GR 143993; (August, 2004) (Digest)
G.R. No. 143993 ; August 18, 2004
MCDONALD’S CORPORATION and MCGEORGE FOOD INDUSTRIES, INC., petitioners, vs. L.C. BIG MAK BURGER, INC., FRANCIS B. DY, EDNA A. DY, RENE B. DY, WILLIAM B. DY, JESUS AYCARDO, ARACELI AYCARDO, and GRACE HUERTO, respondents.
FACTS
Petitioner McDonald’s Corporation, a global fast-food chain, owns the registered trademark “Big Mac” for its double-decker hamburger, registered in the Philippines on July 18, 1985. It introduced the product locally in 1981 and spent millions on advertising. Respondent L.C. Big Mak Burger, Inc., a domestic corporation, operates fast-food outlets and applied to register the “Big Mak” mark for its hamburger sandwiches on October 21, 1988. McDonald’s opposed this application, claiming “Big Mak” was a colorable imitation of its “Big Mac” mark, and subsequently filed a case for trademark infringement and unfair competition.
Respondents admitted using “Big Mak” but claimed McDonald’s had no exclusive right, citing prior registrations by other entities. Petitioners countered that one prior registrant had assigned his rights to McDonald’s, and another registration was only in the Supplemental Register, which confers no exclusive right. The Regional Trial Court found respondent corporation liable for infringement and unfair competition but dismissed the case against individual respondents. The Court of Appeals reversed, finding no infringement and ordering petitioners to pay damages.
ISSUE
Whether respondent corporation’s use of the “Big Mak” mark constitutes trademark infringement and unfair competition.
RULING
Yes, the Supreme Court reversed the Court of Appeals and reinstated the RTC decision with modification, finding trademark infringement. The test for infringement is whether the defendant’s mark is likely to cause confusion, mistake, or deception among purchasers. The Court applied the dominancy test, focusing on the similarity of the prevalent features of the marks that might cause confusion, rather than the holistic test comparing all elements.
The marks “Big Mac” and “Big Mak” are phonetically and visually similar, both used on identical product lines—hamburger sandwiches. The prefix “Big” is generic, making “Mac” and “Mak” the dominant portions. The aural similarity is striking, and the single vowel difference is insufficient to distinguish them in the mind of the ordinary purchaser. Given the established goodwill and widespread recognition of McDonald’s “Big Mac,” the use of “Big Mak” for the same food product creates a likelihood of confusion. The Court found infringement but no unfair competition, as the latter requires additional proof of fraudulent intent in the product’s overall presentation, which was not sufficiently established. The award of damages by the CA was deleted.