Mang Inasal Philippines, Inc. v. IFP Manufacturing Corporation
REITERATIONFacts
The Antecedents: Respondent IFP Manufacturing Corporation applied to register the mark "OK Hotdog Inasal Cheese Hotdog Flavor Mark" for snack products. Petitioner Mang Inasal Philippines, Inc., owner of the registered mark "Mang Inasal, Home of Real Pinoy Style Barbeque and Device" for restaurant services, opposed this application. Petitioner argued that the proposed mark was confusingly similar to its own, violating Section 123.1(d)(iii) of Republic Act No. 8293, due to shared dominant elements and related goods/services, which would likely cause public confusion. Procedural History: The Intellectual Property Office's Bureau of Legal Affairs (IPO-BLA) dismissed Mang Inasal's opposition. This decision was affirmed by the Director General of the IPO. Both bodies found no sufficient similarity between the marks and deemed the goods and services unrelated. Mang Inasal appealed to the Court of Appeals (CA), which also denied the appeal, agreeing with the IPO's reasoning. Consequently, Mang Inasal filed the present Petition for Review on Certiorari with the Supreme Court. The Petition: Petitioner Mang Inasal Philippines, Inc. seeks, via a Petition for Review on Certiorari under Rule 45 of the Rules of Court, to reverse the Court of Appeals' Resolutions that upheld the Intellectual Property Office's decisions. Mang Inasal contends that the OK Hotdog Inasal mark is confusingly similar to its own registered mark, asserting that the dominant element "INASAL" is identical in both, and that the snack products are related to restaurant services, thus likely to deceive or confuse the public. Petitioner argues that the lower tribunals erred in finding no similarity and no relation between the respective marks and their offerings.
Issue(s)
Whether the OK Hotdog Inasal mark is confusingly similar to the Mang Inasal mark. Whether the goods for which the OK Hotdog Inasal mark is sought are related to the services represented by the Mang Inasal mark. Whether the OK Hotdog Inasal mark is registrable under Section 123.1(d)(iii) of RA 8293.
Ruling
The Supreme Court granted the petition, reversing the resolutions of the Court of Appeals and directing the Intellectual Property Office to deny respondent's application for registration of the "OK Hotdog Inasal Cheese Hotdog Flavor Mark."
Ratio Decidendi
On the issue of confusing similarity between the marks: The Court held that the OK Hotdog Inasal mark is a colorable imitation of the Mang Inasal mark, applying the dominancy test. The dominant feature of the Mang Inasal mark is the word "INASAL" as stylized. The OK Hotdog Inasal mark also features "INASAL" as one of its dominant elements, identical in its stylized form, color, and background to that of the Mang Inasal mark. The Court found that the exact same dominant element is key, and its incorporation in the respondent's mark has the potential to create a deceptive impression of association with the petitioner's mark. The Court reasoned that the peripheral differences in the OK Hotdog Inasal mark do not negate the overall impression of similarity created by the identical dominant feature, especially when the average buyer might overlook these details and focus on the prominent "INASAL" element. The Court concluded that the OK Hotdog Inasal mark meets the first condition of the proscription under Section 123.1(d)(iii) of RA 8293, which requires the prospective mark to nearly resemble or be similar to an earlier mark. On the issue of relatedness of goods and services: The Court found that the curl snack product for which the OK Hotdog Inasal mark is sought is related to the restaurant services represented by the Mang Inasal mark, leading to a potential confusion of business. The Court considered that petitioner's restaurant business is known for its chicken inasal, which uses a distinct inasal marinade. The Mang Inasal mark has been in use since 2003 and has expanded to 464 branches nationwide, indicating significant public recognition. Respondent seeks to market curl snacks with an "inasal" flavor. The Court reasoned that the underlying goods and services of both marks deal with "inasal" and "inasal-flavored" products, establishing a logical connection. Given this relation and the similarity of the marks, the Court concluded that an average buyer encountering the curls under the OK Hotdog Inasal mark is likely to be confused about the source, assuming they originate from petitioner or that petitioner supplied the flavorings. This potential confusion of business satisfies the second condition of Section 123.1(d)(iii) of RA 8293. On the registrability of the OK Hotdog Inasal mark: The Court ruled that the OK Hotdog Inasal mark meets both conditions of the proscription under Section 123.1(d)(iii) of RA 8293. First, it is similar to the Mang Inasal mark, an earlier registered mark. Second, it pertains to goods (curl snacks) that are related to the services (restaurant services) represented by the earlier mark. Therefore, the registration of the OK Hotdog Inasal mark is likely to deceive or cause confusion on the part of the public and infringe upon the Mang Inasal mark. The Court emphasized that the law must provide succor to the owner of the earlier mark in such instances.
Main Doctrine
A mark that nearly resembles a registered mark or a mark with an earlier filing or priority date and is likely to cause confusion on the part of the public cannot be registered. This proscription applies when the prospective mark is similar to an earlier mark and pertains to goods or services that are identical, similar, or related.