Professional Documents
Culture Documents
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G.R. No. 166115. February 2, 2007.
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* FIRST DIVISION.
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GARCIA, J.:
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1. Decision dated 29 July 2004 reversing an earlier
decision of the Intellectual Property Office (IPO)
which rejected herein respondent MacJoy FastFood
Corporation’s application for registration of the
trademark “MACJOY & DEVICE”; and
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2. Resolution dated 12 November 2004 denying
the petitioner’s motion for reconsideration.
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8 Supra note 2.
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I.
II.
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10 Id., at p. 72.
11 Id., at pp. 74 & 76.
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x x x x x x x x x”
“Applying the Dominancy test to the present case, the IPO should
have taken into consideration the entirety of the two marks
instead of simply fixing its gaze on the single letter “M” or on the
combinations “Mc” or “Mac.” A mere cursory look of the subject
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15 Mighty Corporation v. E & J Gallo Winery, G.R. No. 154342, July 14,
2004, 434 SCRA 473, 506.
16 McDonald’s Corporation v. L.C. Big Mak Burger, Inc., supra.
17 Id.
18 Emerald Garment Manufacturing Corporation v. Court of Appeals,
G.R. No. 100098, December 29, 1995, 251 SCRA 600, 615616.
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marks will reveal that, save for the letters “M” and “c,” no other
similarity exists in the subject marks.
We agree with the [respondent] that it is entirely unwarranted
for the IPO to consider the prefix “Mac” as the predominant
feature and the rest of the designs in [respondent’s] mark as
details. Taking into account such paramount factors as color,
designs, spelling, sound, concept, sizes and audio and visual
effects, the prefix “Mc” will appear to be the only similarity in the
two completely different marks; and it is the prefix “Mc” that
would thus appear as the miniscule detail. When pitted against
each other, the two marks reflect a distinct and disparate visual
impression that negates any possible confusing similarity in the
mind of the buying public.” (Words in brackets supplied.)
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Moreover, in Societe Des Produits Nestlé, S.A. v. CA the
Court, applying the dominancy test, concluded that the use
by the respondent therein of the word “MASTER” for its
coffee product “FLAVOR MASTER” was likely to cause
confusion with therein petitioner’s coffee products’
“MASTER ROAST” and “MASTER BLEND” and further
ruled:
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“In the case at bar, the predominant features such as the “M,”
“Mc,” and “Mac” appearing in both McDonald’s 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 McDonald’s 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 Donald’s
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.”
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26 McDonald’s Corporation v L.C. Big Mak Burger Inc., supra note 14;
SEC. 20. Certificate of registration prima facie evidence of validity.—A
certificate of registration of a mark or trade name shall be prima facie
evidence of the validity of the registration, the registrant’s ownership of
the mark or trade name, and of the registrant’s
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Pursuant to Section 37 of R.A. No. 166, as amended, as
well as the provision regarding the protection of industrial
property of foreign nationals
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in this country as embodied in
the Paris Convention under which the Philippines and the
petitioner’s domicile, the United States, are
adherentmembers, the petitioner was able to register its
MCDONALD’S marks successively, i.e., “McDonald’s” in 04
October,
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exclusive right to use the same in connection with the goods, business
or services specified in the certificate, subject to any conditions and
limitations stated therein.
27 Sec. 37. Rights of Foreign Registrants.—Persons who are nationals of,
domiciled in, or have a bona fide or effective business or commercial
establishment in any foreign country, which is a party to an international
convention or treaty relating to marks or trade names on the repression of
unfair competition to which the Philippines may be a party, shall be
entitled to the benefits and subject to the provisions of this Act . . . x x x
“Trade names of persons described in the first paragraph of this section
shall be protected without the obligation of filing or registration whether or
not they form parts of marks.”
28 The Paris Convention is essentially a compact among the various
member countries to accord in their own countries to citizens of the other
contracting parties’ trademarks and other rights comparable to those
accorded their own citizens by their domestic laws. The underlying
principle is that foreign nationals should be given the same treatment in
each of the member countries as that country makes available to its own
citizens. In addition, the Convention sought to create uniformity in certain
respects by obligating each nation to assure to nationals of countries of the
Union an effective protection against unfair competition. Article 2 of the
Paris Convention provides that: ART. 2. Nationals of each of the countries
of the Union shall, as regards the protection of industrial property, enjoy
in all the other countries of the Union the advantages that their respective
laws now grant, or may hereafter grant, to nationals, without prejudice to
the rights specially provided by the present Convention. Consequently,
they shall have the same protection as the latter, and the same legal
remedy against any infringement of their rights, provided they observe
the conditions and formalities imposed upon nationals.
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1971 ; the corporate logo which is the “M” or the golden
arches design and the “McDonald’s” with 30
the “M” or golden
arches31 design both in 30 June 1977 ; and so on and so
forth.
On the other hand, it is not disputed that the
respondent’s application for registration of its trademark
“MACJOY & DEVICE” was filed only on March 14, 1991
albeit the
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date of first use in the Philippines was December
7, 1987.
Hence, from the evidence on record, it is clear that the
petitioner has duly established its ownership of the mark/s.
Respondent’s contention that it was the first user of the
mark in the Philippines having used “MACJOY &
DEVICE” on its restaurant business and food products
since December, 1987 at Cebu City while the first
McDonald’s outlet of the petitioner thereat was opened only
in 1992, is downright unmeritorious. For the requirement
of “actual use in commerce x x x in the Philippines” before
one may register a trademark, trade name and service
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mark under the Trademark Law pertains to the territorial
jurisdiction of the Phil-
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29 Rollo, p. 86.
30 Id., at pp. 89 & 91.
31 Registration No. 31966, dated June 24, 1983 for the mark
“McChicken,” Id., at p. 93; Registration No. 34065, dated March 06, 1985,
for the mark “McDonald’s with “corporate logo” arches design, Id., at p. 94;
Registration No. 34065, dated July 18, 1985 for the mark “Big Mac,” Id.,
at p. 97; Registration No. 39988, dated July 14, 1988 for the mark
“MacFries,” Id., at p. 99; Registration No. 45583, dated July 14, 1988, for
the mark “McSpaghetti,” Id., at p. 101; Registration No. 50987, dated July
24, 1991, for the servicemark “McDo,” Id., at p. 100; Registration No.
32009, dated June 24, 1983 for the trademark “Big Mac” and Circle
Design Rollo, p. 106; Registration No. 48491, dated June 25, 1990 for the
service mark “McSnack” Id., at p. 105; Registration No. 51789, dated
December 02, 1991, for the trademark “Mc” (Id., at p. 107).
32 IPO Decision; Rollo, pp. 120-121.
33 Section 2 of R.A. 166, as amended, provides: Sec. 2. What are
registrable.—Trademarks, trade names and service marks owned by
persons, corporations, partnerships or associations domiciled in
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SO ORDERED.