Case Summary (G.R. No. 221717)
Trademark Application and Oppositions
Respondent filed Trademark Application No. 4‑2011‑006098 on May 26, 2011 (published July 16, 2012) for a mark to be used on curl snack products described as having a “cheese hotdog inasal” flavor. Petitioner filed a Notice of Opposition (docketed IPC No. 14‑2012‑00369) on October 15, 2012, asserting that registration was barred by Section 123.1(d)(iii) of Republic Act No. 8293 (the Intellectual Property Code), on the ground that the proposed mark nearly resembles petitioner’s earlier Mang Inasal mark and is likely to deceive or cause confusion.
Key Dates
- Application filed: May 26, 2011; published July 16, 2012.
- Opposition filed: October 15, 2012.
- IPO‑BLA Decision dismissing opposition: September 19, 2013.
- IPO‑DG Decision dismissing appeal: December 15, 2014.
- CA Resolutions denying petition and motion for reconsideration: June 10, 2015 and December 2, 2015.
- Supreme Court decision: June 19, 2017.
Applicable Law and Governing Constitutional Framework
Primary statutory provision: Section 123.1(d)(iii), RA 8293 — a mark that “nearly resembles [an earlier mark] as to be likely to deceive or cause confusion” is not registrable. Jurisprudential standards applied include the doctrines distinguishing confusion of goods (product confusion) and confusion of business (source/origin confusion) as articulated in Skechers U.S.A., Inc. v. Trendworks International Corporation, and the analytical approaches of the dominancy test and the holistic test (Mighty Corporation v. E. & J. Gallo Winery). Because the decision date is after 1990, the 1987 Philippine Constitution is the governing constitutional framework for the case.
Issues Presented
- Whether the OK Hotdog Inasal mark is similar to the earlier Mang Inasal mark within the meaning of Sec. 123.1(d)(iii).
- Whether the goods for which respondent seeks registration (curl snack products) are identical, similar, or related to the services covered by the Mang Inasal mark (restaurant services) such that likelihood of deception or confusion exists.
Similarity Analysis (First Condition)
Legal standard: Resemblance short of literal identity suffices; “colorable imitation” and dominancy analysis are dispositive where a mark adopts the dominant, distinctive element of an earlier mark. Findings from comparison: petitioner’s Mang Inasal mark has a single dominant feature — the word “INASAL” in a bold red typeface, set against a black outline and yellow background with a staggered arrangement — making it the most distinctive and recognizable element. Respondent’s OK Hotdog Inasal mark includes three prominent features, one of which is “INASAL” rendered in the exact same red font, black outline, yellow background, and staggered format. Because respondent adopted verbatim the earlier mark’s dominant and distinctive element, the Court applied the dominancy test and concluded the OK Hotdog Inasal mark is a colorable imitation of the Mang Inasal mark. Peripheral differences (e.g., additional words “OK,” “HOTDOG,” “CHEESE,” and images of curls and cheese) do not overcome the likelihood of confusion created by identical dominant elements; an ordinary purchaser is likely to focus on the salient feature and infer a connection.
Relatedness Analysis (Second Condition)
Legal standard: Even if goods and services are not identical, registration is barred if they are related such that the public might reasonably assume common origin or economic linkage. The Court weighs multiple factors (business type and location, class of product, nature and purpose of goods, channels of trade, reputation of the earlier mark, and likelihood that an ordinarily prudent purchaser would be misled), recognizing no single factor is determinative. Application to facts: petitioner’s business is a well‑known restaurant chain particularly associated with “chicken inasal” (a distinct inasal marinade and grilling style) and has extensive nationwide presence (464 branches). Respondent’s curls are promoted as having a “cheese hotdog inasal” flavor. T
...continue readingCase Syllabus (G.R. No. 221717)
Case Caption, Court and Decision
- Supreme Court of the Philippines, Third Division, G.R. No. 221717, Decision rendered June 19, 2017; decision received by the Office on July 10, 2017.
- Decision authored by Justice Velasco, Jr.; Justices Bersamin, Reyes, Jardeleza, and Tijam concur.
- Petition for Review on Certiorari filed under Rule 45 of the Rules of Court, assailing Court of Appeals Resolutions dated June 10, 2015 and December 2, 2015 in CA-G.R. SP No. 139020.
Parties and Nature of the Case
- Petitioner: Mang Inasal Philippines, Inc., a domestic fast food company and registered owner of the "Mang Inasal, Home of Real Pinoy Style Barbeque and Device" mark (registered with the IPO in 2006; used since 2003).
- Respondent: IFP Manufacturing Corporation, a local manufacturer of snacks and beverages.
- Subject matter: Opposition to respondent’s Trademark Application No. 4-2011-006098 for the mark "OK Hotdog Inasal Cheese Hotdog Flavor Mark" for goods under Class 30 (curl snack products), on the ground that the applied-for mark is registrable in violation of Section 123.1(d)(iii) of RA 8293 because it is confusingly similar to petitioner’s earlier registered mark.
Procedural History
- Respondent filed trademark application with the Intellectual Property Office (IPO) on May 26, 2011; application published in the IPO E-Gazette on July 16, 2012.
- Petitioner filed a Notice of Opposition dated October 15, 2012; opposition docketed as IPC No. 14-2012-00369.
- IPO Bureau of Legal Affairs (IPO-BLA) issued Decision dated September 19, 2013 dismissing the opposition (dispositive: "the instant opposition is hereby DISMISSED").
- Petitioner appealed to the Director General (IPO-DG); appeal docketed as Appeal No. 14-2013-0052.
- IPO-DG rendered Decision dated December 15, 2014 dismissing petitioner’s appeal.
- Petitioner appealed to the Court of Appeals; CA issued Resolution dated June 10, 2015 denying the appeal and, on motion for reconsideration, issued Resolution dated December 2, 2015 denying reconsideration.
- Petitioner filed Petition for Review on Certiorari to the Supreme Court under Rule 45.
Factual Background: The Marks and Alleged Similarity
- Respondent’s applied-for mark (OK Hotdog Inasal mark) intended for curl snack products; mark includes multiple elements such as "OK," "HOTDOG," "INASAL," depiction of curls and cheese, and a banner "CHEESE HOTDOG FLAVOR."
- Petitioner’s registered Mang Inasal mark used in restaurant services under Class 43; mark features the word "MANG" and the dominant stylized element "INASAL" in bold red typeface against a black outline and yellow background with staggered arrangement, plus the phrase "HOME OF REAL PINOY STYLE BARBEQUE."
- Petitioner’s opposition asserted that:
- Both marks share the same dominant element, the word "INASAL," stylized in the same font and red color, within the same black outline and yellow background, and arranged in the same staggered format.
- Both marks cover inasal or inasal-flavored food products and thus the goods and services are closely related, likely causing confusion or suggesting a false connection.
IPO-BLA and IPO-DG Findings and Reasoning
- IPO-BLA and IPO-DG dismissed petitioner’s opposition and appeal, respectively.
- Key points of IPO findings:
- In appearance, the only similarity between the marks is the word "INASAL"; respondent’s mark contains additional words ("OK," "HOTDOG," "CHEESE") and images (curls and cheese) not in petitioner’s mark.
- The word "INASAL" is generic or descriptive (meaning barbeque or barbeque products) and cannot be exclusively appropriated by any person or entity.
- The goods and services are not closely related or competitive; respondent’s curls are sold through sari-sari stores, grocery stores and small distributors, while petitioner’s food products are sold in its restaurants; hence differing channels of trade and distribution mitigate confusion.
Court of Appeals Action
- Court of Appeals adopted and agreed with IPO-BLA and IPO-DG ratiocinations.
- CA issued resolutions dated June 10, 2015 and December 2, 2015 denying petitioner’s appeal and motion for reconsideration, leading to Supreme Court review.
Legal Standard: Section 123.1(d)(iii) of RA 8293 (Registrability)
- Section 123.1(d)(iii) provides that a mark cannot be registered if it nearly resembles a registered mark belonging to a different proprietor or a mark with an earlier filing or priority date so as to be likely to deceive or cause confusion.
- Confusion may be:
- Confusion of goods (product confusion) — where a purchaser would be induced to purchase one product believing it to be another; or
- Confusion of business (source or origin confusion) — where goods may be different but the public might reasonably assume they originate from the same source or that there is some association between the parties.
- Two minimum conditions for the proscription to apply:
- The prospective mark must be similar or nearly resemble the earlier mark.
- The prospective mark must pertain to goods or services identical, similar, or related to those of the earlier mark.
- Authorities and precedents cited in the decision include Skechers U.S.A., Inc. v. Trendworks International Corp., Faberge, Emerald Garment Manufacturing, Clark v. Manila Candy Co., Mighty Corporation v. E. & J. Gallo Wi