G.R. NO.

166115; February 2, 2007

MCDONALD’S CORP. v. MCJOY
PONENTE GARCIA; J.

FACTS: Macjoy Fastfood Corporation (Macjoy), a corporation selling fried chicken, chicken
barbeque, burgers, fries, spaghetti, palabok, tacos, sandwiches, halo-halo and steaks (fastfood
products) in Cebu City filed with the BPTT-IPO an application for the registration of the
trademark “MACJOY & DEVICE”.

McDonald’s Corporation, a corporation organized under the laws of Delaware, USA opposed
against the respondent’s application claiming that such trademark so resembles its corporate logo
(Golden Arches) design and its McDONALD’s marks such that when used on identical or related
goods, the trademark applied for would confuse or deceive purchasers into believing that the
goods originated from the same source or origin.

Furthermore, cause the dilution of the distinctiveness petitioner has registered and internationally
recognized MCDONALD’S marks to its irreparable damages. McDonald’s Corporation filed the
case against the MacJoy Fastfood Corporation. In this case, McDonald’s and MacJoys marks are
completely similar to each other. Like, both marks use the “M” design logo and the prefixes
“Mc” or “Mac” as the dominant feature, which usually and aurally catches the attention of the
consuming public. Truly, the word “MACJOY” attracts attention the same way, as did
“McDonald’s,” “MacFries,” “McSpaghetti,” “McDo,” “Big Mac” and the rest of the
MCDONALD’S marks, which all use the prefixes Mc, and/or Mac.

LEGAL ISSUE: Whether there is a confusing similarity between the McDonald’s marks of the
petitioner and the respondent’s “MACJOY & DEVICE” trademark when it applied to classes 29
ad 30 of the International Classification of Goods.

RULINGS: YES. The Supreme Court ruled that the proper test to be used is the dominancy test.
The dominancy test not only looks at the visual comparisons between two trademarks but also
the aural impressions created by the marks in the public mind as well as connotative
comparisons, giving little weight to factors like prices, quality, sales outlets and market
segments. In the case at bar, the Supreme Court ruled that “McDonald’s” and “MacJoy” marks
are confusingly similar with each other such that an ordinary purchaser can conclude an
association or relation between the marks. To begin with, both marks use the
corporate “M” design logo and the prefixes “Mc” and/or “Mac” as dominant features. The first
letter “M” in both marks puts emphasis on the prefixes “Mc” and/or “Mac” by the similar way in
which they are depicted i.e. in an arch-like, capitalized and stylized manner. For sure, it is the
prefix “Mc,” an abbreviation of “Mac,” which visually and aurally catches the attention of the
consuming public. Verily, the word “MACJOY” attracts attention the same way as did
“McDonalds,” “MacFries,” “McSpaghetti,” “McDo,” “Big Mac” and the rest of the
MCDONALD’S marks which all use the prefixes Mc and/or Mac. Besides and most importantly,
both trademarks are used in the sale of fastfood products.
Moreover, the owner of MacJoy provided little explanation why in all the available names for a
restaurant he chose the prefix “Mac” to be the dominant feature of the trademark. The
prefix “Mac” and “Macjoy” has no relation or similarity whatsoever to the name Scarlett Yu
Carcel, which is the name of the niece of MacJoy’s president whom he said was the basis of the
trademark MacJoy. By reason of the MacJoy’s implausible and insufficient explanation as to
how and why out of the many choices of words it could have used for its tradename and/or
trademark, it chose the word “Macjoy,” the only logical conclusion deducible therefrom is that
the MacJoy would want to ride high on the established reputation and goodwill of the
McDonald’s marks, which, as applied to its restaurant business and food products, is
undoubtedly beyond question.