MANG INASAL v. IFP MANUFACTURING CORPORATION

MANG INASAL PHILIPPINES, INC., Petitioner Vs.  IFP MANUFACTURING CORPORATION, Respondent
G.R. No. 221717
June 19, 2017

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 for the registration of the mark "OK Hotdog Inasal Cheese Hotdog Flavor Mark"in connection with goods under Class 30 of the Nice Classification. 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 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. Petitioner averred 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 epresent 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. As petitioner explained:

1. The OK Hotdog Inasal mark is similar to the Mang Inasal mark. Both marks feature the same dominant element-i.e., the word "INASAL"-printed and stylized in the exact same manner, viz:

a. In both marks, the word "INASAL" is spelled using the same font style and red color;

b. In both marks, the word "INASAL" is placed inside the same black outline and yellow background; and

c. In both marks, the word "INASAL" is arranged in the same staggered format.

2. The goods that the OK Hotdog Inasal mark is intended to identify (i.e., curl snack products) are also closely related to the services 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.

ISSUE:

Whether or not the registration of respondent's OK Hotdog Inasal mark is prohibited under Section 123.l (d) (iii) of Republic Act No. (RA) 8293


HELD:

Yes. The OK Hotdog Inasal mark meets the two conditions of the proscription under Sec. 123.l(d)(iii) of RA 8293. First, it is similar to the Mang Inasal mark, an earlier mark. Second, it pertains to goods that are related to the services represented by such earlier mark.

The Proscription: Sec. 123.l(d)(iii) of RA 8293 A mark that is similar to a registered mark or a mark with an earlier filing or priority date (earlier mark) and which is likely to cause confusion on the part of the public cannot be registered with the IPO. Such is the import of Sec. 123.l(d)(iii) of RA 8293: SECTION 123. Registrability. – 123. 1. A mark cannot be registered if it:

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.