LMGPROT - K32

Case Report
McDonald’s Corporation v.
L.C. Big Mak Burger
G.R. No. 143993

Group 9
Candelaria, Cataquis, Estrada
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Facts of the Overview of Timeline of Events

Case 1994 decision, RTC - LC Big Mak was liable for

trademark infringement of McDonald’s

1999 decision, CA - CA reversed RTC decision

2004 decision, SC - SC reversed the CA

decision and held the RTC decision
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Facts of the Case Petitioner, McDonald’s Corporation or “McDonald’s” is a corporation organized in the
United States, and operates a global chain of fast-food restaurants under its own, or
through a franchised, management. The respondent, LC Big Mak Burger Inc., is a domestic
corporation that also serves fast food.

On October 16, 1979, McDo registered the “Big Mac” mark for its double-decker
hamburger sandwich with the US Trademark Registry. McDo also applied for the same
mark’s registration in the Principal Register of the Philippines Bureau of Patents,
Trademarks and Technology and its application was approved on July 18, 1985.

On October 21, 1988, LC Big Mak applied for the registration of the “Big Mak” for its
sandwiches to the PBPTT.
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Facts of the Case

On October 21, 1988, LC Big Mak applied for the registration of the “Big Mak” for its
sandwiches to the PBPTT.

McDo opposed the application on the ground that “Big Mak” was a colorable imitation of
its registered “Big Mac.”

McDo also informed the chairman of LC Big Mak’s Board of Directors, Francis Dy, of its
exclusive right to the “Big Mac” mark and requested the corporation to desist from using
the mark.
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Facts of the Case

Definition of Colorable Imitation
As taken from Rule 18, Section 4 of the Rules of Procedure for Intellectual
Property Rights Cases, the term “colorable imitation" is defined as: a close
or ingenious imitation as to be calculated to deceive ordinary persons, or
such a resemblance to the original as to deceive an ordinary purchaser
giving such attention as a purchaser usually gives, as to cause him to
purchase the one supposing it to be the other."
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Facts of the Case

Respondent Dy did not reply to McDo, which led to the petitioners filing a lawsuit against
LC Big Mak in the RTC of Makati on June 6, 1990 for trademark infringement and unfair
competition.

LC Big Mak admitted to using the name “Big Mak burger” for their business. Despite this,
they claimed that McDo does not have the exclusive right to the “Big Mac” mark or any
other similar mark.
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Facts of the Case

LC Big Mak admitted to using the name “Big Mak burger” for their business. They claimed
that McDo does not have the exclusive right to the “Big Mac” mark or any other similar
mark. Respondents mentioned that the Isaiyas Group registered the same mark for
sandwiches with the PBPTT on March 31, 1979. Similarly, one Rodolfo Topacio registered
the same mark on June 24, 1983, 2 years before McDo’s registration was approved.

LC Big Mak claimed that they did not not fraudulently pass off their sandwiches as that of
McDo’s and sought damages with a counterclaim.
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Facts of the Case

McDo replied to the respondent LC Big Mak and denied the claim that they
are not exclusive owners of the “Big Mac” mark. Moreover, they claimed that
the Isaiyas Group and Topacio merely registered in the Supplemental
Register of the PBPTT and that form of registration does not provide any
protection. McDo claimed that it had acquired Topacio’s rights to his
registration in a Deed of Assignment dated May 18, 1981.
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Facts of the Case

Basis for RTC decision

Basis for CA decision

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Issues
W/N the questions raised in this petition are proper
for a petition for review under Rule 45.

W/N respondents used the words “Big Mak” not

only as part of the corporate name, but also as a
trademark for their hamburger products.

W/N respondent corporation is liable for

trademark infringement and unfair competition.
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Ruling W/N the questions raised in this petition are proper for a petition for
review under Rule 45.

A party intending to appeal from a judgement of the Court of Appeals may file a petition for
review under Section 1 of Rule 45 raising only questions of law

There is a question of fact when the doubt or difference arises on the truth or falsity of the
alleged facts

Due to the contradictory findings of fact of the RTC and the CA, the Court opted to accept the
petition, with this being one of the recognized exceptions to Section 1
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Ruling
W/N respondents used the words “Big Mak” not only as part of the
corporate name, but also as a trademark for their hamburger
products

Petitioners contended that the CA erred in ruling that the corporate name “L.C. Big Mak Burger, Inc.”
appears in the packaging for respondents’ hamburger products and not the words “Big Mak” only —
contention has merit

Respondent’s plastic wrappers and bags were identical with those petitioners presented during the hearings
for the injunctive writ except that the letters “L.C.” and the words “Burger, Inc.” in respondents’ evidence
were added above and below the words “Big Mak”, respectively

Since petitioners’ complaint was based on facts that existed before and during the hearings on the
injunctive write.
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Ruling W/N respondent corporation is liable for trademark infringement

and unfair competition

On Trademark Infringement

Trademark Infringement (RA 166, Sec. 22)

Any person who

(1) shall use, without the consent of the registrant, any reproduction, counterfeit, copy or colorable imitation of any registered
mark or trade-name in connection with the sale, offering for sale, or advertising of any goods, business or services on or in
connection with which use is likely to CAUSE CONFITION or otherwise mistake or to deceive purchasers or others as to the source
or origin of such goods or services or identity of such business

(2) reproduce, counterfeit, copy or colorable imitate any such mark or trade-name and apply such reproduction, counterfeit, copy,
or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used upon or in
connection with such goods, business or services.
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Ruling W/N respondent corporation is liable for trademark infringement

and unfair competition

On Trademark Infringement

Case presents cause for confusion, for which are stated as follows:

1. By using the “Big Mak” mark on the same goods, i.e. hamburger sandwiches, which are used similarly to the petitioners’ “Big Mac”
mark, then respondents have unjustly created the impression that its business is affiliated with the petitioners
2. By using the dominancy test, where dominant features in the competing marks are taken into consideration, respondent failed to
show that there could be no confusion
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Ruling W/N respondent corporation is liable for trademark infringement

and unfair competition

On Unfair Competition

Unfair Competition (RA 166, Sec. 29)

Any person who will employ deception or any other means contrary to good faith by which he shall pass off the goods
manufactured by him or in which he deals, or his business, or services for those of the one having established such goodwill, or who
shall commit any acts calculated to produce said result
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Ruling W/N respondent corporation is liable for trademark infringement

and unfair competition

On Unfair Competition

Respondents pointed out the following dissimilarities as proof that their hamburgers do not share the same general appearance of
the petitioner’s “Big Mac” hamburgers:

1. The respondents’ “Big Mak” mark is printed in orange, with only the letters “B” and “M” capitalized, compared to the petitioner’s
“Big Mac” mark, where all letters are printed in red and in block capital letters
2. The defendant’s packaging is plastic wrapper, while the petitioner’s packaging is a styrofoam box, with the Mcdonald’s logo
3. The respondent corporation’s mascot is a chubby boy named “Maky” printed between the words “Big” and “Mak”, while the
petitioner corporation’s mascot is named “Ronald McDonald”
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