MCDONALD’S CORP. v.

MCJOY

G.R. NO. 166115

February 2, 2007

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.

Macjoy on the other hand averred that the it has used the mark “MACJOY” for tha past many years in
good faith and has spent considerable sums of money for extensive promotions x x x.

The IPO ratiocinated that the predominance of the letter “M” and the prefixes “Mac/Mc” in both the
Macjoy and McDonald’s marks lead to the conclusion that there is confusing similarity between them x x
x. Therefore, Macjoy’s application was denied.

Upon appeal to the CA it favored with MacJoy and against McDonald’s. The Court of Appeals, in ruling
over the case, actually used the holistic test (which is a test commonly used in infringement cases). The
holistic test looks upon the visual comparisons between the two trademarks. The justifications are the
following:

1. The word “MacJoy” is written in round script while the word “McDonald’s is written in single stroke
gothic;

2. The word “MacJoy” comes with the picture of a chicken head with cap and bowtie and wings
sprouting on both sides, while the word “McDonald’s” comes with an arches “M” in gold colors, and
absolutely without any picture of a chicken;

3. The word “MacJoy” is set in deep pink and white color scheme while the word “McDonald’s” is
written in red, yellow, and black color combination;
4. The facade of the respective stores of the parties, are entirely different.

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.