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CASE 2: MCDONALD’s CORPORATION vs. L.C. BIG MAK BURGER, INC, G.R. No. 143993, August 18, 2004
(Link for full text: https://lawphil.net/judjuris/juri2004/aug2004/gr_143993_2004.html )

3. After reading and analyzing the said case or its digest, fill up this Table with your answer

Questions Answers

1.Who were the contending Petitioners:

parties or persons in the case? ●​ McDonald’s Corporation – A well-known multinational
fast-food chain that owns the trademark "McDonald's" and
the "Big Mac" sandwich.
Respondent:
●​ L.C. Big Mak Burger, Inc. – A local fast-food business in the
Philippines that used the name "Big Mak" for its burger products.

●​ Leoncio Co – The owner of L.C. Big Mak Burger, Inc.

2. What are the important facts

in the said case that are also
related to the topics in the
1. McDonald's Trademark Rights over "Big Mac"
above-mentioned PowerPoint?
●​ McDonald’s Corporation is a globally recognized fast-food chain with
trademark rights over "Big Mac."
●​ It had registered "Big Mac" with the Philippine Intellectual Property Office
(IPO) as part of its brand protection strategy.
●​ McDonald's claimed that "Big Mac" is a well-known trademark, protected
under Intellectual Property Law (IP Code of the Philippines) and
international treaties.

2. L.C. Big Mak Burger, Inc.’s Use of "Big Mak"

●​ L.C. Big Mak Burger, Inc., owned by Leoncio Co, used the name "Big Mak"
for its hamburgers and fast-food business in the Philippines.
●​ It also used a logo and packaging style similar to McDonald's, allegedly to
capitalize on McDonald's brand recognition.
●​ McDonald's argued that "Big Mak" was confusingly similar to "Big Mac",
violating its trademark rights.

3. Trademark Infringement Issue

●​ McDonald's filed a trademark infringement lawsuit, arguing that:
○​ "Big Mak" sounds and looks similar to "Big Mac."
○​ Consumers might associate "Big Mak" with McDonald's, leading to
confusion in the market.
●​ L.C. Big Mak countered, claiming that:
○​ "Big Mak" was different from "Big Mac."
○​ It was a locally registered business with no intention to mislead
consumers.

4. Unfair Competition Issue

●​ Aside from trademark infringement, McDonald's accused L.C. Big Mak of
unfair competition, stating that:
○​ The use of "Big Mak" was intentional to ride on the popularity of
"Big Mac."
○​ The packaging, trade dress, and marketing style were similar to
McDonald's.
○​ It misled customers into thinking "Big Mak" was associated with
 McDonald's.

5. Supreme Court’s Decision

●​ The Supreme Court ruled in favor of McDonald's, stating that:
○​ "Big Mac" is a well-known trademark under intellectual property
law.
○​ The use of "Big Mak" created confusion among consumers.
○​ There was clear evidence of unfair competition, as L.C. Big Mak
intended to profit from McDonald's established reputation.
●​ The Court ordered L.C. Big Mak Burger, Inc. to stop using "Big Mak" and
pay damages to McDonald's.

3. What is/are the issue/s or

dispute/s in the said case or why
were those parties contending
with each other?
1. Trademark Infringement
✅ Issue:
●​ Did L.C. Big Mak Burger, Inc. infringe on McDonald's trademark
rights over "Big Mac"?

✅ McDonald’s Argument:
●​ "Big Mac" is a registered trademark of McDonald's and a well-known
brand worldwide.
●​ "Big Mak" sounds and looks similar to "Big Mac," which could
mislead consumers.
●​ The similarity in names violates trademark laws, specifically the
Intellectual Property Code of the Philippines.

✅ L.C. Big Mak Burger, Inc.’s Defense:

●​ The name "Big Mak" is not identical to "Big Mac."
●​ "Big Mak" was used as part of its business name, which is different
from a trademark.
●​ There was no intent to mislead customers or take advantage of
McDonald's reputation.

2. Unfair Competition
✅ Issue:
●​ Did L.C. Big Mak Burger, Inc. engage in unfair competition by
using "Big Mak" in a way that confused consumers?

✅ McDonald’s Argument:
●​ L.C. Big Mak Burger, Inc. used a name and branding strategy that
closely resembled McDonald’s.
●​ The similarity in name and branding caused confusion among
consumers, making them think "Big Mak" was connected to
McDonald's.
●​ This unfairly benefited L.C. Big Mak by taking advantage of
McDonald's established reputation.

✅ L.C. Big Mak Burger, Inc.’s Defense:

●​ There was no deception or intention to confuse customers.
●​ The company operated independently and had its own distinct
branding.
 ●​ The local market knew that "Big Mak" was different from "Big
Mac."

3. Protection of Well-Known Trademarks

✅ Issue:
●​ Is "Big Mac" a well-known trademark that should be protected,
even against a locally registered business?

✅ McDonald’s Argument:
●​ "Big Mac" is an internationally famous trademark, so it should be
protected even if L.C. Big Mak was a local company.
●​ Under intellectual property laws, well-known trademarks do not need
to be registered locally to receive protection.

✅ L.C. Big Mak Burger, Inc.’s Defense:

●​ "Big Mak" was a local brand, and it was not directly copying
McDonald’s.
●​ The protection of well-known marks should not automatically
apply unless there is actual confusion.

4. What were the arguments or

standpoint or reasoning of the
parties or persons contending in McDonald’s Corporation (Petitioner)
said case?
▶ Standpoint:​
McDonald’s claimed that L.C. Big Mak Burger, Inc. infringed on its trademark
rights and engaged in unfair competition by using the name "Big Mak",
which was confusingly similar to its registered "Big Mac" trademark.

📌 McDonald’s Arguments:
1. Trademark Infringement
●​ McDonald’s is the registered owner of the "Big Mac" trademark,
which has been recognized worldwide.
●​ "Big Mac" and "Big Mak" sound similar and could cause confusion
among consumers.
●​ Under the Intellectual Property Code (IP Code) of the Philippines,
trademarks should be protected from unauthorized use that may
mislead customers.

2. Unfair Competition
●​ L.C. Big Mak intentionally used a similar name to take advantage of
McDonald’s reputation.
●​ The use of "Big Mak" in a fast-food business selling burgers creates
an association with McDonald's, misleading the public.
●​ Even if "Big Mak" was not an exact copy, minor differences do not
matter if the dominant feature of the name is similar.

3. Protection of Well-Known Trademarks

●​ "Big Mac" is a globally recognized and well-known trademark under
Philippine law and international treaties (Paris Convention).
●​ Well-known trademarks must be protected even if not locally
registered, to prevent unauthorized businesses from unfairly benefiting
 from their reputation.

4. Dominancy Test Should Apply

●​ The dominancy test (which focuses on the most striking feature of the
mark) should be used to determine infringement.
●​ Since "Big Mak" adopts the dominant feature of "Big Mac," there is
clear trademark infringement.

L.C. Big Mak Burger, Inc. (Respondent)

▶ Standpoint:​
L.C. Big Mak argued that there was no trademark infringement or unfair
competition, as "Big Mak" was a separate and independent business with its own
identity.

📌 L.C. Big Mak’s Arguments:

1. No Trademark Infringement
●​ "Big Mak" is not identical to "Big Mac."
●​ The name "Big Mak" was not copied from McDonald’s but was developed
independently.
●​ It was a locally established brand, not intended to mislead customers or ride
on McDonald’s popularity.

2. No Likelihood of Confusion
●​ The public knows the difference between McDonald's "Big Mac" and L.C. Big
Mak Burger.
●​ There were clear distinctions in the business operations and marketing
strategies of both companies.
●​ Local consumers would not confuse "Big Mak" with "Big Mac" because
McDonald's was an international chain, while L.C. Big Mak was a small, local
business.

3. Fair Use Defense

●​ The name "Big Mak" was part of the company’s business name, not just a
product name.
●​ Businesses should be allowed to use descriptive or common words in their
branding.
●​ "Mak" was short for "Makati" and had no connection to McDonald's.

4. The Holistic Test Should Apply

●​ Instead of the dominancy test, the holistic test (which looks at the trademarks
as a whole, including packaging and branding) should be used.
●​ When viewed as a whole, "Big Mak" does not resemble "Big Mac" enough
to cause confusion.

Supreme Court’s Ruling: McDonald's Wins

The Supreme Court ruled in favor of McDonald's, agreeing that:​
✔ "Big Mac" is a well-known trademark, entitled to strong protection.​
✔ The dominancy test applies, and "Big Mak" copies the dominant feature of "Big
Mac," leading to confusion.​
✔ There was clear unfair competition, as L.C. Big Mak benefited from McDonald's
reputation.​
✔ L.C. Big Mak was ordered to stop using "Big Mak" and pay damages to
McDonald’s.
 5. Give the brief decision or
ruling of the Supreme Court and
explain briefly why it is related to
Supreme Court Decision (Brief Ruling)
the topic.
The Supreme Court ruled in favor of McDonald's Corporation, stating that
L.C. Big Mak Burger, Inc. committed trademark infringement and unfair
competition by using the name "Big Mak," which was confusingly similar to
McDonald's registered "Big Mac" trademark.

✅
As a result:​
L.C. Big Mak Burger, Inc. was ordered to stop using the name "Big

✅
Mak."​
The company was held liable for damages and required to pay
McDonald's.

The Court applied the dominancy test, emphasizing that the dominant
feature of a mark is what creates confusion among consumers. Since "Big
Mak" adopted the dominant feature of "Big Mac," it led to consumer confusion
and unfairly benefited from McDonald's global reputation.

📌 Why Is This Case Related to Intellectual Property?

This case is directly related to Intellectual Property (IP) law, specifically trademark
protection because it:

✔ Highlights the importance of trademarks – A trademark helps businesses protect

their brand identity and prevent consumer confusion.​
✔ Defines trademark infringement – Using a name that is confusingly similar to a
registered trademark violates intellectual property rights.​
✔ Explains the protection of well-known trademarks – The case reinforces that
well-known trademarks like "Big Mac" are protected even against local businesses.​
✔ Illustrates unfair competition – The ruling confirms that businesses cannot copy
branding elements of famous companies to mislead consumers or gain an unfair
advantage.

This decision is significant because it upholds the integrity of trademarks and

prevents brand dilution, ensuring that companies are fairly protected under
intellectual property laws.

4. Make the said Table in a Word document. This will be one of your “balas” in our next Graded Recitation. There is no
need to submit your case summary, just make it available during our Graded Recit. Stay safe and God bless!