SOCIETE DES PRODUITS NESTLE, S.A. v CA and CFC CORP

SOCIETE DES PRODUITS NESTLE, S.A. v CA and CFC CORP

G.R. NO. 112012

April 4, 2001

Ynares-Santiago, J.

FACTS:

CFC corporation filed with Bureau of Patents a registration of the Trademark  “FLAVOR MASTER” for instant coffee. Petitioner Societe Des Produits Nestle filed an unverified Notice of Opposition, claiming that the trademark of respondent’s product is confusingly similar to its Trademarks for coffee: “MASTER ROAST AND MASTER BLEND”. Nestle Philippines also filed notice of opposition against the registration Petitioners argued that it would cause confusion in trade, or deceive purchasers and would falsely suggest to the public a connection between the two marks.

ISSUE: Is the TM, FLAVOR MASTER, a colorable imitation of the TMs MASTER ROAST and MASTER BLEND?

RULING:

YES. The TM sought to be registered is likely to cause confusion.

A trademark has been generally defined as any word, name, symbol, or device adopted and used by a merchant to identify his goods and distinguish them from those sold by others. Such is entitled to protection

Under the Philippine Trademark Law, the owner of a TM cannot register if it resembles a mark or trade-name registered in the Philippines or a mark previously used and not abandoned WHICH IS LIKELY TO CAUSE CONFUSION OR MISTAKE OR TO DECEIVE PURCHASERS.

The law prescribes a stringent standard proscribes registration if it causes confusing similarity, and if it is likely to cause confusion or mistake or deceive purchasers. Colorable imitation denotes a close imitation as to be calculated to deceive ordinary persons  as to cause him to purchase the one supposing it to be the other.

In determining colorable imitation there are two tests: Dominancy Test and Holistic Test.

The test of dominancy focuses on the similarity of the prevalent features of the competing trademarks; the holistic test mandates the entirety of the marks in question must be considered in determining confusing similarity

The Dominancy test should be applied as it relies not only on the visual but also on the aural and connotative comparisons and overall impressions between the two TMs.

·         The word MASTER is the dominant feature which is neither a generic nor a descriptive term. As such said term cannot be invalidated as a trademark and therefore, may be protected.

·         Generic terms are those which constitute the common descriptive name of an article or substance and are not legally protectable.

·         The term MASTER is a suggestive which require imagination, thought, and perception to reach a conclusion as to the nature of the goods.

The term MASTER has acquired a certain connotation to mean the coffee products MASTER ROAST and Master Blend produced by NESTLE. AS SUCH the use of CFC of the term “MASTER” is likely to cause confusion or mistake.

SMITH KLINE BECKMAN CORP. v. COURT OF APPEALS

SMITH KLINE BECKMAN CORP. v. COURT OF APPEALS

G.R. NO. 126627

August 14, 2003

CARPIO-MORALES, J

FACTS:

Smith Kline Beckman Corp. (US corporation) filed as assignee, before the Philippine Patent Office an application for patent over an invention entitled Methods and Compositions for Producing Biphasic Parasiticide Activity Using Methyl 5 Propylthio-2-Benzimidazole Carbamate.Letters Patent for the aforesaid invention was issued to petitioner for a term of 17 years, which provides that the patented invention consisted of a new com ound named methyl 5 propylthio-2benzimidazole carbamate and the methods or compositions utilizing the compound as an active ingredient in fighting infections caused by gastrointestinal parasites and lungworms in animals such as swine, sheep, cattle, goats, horses, and even pet animals. 

Tryco Pharma Corp. is a domestic corporation that manufactures, distributes and sells veterinary products, including Impregon, a drug that has Albendazole for its active ingredient and is claimed to be effective against gastrointestinal roundworms, lungworms, tapeworms and fluke infestation in carabaos, cattle and goats.

Petitioner sued private respondent for infringement of patent and unfair competition before the Caloocan City RTC. It claimed that its patent covers or includes the substance Albendazole such that private respondent, by manufacturing, selling, using, and causing to be sold and used the drug Impregon without its authorization, committed infringement and unfair competition under RPC and The Trademark Law for advertising and selling as its own the drug Impregon although the same contained petitioner’s patented Albendazole.

Private respondent averred that petitioner’s letter patent does not cover the substance Albendazole for nowhere in it does that word appear.

RTC ruled for the Respondent. CA upheld trial court’s ruling and held that respondent was not liable for any infringement of the patent of petitioner in light of the latter’s failure to show that Albendazole is the same as the compound subject of its Letters Patent, considered the U.S. patent as implying that Albendazole is different from methyl 5 propylthio-2-benzimidazole carbamate, and likewise found that private respondent was not guilty of deceiving the public by misrepresenting that Impregon is its product.

ISSUE/S: Whether private respondent committed patent infringement to the prejudice of petitioner.

RULING: NO. From a reading of the 9 claims of Letters Patent No. 14561 in relation to the other portions thereof, no mention is made of the compound Albendazole. All that the claims disclose are: the covered invention, that is, the compound methyl 5 propylthio-2-benzimidazole carbamate; the compounds being anthelmintic but nontoxic for animals or its ability to destroy parasites without harming the host animals; and the patented methods, compositions or preparations involving the compound to maximize its efficacy against certain kinds of parasites infecting specified animals.

When the language of its claims is clear and distinct, the patentee is bound thereby and may not claim anything beyond them. And so are the courts bound which may not add to or detract from the claims matters not expressed or necessarily implied, nor may they enlarge the patent beyond the scope of that which the inventor claimed and the patent office allowed, even if the patentee may have been entitled to something more than the words it had chosen would include. The mere absence of the word Albendazole in Letters Patent No. 14561 is not determinative of Albendazoles non-inclusion in the claims of the patent. While Albendazole is admittedly a chemical compound that exists by a name different from that covered in petitioner’s letters patent, the language of Letter Patent No. 14561 fails to yield anything at all regarding Albendazole. And no extrinsic evidence had been adduced to prove that Albendazole inheres in petitioner’s patent in spite of its omission therefrom or that the meaning of the claims of the patent embraces the same.

While petitioner concedes that the mere literal wordings of its patent cannot establish private respondent’s infringement, it urges this Court to apply the doctrine of equivalents. The doctrine of equivalents provides that an infringement also takes place when a device appropriates a prior invention by incorporating its innovative concept and, although with some modification and change, performs substantially the same function in substantially the same way to achieve substantially the same result.

A scrutiny of petitioner’s evidence fails to convince this Court of the substantial sameness of petitioners patented compound and Albendazole. While both compounds have the effect of neutralizing parasites in animals, identity of result does not amount to infringement of patent unless Albendazole operates in substantially the same way or by substantially the same means as the patented compound, even though it performs the same function and achieves the same result. In other words, the principle or mode of operation must be the same or substantially the same.

The doctrine of equivalents thus requires satisfaction of the function-means-and-result test, the patentee having the burden to show that all three components of such equivalency test are met. As stated early on, petitioners evidence fails to explain how Albendazole is in every essential detail identical to methyl 5 propylthio-2-benzimidazole carbamate.

SEHWANI INCORPORATED vs. IN-N-OUT BURGER, INC.

SEHWANI INCORPORATED vs. IN-N-OUT BURGER, INC.

G.R. No. 171053

October 15, 2007

YNARES-SANTIAGO, J.:

FACTS:

Respondent IN-N-OUT Burger, Inc., a foreign corporation (California, USA), and not doing business in the Philippines, filed before the Bureau of Legal Affairs of the IPO, an administrative complaint against petitioners Sehwani, Inc. and Benita’s Frites, Inc. for violation of intellectual property rights, attorney’s fees and damages with prayer for the issuance of a restraining order or writ of preliminary injunction.

Respondent, alleges that it is the owner of the tradename “IN-N-OUT” and trademarks “IN-N-OUT,” “IN-N-OUT Burger & Arrow Design” and “IN-N-OUT Burger Logo” which are used in its business since 1948 up to the present.  These tradename and trademarks were registered in the United States as well as in other parts of the world.  Petitioner Sehwani allegedly had obtained a trademark registration for the mark “IN N OUT” (with the inside letter O formed like a star) without its authority.

In their answer with counterclaim, petitioners alleged that respondent lack the legal capacity to sue because it was not doing business in the Philippines and that it has no cause of action because its mark is not registered or used in the Philippines. Petitioner Sehwani, Inc. also claimed that as the registered owner of the "IN-N-OUT" mark, it enjoys the presumption that the same was validly acquired and that it has the exclusive right to use the mark. Moreover, petitioners argued that other than the bare allegation of fraud in the registration of the mark, respondent failed to show the existence of any of the grounds for cancellation thereof under Section 151 of Republic Act (R.A.) No. 8293, otherwise known as The Intellectual Property Code of the Philippines.

The Bureau ruled in favor of In-N-Out and cancelled the registration of Shwani.

ISSUE/S:

1. Whether or not the Respondent has the legal capacity to sue for the protection of its trademarks albeit it is not doing business in the Philippines

2. Whether or not a ground exists for the cancellation of the Petitioners’ registration

RULING:

1. Yes. Section 160 RA No. 8293 provides for the right of foreign corporations to sue in trademark or service mark enforcement action, provided that it meets the requirements under Section 3 thereof, which are a) Any convention, treaty or agreement relation to intellectual property right or the repression of unfair competition wherein Philippines is also a party; and b) An extension therein of reciprocal rights.

Moreoever, Article 6 of The Paris Convention, which governs the protection of well-known trademarks, is a self-executing provision and does not require legislative enactment to give it effect in the member country.  The essential requirement therein is that the trademark must be well-known in the country where protection is sought.  In this case, Director Beltran-Abelardo found that In-n-out Burger and Arrow Design is an internationally well known mark as evidenced by its trademark registrations around the world and its comprehensive advertisements therein.

2. Yes. Section 151(b) of RA 8293 provides that a petition to cancel a registration of a mark may be filed with the Bureau of Legal Affairs by any person who believes that he is or will be damaged by the registration of a mark at any time, if the registered mark becomes the generic name for the goods or services, or a portion thereof, for which it is registered, or has been abandoned, or its registration was fraudulently or contrary to the provisions of this Act, or if the registered mark is being used by or with the permission of, the registrant so as to misrepresent the source of goods or services on or in connection with which the mark is used.  The evidence showed that not only did the petitioners use the IN-N-OUT Burger trademark for the name of their restaurant, but they also used identical or confusingly similar mark for their hamburger wrappers and French-fries receptacles, thereby effectively misrepresenting the source of the goods and services.

SAMSON V. DAWAY AND CATERPILLAR, INC.

SAMSON V. DAWAY AND CATERPILLAR, INC.

G.R. NO. 160054-55

DATE: July 21, 2004

PONENTE: YNARES-SANTIAGO

FACTS: Two informations for unfair competition were filed against Samson, the registered owner of ITTI shoes. The infomations state that Samson did then and there willfully, unlawfully and feloniously distribute, sell and/or offer for sale CATERPILLAR products such as footwear, garments, clothing, bags, accessories and paraphernalia which are closely identical to and/or colorable imitations of the authentic Caterpillar products and likewise using trademarks, symbols and/or designs as would cause confusion, mistake or deception on the part of the buying public to the damage and prejudice of CATERPILLAR, INC., the prior adopter, user and owner of the following internationally: “CATERPILLAR,” “CAT,” “CATERPILLAR & DESIGN,” “CAT AND DESIGN,” “WALKING MACHINES” and “TRACK-TYPE TRACTOR & DESIGN.”

Samson filed a motion to suspend the arraignment and other proceedings in view of the existence of an alleged prejudicial question involving a civil case for unfair competition pending with the same branch, and also in view of the pendency of a petition for review filed with the Secretary of Justice assailing the Chief State Prosecutor’s resolution finding probable cause to charge petitioner with unfair competition.

The TC judge denied the motion and arraignment ensued.  Thereafter, Samson filed a motion to quash the informations contending that since under Section 170 of R.A. No. 8293, the penalty of imprisonment for unfair competition does not exceed six years, the offense is cognizable by the Municipal Trial Courts and not by the Regional Trial Court, per R.A. No. 7691. The TC judge denied the motion. Hence, this petition for certiorari.

ISSUE/S:

1. Which court has jurisdiction over criminal and civil cases for violation of intellectual property rights?

2. Did the TC judge commit grave abuse of discretion when he refused to suspend the proceedings on the ground of existence of prejudicial question and a pending petition for review before the Sec. of Justice on the finding of probable cause for unfair competition?

RULING:

1. RTC. Under Section 170 of R.A. No. 8293, which took effect on January 1, 1998, the criminal penalty for infringement of registered marks, unfair competition, false designation of origin and false description or representation, is imprisonment from 2 to 5 years and a fine ranging from Fifty Thousand Pesos to Two Hundred Thousand Pesos. Corollarily, Section 163 of the same Code states that actions (including criminal and civil) under Sections 150, 155, 164, 166, 167, 168 and 169 shall be brought before the proper courts with appropriate jurisdiction under existing laws.

The existing law referred to in the foregoing provision is Section 27 of R.A. No. 166 (The Trademark Law) which provides that jurisdiction over cases for infringement of registered marks, unfair competition, false designation of origin and false description or representation, is lodged with the CFI (now RTC). We find no merit in the claim of Samson that R.A. No. 166 was expressly repealed by R.A. No. 8293. The use of the phrases “parts of Acts” and “inconsistent herewith” only means that the repeal pertains only to provisions which are repugnant or not susceptible of harmonization with R.A. No. 8293.7 Section 27 of R.A. No. 166, however, is consistent and in harmony with Section 163 of R.A. No. 8293. Had R.A. No. 8293 intended to vest jurisdiction over violations of intellectual property rights with the Metropolitan Trial Courts, it would have expressly stated so under Section 163 thereof.

Moreover, the settled rule in statutory construction is that in case of conflict between a general law and a special law, the latter must prevail. Jurisdiction conferred by a special law to Regional Trial Courts must prevail over that granted by a general law to Municipal Trial Courts. In the case at bar, R.A. No. 8293 and R.A. No. 166 are special laws conferring jurisdiction over violations of intellectual property rights to the Regional Trial Court. They should therefore prevail over R.A. No. 7691, which is a general law. Hence, jurisdiction over the instant criminal case for unfair competition is properly lodged with the Regional Trial Court even if the penalty therefor is imprisonment of less than 6 years, or from 2 to 5 years and a fine ranging from P50,000.00 to P200,000.00.

In fact, to implement and ensure the speedy disposition of cases involving violations of intellectual property rights under R.A. No. 8293, the Court issued A.M. No. 02-1-11-SC dated February 19, 2002 designating certain Regional Trial Courts as Intellectual Property Courts. On June 17, 2003, the Court further issued a Resolution consolidating jurisdiction to hear and decide Intellectual Property Code and Securities and Exchange Commission cases in specific Regional Trial Courts designated as Special Commercial Courts.

2. NO. Samson failed to substantiate his claim that there was a prejudicial question. He made no discussion in support of said prayer in his petition and reply to comment. Neither did he attach a copy of the complaint in Civil Case nor quote the pertinent portion thereof to prove the existence of a prejudicial question. At any rate, there is no prejudicial question if the civil and the criminal action can, according to law, proceed independently of each other.

In the case at bar, the common element in the acts constituting unfair competition under Section 168 of R.A. No. 8293 is fraud. Pursuant to Article 33 of the Civil Code, in cases of defamation, fraud, and physical injuries, a civil action for damages, entirely separate and distinct from the criminal action, may be brought by the injured party. Hence, Civil Case No. Q-00-41446, which as admitted by Caterpilar also relate to unfair competition, is an independent civil action under Article 33 of the Civil Code. As such, it will not operate as a prejudicial question that will justify the suspension of the criminal cases at bar.

While the pendency of a petition for review is a ground for suspension of the arraignment, the aforecited provision limits the deferment of the arraignment to a period of 60 days reckoned from the filing of the petition with the reviewing office. It follows, therefore, that after the expiration of said period, the trial court is bound to arraign the accused or to deny the motion to defer arraignment.

In the instant case, Samson failed to establish that respondent Judge abused his discretion in denying his motion to suspend. His pleadings and annexes submitted before the Court do not show the date of filing of the petition for review with the Secretary of Justice.15Moreover, the Order dated August 9, 2002 denying his motion to suspend was not appended to the petition. He thus failed to discharge the burden of proving that he was entitled to a suspension of his arraignment and that the questioned orders are contrary to Section 11 (c), Rule 116 of the Revised Rules on Criminal Procedure. Indeed, the age-old but familiar rule is that he who alleges must prove his allegations.

MIGHTY CORP. vs. E&J GALLO

MIGHTY CORP. vs. E&J GALLO

G.R. NO. 154342

July 14, 2004

PONENTE CORONA; J.

FACTS:

On March 12, 1993, E. & J. GALLO WINERY and THE ANDRESONS GROUP, INC (respondents) sued MIGHTY CORPORATION and LA CAMPANA FABRICA DE TABACO, INC. (petitioners) in the RTC-Makati for trademark and trade name infringement and unfair competition, with a prayer for damages and preliminary injunction.

They claimed that petitioners adopted the Gallo trademark to ride on Gallo Winery’s and Gallo and Ernest & Julio Gallo trademark’s established reputation and popularity, thus causing confusion, deception and mistake on the part of the purchasing public who had always associated Gallo and Ernest and Julio & Gallo trademarks with Gallo Winery’s wines.

In their answer, petitioners alleged, among other affirmative defenses that: petitioners Gallo cigarettes and Gallo Winery’s wine were totally unrelated products. To wit:

1. Gallo Winery’s GALLO trademark registration certificates covered wines only, and not cigarettes;

2. GALLO cigarettes and GALLO wines were sold through different channels of trade;

3. the target  market of Gallo Winery’s wines was the middle or high-income bracket while Gallo cigarette buyers were farmers, fishermen, laborers and other low-income workers;

4. that the dominant feature of the Gallo cigarette was the rooster device with the manufacturer’s name clearly indicated as MIGHTY CORPORATION, while in the case of Gallo Winery’s wines, it was the full names of the founders-owners ERNEST & JULIO GALLO or just their surname GALLO;

The Makati RTC denied, for lack of merit, respondent’s prayer for the issuance of a writ of preliminary injunction. CA likewise dismissed respondent’s petition for review on certiorari.

After the trial on the merits, however, the Makati RTC held petitioners liable for committing trademark infringement and unfair competition with respect to the GALLO trademark.

On appeal, the CA affirmed the Makati RTC’s decision and subsequently denied petitioner’s motion for reconsideration.

ISSUE/S: Whether GALLO cigarettes and GALLO wines were identical, similar or related goods for the reason alone that they were purportedly forms of vice.

RULING: NO.

Wines and cigarettes are not identical, similar, competing or related goods.

In resolving whether goods are related, several factors come into play:

·         the business (and its location) to which the goods belong

·         the class of product to which the good belong

·         the product’s quality, quantity, or size, including the nature of the package, wrapper or container

·         the nature and cost of the articles

·         the descriptive properties, physical attributes or essential characteristics with reference to their form, composition, texture or quality

·         the purpose of the goods

·         whether the article is bought for immediate consumption, that is, day-to-day household items

·         the field of manufacture

·         the conditions under which the article is usually purchased and

·         the articles of the trade through which the goods flow, how they are distributed, marketed, displayed and sold.

The test of fraudulent simulation is to the likelihood of the deception of some persons in some measure acquainted with an established design and desirous of purchasing the commodity with which that design has been associated. The simulation, in order to be objectionable, must be as appears likely to mislead the ordinary intelligent buyer who has a need to supply and is familiar with the article that he seeks to purchase.

The petitioners are not liable for trademark infringement, unfair competition or damages.

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.