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MANG INASAL PHILIPPINES v. IFP MANUFACTURING CORPORATION

FACTS:

Respondent IFP Manufacturing Corporation applied for the registration of the mark "OK Hotdog Inasal Cheese Hotdog Flavor Mark" with the IPO for goods under Class 30. Petitioner Mang Inasal Philippines, Inc., opposed the registration of respondent's mark, arguing that it violated Section 123.1(d)(iii) of RA 8293 due to similarities with their mark "Mang Inasal, Home of Real Pinoy Style Barbeque and Device" for services under Class 43. The opposition was referred to IPO-BLA for handling, and both the IPO-BLA and IPO-DG dismissed petitioner's claims of confusion and lack of close relation between the goods and services associated with the marks. The CA upheld the dismissal, prompting petitioner to file a Petition for Review on Certiorari before the Supreme Court.

ISSUES:

  1. Whether the OK Hotdog Inasal mark is likely to cause confusion or deception on the part of the public.

  2. Whether the OK Hotdog Inasal mark is a colorable imitation of the Mang Inasal mark.

  3. Whether the goods for which the registration of the OK Hotdog Inasal mark is sought are related to the services represented by the Mang Inasal mark.

  4. Whether the OK Hotdog Inasal mark is similar to the Mang Inasal mark

  5. Whether the goods for which the registration of the OK Hotdog Inasal mark is sought are related to the services represented by the Mang Inasal mark

RULING:

  1. The Supreme Court held that the OK Hotdog Inasal mark is likely to cause deception or confusion on the part of the public. Hence, the respondent's application for registration should have been denied.

  2. The OK Hotdog Inasal mark is a colorable imitation of the Mang Inasal mark. The dominant element "INASAL" in both marks is exactly the same, printed using the same font, against the same outline and background, and arranged in the same format. The overall impression created by the similarity between the dominant elements of the marks can deceive or falsely associate the OK Hotdog Inasal mark with the Mang Inasal mark.

  3. The goods for which the registration of the OK Hotdog Inasal mark is sought are related to the services represented by the Mang Inasal mark. While the goods (curl snack product) and services (restaurant services) are not identical or similar, they may be regarded as related due to their logical connection and the likelihood that they may originate from one manufacturer or economically-linked manufacturers. Factors such as the business, class of product, nature of the articles, purpose of the goods, and channels of trade support the finding of a relationship between the goods and services.

  4. The Supreme Court held that the OK Hotdog Inasal mark is similar to the Mang Inasal mark and the goods for which the registration of the OK Hotdog Inasal mark is sought are related to the services represented by the Mang Inasal mark. Therefore, the OK Hotdog Inasal mark is not entitled to be registered as its use will likely deceive or cause confusion on the part of the public and also likely to infringe the Mang Inasal mark. The Court reversed the ruling of the Court of Appeals and ordered the Intellectual Property Office to deny respondent's application for the registration of the OK Hotdog Inasal mark.

PRINCIPLES:

  • Under Section 123.1(d)(iii) of RA 8293, a mark that is similar to 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.

  • Confusion can refer to either confusion of goods or confusion of business. Confusion of goods occurs when the ordinarily prudent purchaser would be induced to purchase one product in the belief that he was purchasing the other. On the other hand, confusion of business occurs when the goods of the parties are different, but the product, the mark of which registration is applied for by one party, is such that it might reasonably be assumed to originate with the registrant of an earlier product, and the public would then be deceived into that belief or into the belief that there is some connection between the two parties, though inexistent.

  • To fall under the proscription of Sec. 123.1(d)(iii), a prospective mark must nearly resemble or be similar to an earlier mark, and the prospective mark must pertain to goods or services that are either identical, similar, or related to the goods or services represented by the earlier mark.

  • The dominancy test is applied to determine whether there is similarity or colorable imitation between two marks. The dominancy test focuses on the similarity of the prevalent features of the competing trademarks which might cause confusion or deception. If the competing trademark contains the main, essential, or dominant features of another, and confusion or deception is likely to result, infringement takes place.

  • In determining similarity or colorable imitation between marks, the entirety of the marks must be considered, not just the comparison of words. The discerning eye of the observer must focus on all the features appearing in both labels in order to determine whether one mark is confusingly similar to the other.

  • A mark that copies and adopts the dominant element of another mark may create a deceptive or false association between the two marks.

  • The overall impression created by the similarity between marks is weighed in determining likelihood of confusion or deception.

  • Related goods and services are those that, though non-identical or non-similar, are logically connected and may reasonably be assumed to originate from one manufacturer or economically-linked manufacturers.

  • In determining whether goods or services are related, factors such as the business, class of product, nature of the articles, purpose of the goods, and channels of trade may be considered.

  • In determining likelihood of confusion, the test is whether the similarity between the marks is likely to deceive or cause confusion in the mind of the ordinary purchaser who is familiar with the existing product under the registered mark.

  • The test of fraudulent simulation is whether the ordinary intelligent buyer, who has a need to supply and is familiar with the article that he seeks to purchase, is likely to be misled or confused as to the source of the goods in question.

  • The goods and services of both marks are considered related when they deal with similar products or services, thus fixing the relations between such goods and services.