Yellow Cab vs. Yellow Pedicab

I saw the picture above in a law students' Facebook group where the moderator asked the members of the group if the owner of Yellow Pedicab who is also selling pizza may be held liable for infringement and/or unfair competition if Yellow Cab Pizza pursue a case against it. The moderator likewise asked the group to provide legal basis.

As of 11 March 2021, the post has 60 comments that my heart wants to respond to. Honestly, I felt sad reading the comments, except the comments of the moderator himself who seems to understand the case but kept neutral to elicit better discussion.

Well, while most tried, most were confused.in my opinion. If you are one of those, don't get disheartened. Intellectual Property (IP) Law is really a very technical and specialized subject. It can be confusing most of the time.

I have nothing but sincere concern for you, my beloved bar reviewees and law students. If you will listen to me, I'll address the comments one by one with LEGAL BASIS. I've been in the field of IP, particularly in the area of Trademarks for 17 years. But I was a teacher even before I became a lawyer. Teaching is my passion. So let me walk you through on this interesting Facebook group query.

Below are my comments to the interesting comments. Please note that I have reworded some comments to suit our academic discussion for today.

Comment No. 1: There has never been a decision about a similar case

There is. You may not know, but our subject "Yellow Cab Pizza" won the case for infringement and unfair competition that it filed against "Green Cab Pizza Haus" before the Intellectual Property Office's Bureau of Legal Affairs (IPO-BLA).

The IPO-BLA used the dominancy test in assessing likelihood of confusion. It was determined that Green Cab appropriated the dominant feature of Yellow Cab. The combination of the word "yellow" and "cab", that is, combining a color with the word "cab" forms the dominant part of Yellow Cab's mark. Hence, Green [color] + Cab results to confusion.

There was also a confusion of business. Some people ask if Green Cab is an affiliate of Yellow Cab. If you want to read this interesting case, you can access it here.

The last time that I noticed, Green Cab has rebranded to Green Avenue. See the image of Green Cab below.

Now, be the judge. If there was trademark infringement and unfair competion in this case, how much more for the Yellow Pedicab which appropriated the exact word "Yellow", also has the "cab" portion, and comes with a trade dress of yellow color same as Yellow Cab Pizza?

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I know, you will argue that you haven't heard of this case because it didn't reach the Supreme Court. Well, we also have a similar Supreme Court decided case. It's the case of Mang Inasal Philippines, Inc. vs. IFP Manufacturing Corporation (G.R. No. 221717, June 19, 2017) involving the marks Mang Inasal, Home of Real Pinoy Style Barbeque and OK Hotdog Inasal

The mark on the left which I'm sure you are all familiar with is owned by Mang Inasal Philippines, Inc. (Mang Inasal) is used for restaurant services while the mark on the right owned by IFP Manufacturing Corporation (IFP) is used for curl snacks. Mang Inasal was issued a trademark registration in 2007 while IFP filed its application in 2011. Mang Inasal opposed the application of IFP.

The case was dismissed by the IPO-BLA and IPO-DG because the only similarity between the two marks is the word "Inasal" which is a generic or descriptive term for barbecue products. Further, the goods are unrelated because they are not competitive and are sold in different channels of trade. Mang Inasal's goods are sold in its restaurants while IFP's goods are sold in sari-sari stores.

On appeal, the Court of Appeals affirmed the decision of IPO-BLA and IPO-DG.

The Decision of the Supreme Court:

The SC said that the contending marks are similar and their goods and services are related. Hence, the application for registration of OK Hotdog Inasal is proscribed under Sec. 123.1 (d)(iii) of RA 8293.

1. The marks are similar

In this case, the court used the Dominancy Test.

It was determined that the dominant element in the Mang Inasal's mark is the word "Inasal" while there are three dominant elements in IFP's mark, namely, Inasal, hotdog, and the 3 pictures of curls.

The word "Inasal" in IFP's mark is identical to the "Inasal" in Mang Inasal's mark. IFP's mark is a colorable imitation of Mang Inasal's mark. These would give rise to a false impression that the two marks are associated with each other.

How about the fact that "Inasal" is just a generic or descriptive term? The SC said that the dominant term and stylized "Inasal" is different from "inasal" per se. The generic term "inasal" cannot be exclusively appropriated but "Inasal" as stylized by Mang Inasal is owned by it exclusively being the registered owner.

2. The goods and services are related

The SC said that given the goods and services being inasal-related fixes the relation between the goods and services. An average buyer who encounters the OK Hotdog Inasal is likely to be confused as to the origin of the curls. Consumers may assume that Mang Inasal has ventured into manufacturing and owns OK Hotdog Inasal or may think that Mang Inasal is the supplier of the product's inasal flavoring. In all of these circumstances, the reputation of Mang Inasal would be taken advantage.

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We have only tackled one question. Please wait for a continuation of this discussion.

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References are linked in the story.

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