McDONALD’S CORPORATION v.

MACJOY FASTFOOD
CORPORATION. G.R. No. 166115. February 2, 2007
FACTS:

MacJoy Fastfood Corp. is a corporation in the sale of fastfood based in Cebu filed with IPO for the
registration of their name.

McDonald's Corporation filed an opposition to the application. McDonald's claims that their logo
and use of their name would falsely tend to suggest a connection with MacJoy's services and food
products, thus, constituting a fraud upon the general public and further cause the dilution of the
distinctiveness of petitioner’s registered and internationally recognized MCDONALD’S marks to its
prejudice and irreparable damage.

Respondent averred that MACJOY has been used for the past many years in good faith and has
spent considerable sums of money for said mark.

The IPO held that there is confusing similarity The CA held otherwise stating there are

predominant difference like the spelling, the font and color of the trademark and the picture of
the logo.

ISSUE: Whether the ruling of the CA is correct.

RULING:

No. Jurisprudence developed two tests, the dominancy and holistic test. The dominancy test
focuses on the similarity of the prevalent features of the competing trademarks that might cause
confusion or deception while the holistic test requires the court to consider the entirety of the
marks as applied to the products, including the labels and packaging, in determining confusing
similarity. Under the latter test, a comparison of the words is not the only determinant factor.

The IPO, though they correctly used the dominancy, they should have taken more considerations.
In recent cases, the SC has consistently used and applied the dominancy test in determining
confusing similarity or likelihood of confusion between competing trademarks. The CA, while
seemingly applying the dominancy test, in fact actually applied the holistic test.

Applying the dominancy test to the instant case, the Court both marks are confusingly similar with
each other such that an ordinary purchaser can conclude an association or relation between the
marks. The predominant features such as the "M," "Mc," and "Mac" appearing in both easily attract
the attention of would-be customers. Most importantly, both trademarks are used in the sale of
fastfood products.

Petitioner has the right of ownership in the said marks. Petitioner's mark was registered in 1977
while respondent only in 1991.