Case Summary (G.R. No. 221717)
Factual Background
Respondent filed an application to register the mark “OK Hotdog Inasal Cheese Hotdog Flavor Mark” for curl snack products in Class 30. Petitioner had earlier registered the service mark Mang Inasal, Home of Real Pinoy Style Barbeque and Device for restaurant services in Class 43, a mark registered on August 17, 2006 and used since 2003. Petitioner opposed respondent’s application on grounds that the marks are confusingly similar and that respondent’s mark would likely cause public confusion or suggest a false association in violation of Sec. 123.1(d)(iii) of RA 8293.
Proceedings before the Intellectual Property Office
The opposition was referred to the Bureau of Legal Affairs of the IPO, which, after hearing, dismissed petitioner’s opposition on September 19, 2013. The IPO-BLA held that the only common element was the word “INASAL,” that other literal and graphic elements in respondent’s mark distinguished it, that “inasal” is a generic or descriptive term that no one may exclusively appropriate, and that the goods and services were not closely related given different channels of trade. Petitioner appealed to the Director General of the IPO, who on December 15, 2014 dismissed the appeal and affirmed the Bureau’s conclusion.
Court of Appeals Proceedings
Petitioner elevated the matter to the Court of Appeals. The CA denied the appeal by Resolution dated June 10, 2015 and likewise denied petitioner’s motion for reconsideration by Resolution dated December 2, 2015. The CA agreed with the IPO’s ratiocinations and concluded that registration of respondent’s mark need not be denied.
Issue Presented
The controlling issue was whether respondent’s OK Hotdog Inasal mark is barred from registration under Sec. 123.1(d)(iii) of RA 8293 because it nearly resembles petitioner’s earlier Mang Inasal mark so as to be likely to deceive or cause confusion, considering the similarity of the marks and the relationship, if any, between the goods or services.
Petitioner’s Contentions
Petitioner maintained that both marks share a common dominant element, the stylized word “INASAL,” displayed in the same red font, black outline and yellow background, arranged in the same staggered format, and that this dominant, distinctive element would lead the public to associate respondent’s curls with petitioner’s restaurant services. Petitioner further contended that respondent’s curls were inasal-flavored and thus related to petitioner’s inasal food products, creating a likelihood of business or source confusion.
Respondent’s Position and IPO Findings
Respondent and the IPO tribunals relied on differences in the composite marks, noting that respondent’s mark also contains the words “OK,” “HOTDOG,” “CHEESE,” and pictorial elements of curls and cheese that are absent in petitioner’s mark. The IPO concluded that “inasal” is a generic or descriptive term that cannot be exclusively appropriated, and that the goods (curl snacks) and services (restaurant services) are not closely related because they travel in different channels of trade and are marketed in different outlets.
Supreme Court’s Ruling
The Court granted the petition. It held that respondent’s OK Hotdog Inasal mark is a colorable imitation of petitioner’s earlier Mang Inasal mark and that the curl snack product sought to be registered under respondent’s mark is related to petitioner’s restaurant services in a manner likely to cause business confusion. The Court reversed and set aside the CA Resolutions of June 10, 2015 and December 2, 2015, the IPO Director General’s Decision of December 15, 2014, and the IPO-BLA Decision of September 19, 2013, and directed the IPO to deny Application No. 4-2011-006098.
Legal Basis and Reasoning — The Two-Prong Test under Sec. 123.1(d)(iii)
The Court reiterated that Sec. 123.1(d)(iii) bars registration of a mark that nearly resembles an earlier mark and is likely to deceive or cause confusion. The Court explained that doubly required conditions are (1) that the prospective mark nearly resembles or is similar to the earlier mark, and (2) that the goods or services of the marks are identical, similar, or related. The Court cited and applied authorities including Skechers U.S.A., Inc. v. Trendworks International Corporation and Mighty Corporation v. E. & J. Gallo Winery in delineating the concept of confusion and the tests used to determine similarity.
Legal Basis and Reasoning — Similarity and the Dominancy Test
The Court applied the dominancy test. It found that petitioner’s mark has a single dominant feature — the stylized word “INASAL” in bold red typeface against a black outline and yellow background with a staggered design — and that this element is the most distinctive and recognizable feature of the registered mark. Although the generic term “inasal” cannot be appropriated per se, the stylized dominant element as used in petitioner’s mark is protectable. Respondent’s mark incorporated the same stylized “INASAL” element identically, alongside other elements that were less visually dominant. The Court concluded that the incorporation of petitioner’s most recognizable feature amounted to a colorable imitation likely to create the deceptive impression of a link or association with petitioner. The Court emphasized that peripheral differences did not negate the overall impression created by the identical dominant element and that an ordinary buyer would likely focus on the prominent shared feature.
Legal Basis and Reasoning — Relatedness of Goods and Services
On the second prong, the Court found that respondent’s curls flavored “cheese hotdog inasal” are related to petitioner’s restaurant services known for chicken inasal. The Court observed that relatedness requires a logical connection such that goods and services may reasonably be assumed to originate from a single source or economically linked enterprises. The Court weighed factors recognized in jurisprudence — the nature and purp
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Case Syllabus (G.R. No. 221717)
Parties and Posture
- MANG INASAL PHILIPPINES, INC. was the Petitioner and owner of the registered Mang Inasal service mark used since 2003 for fast food restaurant services under Class 43.
- IFP MANUFACTURING CORPORATION was the Respondent and applicant for registration of the OK Hotdog Inasal mark for curl snack products under Class 30.
- The administrative proceedings began with Petitioner's opposition at the Intellectual Property Office docketed as IPC No. 14-2012-00369.
- The Bureau of Legal Affairs of the IPO (IPO-BLA) dismissed Petitioner’s opposition by Decision dated September 19, 2013.
- Petitioner appealed to the Director General of the IPO (IPO-DG), who dismissed the appeal by Decision dated December 15, 2014.
- Petitioner brought the case to the Court of Appeals, which issued Resolutions dated June 10, 2015 and December 2, 2015 denying Petitioner’s appeal.
- Petitioner filed a Petition for Review on Certiorari under Rule 45 to the Supreme Court seeking reversal of the CA Resolutions.
Key Facts
- Respondent filed Trademark Application No. 4-2011-006098 for the mark "OK Hotdog Inasal Cheese Hotdog Flavor Mark" and published the application in the IPO E-Gazette on July 16, 2012.
- Petitioner’s registered Mang Inasal mark consists of the word INASAL in bold red typeface within a black outline and yellow background arranged in a staggered format accompanied by the words MANG and the phrase HOME OF REAL PINOY STYLE BARBEQUE.
- Respondent’s OK Hotdog Inasal mark includes the word INASAL in the same stylized red font inside the same black outline and yellow background in the same staggered format together with the words OK, HOTDOG, CHEESE HOTDOG FLAVOR, and images of curls and cheese.
- Respondent marketed the curl snack as having a cheese hotdog inasal flavor, and Petitioner operates a nationwide chain known for chicken inasal, with four hundred sixty-four branches.
Trademark Application and Opposition
- Petitioner opposed registration on the ground that the OK Hotdog Inasal mark is prohibitable under Sec. 123.1(d)(iii) of RA 8293 because it nearly resembles Petitioner’s earlier Mang Inasal mark and is likely to deceive or cause confusion.
- Petitioner argued that both marks share the dominant element INASAL in the same stylization and that both marks cover inasal or inasal-flavored food products, which would likely cause public confusion or suggest a false association.
- Respondent contended that inasal is a generic or descriptive term that no one can exclusively appropriate and emphasized differences in other words and pictorial elements and differences in channels of trade.
Administrative Decisions
- The IPO-BLA dismissed the opposition on the grounds that the only similarity was the word INASAL but that other words and images in Respondent’s mark differentiated it, and that inasal is a generic/descriptive term.
- The IPO-DG affirmed the IPO-BLA Decision and dismissed Petitioner’s appeal without finding confusing similarity.
- The Court of Appeals agreed with the administrative findings and denied Petitioner’s appeal in its June 10, 2015 Resolution and subsequent December 2, 2015 denial of reconsideration.
Issues Presented
- The primary issue was whether Respondent’s OK Hotdog Inasal mark nearly resembles Petitioner’s earlier Mang Inasal mark and whether the goods and services covered are identical, similar, or related so as to render Respondent’s mark non-registrable u