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.
No comments:
Post a Comment