McDonalds corp v L.C.

big mak burger, inc

Facts:
Petitioner is a corp organized under Delaware law of US, they own marks including
big mac mark for its burger. They registered their trademark with the US trademark registry.
They also applied for the same registration in the IPO, which the office approves based on its
home registration in US. Respondent is a domestic corp which operates fast-food outlets in
manila, they applied ofr the registration of big mak for its hamburger sandwiches. Petitioner
opposed the respondents application on the ground that it was an imitation of its mark.
Respondent admitted the use of the mark, however they claim that petitioner has no exclusive
right to the mark, as they point out isaiyas group that registered the same mark for hamburger
sandwiches prior to the petitioners registration. Respondet also claims that they are not liable
for infringement or unfair competition, as the mark they sought to be registered does not
constitute a colorable imitation of petitioners mark.
Issue:
Is the respondent liable for trademark infringement and unfair competition?
Held:
Yes. The mark of the petitioner is valid, it is distinctive and thus not barred from
registration. However, once registered, not only the marks validity but also the ownership of
the mark is evidence. The mark of the petitioner should be treated in its entirety and not
dissected word for word. Respondents use of the mark causes confusion.
Mcdonalds corp v macjoy fastfood corp
Facts:
Respondent is a domestic corp engaged in sale of fast food, files in the IPO, an
application for the registration of the trademark macjoy and device for their products.
Petitioner filed an opposition against the respondents application claiming that the trademark
resembles its company logo, the trademark applied for would confuse purchasers. Petitioner
alleged that the respondents use and adaptation in bad faith of their mark would suggest a
connection with the petitioner, constituting fraud upon the general public. Respondent denied
the allegations and averred that it has used the mark for many years in good faith and has spent
considerable sums of money for the marks promotion long before the petitioner opened its
outlet, and the said trademark would not confuse affiliation with the petitioner because of the
differences in the design. IPO ruled that the letter M marks the conclusion that there is
confusing similarity between them especially since both used almost the same products.
Issue:
Are the marks of the parties similar?
Held:
Yes. Applying the dominancy test, the marks of the parties are confusingly similar
with each other such that an ordinary purchaser can conclude an association. The word
macjoy attracts attention the same way as the petitioners goods marks which all use the
prefixes mc or mac.
Emerald garment manufacturing corp v ca
Facts:
Private respondent h.d. lee co., inc a foreign corp under the laws of usa filed with
the bureau for the trademark stylistic mr lee used on clothes. Petitioner a domestic corp.

private respondent invokes the protection of industrial property, that the trademark of the
petitioner closely resembled its own trademark as previously registered and used in the phil,
and not abandoned when applied to the connection of the petitioners goods to cause confusion
of the purchasing public as to the origin of the goods. Petitioner contended that its trademark
was entirely and unmistakably different from that of private respondent and they have a
certificate of registration was legally and validly granted. The bureau ordered the respondent to
dispose its current stock using the mark of stylistic mr lee, which the ca affirmed.
Issues:
Whether petitiones trademark stylistic mr lee is confusingly similar to private
respondents trademark lee
Held:
No. petitioners trademark is registered in the supplemental register. The trademark
law provides that marks and tradenames shall not be published for opposition, but shall be
published on registration. The essential element of infringement is colorable imitation/ this
term has benn defined as close imitation as to be calculated to deceive purchasers, or such
resemblance of the infringing mark to the original to deceive a purchaser. Petitioners
trademark is the whole stylistic mr lee/ although on its label the word lee is prominent, the
trademark should be considered as a whole and not a piecemeal.
Asia brewery, inc v ca and san Miguel corp
Facts:
Smc filed a complaint against abi for infringement of trademark and unfair
competition on account of the latters beer pale Pilsen or beer na beer product which has been
competing with smcs san Miguel pale Pilsen for a share of the local beer market. Trail court
ruled that there is no trademark infringement or unfair competition. Smc appeal to ca, which
reversed the trial court decision.
Issue:
Whether abi infringes smcs pale Pilsen with the design?
Held:
No. there is no similarity in the dominant features of the trademarks. Infringement
is determined by the test of dominancy rather than by differences of the marks and of
another. San Miguel pale Pilsen, written in white gothic letters with elaborate serifs at the
beginning and end of the letters s and m, while beer pale Pilsen , with the word beer
written in large amber letters, larger than any of the letters found in smc label. Purchasers will
not be deceive given the dissimilarities of the marks, neither in sound, spelling or appearance
be said to be confusingly similar.
Del monte corp v ca
Facts:
Petitioner is a foreign company under the laws of us not engaged in business in the
Philippines. Both countries are signatories of paris convention, which grants nationals of the
parties rights and advantages which their own nationals enjoy for the repression of acts of
infringement and unfair competition. Del monte granted philpack the right to manufacture,
distribute and sell in Philippines its products, later authorizing them to register with the patent
office the del monte catsup. Respondent obtained a certificate of registration by the bureau of
domestic trade to engage in the manufacture, packing, distribution and sale of various kinds of

goods by the logo sunshine fruit catsup which is registered in the supplemental register. It was
reported that the private respondent was using bottles similar to del montes, phipack warned
them from using it. Petitioner filed against private respondent for ignoring their warning for
infringement of trademark and unfair competition. Sunshine alleged that it had long ceased to
use the del monte bottle and that its logo was substantially different form the del monte logo
and would not confuse the buying public to the petitioners. Trail court dismissed the complaint
on the ground that there were substantial differences between the logos or trademarks of the
parties.
Issue:
Whether the logo of sunshine cause confusion to the buying public.

predominant colors used in the petitioners product was green and red-orange the same with
sunshine. The word catsup in both bottles is printed in white and the style of the print is the
same.
246 corp v daway
Facts:
Motres rolex and rolex centre phil limited filed against petitioner for trademark
infringement as it is alleged that petitioner has been using without authority the mark rolex in
its business name. In its answer, petitioner argued that respondents have no cause of action
because no trademark infringement exist and no confusion would arise from the use of the
mark considering its entertainment business is totally unrelated to the items catered by
respondents.

Held:
Yes. It has distinctions, but there was infringement and unfair competition. The
comparison requires a careful scrutiny to determine in what points the label of the product
differ. The ordinary buyer does not usually make such scrutiny nor does he usually have the
time to do so. The average shopper is usually in a hurry and does not inspect every product on
the shelf. The general confusion made by the article upon the eye of the casual purchaser who
is unsuspicious and off his guard buying under the normally prevalent conditions in trade and
giving the attention such purchasers. Even if the labels were analyzed together it is not difficult
to see that the sunshine label is a colorable imitation of the del monte trademark. The

Issue:
Whether rolex music lounge may be prohibited from using rolex
Held:
Under the old trademark law, goods for which the identical marks are used are
unrelated, there can be no likelihood of confusion and there is no infringement in the use of the
registered mark on the entirely different goods.