MCDONALD’S CORPORATION VS. L.C. BIG MAK BURGER, INC.

MCDONALD’S CORPORATION VS. L.C. BIG MAK BURGER, INC.

G.R. No. 143993

18 August 2004

PONENTE: CARPIO, J.

FACTS:

Petitioner McDonald’s Corporation is a corporation organized under the laws of Delaware, United States. McDonald’s operates a global chain of fast-food restaurants. McDonald’s own a family of marks including the “Big Mac” mark for its double-decker hamburger sandwich.

McDonald’s registered this trademark with the United States Trademark Registry on 16 October 1979. Based on this Home Registration, McDonald’s applied for the registration of the same mark in the Principal Register of then then Philippine Bureau of Patents, Trademarks and Technology (PBPTT) – now the Intellectual Property Office (IPO).

Pending approval of its application, McDonald’s introduced its “Big Mac” hamburger sandwiches in the Philippine market in September 1981. On 18 July 1985, the PBPTT allowed registration of the “Big Mac” mark in the Philippine Register based on its Home Registration in the United States. From 1982 to 1990, McDonald’s spent P10.5 million in advertisement for “Big Mac” hamburger sandwiches alone.

Respondent L.C. Big Mak Burger, Inc. is a domestic corporation which operates fast-food outlets and snack vans in Metro Manila and nearby provinces. Its menu includes hamburger sandwiches and other food items.

On 21 October 1988, respondent corporation applied with the PBPTT for the registration of the “Big Mak” mark for its hamburger sandwiches.

McDonald’s opposed respondent corporation’s application on the ground that “Big Mak” was a colorable imitation of its registered “Big Mac” mark for the same food products.

ISSUES:

1.      Is the respondent guilty of trademark infringement and unfair competition?

2.      Is the “Big Mac” mark valid and does McDonald’s have rightful ownership to the same?

RULING:

1. YES.

Trademark Infringement

RA 166 defines trademark infringement as “any person who (1) shall use, without the consent of the registrant, any reproduction, counterfeit, copy or colorable imitation of any registered mark or trade-name in connection with the sale, offering for sale, or advertising of any goods, business or services on or in connection with which use is likely to CAUSE CONFUSION or otherwise mistake or to deceive purchasers or others as to the source or origin of such goods or services or identity of such business; or (2) reproduce, counterfeit, copy, or colorably imitate any such mark or trade-name and apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used upon or in connection with such goods, business or services.”

Clearly, there is cause for confusion in the case at bar. By using the “Big Mak” mark on the same goods, i.e. hamburger sandwiches, that petitioners’ “Big Mac” mark is used, they have unjustly created the impression that its business is approved and sponsored by, or affiliated with plaintiffs.

Furthermore, using the dominancy test (rather than the holistic test), wherein the dominant features in the competing marks are considered, Big Mak failed to show that there could be no confusion. The Court found that respondents’ use of the “Big Mak” mark results in likelihood of confusion. First, “Big Mak” sounds exactly the same as “Big Mac.” Second, the first word in “Big Mak” is exactly the same as the first word in “Big Mac.” Third, the first two letters in “Mak” are the same as the first two letters in “Mac.” Fourth, the last letter in “Mak” while a “k” sounds the same as “c” when the word “Mak” is pronounced. Fifth, in Filipino, the letter “k” replaces “c” in spelling, thus “Caloocan” is spelled “Kalookan.” In short, aurally, the two marks are the same.

Unfair Competition

With regard to unfair competition, RA 166, Section 29 defines the same as any person who will employ deception or any other means contrary to good faith by which he shall pass off the goods manufactured by him or in which he deals, or his business, or services for those of the one having established such goodwill, or who shall commit any acts calculated to produce said result.

Unfair competition is broader than trademark infringement and includes passing off goods with or without trademark infringement. Trademark infringement is a form of unfair competition. Trademark infringement constitutes unfair competition when there is not merely likelihood of confusion, but also actual or probable deception on the public because of the general appearance of the goods.

L.C. Big Mak tried to pass off their goods as though it were connected to “Big Mac.” The mark “B[ig] M[ac]” is used by plaintiff McDonald’s to identify its double decker hamburger sandwich. The packaging material is a styrofoam box with the McDonald’s logo and trademark in red with block capital letters printed on it. All letters of the “B[ig] M[ac]” mark are also in red and block capital letters. On the other hand, defendants’ “B[ig] M[ak]” script print is in orange with only the letter “B” and “M” being capitalized and the packaging material is plastic wrapper. x x x x Further, plaintiffs’ logo and mascot are the umbrella “M” and “Ronald McDonald’s,” respectively, compared to the mascot of defendant Corporation which is a chubby boy called “Macky” displayed or printed between the words “Big” and “Mak.”(Emphasis supplied)

Respondents point to these dissimilarities as proof that they did not give their hamburgers the general appearance of petitioners’ “Big Mac” hamburgers.

The dissimilarities in the packaging are minor compared to the stark similarities in the words that give respondents’ “Big Mak” hamburgers the general appearance of petitioners’ “Big Mac” hamburgers. Section 29(a) expressly provides that the similarity in the general appearance of the goods may be in the “devices or words” used on the wrappings. Respondents have applied on their plastic wrappers and bags almost the same words that petitioners use on their styrofoam box. What attracts the attention of the buying public are the words “Big Mak” which are almost the same, aurally and visually, as the words “Big Mac.” The dissimilarities in the material and other devices are insignificant compared to the glaring similarity in the words used in the wrappings.

YES.

A mark is valid if it is “distinctive” and thus not barred from registration under Section 4 of RA 166. However, once registered, not only the mark’s validity but also the registrant’s ownership of the mark is prima facie presumed.

Respondents contend that of the two words in the “Big Mac” mark, it is only the word “Mac” that is valid because the word “Big” is generic and descriptive (proscribed under Section 4[e]), and thus “incapable of exclusive appropriation.”

The contention has no merit. The “Big Mac” mark, which should be treated in its entirety and not dissected word for word,is neither generic nor descriptive.