GR 166115; (February, 2007) (Digest)
G.R. No. 166115 ; February 2, 2007
McDonald’s Corporation, Petitioner, vs. MacJoy Fastfood Corporation, Respondent.
FACTS
On March 14, 1991, respondent MacJoy Fastfood Corporation filed an application with the Intellectual Property Office (IPO) for the registration of the trademark “MACJOY & DEVICE” for various food products. Petitioner McDonald’s Corporation opposed the application, alleging that “MACJOY” was confusingly similar to its family of marks beginning with “Mc” or “Mac” (e.g., McDonald’s, McChicken, Big Mac) and its Golden Arches logo. McDonald’s argued that the similarity would cause public confusion, suggest an affiliation, and dilute its well-known marks. MacJoy countered that it had used the mark in good faith for years in Cebu, with extensive promotion, and that the marks were visually and stylistically distinct.
The IPO sustained McDonald’s opposition and rejected MacJoy’s application, ruling that the predominance of the letter “M” and the prefixes “Mac/Mc” in both marks created a confusing similarity, especially since the goods were identical or related. On appeal, the Court of Appeals reversed the IPO decision. The CA found no confusing similarity, emphasizing the stark differences in the marks’ design, script, color schemes, and accompanying logos (MacJoy’s chicken head device versus McDonald’s arches), and ordered the IPO to give due course to MacJoy’s application.
ISSUE
Whether the trademark “MACJOY & DEVICE” is confusingly similar to McDonald’s “Mc”/”Mac” family of marks such that its registration should be denied.
RULING
The Supreme Court granted the petition and reinstated the IPO decision denying the registration of “MACJOY & DEVICE.” The Court applied the dominancy test, which focuses on the similarity of the prevalent features of the competing marks that might cause confusion or deception, rather than a side-by-side comparison of minutiae. The Court found that the prefix “Mac” is the dominant feature of “MACJOY,” and it is phonetically and visually similar to McDonald’s “Mc” prefix, which the company has used consistently and distinctively for its food products. This prefix has acquired a secondary meaning, uniquely identifying McDonald’s as the source.
The Court held that when used on identical or closely related goods like fried chicken and burgers, the dominant “Mac” prefix in MacJoy’s mark was likely to mislead the public into believing the products originated from or were affiliated with McDonald’s. The differences in design, color, and script noted by the CA were considered ancillary and did not overcome the confusing similarity created by the dominant and distinctive syllable. The ruling protects McDonald’s established intellectual property rights from dilution and prevents consumer confusion in the marketplace.