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KENSONIC v. UNI-LINE MULTI-RESOURCES

FACTS:

The case involves the cancellation of the registration of the trademark "SAKURA" for certain goods of Uni-Line Multi Resources, Inc. (Uni-Line) sought by Kensonic, Inc. (Kensonic) on the ground that Kensonic had prior use and registration of the SAKURA mark.

Uni-Line filed an application for the registration of the SAKURA mark for various goods falling under Class 09 of the Nice International Classification of Goods. Kensonic opposed Uni-Line's application and the Director of the Bureau of Legal Affairs (BLA) ruled in favor of Kensonic, rejecting Uni-Line's application.

While the first case was pending, Uni-Line filed another application and was issued a certificate of registration for the mark "SAKURA & FLOWER DESIGN" for different goods falling under Class 09. Kensonic filed a petition for cancellation of Uni-Line's registration and the BLA Director cancelled Uni-Line's certificate of registration.

Uni-Line also filed an application for the registration of the trademark SAKURA for various goods falling under different classes. The application was published and no opposition was filed, thus a certificate of registration for the SAKURA mark was issued. Kensonic then filed a petition for cancellation of Uni-Line's certificate of registration alleging prior use and copyright ownership.

The BLA ruled in favor of Kensonic and cancelled Uni-Line's registration. Uni-Line appealed to the Director General of the Intellectual Property Office (IPO) who modified the BLA's decision by upholding Uni-Line's registration for goods falling under Class 07 and Class 11.

Uni-Line Multi Resources, Inc. (Uni-Line) filed a trademark application for the mark SAKURA for various goods falling under Classes 07, 09, and 11. Kensonic, Inc. (Kensonic) opposed the application, claiming ownership of the mark SAKURA and alleging likelihood of confusion. The Bureau of Legal Affairs (BLR) of the Intellectual Property Office (IPO) ruled in favor of Kensonic, cancelling Uni-Line's registration for all goods covered by the mark SAKURA.

On appeal, the Director General of the IPO reversed the BLR's ruling, affirming the cancellation of Uni-Line's registration only for goods falling under Class 09, but not for goods falling under Classes 07 and 11.

Both parties appealed to the Court of Appeals (CA), which upheld Kensonic's ownership of the mark SAKURA but ruled that Uni-Line's goods under Classes 07 and 11 were different and unrelated to Kensonic's goods under Class 09.

Kensonic filed a partial reconsideration, arguing that Uni-Line's goods were related and that maintaining the two marks would cause confusion. The CA later sided with Kensonic and reverted to the cancellation of Uni-Line's registration for all goods falling under Classes 07, 09, and 11.

Kensonic Inc. filed a petition for cancellation of the registration of the SAKURA mark owned by Uni-Line on the ground that the goods covered by the mark belong to the general class of goods falling under Class 09. The Intellectual Property Office (IPO) granted the petition and cancelled the registration.

Uni-Line appealed to the Court of Appeals (CA), but the CA partially granted the motion for reconsideration, allowing Uni-Line to use the SAKURA mark for goods falling under Classes 7 and 11 but prohibiting its use for goods falling under Class 9.

Both parties appealed to the Supreme Court. Kensonic argued that all the goods were related, that the marks were identical, and using the SAKURA mark would cause confusion about the source of the goods. Uni-Line, on the other hand, contended that the SAKURA mark is a generic name in Japanese and thus not copyrightable. Uni-Line also argued that the IPO and the CA erred in ruling that Kensonic owned the mark. Uni-Line further claimed that its products were not related to Kensonic's because they were not electronic in nature.

ISSUES:

  1. Is the SAKURA mark capable of appropriation?

  2. Are Kensonic's goods falling under Class 09 related to Uni-Line's goods falling under Class 07 and Class 11?

  3. Are Uni-Line's goods falling under Class 9 related to Kensonic's goods falling under Class 9?

  4. Whether the mark "SAKURA" can be appropriated despite being of a generic nature and not identifying Kensonic's goods.

  5. Whether Kensonic's ownership of the mark can be challenged at this stage of the proceedings.

  6. Whether the goods of Uni-Line and Kensonic are related for purposes of trademark registration.

  7. Whether the classification under the Nice Agreement is sufficient to determine relatedness of goods.

  8. Whether or not the receipt of the original of a pleading by the Division Clerk of Court is sufficient compliance with the requirement of filing under the rules.

  9. Whether or not the petition for certiorari warrants dismissal due to a procedural infirmity.

RULING:

  1. The appeal of Kensonic in G.R. Nos. 211820-21 is dismissed but the petition in G.R. Nos. 211834-35 is partially granted.

  2. Yes, the mark "SAKURA" can be appropriated. Although the mark is of a generic nature, it did not identify Kensonic's goods. Therefore, Kensonic can claim ownership of the mark.

  3. No, Kensonic's ownership of the mark cannot be challenged at this stage of the proceedings. Kensonic's prior use of the mark since 1994 made it the owner of the mark, and its ownership cannot be reviewed in this appeal by petition for review on certiorari, which is limited to questions of law.

  4. The goods of Uni-Line and Kensonic are not related for purposes of trademark registration.

  5. The mere fact that goods belong to the same class under the Nice Agreement does not necessarily mean that they are related. Other factors should be considered in determining relatedness.

  6. No, the receipt of the original of a pleading by the Division Clerk of Court is not sufficient compliance with the requirement of filing under the rules. The mere receipt of the pleading does not automatically constitute filing, as filing involves the act of presenting the pleading to the court or officer to obtain an acknowledgement of receipt. Thus, the requirement of filing was not satisfied.

  7. Yes, the petition for certiorari warrants dismissal due to a procedural infirmity. The petitioner failed to comply with the requirement of filing as discussed above. Consequently, the petition deserves to be dismissed outright.

PRINCIPLES:

  • A mark is any visible sign capable of distinguishing the goods or services of an enterprise, while copyright is the right to literary property. The SAKURA mark is a trademark, not a copyright.

  • A trademark consisting of generic signs may still be registered if it is identifiable to the goods or services it seeks to identify.

  • Generic words that are descriptive of a type of product and primarily geographically descriptive cannot be appropriated and registered as trademarks.

  • Generic or descriptive words cannot be appropriated and protected as trademarks to the exclusion of others. They belong to the public domain.

  • A descriptive word may be distinctive, but it will be denied protection if others are equally entitled to its use.

  • Questions of law involve doubt as to what the law is on a certain state of facts, while questions of fact involve doubt as to the truth or falsity of alleged facts. The resolution of a question of law rests solely on what the law provides on the given set of circumstances.

  • Factual findings of quasi-judicial bodies, when affirmed by the Court of Appeals, are binding on the Supreme Court, unless the party challenging the findings can show that it falls within the exceptions.

  • The prohibition under the Intellectual Property Code against the registration of similar or related marks extends to goods that are related to the registered goods.

  • Factors to consider in determining whether goods are related include the business to which the goods belong, the class of product, the product's quality or size, the nature and cost of the articles, the descriptive properties or physical attributes of the goods, the purpose of the goods, the conditions under which the goods are purchased, and the channels of trade through which the goods flow.

  • The classification of goods under the Nice Agreement is only one of the factors to consider in determining relatedness. It is not sufficient to establish relatedness between goods.

  • Mere receipt of a pleading by the Division Clerk of Court does not automatically constitute filing. Filing involves the act of presenting the pleading to the court or officer to obtain an acknowledgement of receipt.

  • Failure to comply with the requirement of filing may warrant the dismissal of a petition or pleading.