G.R. No.

221717
MANG INASAL PHILIPPINES, INC., Petitioner
vs.
IFP MANUFACTURING CORPORATION, Respondent
DECISION
VELASCO, JR., J.:
Before us is a Petition for Review on Certiorari under Rule 45 of the
Rules of Court of the Resolutions dated June 10, 2015 1 and
December 2, 2015 2 of the Court of Appeals (CA) in CA-G.R. SP
No. 139020.
The Facts
The Trademark Application and the Opposition Respondent IFP
Manufacturing Corporation is a local manufacturer of snacks and
beverages.
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, appears as follows:

The application of respondent was opposed 5 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. 6 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, 8 consists of the following Insignia:
 represented by the Mang Inasal mark (i.e., fast food restaurants).
Both marks cover inasal or inasal-flavored food products.
Petitioner's opposition was referred to the Bureau of Legal Affairs
(BLA) of the IPO for hearing and disposition.
Decisions of the IPO-BLA and the IPO-DG
On September 19, 2013, after due proceedings, the IPO-BLA issued
a Decision 11 dismissing petitioner's opposition. The dispositive
portion of the Decision reads:
WHEREFORE, premises considered, the instant opposition is hereby
DISMISSED. Let the filewrapper [sic] of Trademark Application
Serial No. 4-2011-006098 be returned, together with a copy of this
Decision, to the Bureau of Trademarks for further information and
appropriate action.
SO ORDERED.
Aggrieved, petitioner appealed the Decision of IPO-BLA to the
Director General (DG) of the IPO. 12
On December 15, 2014, the IPO-DG rendered a Decision 13
dismissing the appeal of petitioner. The fallo of the Decision
Petitioner, in its opposition, contended that the registration of accordingly reads:
respondent's OK Hotdog Inasal mark is prohibited under Section Wherefore, premises considered, the appeal is hereby dismissed. Let
123.l (d)(iii) of Republic Act No. (RA) 8293. 9 Petitioner averred a copy of this Decision be furnished to the Director of Bureau of
that the OK Hotdog Inasal mark and the Mang Inasal mark share Legal Affairs and the Director of Bureau of Trademarks for their
similarities-both as to their appearance and as to the goods or appropriate action and information. Further, let a copy of this
services that they represent which tend to suggest a false connection Decision be furnished to the library of the Documentation,
or association between the said marks and, in that regard, would Information and Technology Transfer Bureau for records purposes.
likely cause confusion on the part of the public. 10 As petitioner SO ORDERED.
explained: Both the IPO-BLA and the IPO-DG were not convinced that the OK
1. The OK Hotdog Inasal mark is similar to the Mang Inasal mark. Hotdog Inasal mark is confusingly similar to the Mang Inasal mark.
Both marks feature the same dominant element-i.e., the word They rebuffed petitioner's contention, thusly:
"INASAL"-printed and stylized in the exact same manner, viz: 1. The OK Hotdog Inasal mark is not similar to the Mang !nasal
a. In both marks, the word "INASAL" is spelled using the same font mark. In terms of appearance, the only similarity between the two
style and red color; marks is the word "INASAL." However, there are other words like
b. In both marks, the word "INASAL" is placed inside the same black "OK," "HOTDOG," and "CHEESE' and images like that of curls and
outline and yellow background; and cheese that are found in the OK Hotdog Inasal mark but are not
c. In both marks, the word "INASAL" is arranged in the same present in the Mang Inasal mark. 14
staggered format. In addition, petitioner cannot prevent the application of the word
2. The goods that the OK Hotdog Inasal mark is intended to identify "INASAL" in the OK Hotdog Inasal mark. No person or entity can
(i.e., curl snack products) are also closely related to the services claim exclusive right to use the word "INASAL" because it is merely
a generic or descriptive word that means barbeque or barbeque xxxx
products. 15 d. xxx:
Neither can the underlying goods and services of the two marks be 1. x x x
considered as closely related. The products represented by the two 11. x x x
marks are not competitive and are sold in different channels of trade. iii. ... nearly resembles [a registered mark belonging to a different
The curl snack products of the OK Hotdog Inasal mark are sold in proprietor or a mark with an earlier filing or priority date] as to be
sari-sari stores, grocery stores and other small distributor outlets, likely to deceive or cause confusion.
whereas the food products associated with the Mang Inasal mark are The concept of confusion, which is at the heart of the proscription,
sold in petitioner's restaurants. 16 could either refer to confusion of goods or confusion of business. In
Undeterred, petitioner appealed to the CA. Skechers U.S.A., Inc. v. Trendworks International Corporation, 19 we
Resolutions of the CA and the Instant Appeal discussed and differentiated both types of confusion, as follows:
On June 10, 2015, the CA issued a Resolution 17 denying the appeal Relative to the question on confusion of marks and trade names,
of petitioner. Petitioner filed a motion for reconsideration, but this jurisprudence has noted two (2) types of confusion, viz.: (1)
too was denied by the CA through its Resolution18 dated December confusion of goods (product confusion), where the ordinarily prudent
2, 2015. The CA, in its Resolutions, simply agreed with the purchaser would be induced to purchase one product in the belief
ratiocinations of the IPOBLA and IPO-DG. that he was purchasing the other; and (2) confusion of business
Hence, the instant appeal. (source or origin confusion), where, although the goods of the parties
Here, petitioner prays for the reversal of the CA Resolutions. are different, the product, the mark of which registration is applied
Petitioner maintains that the OK Hotdog Inasal mark is confusingly for by one party, is such as might reasonably be assumed to originate
similar to the Mang Inasal mark and insists that the trademark with the registrant of an earlier product, and the public would then be
application of respondent ought to be denied for that reason. deceived either into that belief or into the belief that there is some
Our Ruling connection between the two parties, though inexistent.
We have examined the OK Hotdog Inasal and Mang Inasal marks Confusion, in either of its forms, is, thus, only possible when the
under the lens of pertinent law and jurisprudence. And, through it, goods or services covered by allegedly similar marks are identical,
we have determined the justness of petitioner's claim. By our legal similar or related in some manner. 20
and jurisprudential standards, the respondent's OK Hotdog Inasal Verily, to fall under the ambit of Sec. 123. l(d)(iii) and be regarded
mark is, indeed, likely to cause deception or confusion on the part of as likely to deceive or cause confusion upon the purchasing public, a
the public. Hence, contrary to what the IPO-BLA, IPO-DG, and the prospective mark must be shown to meet two (2) minimum
CA had ruled, the respondent's application should have been denied. conditions:
We, therefore, grant the appeal. 1. The prospective mark must nearly resemble or be similar to an
I earlier mark; and
The Proscription: Sec. 123.l(d)(iii) of RA 8293 2. The prospective mark must pertain to goods or services that are
A mark that is similar to a registered mark or a mark with an earlier either identical, similar or related to the goods or services
filing or priority date (earlier mark) and which is likely to cause represented by the earlier mark.
confusion on the part of the public cannot be registered with the IPO. The rulings of the IPO-BLA, IPO-DG, and the CA all rest on the
Such is the import of Sec. 123.l(d)(iii) of RA 8293: notion that the OK Hotdog Inasal mark does not fulfill both
SECTION 123. Registrability. – conditions and so may be granted registration.
123. 1. A mark cannot be registered if it: We disagree.
II Our examination of the marks in controversy yielded the following
The OK Hotdog Inasal Mark Is Similar to the Mang Inasal Mark findings:
The first condition of the proscription requires resemblance or 1. The petitioner's Mang Inasal mark has a single dominant feature-
similarity between a prospective mark and an earlier mark. the word "INASAL" written in a bold red typeface against a black
Similarity does not mean absolute identity of marks. 21 To be outline and yellow background with staggered design. The other
regarded as similar to an earlier mark, it is enough that a prospective perceptible elements of the mark-such as the word "MANG" written
mark be a colorable imitation of the former. 22 Colorable imitation in black colored font at the upper left side of the mark and the phrase
denotes such likeness in form, content, words, sound, meaning, "HOME OF REAL PINOY STYLE BARBEQUF' written in a black
special arrangement or general appearance of one mark with respect colored stylized font at the lower portion of the mark-are not as
to another as would likely mislead an average buyer in the ordinary visually outstanding as the mentioned feature.
course of purchase. 23 2. Being the sole dominant element, the word "INASAL," as stylized
In determining whether there is similarity or colorable imitation in the Mang Inasal mark, is also the most distinctive and
between two marks, authorities employ either the dominancy test or recognizable feature of the said mark.
the holistic test.24 In Mighty Corporation v. E. & J. Gallo Winery,25 3. The dominant element "INASAL," as stylized in the Mang Inasal
we distinguished between the two tests as follows: mark, is different from the term "inasal' per se. The term "inasal"
The Dominancy Test focuses on the similarity of the prevalent per se is a descriptive term that cannot be appropriated. However,
features of the competing trademarks which might cause confusion the dominant element "INASAL," as stylized in the Mang Inasal
or deception, and thus infringement. If the competing trademark mark, is not. Petitioner, as the registered owner of the Mang Inasal
contains the main, essential or dominant features of another, and mark, can claim exclusive use of such element.
confusion or deception is likely to result, infringement takes place. 4. The respondent's OK Hotdog Inasal mark, on the other hand, has
Duplication or imitation is not necessary; nor is it necessary that the three (3) dominant features: (a) the word "INASAL" written in a bold
infringing label should suggest an effort to imitate. The question is red typeface against a black and yellow outline with staggered
whether the use of the marks involved is likely to cause confusion or design; (b) the word "HOTDOG" written in green colored font; and
mistake in the mind of the public or deceive purchasers. (c) a picture of three pieces of curls. Though there are other
On the other hand, the Holistic Test requires that the entirety of the observable elements in the mark-such as the word "OK'' written in
marks in question be considered in resolving confusing similarity. red colored font at the upper left side of the mark, the small red
Comparison of words is not the only determining factor. The banner overlaying the picture of the curls with the words "CHEESE
trademarks in their entirety as they appear in their respective labels HOTDOG FLAVOR" written on it, and the image of a block of
or hang tags must also be considered in relation to the goods to cheese beside the picture of the curls-none of those are as prevalent
which they are attached. The discerning eye of the observer must as the two features aforementioned.
focus not only on the predominant words but also on the other 5. The dominant element "INASAL" in the OK Hotdog Inasal mark is
features appearing in both labels in order that he may draw his exactly the same as the dominant element "INASAL" in the Mang
conclusion whether one is confusingly similar to the other. (citations Inasal mark. Both elements in both marks are printed using the exact
omitted and emphasis supplied) same red colored font, against the exact same black outline and
There are currently no fixed rules as to which of the two tests can be yellow background and is arranged in the exact same staggered
applied in any given case. 26 However, recent case law on trademark format.
seems to indicate an overwhelming judicial preference towards 6. Apart from the element "INASAL," there appear no other
applying the dominancy test. 27 We conform. perceivable similarities between the two marks.
Given the foregoing premises, and applying the dominancy test, we to conclude that the said product and services may nonetheless be
hold that the OK Hotdog Inasal mark is a colorable imitation of the regarded as related to each other.
Mang Inasal mark. Related goods and services are those that, though non-identical or
First. The fact that the conflicting marks have exactly the same non-similar, are so logically connected to each other that they may
dominant element is key. It is undisputed that the OK Hotdog Inasal reasonably be assumed to originate from one manufacturer or from
mark copied and adopted as one of its dominant features the economically-linked manufacturers. 28 In determining whether goods
"INASAL" element of the Mang Inasal mark. Given that the or services are related, several factors may be considered. Some of
"INASAL" element is, at the same time, the dominant and most those factors recognized in our jurisprudence are: 29
distinctive feature of the Mang Inasal mark, the said element's 1. the business (and its location) to which the goods belong;
incorporation in the OK Hotdog Inasal mark, thus, has the potential 2. the class of product to which the goods belong;
to project the deceptive and false impression that the latter mark is 3. the product's quality, quantity, or size, including the nature of the
somehow linked or associated with the former mark. package, wrapper or container;
Second. The differences between the two marks are I trumped by the 4. the nature and cost of the articles;
overall impression created by their similarity. The mere fact that 5. the descriptive properties, physical attributes or essential
there are other elements in the OK Hotdog Inasal mark that are not characteristics with reference to their form, composition, texture or
present in the Mang Inasal mark actually does little to change the quality;
probable public perception that both marks are linked or 6. the purpose of the goods;
associated.1âwphi1 It is worth reiterating that the OK Hotdog Inasal 7. whether the article is bought for immediate consumption, that is,
mark actually brandishes a literal copy of the most recognizable day-to-day household items;
feature of the Mang Inasal mark. We doubt that an average buyer 8. the fields of manufacture;
catching a casual glimpse of the OK Hotdog Inasal mark would pay 9. the conditions under which the article is usually purchased, and
more attention to the peripheral details of the said mark than it would 10. the channels of trade through which the goods flow, how they are
to the mark's more prominent feature, especially when the same distributed, marketed, displayed and sold.
invokes the distinctive feature of another more popular brand. Relative to the consideration of the foregoing factors, however,
All in all, we find that the OK Hotdog Inasal mark is similar to the Mighty Corporation 30 significantly imparted:
Mang Inasal mark. The wisdom of this approach is its recognition that each trademark
III infringement case presents its own unique set of facts. No single
The Goods for which the Registration of the OK Hotdog Inasal Mark factor is preeminent, nor can the presence or absence of one
Is Sought Are Related to the Services Being Represented by the determine, without analysis of the others, the outcome of an
Mang Inasal Mark infringement suit. Rather, the court is required to sift the evidence
The second condition of the proscription requires that the relevant to each of the criteria. This requires that the entire panoply
prospective mark pertain to goods or services that are either of elements constituting the relevant factual landscape be
identical, similar or related to the goods or services represented by comprehensively examined. It is a weighing and balancing process.
the earlier mark. While there can be no quibble that the curl snack With reference to this ultimate question, and from a balancing of the
product for which the registration of the OK Hotdog Inasal mark is determinations reached on all of the factors, a conclusion is reached
sought cannot be considered as identical or similar to the restaurant whether the parties have a right to the relief sought.
services represented by the Mang Inasal mark, there is ample reason A very important circumstance though is whether there exists a
likelihood that an appreciable number of ordinarily prudent
purchasers will be misled, or simply confused, as to the source of the fair to say that a sizeable portion of the population is knowledgeable
goods in question. The "purchaser" is not the "completely unwary of the Mang Inasal mark.
consumer" but is the "ordinarily intelligent buyer" considering the Third. Respondent, on the other hand, seeks to market under the OK
type of product involved he is accustomed to buy, and therefore to Hotdog Inasal mark curl snack products which it publicizes as
some extent familiar with, the goods in question. The test of having a cheese hotdog inasal flavor. 34
fraudulent simulation is to be found in the likelihood of the Accordingly, it is the fact that the underlying goods and services of
deception of some persons in some measure acquainted with an both marks deal with inasal and inasal-flavored products which
established design and desirous of purchasing the commodity with ultimately fixes the relations between such goods and services.
which that design has been associated. The test is not found in the Given the foregoing circumstances and the aforesaid similarity
deception, or the possibility of deception, of the person who knows between the marks in controversy, we are convinced that an average
nothing about the design which has been counterfeited, and who buyer who comes across the curls marketed under the OK Hotdog
must be indifferent between that and the other. The simulation, in Inasal mark is likely to be confused as to the true source of such
order to be objectionable, must be such as appears likely to mislead curls. To our mind, it is not unlikely that such buyer would be led
the ordinary intelligent buyer who has a need to supply and is into the assumption that the curls are of petitioner and that the latter
familiar with the article that he seeks to purchase. (citations omitted has ventured into snack manufacturing or, if not, that the petitioner
and emphasis supplied) has supplied the flavorings for respondent's product. Either way, the
Mindful of the foregoing precepts, we hold that the curl snack reputation of petitioner would be taken advantage of and placed at
product for which the registration of the OK Hotdog Inasal mark is the mercy of respondent.
sought is related to the restaurant services represented by the Mang All in all, we find that the goods for which the registration of the OK
!nasal mark, in such a way that may lead to a confusion of business. Hotdog Inasal mark is sought are related to the services being
In holding so, we took into account the specific kind of restaurant represented by the Mang Inasal mark.1âwphi1
business that petitioner is engaged in, the reputation of the IV
petitioner's mark, and the particular type of curls sought to be Conclusion
marketed by the respondent, thus: The OK Hotdog Inasal mark meets the two conditions of the
First. Petitioner uses the Mang Inasal mark in connection with its proscription under Sec. 123.l(d)(iii) of RA 8293. First, it is similar to
restaurant services that is particularly known for its chicken inasal, the Mang Inasal mark, an earlier mark. Second, it pertains to goods
i.e., grilled chicken doused in a special inasal marinade. 31 The that are related to the services represented by such earlier mark.
inasal marinade is different from the typical barbeque marinade and Petitioner was, therefore, correct; and the IPO-BLA, IPO-DG, and
it is what gives the chicken inasal its unique taste and distinct orange the CA's rulings must be reversed. The OK Hotdog Inasal mark is
color. 32 Inasal refers to the manner of grilling meat products using not entitled to be registered as its use will likely deceive or cause
an inasal marinade. confusion on the part of the public and, thus, also likely to infringe
the Mang Inasal mark. The law, in instances such as this, must come
Second. The Mang Inasal mark has been used for petitioner's to the succor of the owner of the earlier mark.
restaurant business since 2003. The restaurant started in Iloilo but WHEREFORE, premises considered, the petition is hereby
has since expanded its business throughout the country. Currently, GRANTED. We hereby render a decision as follows:
the Mang Inasal chain of restaurants has a total of 464 branches 1. REVERSING and SETTING ASIDE the Resolutions dated June
scattered throughout the nation's three major islands. 33 It is, thus, 10, 2015 and December 2, 2015 of the Court of Appeals in CA-G.R.
SP No. 139020;
2. SETTING ASIDE the Decision dated December 15, 2014 of the
Director General of the Intellectual Property Office in Appeal No.
14-2013-0052;
3. SETTING ASIDE the Decision dated September 19, 2013 of the
Director of the Bureau of Legal Affairs of the Intellectual Property
Office in IPC No. 14-2012-00369; and
4. DIRECTING the incumbent Director General and Director of the
Bureau of Legal Affairs of the Intellectual Property Office to DENY
respondent's Application No. 4-2011-006098 for the registration of
the mark "OK Hotdog Inasal Cheese Hotdog Flavor Mark"
SO ORDERED.
PRESBITERO J. VELASCO, JR.
Associate Justice
WE CONCUR: