More intellectual property rights cases pending before the courts are now facing dismissal while the Intellectual Property Office of the Philippines should expect the problem of piracy to worsen as a result of the Supreme Court’s decision allowing the registration of two similar trademarks, IPR advocates warned on Sunday.
The warning came after the Court of Appeals’ Former Ninth Division was forced to “recall” and “set aside” its earlier ruling against Taiwan Kolin Corporation Ltd. over a trademark case involving Class 11 registration and upheld its case against Filipino firm Kolin Electronics Co., Inc. due to SC’s questionable ruling allowing the registration of two trademarks by using the so called “intelligent buyer” doctrine.
Keci has an existing trademark protection for “Kolin” for its electronic products having been registered with the IPO, but the Taiwanese TKCL wanted the same registration for the same name for its similar electronic items under Class 11, but it was denied by the IPO and even originally by the CA’s Ninth Division where TKCL appealed.
However, in its amended decision issued on Jan. 14, 2016, the CA’s Ninth Division was compelled to reverse its earlier ruling in deference to the decision of the SC’s Third Division, which also involved the two electronics company, wherein the high court did not thoroughly discuss the merits of the case, but dwelt on the intelligent buyer rule in resolving the case.
“Adherence to the ruling [SC case] is dictated by the Supreme Court’s policy of maintaining stability in jurisprudence in accordance with the legal maxim ‘stare decisis et non quieta movere’ [to adhere to precedents and not to unsettle things which are established],” the CA said in its 15-page decision penned by Associate Justice Carmelita Salandanan Manahan.
With the SC’s ruling that bamboozled the CA’s decision, IPR legal practitioners and even business owners, who are supposed to be enjoying protection from the government through their registered trademarks and copyrights believed the high court has opened the door for the dismissal of similarly-situated pending and even future cases, while at the same time encouraging piracy and infringement by relaxing the laws on IPR, particularly on trademark.
IPR law firm Federis & Associates lamented that “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.”
In its ruling, the SC allowed the registration of TKCL’s “Kolin” for its electronic products under Class 9 of the Nice Classification (Application), although Keci already owns the Trademark for the same name and products, also under Class 9.
In its earlier decision, the CA agreed that the registration of TKCL for Kolin not only belied the purpose of a Trademark, which is protection, but would also create confusion among the buyers, as it noted the records of confusion with the documents of e-mail letters from consumers complaining about TKCL products.
Not only consumers, but even companies like shipping lines and utility companies were also confused as to the businesses of the two companies.
But the SC ruled that the goods 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, a decision Federis & Associates said strayed away even from international jurisprudence on IPR.
The Fortun, Narvaza and Salazar Law Office, also an IPR legal practitioner noted that “the Court used the Ordinary Intelligent Buyer doctrine in past cases and held that the Philippine consumer can distinguish similar marks in jeans, underwear, cigarettes, tobacco, and beer but not in catsup.”
In both Class 9 and 11, TKCL lost its cases from the IPO all the way up to the CA until the SC issued its controversial decision on Class 9 case upon appeal by the Taiwanese company.