Key Takeaway: In the Philippines, a trademark owner’s rights extend to domain names, but must respect other existing trademark registrations.

Kolin Electronics Co., Inc. v. Taiwan Kolin Corp. Ltd., G.R. Nos. 221347 & 221360-61, December 1, 2021

In today’s digital marketplace, a company’s online presence is as crucial as its physical storefront. Imagine a scenario where a business invests years in building its brand, only to find its trademark at the center of a legal battle over a domain name. This is precisely what happened in the case between Kolin Electronics Co., Inc. (KECI) and Taiwan Kolin Corp. Ltd. (Taiwan Kolin), where the heart of the dispute was the domain name www.kolin.ph. The central legal question was whether KECI, as the registered owner of the ‘KOLIN’ trademark, could extend its rights to this domain name, and how those rights intersected with Taiwan Kolin’s existing trademark registrations.

The case involved a complex interplay of trademark law and digital commerce, highlighting the importance of understanding the nuances of trademark protection in the online world. KECI sought to register the domain name www.kolin.ph under Class 35, which covers services related to the business of manufacturing, importing, assembling, or selling electronic equipment. Taiwan Kolin opposed this registration, citing its own trademark rights and procedural issues with KECI’s application.

Legal Context: Trademarks and Domain Names in the Philippines

In the Philippines, trademark law is governed by Republic Act No. 8293, also known as the Intellectual Property Code (IP Code). Section 138 of the IP Code states that a certificate of registration of a mark is prima facie evidence of the validity of the registration, the registrant’s ownership of the mark, and the exclusive right to use it in connection with specified goods or services. This right extends to domain names, which serve as digital identifiers analogous to physical addresses or telephone numbers.

A domain name like www.kolin.ph can function as a trademark, guiding consumers to a company’s online presence. The Supreme Court has recognized that in today’s internet-driven market, selling products online is integral to modern commerce. As stated in W Land Holding, Inc. v. Starwood Hotels and Resorts Worldwide, Inc., “the use of a registered mark representing the owner’s goods or services by means of an interactive website may constitute proof of actual use that is sufficient to maintain the registration of the same.”

However, this right is not absolute. The IP Code also stipulates that the protection afforded to a trademark must not infringe upon the rights of another trademark owner with a registered mark in its favor. This principle was crucial in the KECI vs. Taiwan Kolin case, where both parties had registered trademarks for the ‘KOLIN’ mark, albeit in different classes.

Case Breakdown: The Journey of KECI and Taiwan Kolin

The legal battle between KECI and Taiwan Kolin began with KECI’s application to register the domain name www.kolin.ph on August 16, 2007. Taiwan Kolin opposed this application, arguing that it violated Section 123.1(d) of the IP Code, which prohibits the registration of a mark identical to a registered mark belonging to a different proprietor with an earlier filing date.

The Bureau of Legal Affairs (BLA) initially dismissed Taiwan Kolin’s opposition due to procedural non-compliance. Taiwan Kolin had failed to attach the original or certified true copies of its supporting documents, as required by the Inter Partes Regulations. Despite subsequent attempts to rectify this, the BLA and the Intellectual Property Office (IPO) Director General upheld the dismissal, emphasizing the importance of adhering to procedural rules.

On appeal to the Court of Appeals (CA), the decision was affirmed. The CA noted that KECI’s existing registration of the ‘KOLIN’ mark under Class 35 provided prima facie evidence of its ownership and exclusive right to use the mark for the specified services. The CA also addressed the potential overlap between KECI’s and Taiwan Kolin’s trademark rights, clarifying that KECI’s registration for www.kolin.ph was limited to the services covered by its Class 35 application.

The Supreme Court ultimately upheld the CA’s decision. The Court emphasized that while a trademark owner’s rights extend to domain names and potential market expansions, they must not infringe upon other existing trademark registrations. As the Court stated, “The protection afforded to a trademark with regard to goods and services in market areas that are the normal potential expansion of the trademark owner’s business must not infringe on the rights of another trademark owner with a registered mark in its favor.”

The Court also highlighted the importance of procedural compliance, noting that Taiwan Kolin’s failure to submit the required documents with its opposition was not justified. The Court’s decision reinforced the principle that procedural rules are designed to facilitate the adjudication of cases and should be followed unless there are compelling reasons to relax them.

Practical Implications: Navigating Trademark and Domain Name Registration

The KECI vs. Taiwan Kolin case underscores the importance of understanding the interplay between trademark rights and domain name registration in the digital age. Businesses must ensure that their trademark applications are meticulously prepared, with all required documentation in order, to avoid procedural pitfalls.

For companies looking to establish an online presence, it’s crucial to consider how their trademark rights extend to domain names. However, they must also be aware of existing trademark registrations that could potentially conflict with their domain name choices. This case illustrates that while trademark owners have significant rights, those rights are not unlimited and must be exercised with respect for other registered marks.

Key Lessons:

• Ensure all trademark applications are complete and comply with procedural requirements.
• Understand that trademark rights extend to domain names, but must be balanced against other existing registrations.
• Consider potential market expansions when registering trademarks, but be cautious of infringing on others’ rights.

Frequently Asked Questions

Can a trademark be used as a domain name in the Philippines?
Yes, a trademark can be used as a domain name, as long as it does not infringe on other existing trademark registrations.

What happens if my domain name application is opposed?
If your domain name application is opposed, you must respond to the opposition and ensure all procedural requirements are met, such as submitting original or certified true copies of supporting documents.

How can I protect my trademark rights online?
To protect your trademark rights online, register your domain names promptly and monitor for potential infringements. Consider registering your trademark in relevant classes to cover your online activities.

What should I do if my trademark rights conflict with another’s domain name?
If your trademark rights conflict with another’s domain name, you may need to file a petition to cancel the conflicting registration or negotiate a resolution with the other party.

How does the Philippine IP Code affect my online business?
The Philippine IP Code provides the legal framework for protecting your trademarks online, including domain names. It’s essential to understand these laws to safeguard your brand’s online presence.

ASG Law specializes in Intellectual Property Law and Digital Commerce. Contact us or email hello@asglawpartners.com to schedule a consultation.