G.R. No. 166115 – 514 SCRA 95 – Mercantile Law – Intellectual Property Law – Law on Trademarks, Service Marks and Trade Names – Dominancy Test vs Holistic Test
Since 1987, MacJoy Devices had been operating in Cebu. MacJoy is a fast food restaurant which sells fried chicken, chicken barbeque, burgers, fries, spaghetti, palabok, tacos, sandwiches, halo-halo and steaks. In 1991, MacJoy filed its application for trademark before the Intellectual Property Office (IPO). McDonald’s opposed the application as it alleged that MacJoy closely resembles McDonald’s corporate logo 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 that the use and adoption in bad faith of the “MacJoy and Device” mark would falsely tend to suggest a connection or affiliation with McDonald’s restaurant services and food products, thus, constituting a fraud upon the general public and further cause the dilution of the distinctiveness of McDonald’s registered and internationally recognized McDonald’S marks to its prejudice and irreparable damage.
The IPO ruled in favor of McDonald’s. MacJoy appealed before the Court of Appeals and the latter ruled in favor of MacJoy. 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. In this case, the Court of Appeals ruled that other than the letters “M” and “C” in the words MacJoy and McDonald’s, there are no real similarities between the two trademarks. “MacJoy” is written in round script while “McDonald’s” is written in thin gothic. “MacJoy” is accompanied by a picture of a (cartoonish) chicken while “McDonald’s” is accompanied by the arches “M”. The color schemes between the two are also different. “MacJoy” is in deep pink while “McDonald’s” is in gold color.
ISSUE: Whether or not MacJoy infringed upon the trademark of McDonald’s.
HELD: Yes. The Supreme Court ruled that the proper test to be used is the dominancy test. The dominancy test not only looks at the visual comparisons between two trademarks but also the aural impressions created by the marks in the public mind as well as connotative comparisons, giving little weight to factors like prices, quality, sales outlets and market segments. In the case at bar, the Supreme Court ruled that “McDonald’s” and “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,” “McFries,” “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.
Further, the owner of MacJoy provided little explanation why in all the available names for a restaurant he chose the prefix “Mac” to be the dominant feature of the trademark. The prefix “Mac” and “Macjoy” has no relation or similarity whatsoever to the name Scarlett Yu Carcel, which is the name of the niece of MacJoy’s president whom he said was the basis of the trademark MacJoy. By reason of the MacJoy’s implausible and insufficient explanation as to how and why out of the many choices of words it could have used for its trade-name and/or trademark, it chose the word “Macjoy,” the only logical conclusion deducible therefrom is that the MacJoy would want to ride high on the established reputation and goodwill of the McDonald’s marks, which, as applied to its restaurant business and food products, is undoubtedly beyond question.
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