1. Mcdonalds Corporation v. L.

C Big Mak Burger Inc

G.R No. 143993 August 18, 2004

Facts: Petitioner McDonalds Corporation (McDoanlds), a corporation organized under the laws
of Delaware, United States, owns a family of marks including the Big Mac for its double decker
hamburger sandwich. On July 18, 1985, the Big Mak mark was allowed registration in the
principal register of Philippine Bureau of Patents, Trademarks and Technology (PBBT) based on
its Home Registration in the United States. From 1982 to 1990, McDonalds spent 10.5 Million in
advertisement for Big Mac hamburger sandwiches alone.
Respondent L.C Big Mak Burger, Inc., a domestic corporation, applied with the PBBT for the
registration of the Big Mak mark for its hamburger sandwiches.
McDonalds opposed respondent corporations application on the ground that Big Mak was a
colorable imitation of its registered Big Mac mark for the same food products.
Issue: Whether respondent corporation is liable for trademark infringement?
Held: Yes
To establish trademark infringement, the following elements must be shown: (1) the validity of
plaintiffs mark; (2) the plaintiffs ownership of the mark; and (3) the use of the mark or its colorable
imitation by the alleged infringer results in likelihood of confusion. Of these, it is the element of
likelihood of confusion that is the gravamen of trademark infringement.
Big Mac mark is valid as well as McDonalds ownership over it. 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 marks validity but also the registrant ownership of the mark is prima facie presumed.
Respondents use of Big Mak causes confusion. Applying the dominancy test, the Court finds 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, with the first word of both marks phonetically the
same, and the second word of both marks also phonetically the same. Visually, the two marks have
both two words and six letters, with the first word of both marks having the same letters and the
second word having the same first two letters. In spelling, considering the Filipino language, even
the last letters of both marks are the same.
Clearly, respondents have adopted in Big Mak not only the dominant but also almost all the
features of Big Mac. Applied to the same food product of hamburgers, the two marks will likely
result in confusion in the public mind.
2. McDonalds Corporation v. MacJoy Fastfood Corporation

G.R. No. 166115 February 2, 2007

Facts: Petitioner McDonalds Corporation, a corporation duly organized and existing under the
laws of the State of Delaware, USA, filed a verified Notice of Opposition against the application
for the registration of the trademark "MACJOY & DEVICE" of respondent MacJoy Fastfood
Corporation. Petitioner claimed that the trademark "MACJOY & DEVICE" so resembles its
corporate logo, otherwise known as the Golden Arches or "M" design, and its marks "McDonalds,"
McChicken," "MacFries," "BigMac," "McDo," "McSpaghetti," "McSnack," and "Mc," such that
when used on identical or related goods, the trademark applied for would confuse or deceive
purchasers into believing that the goods originate from the same source or origin. Likewise, the
petitioner alleged that the respondents use and adoption in bad faith of the "MACJOY &
DEVICE" mark would falsely tend to suggest a connection or affiliation with petitioners
restaurant services and food products, thus, constituting a fraud upon the general public and further
cause the dilution of the distinctiveness of petitioners registered and internationally recognized
MCDONALDS marks to its prejudice and irreparable damage..

Respondent denied the aforementioned allegations of the petitioner and averred that it has used the
mark "MACJOY" for the past many years in good faith and has spent considerable sums of money
for said marks extensive promotion in tri-media, especially in Cebu City where it has been doing
business long before the petitioner opened its outlet thereat sometime in 1992; and that its use of
said mark would not confuse affiliation with the petitioners restaurant services and food products
because of the differences in the design and detail of the two (2) marks.

Issue: Whether there is a confusing similarity between the MCDONALDS marks of the petitioner
and the respondents "MACJOY & DEVICE" trademark?

Held: Yes

In the case at bar, the predominant features such as the "M," "Mc," and "Mac" appearing in both
McDonalds marks and the MACJOY & DEVICE" easily attract the attention of would-be
customers. Even non-regular customers of their fastfood restaurants would readily notice the
predominance of the "M" design, "Mc/Mac" prefixes shown in both marks. Such that the common
awareness or perception of customers that the trademarks McDonalds mark and MACJOY &
DEVICE are one and the same, or an affiliate, or under the sponsorship of the other is not far-
fetched.

The differences and variations in styles as the device depicting a head of chicken with cap and
bowtie and wings sprouting on both sides of the chicken head, the heart-shaped "M," and the
stylistic letters in "MACJOY & DEVICE;" in contrast to the arch-like "M" and the one-styled
gothic letters in McDonalds marks are of no moment. These minuscule variations are
overshadowed by the appearance of the predominant features mentioned hereinabove.
Thus, with the predominance of the letter "M," and prefixes "Mac/Mc" found in both marks, the
inevitable conclusion is there is confusing similarity between the trademarks Mc Donalds marks
and "MACJOY AND DEVICE" especially considering the fact that both marks are being used on
almost the same products falling under Classes 29 and 30 of the International Classification of
Goods i.e. Food and ingredients of food.

By reason of the respondents 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 respondent would
want to ride high on the established reputation and goodwill of the MCDONALDs marks, which,
as applied to petitioners restaurant business and food products, is undoubtedly beyond question.

When one applies for the registration of a trademark or label which is almost the same or very
closely resembles one already used and registered by another, the application should be rejected
and dismissed outright, even without any opposition on the part of the owner and user of a
previously registered label or trademark, this not only to avoid confusion on the part of the public,
but also to protect an already used and registered trademark and an established goodwill.

3. EMERALD GARMENT MANUFACTURING CORPORATION vs.

HON. COURT OF APPEALS, BUREAU OF PATENTS, TRADEMARKS AND
TECHNOLOGY TRANSFER and H.D. LEE COMPANY, INC.

G.R. No. 100098 December 29, 1995

Facts: On 18 September 1981, private respondent H.D. Lee Co., Inc., a foreign corporation
organized under the laws of Delaware, U.S.A., filed with the Bureau of Patents, Trademarks &
Technology Transfer a Petition for Cancellation of Registration for the trademark "STYLISTIC
MR. LEE" used on skirts, jeans, blouses, socks, briefs, jackets, jogging suits, dresses, shorts, shirts
and lingerie under Class 25, issued on 27 October 1980 in the name of petitioner Emerald Garment
Manufacturing Corporation, a domestic corporation organized and existing under Philippine laws.

Private respondent, invoking Sec. 37 of R.A. No. 166 (Trademark Law) and Art. VIII of the Paris
Convention for the Protection of Industrial Property, averred that petitioner's trademark "so closely
resembled its own trademark, 'LEE' as previously registered and used in the Philippines, and not
abandoned, as to be likely, when applied to or used in connection with petitioner's goods, to cause
confusion, mistake and deception on the part of the purchasing public as to the origin of the goods."

Petitioner contended that its trademark was entirely and unmistakably different from that of private
respondent and that its certificate of registration was legally and validly granted. 3

Issue: Whether or not respondent-registrant's trademark "STYLISTIC MR. LEE" is confusingly

similar with the petitioner's trademarks "LEE or LEERIDERS, LEE-LEENS and LEE-SURES."

Held: No.
Petitioner's trademark is the whole "STYLISTIC MR. LEE." Although on its label the word "LEE"
is prominent, the trademark should be considered as a whole and not piecemeal. The dissimilarities
between the two marks become conspicuous, noticeable and substantial enough to matter
especially in the light of the following variables that must be factored in.

First, the products involved in the case at bar are, in the main, various kinds of jeans. These are
not your ordinary household items like catsup, soysauce or soap which are of minimal cost. Maong
pants or jeans are not inexpensive. Accordingly, the casual buyer is predisposed to be more
cautious and discriminating in and would prefer to mull over his purchase. Confusion and
deception, then, is less likely.

Second, like his beer, the average Filipino consumer generally buys his jeans by brand. He does
not ask the sales clerk for generic jeans but for, say, a Levis, Guess, Wrangler or even an Armani.
He is, therefore, more or less knowledgeable and familiar with his preference and will not easily
be distracted.

Finally, in line with the foregoing discussions, more credit should be given to the "ordinary
purchaser." Cast in this particular controversy, the ordinary purchaser is not the "completely
unwary consumer" but is the "ordinarily intelligent buyer" considering the type of product
involved.

There is no cause for the Court of Appeal's apprehension that petitioner's products might be
mistaken as "another variation or line of garments under private respondent's 'LEE' trademark".
As one would readily observe, private respondent's variation follows a standard format
"LEERIDERS," "LEESURES" and "LEELEENS." It is, therefore, improbable that the public
would immediately and naturally conclude that petitioner's "STYLISTIC MR. LEE" is but another
variation under private respondent's "LEE" mark.

As we have previously intimated the issue of confusing similarity between trademarks is resolved
by considering the distinct characteristics of each case. In the present controversy, taking into
account these unique factors, we conclude that the similarities in the trademarks in question are
not sufficient as to likely cause deception and confusion tantamount to infringement.

"LEE" is primarily a surname. Private respondent cannot, therefore, acquire exclusive ownership
over and singular use of said term.

In addition to the foregoing, we are constrained to agree with petitioner's contention that private
respondent failed to prove prior actual commercial use of its "LEE" trademark in the Philippines
before filing its application for registration with the BPTTT and hence, has not acquired ownership
over said mark.

For lack of adequate proof of actual use of its trademark in the Philippines prior to petitioner's use
of its own mark and for failure to establish confusing similarity between said trademarks, private
respondent's action for infringement must necessarily fail.
4. DEL MONTE CORPORATION and PHILIPPINE PACKING CORPORATION,
vs.
COURT OF APPEALS and SUNSHINE SAUCE MANUFACTURING INDUSTRIES,

G.R. No. L-78325 January 25, 1990

Facts: Petitioner Del Monte Corporation is a foreign company organized under the laws of the
United States and not engaged in business in the Philippines. Both the Philippines and the United
States are signatories to the Convention of Paris of September 27, 1965, which grants to the
nationals of the parties rights and advantages which their own nationals enjoy for the repression
of acts of infringement and unfair competition.

Del Monte granted Petitioner Philippine Packing Corporation (Philpack), a domestic corporation
duly organized under the laws of the Philippines, the right to manufacture, distribute and sell in
the Philippines various agricultural products, including catsup, under the Del Monte trademark
and logo.

Del Monte authorized Philpack to register with the Philippine Patent Office the Del Monte catsup
bottle configuration, for which it was granted Certificate of Trademark Registration No. SR-913
by the Philippine Patent Office under the Supplemental Register. On November 20, 1972, Del
Monte also obtained two registration certificates for its trademark "DEL MONTE" and its logo.

Respondent Sunshine Sauce Manufacturing Industries was issued a Certificate of Registration by

the Bureau of Domestic Trade on April 17,1980, to engage in the manufacture, packing,
distribution and sale of various kinds of sauce, identified by the logo Sunshine Fruit Catsup. This
logo was registered in the Supplemental Register on September 20, 1983. The product itself was
contained in various kinds of bottles, including the Del Monte bottle, which the private respondent
bought from the junk shops for recycling.

Having received reports that the private respondent was using its exclusively designed bottles and
a logo confusingly similar to Del Monte's, Philpack warned it to desist from doing so on pain of
legal action. Thereafter, claiming that the demand had been ignored, Philpack and Del Monte filed
a complaint against the private respondent for infringement of trademark and unfair competition,
with a prayer for damages and the issuance of a writ of preliminary injunction.

In its answer, Sunshine alleged that it had long ceased to use the Del Monte bottle and that its logo
was substantially different from the Del Monte logo and would not confuse the buying public to
the detriment of the petitioners.

After trial, the Regional Trial Court of Makati dismissed the complaint. It held that there were
substantial differences between the logos or trademarks of the parties; that the defendant had
ceased using the petitioners' bottles; and that in any case the defendant became the owner of the
said bottles upon its purchase thereof from the junk yards. Furthermore, the complainants had
failed to establish the defendant's malice or bad faith, which was an essential element of
infringement of trademark or unfair competition.
This decision was affirmed in toto by the respondent court, which is now faulted in this petition
for certiorari under Rule 45 of the Rules of Court.

Issue: Whether there was colorable imitation of the petitioners' trademark and logo by the private
respondent.

Held: Yes

In order to resolve the said issue, the Court now attempts to make a comparison of the two products,
to wit:

1. As to the shape of label or make:

Del Monte: Semi-rectangular with a crown or tomato shape design on top of the rectangle.

Sunshine: Regular rectangle.

2. As to brand printed on label:

Del Monte: Tomato catsup mark.

Sunshine: Fruit catsup.

3. As to the words or lettering on label or mark:

Del Monte: Clearly indicated words packed by Sysu International, Inc., Q.C., Philippines.

Sunshine: Sunshine fruit catsup is clearly indicated "made in the Philippines by Sunshine Sauce
Manufacturing Industries" No. 1 Del Monte Avenue, Malabon, Metro Manila.

4. As to color of logo:

Del Monte: Combination of yellow and dark red, with words "Del Monte Quality" in white.

Sunshine: White, light green and light red, with words "Sunshine Brand" in yellow.

5. As to shape of logo:

Del Monte: In the shape of a tomato.

Sunshine: Entirely different in shape.

6. As to label below the cap:

Del Monte: Seal covering the cap down to the neck of the bottle, with picture of tomatoes with
words "made from real tomatoes."
Sunshine: There is a label below the cap which says "Sunshine Brand."

7. As to the color of the products:

Del Monte: Darker red.

Sunshine: Lighter than Del Monte.

While the Court does recognize these distinctions, it does not agree with the conclusion that there
was no infringement or unfair competition. It seems to us that the lower courts have been so pre-
occupied with the details that they have not seen the total picture.

It has been correctly held that side-by-side comparison is not the final test of similarity. Such
comparison requires a careful scrutiny to determine in what points the labels of the products differ,
as was done by the trial judge. The ordinary buyer does not usually make such scrutiny nor does
he usually have the time to do so. The average shopper is usually in a hurry and does not inspect
every product on the shelf as if he were browsing in a library. Where the housewife has to return
home as soon as possible to her baby or the working woman has to make quick purchases during
her off hours, she is apt to be confused by similar labels even if they do have minute differences.
The male shopper is worse as he usually does not bother about such distinctions.

The question is not whether the two articles are distinguishable by their label when set side by side
but whether the general confusion made by the article upon the eye of the casual purchaser who is
unsuspicious and off his guard, is such as to likely result in his confounding it with the original.
As observed in several cases, the general impression of the ordinary purchaser, buying under the
normally prevalent conditions in trade and giving the attention such purchasers usually give in
buying that class of goods is the touchstone.

We also note that the respondent court failed to take into consideration several factors which
should have affected its conclusion, to wit: age, training and education of the usual purchaser, the
nature and cost of the article, whether the article is bought for immediate consumption and also
the conditions under which it is usually purchased . Among these, what essentially determines the
attitude of the purchaser, specifically his inclination to be cautious, is the cost of the goods. To be
sure, a person who buys a box of candies will not exercise as much care as one who buys an
expensive watch. As a general rule, an ordinary buyer does not exercise as much prudence in
buying an article for which he pays a few centavos as he does in purchasing a more valuable thing.
Expensive and valuable items are normally bought only after deliberate, comparative and
analytical investigation. But mass products, low priced articles in wide use, and matters of
everyday purchase requiring frequent replacement are bought by the casual consumer without
great care. In this latter category is catsup.

At that, even if the labels were analyzed together it is not difficult to see that the Sunshine label is
a colorable imitation of the Del Monte trademark. The predominant colors used in the Del Monte
label are green and red-orange, the same with Sunshine. The word "catsup" in both bottles is
printed in white and the style of the print/letter is the same. Although the logo of Sunshine is not
a tomato, the figure nevertheless approximates that of a tomato.
As previously stated, the person who infringes a trade mark does not normally copy out but only
makes colorable changes, employing enough points of similarity to confuse the public with enough
points of differences to confuse the courts. What is undeniable is the fact that when a manufacturer
prepares to package his product, he has before him a boundless choice of words, phrases, colors
and symbols sufficient to distinguish his product from the others. When as in this case, Sunshine
chose, without a reasonable explanation, to use the same colors and letters as those used by Del
Monte though the field of its selection was so broad, the inevitable conclusion is that it was done
deliberately to deceive.

3. ASIA BREWERY, INC.,

vs.
THE HON. COURT OF APPEALS and SAN MIGUEL CORPORATION

G.R. No. 103543 July 5, 1993

Facts: On September 15, 1988, San Miguel Corporation (SMC) filed a complaint against Asia
Brewery Inc. (ABI) for infringement of trademark and unfair competition on account of the latter's
BEER PALE PILSEN or BEER NA BEER product which has been competing with SMC's SAN
MIGUEL PALE PILSEN for a share of the local beer market. (San Miguel Corporation vs. Asia
Brewery Inc., Civ. Case. No. 56390, RTC Branch 166, Pasig, Metro Manila.).

The trial Court, presided over by Judge Jesus O. Bersamira, dismissing SMC's complaint because
ABI "has not committed trademark infringement or unfair competition against" SMC. On appeal,
the decision was reversed. In due time, ABI appealed to this Court by a petition for certiorari
under Rule 45 of the Rules of Court.

Issue: Whether ABI infringes SMC's trademark?

Held: No

The fact that the words pale pilsen are part of ABI's trademark does not constitute an infringement
of SMC's trademark: SAN MIGUEL PALE PILSEN, for "pale pilsen" are generic words
descriptive of the color ("pale"), of a type of beer ("pilsen"), which is a light bohemian beer with
a strong hops flavor that originated in the City of Pilsen in Czechoslovakia and became famous in
the Middle Ages. "Pilsen" is a "primarily geographically descriptive word," hence, non-
registerable and not appropriable by any beer manufacturer.

The circumstance that the manufacturer of BEER PALE PILSEN, Asia Brewery Incorporated, has
printed its name all over the bottle of its beer product: on the label, on the back of the bottle, as
well as on the bottle cap, disproves SMC's charge that ABI dishonestly and fraudulently intends
to palm off its BEER PALE PILSEN as SMC's product. In view of the visible differences between
the two products, the Court believes it is quite unlikely that a customer of average intelligence
would mistake a bottle of BEER PALE PILSEN for SAN MIGUEL PALE PILSEN.

The fact that BEER PALE PILSEN like SAN MIGUEL PALE PILSEN is bottled in amber-colored
steinie bottles of 320 ml. capacity and is also advertised in print, broadcast, and television media,
does not necessarily constitute unfair competition.

The use of ABI of the steinie bottle, similar but not identical to the SAN MIGUEL PALE PILSEN
bottle, is not unlawful. As pointed out by ABI's counsel, SMC did not invent but merely borrowed
the steinie bottle from abroad and it claims neither patent nor trademark protection for that bottle
shape and design. The Cerveza Especial and the Efes Pale Pilsen use the "steinie" bottle.

The petitioner's contention that bottle size, shape and color may not be the exclusive property of
any one beer manufacturer is well taken. SMC's being the first to use the steinie bottle does not
give SMC a vested right to use it to the exclusion of everyone else. Being of functional or common
use, and not the exclusive invention of any one, it is available to all who might need to use it within
the industry. Nobody can acquire any exclusive right to market articles supplying simple human
needs in containers or wrappers of the general form, size and character commonly and immediately
used in marketing such articles

ABI does not use SMC's steinie bottle. Neither did ABI copy it. ABI makes its own steinie bottle
which has a fat bulging neck to differentiate it from SMC's bottle. The amber color is a functional
feature of the beer bottle. As pointed out by ABI, all bottled beer produced in the Philippines is
contained and sold in amber-colored bottles because amber is the most effective color in preventing
transmission of light and provides the maximum protection to beer.

That the ABI bottle has a 320 ml. capacity is not due to a desire to imitate SMC's bottle because
that bottle capacity is the standard prescribed under Metrication Circular No. 778, dated 4
December 1979, of the Department of Trade, Metric System Board.

However, when as in this case, the names of the competing products are clearly different and their
respective sources are prominently printed on the label and on other parts of the bottle, mere
similarity in the shape and size of the container and label, does not constitute unfair competition.

Moreover, SMC's brand or trademark: "SAN MIGUEL PALE PILSEN" is not infringed by ABI's
mark: "BEER NA BEER" or "BEER PALE PILSEN." ABI makes its own bottle with a bulging
neck to differentiate it from SMC's bottle, and prints ABI's name in three (3) places on said bottle
(front, back and bottle cap) to prove that it has no intention to pass of its "BEER" as "SAN
MIGUEL."

There is no confusing similarity between the competing beers for the name of one is "SAN
MIGUEL" while the competitor is plain "BEER" and the points of dissimilarity between the two
outnumber their points of similarity.
5. 246 CORPORATION, vs. HON. REYNALDO B. DAWAY

Facts : On November 26, 1998, respondents Montres Rolex S.A. and Rolex Centre Phil., Limited,
owners/proprietors of Rolex and Crown Device, filed against petitioner 246 Corporation the instant
suit for trademark infringement and damages with prayer for the issuance of a restraining order or
writ of preliminary injunction before the Regional Trial Court of Quezon City, Branch 90.
Respondents alleged that sometime in July 1996, petitioner adopted and, since then, has been using
without authority the mark Rolex in its business name Rolex Music Lounge as well as in its
newspaper advertisements as Rolex Music Lounge, KTV, Disco & Party Club.

In its answer raising special affirmative defenses, petitioner argued that respondents have no cause
of action because no trademark infringement exist; that no confusion would arise from the use by
petitioner of the mark Rolex considering that its entertainment business is totally unrelated to the
items catered by respondents such as watches, clocks, bracelets and parts thereof

Issue: Whether Rolex Music Lounge may be prohibited from using Rolex considering previous
ruling that there can be no likelihood of confusion if the mark is used on entirely different goods?

Held: Yes

The interests of the owner of the well-known mark are likely to be damaged. For instance, if the
registrant will be precluded from expanding its business to those unrelated good or services, or if
the interests of the registrant of the well-known mark will be damaged because of the inferior
quality of the good or services of the user.

Section 123.1(f) is clearly in point because the Music Lounge of petitioner is entirely unrelated to
respondents business involving watches, clocks, bracelets, etc. However, the Court cannot yet
resolve the merits of the present controversy considering that the requisites for the application of
Section 123.1(f), which constitute the kernel issue at bar, clearly require determination facts of
which need to be resolved at the trial court. The existence or absence of these requisites should be
addressed in a full blown hearing and not on a mere preliminary hearing. The respondent must be
given ample opportunity to prove its claim, and the petitioner to debunk the same.