Mang Inasal Philippines, Inc. vs. IFP Manufacturing Corporation

A trademark application must be denied under Section 123.1(d)(iii) of RA 8293 when the proposed mark constitutes a colorable imitation of an earlier mark's dominant feature and the underlying goods or services, though non-identical, are logically connected such that they may reasonably be assumed to originate from a single source or economically-linked manufacturers, creating likelihood of confusion of business.

Mang Inasal Philippines, Inc. operates a nationwide chain of fast-food restaurants specializing in chicken inasal, using the registered mark "Mang Inasal, Home of Real Pinoy Style Barbeque and Device" since 2003. IFP Manufacturing Corporation, a local snack manufacturer, filed an application to register "OK Hotdog Inasal Cheese Hotdog Flavor Mark" for curl snack products, featuring the word "INASAL" in stylized red font against a black outline and yellow background—identical to the dominant element of petitioner's mark.

• The Competing Marks:

  • Mang Inasal Mark: Registered in 2006 (Certificate No. 4-2006-009050) for Class 43 (restaurant services). The mark features the word "INASAL" as its single dominant element—bold red typeface against a black outline and yellow background, arranged in a staggered format. Other elements ("MANG," "HOME OF REAL PINOY STYLE BARBEQUE") appear in less visually outstanding positions. Petitioner used this mark for its restaurant chain since 2003, expanding to 464 branches nationwide.
  • OK Hotdog Inasal Mark: Applied for on May 26, 2011 (Application No. 4-2011-006098) for Class 30 (curl snacks). The mark displays three dominant features: (a) the word "INASAL" in identical stylization to petitioner's mark; (b) the word "HOTDOG" in green; and (c) an image of three pieces of curls. Additional elements include "OK" in red, a banner stating "CHEESE HOTDOG FLAVOR," and a cheese block image.

• The Opposition and Administrative Proceedings:

  • Petitioner opposed the application, contending that respondent's mark shared similarities in appearance and representation of goods/services, tending to suggest a false connection with petitioner's mark and likely causing public confusion.
  • The IPO-BLA dismissed the opposition, ruling that "INASAL" was merely a generic or descriptive term for barbeque products that could not be exclusively appropriated, and that the goods (curl snacks sold in sari-sari stores) and services (restaurant food) were not competitive and flowed through different channels of trade.
  • The IPO-DG affirmed, adopting the BLA's finding that the marks were not similar and the goods/services were not closely related.
  • The Court of Appeals denied the petition for review and motion for reconsideration, agreeing with the administrative agencies' ratiocinations.

• Confusing Similarity: Petitioner maintained that the OK Hotdog Inasal mark nearly resembled the Mang Inasal mark, specifically copying the distinctive stylized "INASAL" element (font, color, outline, background, staggered format), which constituted the dominant and most recognizable feature of its registered mark.
• Related Goods and Services: Petitioner argued that despite different classifications, the curl snack products and restaurant services were related because both involved inasal-flavored food products, likely causing confusion regarding source, affiliation, or sponsorship.
• Likelihood of Confusion: Petitioner contended that respondent's adoption of the "INASAL" element would mislead the public into believing the snacks originated from or were affiliated with Mang Inasal, constituting confusion of business under Section 123.1(d)(iii) of RA 8293.

• Generic Term: Respondent countered that "INASAL" was merely a generic or descriptive term for barbeque or barbeque products, which no entity could exclusively appropriate.
• Dissimilarity of Marks: Respondent argued that the marks differed significantly, as the OK Hotdog Inasal mark contained additional elements ("OK," "HOTDOG," "CHEESE," curl and cheese images) absent in the Mang Inasal mark.
• Different Trade Channels: Respondent maintained that the goods were not related or competitive, as curl snacks were sold in sari-sari stores and groceries, whereas petitioner's food products were sold in restaurants—distinct channels of trade preventing confusion.

• Similarity of Marks: Whether the OK Hotdog Inasal mark constitutes a colorable imitation of the Mang Inasal mark under the dominancy test.
• Relatedness of Goods/Services: Whether curl snack products and restaurant services are "related goods and services" under Section 123.1(d)(iii) of RA 8293 such that confusion of business is likely.
• Likelihood of Confusion: Whether the use of the OK Hotdog Inasal mark is likely to deceive or cause confusion as to the source or affiliation of the goods.

• Similarity of Marks: The OK Hotdog Inasal mark is a colorable imitation of the Mang Inasal mark. Applying the dominancy test, the word "INASAL" as stylized (bold red font, black outline, yellow background, staggered format) constitutes the dominant and most distinctive feature of petitioner's mark; respondent's literal adoption of this exact stylization creates the false impression of linkage or association, notwithstanding peripheral differences.
• Relatedness of Goods/Services: The curl snack products and restaurant services are related goods and services. Though non-identical and sold through different channels, both involve inasal-flavored products (respondent's "cheese hotdog inasal flavor" versus petitioner's chicken inasal specialty), creating a logical connection that may lead consumers to assume common origin, affiliation, or flavor supply arrangements.
• Likelihood of Confusion: The use of the OK Hotdog Inasal mark is likely to cause confusion of business. An average buyer familiar with Mang Inasal's reputation might reasonably assume that the curl snacks originate from petitioner or that petitioner supplied the inasal flavoring, thereby deceiving the public as to the true source of the goods under Section 123.1(d)(iii) of RA 8293.

• Dominancy Test vs. Holistic Test — The dominancy test focuses on the similarity of prevalent features of competing trademarks that might cause confusion, requiring only that the competing mark contain the main, essential, or dominant features of another; duplication or imitation of the entire mark is unnecessary. The holistic test requires consideration of the entirety of the marks as they appear on labels in relation to the goods. While no fixed rules dictate which test applies, recent jurisprudence indicates preference for the dominancy test where the copying of a dominant feature is established.
• Confusion of Business (Source Confusion) — Confusion may occur even where goods are different, when the product bearing the applied-for mark might reasonably be assumed to originate with the registrant of an earlier mark, or when the public would be deceived into believing there is some connection between the parties. This requires that the goods or services be logically connected such that they may reasonably be assumed to originate from one manufacturer or economically-linked manufacturers.
• Colorable Imitation — Such imitation denotes 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. It exists when the dominant feature of a registered mark is copied and adopted in another mark, regardless of peripheral differences.

• "The concept of confusion, which is at the heart of the proscription, could either refer to confusion of goods or confusion of business." — Distinguishing product confusion from source confusion as forms of trademark violation under Section 123.1(d)(iii).
• "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." — Defining the threshold for similarity in trademark opposition proceedings.
• "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." — Clarifying that while generic terms are not protectible, their specific stylization in a composite mark may acquire distinctiveness and protection.
• "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." — Defining the scope of "related goods" for purposes of confusion analysis.

• Skechers U.S.A., Inc. v. Trendworks International Corporation, G.R. No. 164321, March 23, 2011 — Cited for the distinction between confusion of goods and confusion of business as two forms of confusion relevant to trademark infringement.
• Mighty Corporation v. E. & J. Gallo Winery, G.R. No. 154342, July 14, 2004 — Controlling precedent distinguishing the dominancy test from the holistic test, and establishing the multi-factor analysis for determining relatedness of goods.
• Sterling Products International, Inc. v. Farbenfabriken Bayer Aktiengesellschaft, No. L-19906, April 30, 1969 — Cited for the definition of related goods as those logically connected such that they may reasonably be assumed to originate from one manufacturer.

• Section 123.1(d)(iii), Republic Act No. 8293 (Intellectual Property Code of the Philippines) — Proscribes registration of marks that nearly resemble registered marks or marks with earlier filing dates as to be likely to deceive or cause confusion. Applied to deny respondent's application based on confusing similarity to petitioner's registered mark and relatedness of goods/services.

Lucas P. Bersamin, Bienvenido L. Reyes, Francis H. Jardeleza, Noel Gimenez Tijam.