MANG INASAL PHILIPPINES, INC.

,
Petitioner
v.
IFP MANUFACTURING CORPORATION,
Respondent
G.R. No. 221717, June 19, 2017
FACTS:
 On May 26, 2011, respondent filed with the Intellectual Property Office (IPO) an application 3 for
the registration of the mark "OK Hotdog Inasal Cheese Hotdog Flavor Mark" (OK Hotdog Inasal
mark) in connection with goods under Class 30 of the Nice Classification.4 The said mark, which
respondent intends to use on one of its curl snack products.

 The application of respondent was opposed by petitioner Mang Inasal Philippines, Inc. Petitioner
is a domestic fast food company and the owner of the mark "Mang Inasal, Home of Real Pinoy
Style Barbeque and Device" (Mang Inasal mark) for services under Class 43 of the Nice
Classification. The said mark, which was registered with the IPO in 2006 7 and had been used by
petitioner for its chain of restaurants since 2003
 Petitioner, in its opposition, contended that the registration of respondent's OK Hotdog Inasal
mark is prohibited under Section 123.l (d)(iii) of Republic Act No. (RA) 8293; that the OK Hotdog
Inasal mark and the Mang Inasal mark share similarities-both as to their appearance and as to
the goods or services that they represent which tend to suggest a false connection or association
between the said marks and, in that regard, would likely cause confusion on the part of the
public.
 Petitioner's opposition was referred to the Bureau of Legal Affairs (BLA) of the IPO for hearing
and disposition. On September 19, 2013, after due proceedings, the IPO-BLA issued a Decision
11 dismissing petitioner's opposition.

 Aggrieved, petitioner appealed the Decision of IPO-BLA to the Director General (DG) of the IPO.
On December 15, 2014, the IPO-DG rendered a Decision 13 dismissing the appeal of petitioner.
 Undeterred, petitioner appealed to the CA. On June 10, 2015, the CA issued a Resolution 17
denying the appeal of petitioner.
ISSUE:
W/N the OK Hotdog Inasal mark is confusingly similar to the Mang Inasal mark (YES)

RULING:
I. The Proscription: Sec. 123.l(d)(iii) of RA 8293 (Summary: Confusion of goods was defined in
Skechers USA v Trendworks International; to be regarded as ‘likely to deceive or cause
confusion upon the purchasing public, two conditions must be met: (1) resemblance to an
earlier mark; and (2) similarity of identity of related goods or services represented; both of
which are fulfilled by the OK Hotdog Inasal’s mark)
SECTION 123. Registrability. –
123. 1. A mark cannot be registered if it:
d. xxx:

1. x x x
 11. x x x
iii. ... nearly resembles [a registered mark belonging to a different proprietor or a mark
with an earlier filing or priority date] as to be likely to deceive or cause confusion.

The concept of confusion, which is at the heart of the proscription, could either refer to
confusion of goods or confusion of business. In Skechers U.S.A., Inc. v. Trendworks International
Corporation, 19 we discussed and differentiated both types of confusion, as follows:

Relative to the question on confusion of marks and trade names, jurisprudence has
noted two (2) types of confusion, viz.: (1) confusion of goods (product confusion), where
the ordinarily prudent purchaser would be induced to purchase one product in the belief
that he was purchasing the other; and (2) confusion of business (source or origin
confusion), where, although the goods of the parties are different, the product, the mark
of which registration is applied for by one party, is such as might reasonably be assumed
to originate with the registrant of an earlier product, and the public would then be
deceived either into that belief or into the belief that there is some connection between
the two parties, though inexistent.

Verily, to fall under the ambit of Sec. 123. l(d)(iii) and be regarded as likely to deceive or
cause confusion upon the purchasing public, a prospective mark must be shown to meet two (2)
minimum conditions:

1. The prospective mark must nearly resemble or be similar to an earlier mark; and
2. 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 Court disagrees with the rulings of the IPO-BLA, IPO-DG, and the CA who have held that the
OK Hotdog Inasal mark does not fulfill both conditions and so granted the registration.

II. The OK Hotdog Inasal Mark Is Similar to the Mang Inasal Mark (Summary: To fulfill the first
condition, the opposing mark must be similar, similarity is achieved when a mark is a
colorable imitation of the former; colorable imitation denotes such likeness in form, content,
words, sound, meaning, special arrangement or general appearance of one mark with
respect to another as would likely mislead an average buyer in the ordinary course of
purchase. The Dominancy Test must be used to determine similarity or colorable imitation
between two marks)

The first condition of the proscription requires resemblance or similarity between a

prospective mark and an earlier mark. Similarity does not mean absolute identity of marks.
To be regarded as similar to an earlier mark, it is enough that a prospective mark be a
colorable imitation of the former. Colorable imitation denotes such likeness in form, content,
words, sound, meaning, special arrangement or general appearance of one mark with
respect to another as would likely mislead an average buyer in the ordinary course of
purchase.
 In determining whether there is similarity or colorable imitation between two marks,
authorities employ either the dominancy test or the holistic test. In Mighty Corporation v. E.
& J. Gallo Winery, we distinguished between the two tests as follows:

The Dominancy Test focuses on the similarity of the prevalent features of the
competing trademarks which might cause confusion or deception, and thus
infringement. If the competing trademark contains the main, essential or dominant
features of another, and confusion or deception is likely to result, infringement takes
place. Duplication or imitation is not necessary; nor is it necessary that the infringing
label should suggest an effort to imitate. The question is whether the use of the marks
involved is likely to cause confusion or mistake in the mind of the public or deceive
purchasers.

On the other hand, the Holistic Test requires that the entirety of the marks in
question be considered in resolving confusing similarity. Comparison of words is not the
only determining factor. The trademarks in their entirety as they appear in their
respective labels or hang tags must also be considered in relation to the goods to which
they are attached. The discerning eye of the observer must focus not only on the
predominant words but also on the other features appearing in both labels in order that
he may draw his conclusion whether one is confusingly similar to the other. (citations
omitted and emphasis supplied)
However, recent case law on trademark seems to indicate an overwhelming judicial preference towards
applying the dominancy test. We conform.

Our examination of the marks in controversy yielded the following findings:

1. The petitioner's Mang Inasal mark has a single dominant feature-the word "INASAL" written in a
bold red typeface against a black outline and yellow background with staggered design. The
other perceptible elements of the mark-such as the word "MANG" written in black colored font
at the upper left side of the mark and the phrase "HOME OF REAL PINOY STYLE BARBEQUF'
written in a black colored stylized font at the lower portion of the mark-are not as visually
outstanding as the mentioned feature.

2. Being the sole dominant element, the word "INASAL," as stylized in the Mang Inasal mark, is also
the most distinctive and recognizable feature of the said mark.

3. The dominant element "INASAL," as stylized in the Mang Inasal mark, is different from the term
"inasal' per se. The term "inasal" per se is a descriptive term that cannot be appropriated.
However, the dominant element "INASAL," as stylized in the Mang Inasal mark, is not. Petitioner,
as the registered owner of the Mang Inasal mark, can claim exclusive use of such element.

4. The respondent's OK Hotdog Inasal mark, on the other hand, has three (3) dominant features:
(a) the word "INASAL" written in a bold red typeface against a black and yellow outline with
 staggered design; (b) the word "HOTDOG" written in green colored font; and (c) a picture of
three pieces of curls. Though there are other observable elements in the mark-such as the word
"OK'' written in red colored font at the upper left side of the mark, the small red banner
overlaying the picture of the curls with the words "CHEESE HOTDOG FLAVOR" written on it, and
the image of a block of cheese beside the picture of the curls-none of those are as prevalent as
the two features aforementioned.

5. The dominant element "INASAL" in the OK Hotdog Inasal mark is exactly the same as the
dominant element "INASAL" in the Mang Inasal mark. Both elements in both marks are printed
using the exact same red colored font, against the exact same black outline and yellow
background and is arranged in the exact same staggered format.

6. Apart from the element "INASAL," there appear no other perceivable similarities between the
two marks.

Given the foregoing premises, and applying the dominancy test, we hold that the OK Hotdog Inasal
mark is a colorable imitation of the Mang Inasal mark.

First. The fact that the conflicting marks have exactly the same dominant element is key. It is
undisputed that the OK Hotdog Inasal mark copied and adopted as one of its dominant features the
"INASAL" element of the Mang Inasal mark. Given that the "INASAL" element is, at the same time, the
dominant and most distinctive feature of the Mang Inasal mark, the said element's incorporation in the
OK Hotdog Inasal mark, thus, has the potential to project the deceptive and false impression that the
latter mark is somehow linked or associated with the former mark.

Second. The differences between the two marks are trumped by the overall impression created by
their similarity. The mere fact that there are other elements in the OK Hotdog Inasal mark that are not
present in the Mang Inasal mark actually does little to change the probable public perception that both
marks are linked or associated.1âwphi1 It is worth reiterating that the OK Hotdog Inasal mark actually
brandishes a literal copy of the most recognizable feature of the Mang Inasal mark. We doubt that an
average buyer catching a casual glimpse of the OK Hotdog Inasal mark would pay more attention to the
peripheral details of the said mark than it would to the mark's more prominent feature, especially when
the same invokes the distinctive feature of another more popular brand.

All in all, we find that the OK Hotdog Inasal mark is similar to the Mang Inasal mark.

III. The Goods for which the Registration of the OK Hotdog Inasal Mark Is Sought Are Related
to the Services Being Represented by the Mang Inasal Mark (Summary: to fulfill the second
condition, the opposing mark must represent a related service of the former)

The Goods for which the Registration of the OK Hotdog Inasal Mark Is Sought Are Related to the
Services Being Represented by the Mang Inasal Mark
 The second condition of the proscription requires that the prospective mark pertain to goods or
services that are either identical, similar or related to the goods or services represented by the earlier
mark. While there can be no quibble that the curl snack product for which the registration of the OK
Hotdog Inasal mark is sought cannot be considered as identical or similar to the restaurant services
represented by the Mang Inasal mark, there is ample reason to conclude that the said product and
services may nonetheless be regarded as related to each other.

Related goods and services are those that, though non-identical or non-similar, are so logically
connected to each other that they may reasonably be assumed to originate from one manufacturer or
from economically-linked manufacturers. In determining whether goods or services are related, several
factors may be considered. Some of those factors recognized in our jurisprudence are:

1. the business (and its location) to which the goods belong;

2. the class of product to which the goods belong;

3. the product's quality, quantity, or size, including the nature of the package, wrapper or container;

4. the nature and cost of the articles;

5. the descriptive properties, physical attributes or essential characteristics with reference to their
form, composition, texture or quality;

6. the purpose of the goods;

7. whether the article is bought for immediate consumption, that is, day-to-day household items;

8. the fields of manufacture;

9. the conditions under which the article is usually purchased, and

10. the channels of trade through which the goods flow, how they are distributed, marketed,
displayed and sold.

WHEREFORE, premises considered, the petition is hereby GRANTED.