Mere Similarity in Classification Not Equate

with Relatedness of Goods or Services

(Taiwan vs Kolin Electronics, 2015)

Taiwan Kolin vs Kolin Electronics

Case Digest GR 209843 March 25 2015
→ Full Text ←
Facts:
Taiwan Kolin Corp sought to register the trademark “KOLIN” in Class 9 on the following combination
of goods: television sets, cassette recorder, VCD Amplifiers, camcorders and other audio/video
electronic equipment, flat iron, vacuum cleaners, cordless handsets, videophones, facsimile
machines, teleprinters, cellular phones and automatic goods vending machine.

Kolin Electronics opposed the application on the ground that the trademark “KOLIN” is identical, if
not confusingly similar, with its registered trademark “KOLIN” which covers the following products
under Class 9 of the Nice Classification (NCL): automatic voltage regulator, converter, recharger,
stereo booster, AC-DC regulated power supply, step-down transformer, and PA amplified AC-DC.
Kolin Electronics argued that the products are not only closely-related because they fall under the
same classification, but also because they are inherently similar for being electronic products and
are plugged into electric sockets and perform a useful function.

Issue: W/N the products are closely-related

Held:
No, the products are not related and the use of the trademark KOLIN on them would not likely cause
confusion. To confer exclusive use of a trademark, emphasis should be on the similarity or
relatedness of the goods and/or services involved and not on the arbitrary classification or general
description of their properties or characteristics.
First, products classified under Class 9 can be further classified into five categories. Accordingly, the
goods covered by the competing marks between Taiwan Kolin and Kolin Electronics fall under
different categories. Taiwan Kolin’s goods are categorized as audio visual equipments, while Kolin
Electronics’ goods fall under devices for controlling the distribution and use of electricity. Thus, it is
erroneous to assume that all electronic products are closely related and that the coverage of one
electronic product necessarily precludes the registration of a similar mark over another.

Second, the ordinarily intelligent buyer is not likely to be confused. The distinct visual and aural
differences between the two trademarks “KOLIN”, although appear to be minimal, are sufficient to
distinguish between one brand or another. The casual buyer is predisposed to be more cautious,
discriminating, and would prefer to mull over his purchase because the products involved are various
kind of electronic products which are relatively luxury items and not considered affordable. They are
not ordinarily consumable items such as soy sauce, ketsup or soap which are of minimal cost.
Hence, confusion is less likely. ##

Ownership of A Trademark Is Not Based on

An Earlier Filing Date (EY vs Shen Dar,
2010)

EY Industrial Sales vs
Shen Dar
Case Digest GR 184850 Oct 20 2010
→ Full Text ←
Facts:
EYIS is a domestic corporation engaged in the production, distribution and sale of air compressors
and other industrial tools and equipment. On the other hand, Shen Dar is a Taiwan-based foreign
manufacturer of air compressors. From 1997 to 2004, EYIS imported air compressors from Shen
Dar. Both of them sought to register the mark VESPA for use on air compressors, but it was Shen
Dar who first filed the application on June 1997. EYIS application was first granted on 2004, so Shen
Dar sought for its cancellation on the ground of Sec 123 of the Intellectual Property Code which
provides that the registration of a similar mark is prevented with the filing of an earlier application for
registration. On the other hand, EYIS contended that Shen Dar is not entitled to register the mark
VESPA on its products because EYIS has been using it as the sole assembler and distributor of air
compressors since the 1990s. EYIS was able to prove such fact.

Issue: W/N EYIS is the true owner of the mark VESPA

Yes. EYIS is the true owner because it is the prior and continuous user of the mark VESPA.
Section 123.1 of the IPC should not be interpreted to mean that ownership is based upon an earlier
filing date. While RA 8293 removed the previous requirement of proof of actual use prior to the filing
of an application forregistration of a mark, proof of prior and continuous use is necessary to
establish ownership of a mark. Ownership of a mark or trade name may be acquired not necessarily
by registration but by adoption and use in trade or commerce.

As between actual use of a mark without registration, and registration of the mark without actual use
thereof, the former prevails over the latter. Hence, EYIS is entitled to the registration of the mark in
its name. ##

Notes
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SECTION 122. How Marks are Acquired. —

The rights in a mark shall be acquired through registration made validly in accordance with the
provisions of this law. (Sec. 2-A, R.A. No. 166a)

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SECTION 123. Registrability. —

123.1. A mark cannot be registered if it:
a. Consists of immoral, deceptive or scandalous matter, or matter which may disparage or falsely
suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring
them into contempt or disrepute;

b. Consists of the flag or coat of arms or other insignia of the Philippines or any of its political
subdivisions, or of any foreign nation, or any simulation thereof;

c. Consists of a name, portrait or signature identifying a particular living individual except by his
written consent, or the name, signature, or portrait of a deceased President of the Philippines, during
the life of his widow, if any, except by written consent of the widow;

d. Is identical with a registered mark belonging to a different proprietor or a mark with an

earlier filing or priority date, in respect of:
 i. The same goods or services, or
ii. Closely related goods or services, or
iii. If it nearly resembles such a mark as to be likely to deceive or cause confusion;
e. Is identical with, or confusingly similar to, or constitutes a translation of a mark which is
considered by the competent authority of the Philippines to be well-known internationally and in the
Philippines, whether or not it is registered here, as being already the mark of a person other than the
applicant for registration, and used for identical or similar goods or services:

Provided, That in determining whether a mark is well-known, account shall be taken of the
knowledge of the relevant sector of the public, rather than of the public at large, including knowledge
in the Philippines which has been obtained as a result of the promotion of the mark;

f. Is identical with, or confusingly similar to, or constitutes a translation of a mark considered well-
known in accordance with the preceding paragraph, which is registered in the Philippines with
respect to goods or services which are not similar to those with respect to which registration is
applied for:

Provided, That use of the mark in relation to those goods or services would indicate a connection
between those goods or services, and the owner of the registered mark:

Provided further, That the interests of the owner of the registered mark are likely to be damaged by
such use;

g. Is likely to mislead the public, particularly as to the nature, quality, characteristics or geographical
origin of the goods or services;

h. Consists exclusively of signs that are generic for the goods or services that they seek to identify;

i. Consists exclusively of signs or of indications that have become customary or usual to designate
the goods or services in everyday language or in bona fide and established trade practice;

j. Consists exclusively of signs or of indications that may serve in trade to designate the kind, quality,
quantity, intended purpose, value, geographical origin, time or production of the goods or rendering
of the services, or other characteristics of the goods or services;

k. Consists of shapes that may be necessitated by technical factors or by the nature of the goods
themselves or factors that affect their intrinsic value;

l. Consists of color alone, unless defined by a given form; or

 m. Is contrary to public order or morality.

123.2. As regards signs or devices mentioned in paragraphs (j), (k), and (l), nothing shall prevent the
registration of any such sign or device which has become distinctive in relation to the goods for
which registration is requested as a result of the use that have been made of it in commerce in the
Philippines. The Office may accept as prima facie evidence that the mark has become distinctive, as
used in connection with the applicant’s goods or services in commerce, proof of substantially
exclusive and continuous use thereof by the applicant in commerce in the Philippines for five (5)
years before the date on which the claim of distinctiveness is made.
123.3. The nature of the goods to which the mark is applied will not constitute an obstacle to
registration. (Sec. 4, R.A. No. 166a)
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Registration is Only Presumptive of Ownership (Shangri-la vs Developers, 2006)

Registration, without more, does not confer upon the registrant an absolute right to the registered
mark. The certificate of registration is merely a prima facie proof that the registrant is the owner of
the registered mark or trade name. Evidence of prior and continuous use of the mark or trade name
by another can overcome the presumptive ownership of the registrant and may very well entitle the
former to be declared owner in an appropriate case.

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Registration is Not A Mode of Acquiring Ownership

By itself, registration is not a mode of acquiring ownership. When the applicant is not the owner of
the trademark being applied for, he has no right to apply for registration of the same. Registration
merely creates a prima facie presumption of the validity of the registration, of the registrants
ownership of the trademark and of the exclusive right to the use thereof. Such presumption, just like
the presumptive regularity in the performance of official functions, is rebuttable and must give way to
evidence to the contrary.

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Actual Use In Commerce is Required to Establish Right of Ownership

Ownership of a mark or trade name may be acquired not necessarily by registration but by adoption
and use in trade or commerce. As between actual use of a mark without registration, and registration
of the mark without actual use thereof, the former prevails over the latter. For a rule widely accepted
and firmly entrenched, because it has come down through the years, is thatactual use in commerce
or business is a pre-requisite to the acquisition of the right of ownership.
 Grandfather Rule may be Applied Jointly
with the Control Test to Determine Corporate
Ownership (Narra vs Redmont, 2015)

Narra Nickel Mining vs

Redmont
G.R. No. 195580, January 28, 2015
→ Full Text ←
Facts:
Narra and its co-petitioner corporations – Tesoro and MacArthur, filed a motion before the SC to
reconsider its April 21, 2014 Decision which upheld the denial of their MPSA applications. The SC
affirmed the CA ruling that there is a doubt to their nationality, and that in applying the Grandfather
Rule, the finding is that MBMI, a 100% Canadian-owned corporation, effectively owns 60% of the
common stocks of petitioners by owning equity interests of the petitioners’ other majority corporate
shareholders. Narra, Tesoro and MacArthur argued that the application of the Grandfather Rule to
determine their nationality is erroneous and allegedly without basis in the Constitution, the FIA, the
Philippine Mining Act, and the Rules issued by the SEC. These laws and rules supposedly espouse
the application of the Control Test in verifying the Philippine nationality of corporate entities for
purposes of determining compliance with Sec. 2, Art. XII of the Constitution that only corporations or
associations at least 60% of whose capital is owned by such Filipino citizens may enjoy certain
rights and privileges, like the exploration and development of natural resources.
Issue: W/N the application by the SC of the grandfather resulted to the abandonment of the
‘control test’
Held:
No. The ‘control test’ can be applied jointly with the Grandfather Rule to determine the observance
of foreign ownership restriction in nationalized economic activities. The Control Test and the
Grandfather Rule are not incompatible ownership-determinant methods that can only be applied
alternative to each other. Rather, these methods can, if appropriate, be used cumulatively in the
 determination of the ownership and control of corporations engaged in fully or partly nationalized
activities, as the mining operation involved in this case or the operation of public utilities.

The Grandfather Rule, standing alone, should not be used to determine the Filipino ownership and
control in a corporation, as it could result in an otherwise foreign corporation rendered qualified to
perform nationalized or partly nationalized activities. Hence, it is only when the Control Test is first
complied with that the Grandfather Rule may be applied. Put in another manner, if the subject
corporation’s Filipino equity falls below the threshold 60%, the corporation is immediately considered
foreign-owned, in which case, the need to resort to the Grandfather Rule disappears.

In this case, using the ‘control test’, Narra, Tesoro and MacArthur appear to have satisfied the 60-40
equity requirement. But the nationality of these corporations and the foreign-owned common
investor that funds them was in doubt, hence, the need to apply the Grandfather Rule. ##

RTC Decision on Summary Proceeding for

Declaration of Presumptive Death
Reviewable Only via Rule 65 (Rep vs
Sarenogon, 2016)

→ Full Text ←
Republic vs Jose Sarenogon
Case Digest GR 199194 Feb 10, 2016
Facts:
Sarenogon filed a petition before the RTC to declare the presumptive death of his wife Netchie. He
testified that they got married and lived together as husband and wife for a month only because he
left to work as a seaman while Netchie went to Hongkong as a domestic helper. For 3 months, he
did not receive any communication from Netchie and had no idea about her whereabouts. While still
abroad, he tried to contact Netchie’s parents, but failed. He returned home after his contract
expired, then inquired from Netchie’s relatives and friends about her whereabouts. They also
 did not know where she was. Because of these, he had to presume that his wife Netchie was
already dead. He filed the Petition before the RTC so he could contract another marriage pursuant
to Article 41 of the Family Code. Jose’s testimony was corroborated by his older brother, and by
Netchie’s aunt. These two witnesses testified that Jose and Netchie lived together as husband and
wife only for one month prior to their leaving the Philippines for separate destinations abroad and
added that they had no information regarding Netchie’s location. The RTC found that Netchie had
disappeared for more than four years, reason enough for Jose to conclude that his wife was indeed
already dead.

The OSG questioned the RTC ruling via Rule 65 before the CA for the RTC’s error in its
misappreciation of evidence. The CA saw no error in the RTC judgment and further held that Rule
65 is the wrong recourse in elevating a declaration of presumptive death judgment from the RTC.

Issue 1: W/N Rule 65 is the proper recourse to question the RTC ruling
Held:
Yes. A petition for certiorari under Rule 65 is the proper remedy to question the RTC’s decision in a
summary proceeding for declaration of presumptive death.

Under Article 247 of the Family Code, the RTC’s decision on a petition pursuant to Article 41 of the
Family Code is immediately final and executory. Thus, the CA has no
jurisdiction to entertain a notice of appeal pertaining to such judgment. However, an aggrieved
party may file a certiorari under Rule 65 to question abuse of discretion amounting to lack of
jurisdiction. Such petition should be filed in the CA in accordance with the Doctrine of Hierarchy of
Courts. From the decision of the CA, the aggrieved party may elevate the matter to SC via a petition
for review under Rule 45.

Issue 2: W/N the “well-founded belief” requisite under Article 41 (FC) was complied
with (CIVIL LAW)
Held:
No. To comply with this requirement, the present spouse must prove that his/her belief was the
result of diligent and reasonable efforts and inquiries to locate the absent spouse and that based on
these efforts and inquiries, he/she believes that under the circumstances, the absent spouse is
already dead. It requires exertion of active effort. In this case, Sarenogon failed to satisfy required
“well-founded belief” standard.

Sarenogon’s pathetically anemic efforts to locate the missing Netchie are notches below the required
degree of stringent diligence prescribed by jurisprudence. For, aside from his bare claims that he
had inquired from alleged friends and relatives as to Netchie’s whereabouts, Jose did not call to the
witness stand specific individuals or persons whom he allegedly saw or met in the course of his
 search or quest for the allegedly missing Netchie. Neither did he prove that he sought the
assistance of the pertinent government agencies as well as the media. Nor did he show that he
undertook a thorough, determined and unflagging search for Netchie, say for at least two years (and
what those years were), and naming the particular places, provinces, cities, barangays or
municipalities that he visited, or went to, and identifying the specific persons he interviewed or talked
to in the course of his search. ##

RTC Designated as a Special Commercial

Court is Still a Court of General Jurisdiction
(Concorder vs Baculio, 2016)

Concorde Condominium vs Baculio

Case Digest: GR 203678 Feb 17, 2016
→ Full Text ←
Facts:
Petitioners filed with the RTC Makati a petition for injunction (with damages with prayer for issuance
of a TRO, writ of preliminary injunction, and writ of mandatory preliminary injunction) against the
respondents seeking to enjoin them from misrepresenting to the public that they are the owners of
the Concorde condominium building, and to prevent other certain individuals and government
officials from doing particular acts. The case was docketed as a civil case and raffled to a Makati
RTC branch which was designated as a special commercial court. The respondents moved to
dismiss claiming that the said RTC branch, as a special commercial court, has no jurisdiction over
the case because it is merely an ordinary civil action and not those cases such as intracorporate
disputes over which special commercial courts have exclusive jurisdiction. Accordingly, the RTC
dismissed the case.

Issue: W/N the RTC branch erred in dismissing the case

Held:
Yes. The designation of the said branch as a Special Commercial Court by no means diminished its
power as a court of general jurisdiction to hear and decide cases of all nature, whether civil, criminal
 or special proceedings. The matter of whether the RTC resolves an issue in the exercise of its
general jurisdiction or of its limited jurisdiction as a special court is only a matter of procedure and
has nothing to do with the question of jurisdiction.

The petition for injunction with damages is clearly an ordinary civil case. As a court of general
jurisdiction, the RTC branch still has jurisdiction over the subject matter thereof. ##

Petition for Certiorari via Rule 65 is a Wrong

Remedy Against a Court’s Final and
Appealable Order (Cajipe vs People, 2014)

Cajipe vs People
Case Digest GR 203605 April 23 2014
→ Full Text ←
Criminal Procedure
Facts:
Before the DOJ, Lilian filed a complaint charging multiple murder against certain police officers from
the PNP-HPG and PNP-SAF who were involved in the police action that led to the shooting of her
husband and their daughter. After preliminary investigation, the DOJ filed the Information before the
RTC indicting all the police officers charged in the complaint.

On the following day, the HPG group of accused police officers filed an omnibus motion for judicial
determination of probable cause with a prayer to hold in abeyance the issuance of warrants for their
arrest. The RTC issued warrants of arrest against the SAF officers but dismissed the case against
the HPG officers for lack of probable cause. Lilian moved for reconsideration of the dismissal but it
was denied.
 For a period of 112 days after receipt of the order of dismissal by the public prosecutor, the OSG
via Rule 65 filed a petition for certiorari before the CAalleging grave abuse of discretion on the part
of the RTC. The CA granted the petition, ruling that the RTC gravely abused its discretion and thus
ordered the issuance of warrants of arrest against the HPG officers.

Issue 1: W/N the CA is correct in granting the OSG’s petition for certiorari via Rule 65
No. Considering that the RTC order of dismissal is final and appealable, the CA erred when it
granted the special civil action for certiorari filed by the OSG via Rule 65.
The RTC judge was within his powers to dismiss the case against petitioner HPG officers. Section 6,
Rule 112 of the Rules of Criminal Procedure provides that the judge may immediately dismiss the
case if the evidence on record clearly fails to establish probable cause. The CA should have denied
the People’s petition that assails the correctness of the order of dismissal since Section 1 of Rule 65
provides that such action is available only when there is no appeal, or any plain, speedy, and
adequate remedy in the ordinary course of law.
Section 1 of Rule 122 provides that an appeal may be taken in a criminal action from a judgment or
final order like the RTC’s order dismissing the case against petitioner HPG officers for lack of
probable cause. It is a final order since it disposes of the case, terminates the proceedings, and
leaves the court with nothing further to do with respect to the case against petitioner HPG officers.
Of course, the People may refile the case if new evidence adduced in another preliminary
investigation will support the filing of a new information against them. But that is another matter. For
now, the CA clearly erred in not denying the petition for being a wrong remedy.

Issue 2: Assuming the propriety of filing the special civil action for certiorari against the
RTC’s order of dismissal, whether or not should the reckoning point of filing the action be
from the date the DOJ or the court give notice of the order of dismissal to the OSG (The OSG
based its contention on the well-established rule that only the OSG has the authority to
represent the People before the CA)
No. The contention of the OSG is not correct. There is no reason for the RTC to serve copy of its
judgments or final orders upon the OSG since the OSG does not enter its appearance in criminal
cases before the trial courts.
In case of permissible appeals from a final order in a criminal action, thepublic prosecutor who
appears as counsel for the People in such an action and on whom a copy of the final order is thus
served, may file a notice of appeal within the appropriate time since it is a notice addressed to the
RTC and not to the CA. Only the OSG, however, may pursue the appeal before the CA by filing the
required appellant’s brief or withdraw the same.
In special civil actions such as that taken by the OSG before the CA, the public prosecutor’s duty, if
he believes that a matter should be brought by special civil action before an appellate court, is to
promptly communicate the facts and his recommendation to the OSG, advising it of the last day for
filing such an action. There is no reason the OSG cannot file the petition since the People is given
 60 days from notice to the public prosecutor within which to file such an action before the CA or the
SC.

Since the OSG filed its petition for certiorari under Rule 65 on behalf of the People 112 days from
receipt of the dismissal order by the city prosecutor of Parañaque, the petition was filed out of time.
The order of dismissal is thus beyond appellate review. ##

Notes:
Hide

Two Grounds on Which a Special Civil Action for Certiorari May Prosper:
1. Grave abuse of discretion amounting to lack or excess of jurisdiction on the part of the body, court,
tribunal or gov’t agency, and
2. There is no other appeal, or any plain, speedy and adequate remedy in the ordinary course of law.