"OK Hotdog Inasal" loses trademark
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, consists of the following Insignia:
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. The said mark, which respondent intends to use on one of its curl snack products, appears as follows: (Mang Inasal v. IFP Manufacturing, G.R. No. 221717, June 19, 2017)
According to the Supreme Court, 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. Petitioner was, therefore, correct; and the IPO-BLA, IPO-DG, and the CA's rulings must be reversed. 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, thus, also likely to infringe the Mang Inasal mark. The law, in instances such as this, must come to the succor of the owner of the earlier mark. (Mang Inasal v. IFP Manufacturing, G.R. No. 221717, June 19, 2017)
A further examination by the High Court 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, it was held 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 I 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. There is 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, it was found by the Highest Tribunal that the OK Hotdog Inasal mark is similar to the Mang Inasal mark. (Mang Inasal v. IFP Manufacturing, G.R. No. 221717, June 19, 2017)
