high tribunal, which allowed the registration of the identical trademark of Taiwan Kolin Corporation Ltd. against the existing trademark of local firm Kolin Electronics Co. Inc., both firms of which are engaged in the sale and manufacture of electronic products.
Federis & Associates and other IPR law practitioners have raised the prospects that the questionable decision of the SC would invite and encourage pirates and other IPR owner-violators in the country to move for legal recognition and protection from the Intellectual Property Office of the Philippines by using the precedent ruling.
The same would apply to pirating and infringing international firms which could not seek IPR protection in countries where there are strict adherence, enforcement and observance of IPR laws, by coming into the Philippines and registering for an identical or similar protection.
“In a recent decision, the Supreme Court allowed the registration owned by two competing companies, for an identical trademark, used in connection with goods in the same Class, thereby effectively throwing the doors wide open to trademark copying and creating a climate for potential consumer confusion,” Federis & Associates said, in a statement.
In 2002, Taiwan Kolin applied for trademark registration for “KOLIN” before the IPO for its electronic products under Class 9 of the Nice Classification (Application), but KECI opposed the registration, saying it was similar to its “KOLIN” trademark that has already been legally existing, protected and used, having been registered also under Class 9 with the IPO.
KECI also said the being sought trademark registration was not only identical but also confusing, officially supporting its claims with documents of e-mail letters from consumers complaining about Taiwan Kolin products.
Not only consumers, but even companies like shipping lines and utility companies were also confused as to the businesses of the two companies.
KECI’s trademark case against the Taiwanese company was held by the Bureau of Legal Affairs of the IPO and even by the Court of Appeals where TKC appealed.
Having lost its case before the appellate court, the Taiwan Kolin appealed to the SC where it earned the favors of the court, which ruled among others that the marks of KECI and Taiwan Kolin have distinct visual and aural differences.
The court through Associate Justice Presbitero Velasco Jr. said KEC’s mark is italicized and colored black while TKC’s mark is “white in pantone red color background.”
The Third Division also said the products manufactured by both companies were relatively luxurious items and not considered affordable, and therefore buyers would be discerning as to whose products they should be buying. As such, there should be no confusion and deception.
However, Federis & Associates said the decision totally strayed from other rulings in similarly-situated IPR cases, including those that have been adjudicated upon in the United States.
It also threw the meaning and purpose of a trademark, which is protection.
“In the United States, for example, the Trademark and Appeal Board [TTAB] ruled that differing goods under Class 9 are considered related and therefore likely to cause consumer confusion,” Federis & Associates said, citing the case of Hewlett-Packard Development Company, L. P. against Vudu Inc. over a computer product.
“The TTAB found that the computer goods covered by the mark ‘VOODOO’ are related to the software goods covered by ‘VUDU’ mark, and therefore, found likelihood of confusion between the two similar marks,” the law firm added.