KURYENTE MO

CORPORATION
VS
KAPITAN KURYENTE
CORPORATION
Facts of the case:

• On June 2017, Kapitan Kuryente Corp. filed with the

Intellectual Property Office (IPO), a trademark
application, for the use of "KURYENTE" on a combination
of goods, including colored televisions, refrigerators,
window-type and split-type air conditioners, electric fans
and water dispensers.

• Said goods allegedly fall under Classes 00, 01, 02 of the

Nice Classification (NCL). Kapitan Kuryente is a prior
registrant of said mark in Taiwan in 2014.
• On July 2017, Kuryente Mo Corp. opposed Kapitan
Kuryente’s, docketed as Inter Partes Case.

• As argued, the mark KURYENTE seeks to register is

identical, if not confusingly similar, with its "KURYENTE"
mark registered on 2013 in the Philippines covering the
following products under Class 08 of the NCL: automatic
voltage regulator, converter, recharger, stereo booster, AC-
DC regulated power supply, step-down transformer and
PA amplified AC-DC.5
This is the trademark of KURYENTE MO, CORP. for all their
electronic products.
While this is the trademark of KAPITAN KURYENTE, CORP.
for all their electronic products.
ISSUES to be resolved:

1. Whether or not Kapitan Kuryente Corp. is entitled to its

trademark registration of "KURYENTE" over its specific
goods of television sets and DVD players.

2. Kuryente Mo Corp. claims that Kapitan Kuryente’s

products are closely-related. Thus, granting its
application for trademark registration, according to
Kuryente Mo, would cause confusion as to the public.

3. What are the remedies available to Kuryente Mo Corp?

4. What are the tests/theories applicable in the case.

Whether or not Kapitan Kuryente
Corp. is entitled to its trademark
registration of "KURYENTE" over
its specific goods of television
sets and DVD players.
No.

1. Kuryente Mo Corp. first registered its mark "KURYENTE” in

the Philippines on 2013 covering the following products under
Class 08 of the NCL: automatic voltage regulator, converter,
recharger, stereo booster, AC-DC regulated power supply,
step-down transformer and PA amplified AC-DC.5.

Section 138. Certificates of Registration. - A certificate

of registration of a mark shall be prima facie evidence of the
validity of the registration, the registrant's ownership of the
mark, and of the registrant's exclusive right to use the same
in connection with the goods or services and those that are
related thereto specified in the certificate. (Sec. 20, R.A. No.
165)
The rights of the trademark owner are found in the Intellectual Property
Code, which provides:

Section 147. Rights Conferred. - 147.1. The owner of a registered

mark shall have the exclusive right to prevent all third parties not
having the owner's consent from using in the course of trade identical
or similar signs or containers for goods or services which are identical or
similar to those in respect of which the trademark is registered where
such use would result in a likelihood of confusion. In case of the use of
an identical sign for identical goods or services, a likelihood of confusion
shall be presumed.

Section 168. Unfair Competition, Rights, Regulation and

Remedies. - 168.1. A person who has identified in the mind of the
public the goods he manufactures or deals in, his business or services
from those of others, whether or not a registered mark is employed,
has a property right in the goodwill of the said goods, business or
services so identified, which will be protected in the same manner as
other property rights.
2. Section 123. Registrability. - 123.1. A mark cannot be registered if it:

x x x x

(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;

x x x x

(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;
Kuryente Mo Corp. claims that
Kapitan Kuryente’s products are
closely-related. Thus, granting its
application for trademark
registration, according to
Kuryente Mo, would cause
confusion as to the public.
KAPITAN KURYENTE, CORP. KURYENTE MO, CORP.
(Defendant) (Complainant)
Based on the following premises: (a) the mark sought to be registered by
Kapitan Kuryente Corp. is confusingly similar to the one already registered in
favor of Kuryente Mo Corp; (b) there are no other designs, special shape or
easily identifiable earmarks that would differentiate the products of both
competing companies; and (c) the intertwined use of television sets with
amplifier, booster and voltage regulator bolstered the fact that televisions can
be considered as within the normal expansion of Kuryente Mo Corp. Thereby
deemed covered by its trademark as explicitly protected under Sec. 138of the
IP Code.

Section 122 of the Intellectual Property Code of the Philippines (IPC) provides
that rights to a mark shall be acquired through registration validly done in
accordance with the provisions of this law.27 Corollary to that rule, Section 123
provides which marks cannot be registered.
• Indubitably, Defendant’s mark is identical to the registered mark of
herein Complainant.

1.The identical mark is used on goods belonging to Class 9 to which

Complainant’s goods are also classified. On this point alone, Defendant’s
application should already be denied.

Class 9

Scientific, nautical, surveying, photographic, cinematographic, optical,

weighing, measuring, signalling, checking (supervision), life-saving and
teaching apparatus and instruments; apparatus and instruments for
conducting, switching, transforming, accumulating, regulating or controlling
electricity; apparatus for recording, transmission or reproduction of sound or
images; magnetic data carriers, recording discs; compact discs, DVDs and
other digital recording media; mechanisms for coin-operated apparatus;
cash registers, calculating machines, data processing equipment,
computers; computer software; fire-extinguishing apparatus. cralawl
 2. The idea also of relation between products as a factor hindering against defendant’s
application. Citing Esso Standard Eastern, Inc. v. Court of Appeals, respondent argues
that the goods covered by petitioner’s application and those covered by its registration
are actually related belonging as they do to the same class or have the same physical
characteristics with reference to their form, composition, texture, or quality, or if they
serve the same purpose. We likewise draw parallelisms between the present
controversy and the following cases:

(a) In Arce & Sons, Inc. vs. Selecta Biscuit Company, biscuits were held related to milk
because they were both food products;

(b) In Chua Che vs. Phil. Patents Office, soap and perfume, lipstick and nail polish are
held to be similarly related because they are common household items;

(c) In Ang vs. Teodoro, the trademark “Ang Tibay” for shoes and slippers was disallowed
to be used for shirts and pants because they belong to the same general class of goods;
and

(d) In Khe vs. Lever Bros. Co., soap and pomade, although non-competitive, were held
to be similar or belong to the same class, since both are toilet articles.
We aver that Kapitan Kuryente Corp. and Kuryente Mo Corp.’s products
are closely-related not only because both fall under Class 9 of the NCL,
but mainly because they both relate to electronic products, instruments,
apparatus, or appliances. Pushing the point, we, the complainant would
argue that Kuryente Mo Corp. and Kapitan Kuryente Corp. goods are
inherently similar in that they are all plugged into electric sockets and
perform a useful function.
3. Significantly Kuryente Mo Corp’s goods (automatic voltage regulator; converter;
recharger; stereo booster; AC-DC regulated power supply; step-down transformer; and
PA amplified AC-DC) and Kuryente Mo Corp’s television sets and DVD players are
both classified under class 9 of the NICE agreement. At first glance, it is also evident
that all these goods are generally described as electrical devices.x x x [T]he goods of
both Kapitan Kuryente Corp. and Kuryente Mo Corp. will inevitably be
introduced to the public as “KURYENTE” products and will be offered for sale in the
same channels of trade. Power supply as well as audio and stereo equipment like
booster and amplifier are not only sold in hardware and electrical shops for these
products are commonly found in appliance stores alongside television sets and DVD
players. With the present trend in today’s entertainment of having a home theater
system, it is not unlikely to see a stereo booster, amplifier and automatic voltage
regulator displayed together with the television sets and DVD players. With the
intertwined use of these products bearing the identical “KURYENTE” mark, the
ordinary intelligent consumer would likely assume that they are produced by the same
manufacturer.

In sum, the intertwined use, the same classification of the products as class 9 under
the NICE Agreement, and the fact that they generally flow through the same channel
of trade clearly establish that Taiwan Kolin’s television sets and DVD players are
closely related to Kolin Electronics’ goods.
What are the remedies available
to Kuryente Mo Corp?
Remedies available:

Injunction

damages
What are the tests/theories
applicable in the case.
DOMINANCY TEST:

Dominancy test focuses on "the similarity of the

prevalent or dominant features of the competing
trademarks that might cause confusion, mistake,
and deception in the mind of the purchasing
public. Duplication or imitation is not necessary;
neither is it required that the mark sought to be
registered suggests an effort to imitate. Given
more consideration are the aural and visual
impressions created by the marks on the buyers of
goods, giving little weight to factors like prices,
quality, sales outlets, and market segments.
Applying the dominancy test to this case requires
us to look only at the mark submitted by
defendants in its application, while we give
importance to the aural and visual impressions the
mark is likely to create in the minds of the buyers.

The marks are confusingly similar with each other

such that an ordinary purchaser can conclude an
association or relation between the marks. The
consuming public does not have the luxury of time
to ruminate the phonetic sounds of the trademarks,
to find out which one has a short or long vowel
sound.
CONCLUSION