Ana L. Ang, petitioner vs.

Torribio Teodoro, respondent

(G.R. No. 48226, 14 December 1942)
Doctrines –
1. Definition of secondary meaning: A word or phrase originally incapable of exclusive
appropriation with reference to an article on the market, because geographically or otherwise
descriptive, might nevertheless have been used so long and so exclusively by one producer with
reference to his article that, in that trade and to that branch of the purchasing public, the word or
phrase has come to mean that the article was his product.
2. Test of whether goods are of the same class: The test employed by the courts to determine
whether noncompeting goods are or are not of the same class is confusion as to the origin of the
goods of the second user. Although two noncompeting articles may be classified under two
different classes by the Patent Office because they are deemed not to possess the same
descriptive properties, they would nevertheless be held by the courts to belong to the same class
if the simultaneous use on them of identical or closely similar trade- marks would be likely to
cause confusion as to the origin, or personal source, of the second user's goods. They would be
considered as not falling under the same class only if they are so dissimilar or so foreign to each
other as to make it unlikely that the purchaser would think the first user made the second user's
goods.
Facts –
The respondent Teodoro Toribio brought a suit against petitioner Ana Ang to prevent her using
the trademark “Ang Tibay” for the pants and shirts that she manufactures. Teodoro, at first in
partnership with Juan Katindig and later as sole proprietor, has continuously used "Ang Tibay,"
both as a trademark and as a tradename, in the manufacture and sale of slippers, shoes, and
indoor baseballs since 1910. He formally registered it as a trademark on 29 September 29, 1915
and as a tradename on 3 January 1933. Meanwhile, Ana Ang registered the same trademark
"Ang Tibay" for her pants and shirts on 11 April 1932 and in 1937, she established a factory to
manufacture these articles. In 1938, her gross sales amounted to P422,682.09. That same year,
she advertised the factory which she had just built, and it was when this was brought to the
attention of the respondent that he consulted his attorneys and eventually brought suit. CFI
Manila Presiding Judge Quirico Abreto absolved Ang from Teodoro’s complaint (with costs
against him), on the grounds that the mark “Ang Tibay” used by her was used in goods (pants
and shirts) essentially different from and not in competition with that of Teodoro’s (slippers and
shoes) and there had been no exclusive use of the said “Ang Tibay” mark by the respondent. The
Court of Appeals’ Second Division reversed the trial court’s judgment, holding that that the mark
“Ang Tibay” has already acquired secondary meaning through uninterrupted and exclusive use
since 1910 by the respondent in his manufacture of shoes and slippers. It also ruled that the
goods or articles on which the two trademarks are used are similar or belong to the same class. It
also directed the Director of Commerce to cancel the petitioner’s registration of “Ang Tibay”
trademark for her goods and it enjoined her from using the said trademark. Hence, this petition
by Ana Ang by certiorari which sought reversal of the Court of Appeals’ judgment.

Issues raised and held by Supreme Court –

(1) Whether the trademark “Ang Tibay” has acquired secondary meaning through uninterrupted
and exclusive use, and thus, cannot be used by the petitioner in her products?
Yes. The Supreme Court held that the phrase “Ang Tibay” already acquired secondary meaning,
not just merely a descriptive term for the merchandise which respondent has applied them as a
trademark. The Court explained that the phrase "Ang Tibay" is an exclamation denoting
admiration of strength or durability. For instance, one who tries hard but fails to break an object
exclaims "Ang tibay!" ("How strong!") It may also be used in a sentence thus, "Ang tibay ng
sapatos mo!" ("How durable your shoes are!") The phrase "ang tibay" is never used adjectively
to define or describe an object. One does not say, "ang tibay sapatos" or "sapatos ang tibay" to
mean "durable shoes," but "matibay na sapatos" or "sapatos na matibay." Thus, the Court
deduced that the said phrase is not a descriptive term within the meaning of the Trademark Law
but rather a fanciful or coined phrase which may properly and legally be appropriated as a
trademark or tradename. The phrase "Ang Tibay," being neither geographic nor descriptive, was
originally capable of exclusive appropriation as a trademark. But were it not so, the application
of the doctrine of secondary meaning made by the Court of Appeals could nevertheless be fully
sustained because, in any event, by Teodoro's long and exclusive use of said phrase with
reference to his products andhis business, it has acquired a proprietary connotation.
(2) Whether the Court of Appeals was correct to decide that the goods or articles on which the
two trademarks are used are similar or belong to the same class?
Yes. The Supreme Court held that although two noncompeting articles may be classified under
two different classes by the Patent Office because they are deemed not to possess the same
descriptive properties, they would nevertheless be held by the courts to belong to the same class
if the simultaneous use on them of identical or closely similar trade- marks would be likely to
cause confusion as to the origin, or personal source, of the second user's goods.
Mang Inasal v IFP

FACTS:
IFP Manufacturing Corp. filed an application for the registration of the mark, “OK
Hotdog Inasal Cheese Hotdog Flavor Mark”, in connection with goods under Class 30 of the
Nice Classification. It was intended to be used on one of its curl snack products. However, the
said application was opposed by Mang Inasal, that owned the mark, “Mang Inasal, Home of Real
Pinoy Style Barbecue and Device”, for services under Class 43. It has been registered with the
IPO in 2006 and has been used by petitioner since 2003.
Petitioner contended that the registration of OK Hotdog is prohibited under Sec. 123.1d.
The OK Hotdog and Mang Inasal marks share similarities, as to their appearance and to the
goods or services they represent, thus suggesting a false connection or association between the
said marks, and would likely cause confusion to the public.
1. The dominant element – the word “Inasal”, is printed and stylized in the exact
manner.
2. The goods that the OK Hotdog Inasal mark is intended to identify are closely related
to the services represented by the Mang Inasal mark.
The IPO-BLA dismissed petitioner’s opposition. IPO-DG affirmed such dismissal.
1. There are other words found in the OK Hotdog Inasal mark that are not present in the
Mang Inasal mark.
2. The underlying goods and services are not closely related.
CA denied the appeal of the petitioner. MR was also denied.
ISSUE:
W/N the trademark may be registered? NO.
HELD:
Sec.123.1d provides that a mark that is similar to a registered mark or a mark with an
earlier filing, and which is likely to cause confusion on the part of the public cannot be registered
with the IPO. The concept of the confusion could refer to the confusion of goods or confusion of
business. Confusion, in both forms, is only possible when the goods or services covered by
allegedly similar marks are identical, similar, or related in some manner.
To fall under the ambit of Sec. 123.1d and be regarded as likely to deceive or cause
confusion, a prospective mark must meet two minimum conditions:
1. The prospective mark must nearly resemble or be similar to an earlier mark; and
a. The OK Hotdog Inasal Mark is Similar to the Mang Inasal Mark. Similarity
does not mean absolute identity of marks. It is enough that a prospective mark
be a colorable imitation of the former. Colorable imitation denotes such
likeness in form, content, words, sound, meaning, special arrangement or
general appearance of one mark with respect to another as would likely
mislead an average buyer in the ordinary course of purchase.
 b. In determining whether there is similarity or colorable imitation, authorities
may use two tests:
i. Dominancy Test focuses on the similarity of the prevalent features of
the competing trademark which might cause confusion or deception. If
the competing trademark contains the main, essential or dominant
features of another, and confusion or deception is likely to result,
infringement takes place. The question is whether the use of the marks
involved is likely to cause confusion or mistake in the mind of the
public or deceive purchasers.
ii. Holistic Test requires that the entirety of the marks in question be
considered in resolving confusing similarity. The trademarks in their
entirety as they appear in their respective labels or hang tags must also
be considered in relation to the goods to which they are attached.
iii. Recent case law seems to indicate an overwhelming judicial
preference to applying the dominancy test.
iv. In the mark, the word “INASAL” is dominant and the way it is
stylized is similar to Mang Inasal’s. It is a descriptive term that cannot
be appropriated, but the way it is stylized is not. Thus, Mang Inasal
can claim exclusive use of such element. Even if there are differences,
the average buyer would pay more attention to the prominent feature
compared to the peripheral details.
2. The prospective mark must pertain to goods or services that are either identical,
similar or related to the goods or services represented by the earlier mark.
a. Related goods and services are those that, though non-identical or non-similar,
are so logically connected to each other that they may reasonably be assumed
to originate from one manufacturer or from economically-linked
manufacturers. In determining whether goods or services are related, several
factors may be recognized:
i. The business (and its location) to which the goods belong;
ii. The class of product to which the goods belong;
iii. The product’s quality, quantity, or size, including the nature of the
package, wrapper or container;
iv. The nature and cost of the articles;
v. The descriptive properties, physical attributes or essential
characteristics with reference to their form, composition, texture or
quality;
vi. The purpose of the goods;
vii. Whether the article is bought for immediate consumption, that is, day-
to-day household items;
viii. The fields of manufacture;
ix. The conditions under which the article is usually purchased; and
 x. The channels of trade through which the goods flow, how they are
distributed, marketed, displayed, and sold.
A very important circumstance is whether there exists a likelihood that an
appreciable number of ordinarily prudent purchasers will be misled, or simply
confused, as to the source of the goods in question. The simulation, in order to
be objectionable, must be such as appears likely to mislead the ordinary
intelligent buyer who has a need to supply and is familiar with the article that
he seeks to purchase.
b. The two are related as it may lead to a confusion of business.
i. Petitioner uses the Mang Inasal mark in connection with its restaurant
services that is particularly known for its chicken inasal.
ii. The mark has been used for petitioner’s business since 2003.
iii. Respondent seeks to market under the OK Hotdog Inasal mark curl
snack products which it publicizes as having a cheese hotdog inasal
flavor.
iv. It is the fact that the underlying goods and servicesthat involve inasal
and inasal-flavored products ultimately fixes the relations between
such goods and services. Thus, an average buyer is likely to be
confused as to the true source of such curls.
McDonald’s vs. Big Mak
  Actions, Damages and Injunction for Infringement

- Big Mak corporation applied with the  Philippine Bureau of Patents, Trademarks and
Technology (“PBPTT”) for the registration of the “Big Mak” mark for its hamburger
sandwiches.
- McDonald’s opposed Big Mak’s application on the ground that “Big Mak” was a
colorable imitation of its registered “Big Mac” mark for the same food products.
McDonald’s also informed the chairman of the Board of Directors of respondent
corporation, of its exclusive right to the “Big Mac” mark and requested him
to desist from using the “Big Mac” mark or any similar mark.
- Having received no reply from respondent Dy, McDonald’s sued Big Mak in the RTC for
trademark infringement and unfair competition.
- RTC issued TRO against Big Mak
- On 16 August 1990, the RTC issued a writ of preliminary injunction replacing the TRO.
- RTC made the injunction permanent, and ordered Big Mak to pay
McDonald’s actual damages in the amount of P400,000.00, exemplary damages in
the amount of P100,000.00, and attorney’s fees and expenses of litigation in the amount
of P100,000.00; 
- CA reversed RTC:
o Court of Appeals rendered judgment reversing the RTC Decision and ordering
McDonald’s to pay respondents P1,600,000 as actual and compensatory damages
and P300,000 as moral damages. 
o We (CA) find no sufficient evidence adduced by plaintiffs-appellees that
defendants-appellants deliberately tried to pass off the goods manufactured by
them for those of plaintiffs-appellees. The mere suspected similarity in the sound
of the defendants-appellants’ corporate name with the plaintiffs-appellees’
trademark is not sufficient evidence to conclude unfair competition.  Defendants-
appellants explained that the name “Mak” in their corporate name was derived
from both the first names of the mother and father of defendant Francis Dy,
whose names are Maxima and Kimsoy.  With this explanation, it is up to the
plaintiffs-appellees to prove bad faith on the part of defendants-appellants.  It is a
settled rule that the law always presumes good faith such that any person who
seeks to be awarded damages due to acts of another has the burden of proving
thatthe latter acted in bad faith or with ill motive.
Issue: WON the award of injunction and damages of the RTC is proper
Held: YES
Under Section 23 (“Section 23”) in relation to Section 29 of RA 166, a plaintiff who successfully
maintains trademark infringement and unfair competition claims is entitled to injunctive and
monetary reliefs. Here, the RTC did not err in issuing the injunctive writ of 16 August 1990
(made permanent in its Decision of 5 September 1994) and in ordering the payment
of P400,000 actual damages in favor of petitioners. The injunctive writ is indispensable to
prevent further acts of infringement by respondent corporation. Also, the amount of actual
damages is a reasonable percentage (11.9%) of respondent corporation’s gross sales for three
(1988-1989 and 1991) of the six years (1984-1990) respondents have used the “Big Mak” mark.
[84]

The RTC also did not err in awarding exemplary damages by way of correction for the public
good[85] in view of the finding of unfair competition where intent to deceive the public is
essential. The award of attorney’s fees and expenses of litigation is also in order.[86]      
McDONALD'S CORPORATION, petitioner, vs. MACJOY FASTFOOD
CORPORATION, respondent.
[G.R. No. 166115. February 2, 2007.]
Facts: On 14 March 1991, respondent MacJoy Fastfood Corporation, a domestic corporation
engaged in the sale of fast food products in Cebu City, filed with the then Bureau of Patents,
Trademarks and Technology Transfer (BPTT), now the Intellectual Property Office (IPO), an
application for the registration of the trademark "MACJOY & DEVICE" for fried chicken,
chicken barbeque, burgers, fries, spaghetti, palabok, tacos, sandwiches, halo-halo and steaks
under classes 29 and 30 of the International Classification of Goods.

Petitioner McDonald's Corporation, a corporation duly organized and existing under the laws of
the State of Delaware, USA, filed a verified Notice of Opposition 3 against the respondent's
application claiming that the trademark "MACJOY & DEVICE" so resembles its corporate logo,
otherwise known as the Golden Arches or "M" design, and its marks "McDonalds," McChicken,"
"MacFries," "BigMac," "McDo," "McSpaghetti," "McSnack," and "Mc," (hereinafter collectively
known as the 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
originate from the same source or origin.

Respondent denied the aforementioned allegations of the petitioner and averred that it has used
the mark "MACJOY" for the past many years in good faith and has spent considerable sums of
money for said mark's extensive promotion in tri-media, especially in Cebu City where it has
been doing business long before the petitioner opened its outlet thereat sometime in 1992; and
that its use of said mark would not confuse affiliation with the petitioner's restaurant services and
food products because of the differences in the design and detail of the two (2) marks.

The IPO, ratiocinating that the predominance of the letter "M," and the prefixes "Mac/Mc" in
both the "MACJOY" and the "MCDONALDS" marks lead to the conclusion that there is
confusing similarity between them especially since both are 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, sustained the petitioner's opposition and rejected the respondent's
application.
Finding no confusing similarity between the marks "MACJOY" and "MCDONALD'S," the CA,
in its herein assailed Decision 7 dated July 29, 2004, reversed and set aside the appealed IPO
decision and order.

Issue: Whether or not there is a confusing similarity between the MCDONALD'S marks of the
petitioner and the respondent's "MACJOY & DEVICE" trademark

Held: The Supreme Court is not the proper venue to consider factual issues as it is not a trier of
facts. Nevertheless, when the factual findings of the appellate court are mistaken, absurd,
speculative, conjectural, conflicting, tainted with grave abuse of discretion, or contrary to the
findings culled by the court of origin, as here, this Court will review them.

The old Trademark Law, Republic Act (R.A.) No. 166, as amended, defines a "trademark" as any
distinctive word, name, symbol, emblem, sign, or device, or any combination thereof adopted
and used by a manufacturer or merchant on his goods to identify and distinguish them from those
manufactured, sold, or dealt in by others.

Essentially, the issue here is whether there is a confusing similarity between the MCDONALD'S
marks of the petitioner and the respondent's "MACJOY & DEVICE" trademark when applied to
Classes 29 and 30 of the International Classification of Goods, i.e., food and ingredients of food.

In determining similarity and likelihood of confusion, jurisprudence has developed two tests, the
dominancy test and the holistic test. The dominancy test focuses on the similarity of the
prevalent features of the competing trademarks that might cause confusion or deception. In
contrast, 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.

Here, the IPO used the dominancy test in concluding that there was confusing similarity between
the two (2) trademarks in question as it took note of the appearance of the predominant features
"M", "Mc" and/or "Mac" in both the marks.

In trademark cases, particularly in ascertaining whether one trademark is confusingly similar to

another, no set rules can be deduced because each case must be decided on its merits.
Applying the dominancy test to the instant case, the Court finds that herein petitioner's
"MCDONALD'S" and respondent's "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.
Indisputably, the respondent's trademark application for the "MACJOY & DEVICE" trademark
covers goods under Classes 29 and 30 of the International Classification of Goods, namely, fried
chicken, chicken barbeque, burgers, fries, spaghetti, etc. Likewise, the petitioner's trademark
registration for the MCDONALD'S marks in the Philippines covers goods which are similar if
not identical to those covered by the respondent's application.

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.

With the existence of confusing similarity between the subject trademarks, the resulting issue to
be resolved is who, as between the parties, has the rightful claim of ownership over the said
marks.

A mark is valid if it is distinctive and hence not barred from registration under the Trademark
Law. However, once registered, not only the mark's validity but also the registrant's ownership
thereof is prima facie presumed.
Pursuant to Section 37 27 of R.A. No. 166, as amended, as well as the provision regarding the
protection of industrial property of foreign nationals in this country as embodied in the Paris
Convention 28 under which the Philippines and the petitioner's domicile, the United States, are
adherent-members, the petitioner was able to register its MCDONALD'S marks successively,
i.e., "McDonald's" in 04 October, 1971; the corporate logo which is the "M" or the golden arches
design and the "McDonald's" with the "M" or golden arches 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 date of first use
in the Philippines was December 7, 1987. 32
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 . . . in the Philippines"
before one may register a trademark, trade-name and service mark under the Trademark Law 33
pertains to the territorial jurisdiction of the Philippines and is not only confined to a certain
region, province, city or barangay.

Thus, the IPO was correct in rejecting and denying the respondent's application for registration
of the trademark "MACJOY & DEVICE."
Petition GRANTED.