Petitioner is a domestic fast food company that owns the mark “Mang Inasal, Home of Real Pinoy Style Barbecue and Device” (Mang Inasal mark). It is famously known to serve chicken inasal, a grilled chicken doused in a special inasal marinade.

The Respondent seeks to register the trademark “OK Hotdog Inasal Cheese Hotdog Flavor Mark” (OK Hotdog Inasal mark) in connection with goods under Class 30 (curls, corn, green peas, biscuit).

The IPO Bureau of legal Affairs, the IPO Director General and the Court of Appeals ruled in favor of the respondent- unanimously ruling the lack of confusing similarity between the two marks and that no person can claim exclusive right to the word “INASAL” as it is a generic or descriptive word that means barbeque or barbeque products.

Petitioner went to the Supreme Court which reversed the said rulings . The Supreme Court applied the dominancy test which focuses on the similarity of the prevalent features of the competing trademarks which are likely to cause confusion. According to the Supreme Court, the word “INASAL” is the most distinctive and recognizable feature in both marks and that “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. The Supreme Court disregarded the presence of the other elements in the OK Hotdog Inasal mark that are not present in the Mang Inasal mark stating that they do little to change the probable public perception that both marks are linked or associated.

Notably, the Supreme Court did not dwell much on why it did not consider the “INASAL” term in Mang Inasal as a descriptive term except to point out that “The dominant element “INASAL,” as stylized in the Mang Inasal mark, is different from the term “inasal” per se”.

Interestingly, the Honorable Supreme Court ruled that the curl snack products, although sold in sari-sari stores, grocery stores and other small distributor outlets, are related to the restaurant services represented by the Mang Inasal mark. The Honorable Court explained that “it is the fact that the underlying goods and services of both marks deal with inasal and inasal-flavored products which ultimately fixes the relations between such goods and services”.

Accordingly, the Supreme Court held that “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”.

 

( MANG INASAL PHILIPPINES, INC.vs. IFP MANUFACTURING CORPORATION (G.R. No. 221717, 19 June 2017).