KENSONIC vs UNI-LINE services that they seek to identify.

It is clear from the law itself

that what is prohibited is not having a generic mark but having
DIGEST: such generic mark being identifiable to the good or service.
On June 15, 1999, Uni-Line filed an application for the
registration of the mark "SAKURA" for amplifier, speaker, In Asia Brewery, Inc., v. CA, the Court explained that the fact that
cassette, cassette disk, video cassette disk, car stereo, television, the words pale pilsen are part of ABI's trademark does not
etc. falling under Class 9. Kensonic opposed Uni-Line's constitute an infringement of SMC's trademark: SAN MIGUEL
application (IPC1). The Director of the BLA rendered decision PALE PILSEN, for "pale pilsen" are generic words descriptive of
finding that Kensonic was the first to adopt and use the mark the color ("pale"), of a type of beer ("pilsen"), which is a light
SAKURA since 1994 and thus rejecting Uni-Line's application. On bohemian beer. "Pilsen" is a "primarily geographically descriptive
January 19, 2006, said Decision became final and executory. word. The Trademark Law provides:

While IPC Case 1 was pending, Uni-Line filed an application and "Sec. 4.... The owner of trade-mark, trade-name or
was issued a certificate of registration for the mark "SAKURA & service¬-mark used to distinguish his goods, business or
FLOWER DESIGN" for use on products under Class 9. Kensonic services from the goods, business or services of others
filed a petition for cancellation (IPC 2) of Uni-Line's registration. shall have the right to register the same [on the
The BLA Director held that Uni-Line's goods are related to principal register], unless it: xxx xxx xxx
Kensonic's goods and that the latter was the first user of the mark
SAKURA used on products under Class 9. The BLA Director thus “(e) Consists of a mark or trade-name which, when
cancelled Uni-Line's certificate of registration. applied to or used in connection with the goods,
business or services of the applicant is merely
On June 6, 2002, Uni-Line filed an application for the registration descriptive or deceptively misdescriptive of them, or
of the trademark SAKURA for use on goods falling under Class 07, when applied to or used in connection with the goods,
09, 11. There being no opposition, Certificate of Registration for business or services of the applicant is primarily
the mark SAKURA effective March 18, 2006 was issued. geographically descriptive or deceptively
misdescriptive of them, or is primarily merely a
On September 7, 2006, Kensonic filed with the BLA a Petition for surname."
Cancellation of Uni-Line's Certificate of Registration alleging that
in IPC 1, it opposed Uni-Line's application to register SAKURA This, however, is not the situation herein. Although SAKURA
and was already sustained by the Director General, which refers to the Japanese flowering cherry and is, therefore, of a
Decision is now final and executory. Kensonic further alleged that generic nature, such mark did not identify Kensonic's goods
it is the owner of a copyright for SAKURA and that since 1994, unlike the mark in Asia Brewery, Inc., v. Court of Appeals.
has maintained and established a good name and goodwill over Kensonic's DVD or VCD players and other products could not be
the SAKURA products. identified with cherry blossoms. Hence, the mark can be
appropriated.
The BLA ruled in favor of Kensonic and directed the cancellation
of registration of Uni-Line's SAKURA mark. It observed that an Kensonic's prior use of the mark since 1994 made it the owner of
examination of the SAKURA mark of Kensonic and that of Uni- the mark, and its ownership cannot anymore be challenged at
Line revealed that the marks were confusingly similar with each this stage of the proceedings. Seeking the review of Kensonic's
other; that the goods sought to be covered by the SAKURA ownership would entail the examination of facts already settled
registration of Uni-Line were related to the goods of Kensonic, by the lower tribunals. Uni-Line's challenge to the ownership of
thereby necessitating the cancellation of the registration of Uni- the SAKURA mark should stop here because the Court cannot act
Line's mark; and that considering that Kensonic had used the on a factual matter in this appeal by petition for review on
SAKURA mark as early as 1994 in Class 09 goods Kensonic had certiorari, which is limited to the consideration of questions of
acquired ownership of the SAKURA mark, and should be legally law.
protected thereon.
2. Whether or not Kensonic’s goods and Uni-Line’s goods are
On appeal, the Director General of the IPO modified the decision related. NO
of the BLR by upholding Uni-Line's registration of the SAKURA
mark as to goods classified as Class 07 and Class 11, thereby Uni-Line's goods classified under Class 07 and Class 11 were not
effectively reversing the BLR, but affirmed the BLR as regards the related to Kensonic's goods registered under Class 09.
treatment of the SAKURA mark that covered the goods falling
under Class 09. The prohibition under Sec. 123 of IPC extends to goods that are
related to the registered goods, not to goods that the registrant
1. Whether or not “SAKURA” mark is capable of may produce in the future. To allow the expansion of coverage is
appropriation. YES to prevent future registrants of goods from securing a trademark
on the basis of mere possibilities and conjectures that may or
Sec. 123(h) of the IPC prohibits the registration of a trademark may not occur at all. Surely, the right to a trademark should not
that consists exclusively of signs that are generic for the goods or be made to depend on mere possibilities and conjectures.
 wherein electronic products have not only diversified by leaps
In Mighty Corporation v. E. & J. Gallo Winery, the Court has and bounds, and are geared towards interoperability, it is difficult
identified the different factors by which to determine whether or to assert readily, as respondent simplistically did, that all devices
not goods are related to each other for purposes of registration: that require plugging into sockets are necessarily related goods.

Non-competing goods may be those which, though they are not in It bears to stress at this point that the list of products included in
actual competition, are so related to each other that it can Class 9 can be sub-categorized into five (5) classifications,
reasonably be assumed that they originate from one namely:
manufacturer, in which case, confusion of business can arise out (1) apparatus and instruments for scientific or research
of the use of similar marks. They may also be those which, being purposes,
entirely unrelated, cannot be assumed to have a common source; (2) information technology and audiovisual equipment,
hence, there is no confusion of business, even though similar (3) apparatus and devices for controlling the distribution
marks are used. Thus, there is no trademark infringement if the and use of electricity,
public does not expect the plaintiff to make or sell the same class (4) optical apparatus and instruments, and
of goods as those made or sold by the defendant. (5) safety equipment.
From this sub-classification, it becomes apparent that petitioner's
In resolving whether goods are related, several factors come into products, i.e., televisions and DVD players, belong to audiovisual
play: equipment, while that of respondent, consisting of automatic
(a) the business (and its location) to which the goods voltage regulator, converter, recharger, stereo booster, AC-DC
belong regulated power supply, step-down transformer, and PA
(b) the class of product to which the goods belong amplified AC-DC, generally fall under devices for controlling the
(c) the product's quality, quantity, or size, including the distribution and use of electricity.
nature of the package, wrapper or container
(d) the nature and cost of the articles Based on the foregoing pronouncement in Taiwan Kolin
(e) the descriptive properties, physical attributes or Corporation, Ltd. v. Kolin Electronics, Co., Inc., there are other
essential characteristics with reference to their form, sub-classifications present even if the goods are classified under
composition, texture or quality Class 09. For one, Kensonic's goods belonged to the information
(f) the purpose of the goods technology and audiovisual equipment subclass, but Uni-Line's
(g) whether the article is bought for immediate goods pertained to the apparatus and devices for controlling the
consumption, that is, day-to-day household items distribution of electricity sub-class. Also, the Class 09 goods of
(h) the fields of manufacture Kensonic were final products but Uni-Line's Class 09 products
(i) the conditions under which the article is usually were spare parts. In view of these distinctions, the Court agrees
purchased and with Uni-Line that its Class 09 goods were unrelated to the Class
(j) the channels of trade through which the goods flow, 09 goods of Kensonic.
how they are distributed, marketed, displayed and sold.

An examination of the foregoing factors reveals that the goods of

Uni-Line were not related to the goods of Kensonic by virtue of
their differences in class, the descriptive attributes, the purposes
and the conditions of the goods.

In Taiwan Kolin Corporation, Ltd. v. Kolin Electronics, Co., Inc.,the

Court has opined that the mere fact that goods belonged to the
same class does not necessarily mean that they are related; and
that the factors listed in Mighty Corporation v. E. & J. Gallo
Winery should be taken into consideration. As mentioned, the
classification of the products under the NCL is merely part and
parcel of the factors to be considered in ascertaining whether the
goods are related. It is not sufficient to state that the goods
involved herein are electronic products under Class 9 in order to
establish relatedness between the goods, for this only accounts
for one of many considerations enumerated in Mighty
Corporation case.

Clearly then, it was erroneous for respondent to assume over the

CA to condude that all electronic products are related and that
the coverage of one electronic product necessarily precludes the
registration of a similar; mark over another. In this digital age