Mang Inasal Philippines, Inc. vs. IFP Manufacturing Corporation
### Facts:
The case involves a dispute over trademark registration between Mang Inasal Philippines, Inc. (Petitioner) and IFP Manufacturing Corporation (Respondent). On May 26, 2011, the respondent filed an application with the Intellectual Property Office (IPO) for the registration of the mark “OK Hotdog Inasal Cheese Hotdog Flavor Mark” under Class 30 of the Nice Classification. This mark was intended for use on curl snack products. The petitioner opposed the application, citing similarities with its own “Mang Inasal” mark registered under Class 43, claiming potential public confusion due to the similarity in appearance and the goods/services they represent.
The petitioner’s opposition was referred to the IPO’s Bureau of Legal Affairs (BLA) for disposition. On September 19, 2013, the IPO-BLA dismissed the opposition. The petitioner then appealed to the Director General (DG) of the IPO, which resulted in the dismissal of the appeal on December 15, 2014. Both IPO entities found no confusing similarity between the marks.
Unsatisfied with the IPO’s decisions, the petitioner appealed to the Court of Appeals (CA), which also denied the appeal on June 10, 2015, and subsequently denied a motion for reconsideration on December 2, 2015. The CA upheld the IPO’s conclusions, prompting the petitioner to escalate the case to the Supreme Court under a Petition for Review on Certiorari.
### Issues:
1. Whether the “OK Hotdog Inasal Cheese Hotdog Flavor Mark” is confusingly similar to the “Mang Inasal” mark.
2. Whether the goods identified by the respondent’s mark are related to the services represented by the petitioner’s mark.
### Court’s Decision:
The Supreme Court granted the appeal, overturning the decisions of the IPO and the CA. It found that the respondent’s mark was likely to cause confusion or deception among the public. The Court applied the dominancy test to conclude that the “OK Hotdog Inasal” mark contained the dominant feature “INASAL” in a similar style to the petitioner’s mark, which could mislead consumers. Additionally, it determined that the goods for which the registration was sought (curl snack products) are related to the services provided by the petitioner (fast food restaurants specializing in inasal products), potentially causing confusion about the source of the goods.
### Doctrine:
The Court reiterated the principle that a mark cannot be registered if it is similar to a registered mark or a mark with an earlier filing date in such a way that it is likely to cause confusion or deception among the public. It highlighted the importance of both the dominancy test and the holistic test in determining similarity between marks, with a preference for the dominancy test in this case.
### Class Notes:
– A trademark can be opposed based on the likelihood of confusion or deception under Section 123.1(d)(iii) of Republic Act No. (RA) 8293.
– The dominancy test focuses on the similarity of the dominant features of competing trademarks to determine infringement.
– The holistic test requires consideration of the entirety of the marks and their appearance in relation to the goods or services to which they are attached.
– Goods and services are considered related if they are non-identical but logically connected in a way that consumers may assume they originate from the same source.
### Historical Background:
This case underscores the complexities of trademark law in the Philippines, emphasizing the need for clear distinctions between marks to prevent consumer confusion. It illustrates the careful balance courts must strike in protecting intellectual property rights while ensuring fair competition and consumer protection in the market.
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