MCDONALD’S CORP. v. MCJOY

MCDONALD’S CORP. v. MCJOY

G.R. NO. 166115

February 2, 2007

PONENTE GARCIA; J.

FACTS:

Macjoy Fastfood Corporation (Macjoy), a corporation selling fried chicken, chicken barbeque, burgers, fries, spaghetti, palabok, tacos, sandwiches, halo-halo and steaks (fastfood products) in Cebu City filed with the BPTT-IPO an application for the registration of the trademark “MACJOY & DEVICE”.

McDonald’s Corporation, a corporation organized under the laws of Delaware, USA opposed against the respondent’s application claiming that such trademark so resembles its corporate logo (Golden Arches) design and its McDONALD’s marks such that when used on identical or related goods, the trademark applied for would confuse or deceive purchasers into believing that the goods originated from the same source or origin.

Macjoy on the other hand averred that the it has used the mark “MACJOY” for tha past many years in good faith and has spent considerable sums of money for extensive promotions x x x.

The IPO ratiocinated that the predominance of the letter “M” and the prefixes “Mac/Mc” in both the Macjoy and McDonald’s marks lead to the conclusion that there is confusing similarity between them x x x. Therefore, Macjoy’s application was denied.

Upon appeal to the CA it favored with MacJoy and against McDonald’s. The Court of Appeals, in ruling over the case, actually used the holistic test (which is a test commonly used in infringement cases). The holistic test looks upon the visual comparisons between the two trademarks. The justifications are the following:

1. The word “MacJoy” is written in round script while the word “McDonald’s is written in single stroke gothic;

2. The word “MacJoy” comes with the picture of a chicken head with cap and bowtie and wings sprouting on both sides, while the word “McDonald’s” comes with an arches “M” in gold colors, and absolutely without any picture of a chicken;

3. The word “MacJoy” is set in deep pink and white color scheme while the word “McDonald’s” is written in red, yellow, and black color combination;

4. The facade of the respective stores of the parties, are entirely different.

ISSUE: Whether there is a confusing similarity between the McDonald’s marks of the petitioner and the respondent’s “MACJOY & DEVICE” trademark when it applied to classes 29 ad 30 of the International Classification of Goods.

RULING: YES.

The Supreme Court ruled that the proper test to be used is the dominancy test. The dominancy test not only looks at the visual comparisons between two trademarks but also the aural impressions created by the marks in the public mind as well as connotative comparisons, giving little weight to factors like prices, quality, sales outlets and market segments. In the case at bar, the Supreme Court ruled that “McDonald’s” and “MacJoy” marks are confusingly similar with each other such that an ordinary purchaser can conclude an association or relation between the marks. To begin with, both marks use the corporate “M” design logo and the prefixes “Mc” and/or “Mac” as dominant features. The first letter “M” in both marks puts emphasis on the prefixes “Mc” and/or “Mac” by the similar way in which they are depicted i.e. in an arch-like, capitalized and stylized manner. For sure, it is the prefix “Mc,” an abbreviation of “Mac,” which visually and aurally catches the attention of the consuming public. Verily, the word “MACJOY” attracts attention the same way as did “McDonalds,” “MacFries,” “McSpaghetti,” “McDo,” “Big Mac” and the rest of the MCDONALD’S marks which all use the prefixes Mc and/or Mac. Besides and most importantly, both trademarks are used in the sale of fastfood products.

Further, the owner of MacJoy provided little explanation why in all the available names for a restaurant he chose the prefix “Mac” to be the dominant feature of the trademark. The prefix “Mac” and “Macjoy” has no relation or similarity whatsoever to the name Scarlett Yu Carcel, which is the name of the niece of MacJoy’s president whom he said was the basis of the trademark MacJoy. By reason of the MacJoy’s implausible and insufficient explanation as to how and why out of the many choices of words it could have used for its trade-name and/or trademark, it chose the word “Macjoy,” the only logical conclusion deducible therefrom is that the MacJoy would want to ride high on the established reputation and goodwill of the McDonald’s marks, which, as applied to its restaurant business and food products, is undoubtedly beyond question.