TRADEMARK CASES_CASE DIGEST
Ana Ang vs. ToribioTeodoro PHILIP MORRIS, INC. VS COURT OF APPEALS
G.R. No. L-48226
December 14, 1942
Facts:
Respondent ToribioTeodoro has continuously used "AngTibay," both as
a trade-mark and as a trade-name, in the manufacture and sale of
slippers, shoes, and indoor baseballs since 1910. On September 29,
1915, he formally registered it as trade-mark and as trade-name on
January 3, 1933.
Petitioner Ana Ang registered the same trade-mark "AngTibay" for
pants and shirts on April 11, 1932, and established a factory for the
manufacture of said articles in the year 1937.
The Court of First Instance of Manila absolved the defendant (Ms. Ang)
on the grounds that the two trademarks are dissimilar and are used on
different and non-competing goods; that there had been no exclusive
use of the trade-mark by the plaintiff; and that there had been no
fraud in the use of the said trade-mark by the defendant because the
goods on which it is used are essentially different from those of the
plaintiff.
The Court of Appeals reversed said judgment, directing the Director of
Commerce to cancel the registration of the trade-mark "AngTibay" in
favor of petitioner, and perpetually enjoining the latter from using said
trade-mark on goods manufactured and sold by her.
Thus, this case, a petition for certiorari.
Issue:
Are the goods or articles or which the two trademarks are used similar
or belong to the same class of merchandise?
Ruling:
Yes, pants and shirts are goods closely similar to shoes and slippers.
They belong to the same class of merchandise as shoes and slippers.
They are closely related goods.
The Supreme Court affirmed the judgment of the Court of Appeals and
added that “although two non-competing articles may be classified
under to 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 trademarks
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 that the
first user made the second user’s goods”.
A fundamental principle of Philippine Trademark Law is that actual use
G.R. No. 91332 July 16, 1993
Facts:
This is a petition for review under Rule 45 of the Rules of Court, to seek
the reversal and setting aside of the following issuances of the Court of
Appeals (CA).
Philip Morris, Inc. and two other petitioners are ascribing whimsical
exercise of the faculty conferred upon magistrates by Section 6, Rule
58 of the Revised Rules of Court when respondent Court of Appeals
lifted the writ of preliminary injunction it earlier had issued against
Fortune Tobacco Corporation, from manufacturing and selling “MARK”
cigarettes in the local market. Banking on the thesis that petitioners’
respective symbols “MARK VII”, ‘MARK TEN”, and “MARK”, also for
cigarettes, must be protected against unauthorized appropriation.
All petitioners are not doing business in the Philippines but are suing
on an isolated transaction, They Invoked provisions of the Paris
Convention for the Protection of Industrial and Intellectual Property. As
corporate nationals of member-countries of the Paris Union, they can
sue before Philippine courts for infringement of trademarks, or for
unfair competition, without need of obtaining registration or a license
to do business in the Philippines, and without necessity of actually
doing business in the Philippines.
Philip Morris and its subsidiaries filed the complaint for infringement
and damages against Fortune Tobacco before the Pasig Regional Trial
Court (RTC) for manufacturing and selling cigarettes bearing the
trademark “Mark” which is identical and confusingly similar to Philip
Morris trademarks. The said act was dismissed. Hence, this petition at
bar.
Issue/s:
Whether or not there has been an invasion of plaintiffs’ right of
property to such trademark or trade name.
Discussions:
Following universal acquiescence and comity, our municipal law on
trademarks regarding the requirement of actual use in the Philippines
must subordinate an international agreement inasmuch as the
apparent clash is being decided by a municipal tribunal. Withal, the fact
that international law has been made part of the law of the land does
not by any means imply the primacy of international law over national
law in the municipal sphere. Under the doctrine of incorporation as
applied in most countries, rules of international law are given a
standing equal, not superior, to national legislative enactments.
Ruling/s:
No. There is no proof that any of petitioner’s products which they seek
to protect from any adverse effect of the trademark applied for by
defendant, is in actual use and available for commercial purposes
anywhere in the Philippines.
in commerce in the Philippines is a pre-requisite to the acquisition of
ownership over a trademark or a trade name.
In view of the explicit representation of petitioners in the complaint
that they are not engaged in business in the Philippines, it inevitably
follows that no conceivable damage can be suffered by them not to
mention the foremost consideration heretofore discussed on the
absence of their “right” to be protected.
MIRPURI V. CA (G.R. NO. 114508)
Facts:
Lolita Escobar applied for the registration of the trademark ‘Barbizon’
for her products such as brassieres and ladies undergarments.
Respondent Barbizon Corporation, an American corporation, opposed
alleging that petitioner’s mark is confusingly similar to its own
trademark ‘Barbizon.’ Escobar’s application was given due course and
her trademark was registered. Later, Escobar assigned all her rights to
petitioner Mirpuri who failed to file an Affidavit of Use resulting in the
cancellation of the trademark. Petitioner then applied for registration
of the trademark to which respondent Barbizon again opposed, now
invoking the protection under Article 6bis of the Paris Convention. The
Director of Patents declaring respondent’s opposition was already
barred, petitioner’s application was given due course. CA reversed the
judgment.
Issue:
Whether or not respondent may invoke the protection under Article
6bis of the Paris Convention.
Ruling:
YES.
The Convention of Paris for the Protection of Industrial Property,
otherwise known as the Paris Convention, is a multilateral treaty that
seeks to protect industrial property consisting of patents, utility
models, industrial designs, trademarks, service marks, trade names and
indications of source or appellations of origin, and at the same time
aims to repress unfair competition. The Convention is essentially a
compact among various countries which, as members of the Union,
have pledged to accord to citizens of the other member countries
trademark and other rights comparable to those accorded their own
citizens by their domestic laws for an effective protection against unfair
competition. Art. 6bis is a self-executing provision and does not require
legislative enactment to give it effect in the member country. It may be
applied directly by the tribunals and officials of each member country
by the mere publication or proclamation of the Convention, after its
ratification according to the public law of each state and the order for
its execution.
The Philippines and the United States of America have acceded to the
WTO Agreement. Conformably, the State must reaffirm its
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commitment to the global community and take part in evolving a new
international economic order at the dawn of the new millennium.
Victorias Milling vsOng Su
[G.R. No.L-28499. September 30, 1977.]
FACTS:
The petitioner, Victorias Milling Company, Inc., a domestic corporation
and engaged in the manufacture and sale of refined granulated sugar,
is the owner of the trademark “VICTORIAS” and diamond design
registered in the Philippines Patent Office on November 9, 1961.
The respondent ONG Su is engaged in the repacking and sale of refined
sugar and is the owner of the trademark “VALENTINE” and design
registered in the Philippines Patent Office on June 20, 1961.
On October 4, 1963, Victorias Milling Company, Inc. filed with the
Philippines Patent Office a petition to cancel the registration of the
ONG Su trademark “Valentine.”
The petitioner alleged that its trademark “Victorias” and diamond
design has become distinctive of its sugar long before the respondent
used its trademark; that the registration of “Valentine” and design has
caused and will cause great damage to petitioner by reason of mistake,
confusion, or deception among the purchasers because it is similar to
its “Victorias” trademark; that registration was fraudulently obtained
by respondent ONG Su; and that “Valentine” falsely suggests a
connection with Saint Valentine or with an institution or belief
connected therewith.
In his answer to the petition the respondent averred that he is doing
business under the name and style “Valentine Packaging” and has
registered the trademark “Valentine” with a design for sugar and was
issued Certificate of Registration No. 8891 dated June 20, 1961; that
the trademark “Victorias” with diamond design and the trademark
“Valentine” with a design are two different marks; and that there is
absolutely no likelihood of confusion, mistake or deception to
purchasers through the concurrent use of the petitioner’s mark
“Victorias” with a diamond design and the respondents’ mark
“Valentine” with a design in connection with sugar.
The Director of Patents denied the petition to cancel the certificate of
registration of the respondent ONG Su covering the trademark
“Valentine” and design. “Herein that the petitioner failed to establish
that diamond design component of its mark has acquired a secondary
meaning and that the literal portion of the marks have no similarity,
there is no reasonable likelihood of purchaser confusion resulting
from registrant’s use of VALENTINE within a diamond and petitioner’s
use of VICTORIAS within a diamond.”
ISSUE:
WON RESPONDENT DIRECTOR OF PATENTS ERRED IN HOLDING
PETITIONER’S DIAMOND DESIGN HAS NOT ACQUIRED A SECONDARY
MEANING.
HELD:
NO. The DOP is correct. Peitioner has not acquired secondary meaning.
The contention of petitioner that the diamond design in its trademark
is an index of origin has no merit. The petitioner has not shown that
the design portion of the mark has been so used that purchasers
recognize the design, standing alone, as indicating goods coming from
the registrant. As correctly stated by the Director of Patents, common
geometric shapes such as diamonds ordinarily are not regarded as
indicia of origin for goods to which the marks are applied unless they
have acquired a secondary meaning. And there is no evidence that the
diamond design in the trademark of the petitioner has acquired a
secondary meaning with respect to its sugar business. The word
“Victorias” is what identifies the sugar contained in the bag as the
product of the petitioner. Indeed, the petitioner has advertised its
sugar in bags marked “Victorias” with oval, hexagon and other designs.
The evidence is that ONG Su has been using his trademark since prior
to the last World War and he obtained the registration thereof on June
20, 1961. Vijandre declared that the petitioner started to use its
trademark only in 1947. Said trademark was registered on November
9, 1961. It cannot be said, therefore, that the respondent ONG Su
imitated the trademark of the petitioner.
It seems clear that the words “Valentine” and “Victorias” and the
names and places of business of Victorias Milling Company, Inc. and
ONG Su are the dominant features of the trademarks in question. The
petitioner has not established such a substantial similarity between the
two trademarks in question as to warrant the cancellation of the
trademark ‘Valentine’ of the respondent ONG Su.
UNNO COMMERCIAL ENTERPRISES, INC. vs. GENERAL MILLING
CORPORATION
The right to register trademark is based on ownership. When the
applicant is not the owner of the trademark being applied for, he has
no right to apply for the registration of the same. Under the Trademark
Law only the owner of the trademark, trade name or service mark used
to distinguish his goods, business or service from the goods, business
or service of others is entitled to register the same.
An importer, broker, indentor or distributor acquires no rights to the
trademark of the goods he is dealing with in the absence of a valid
transfer or assignment of the trade mark.
SCOPE: The term owner does not include the importer of the goods
bearing the trademark, trade name, service mark, or other mark of
ownership, unless such importer is actually the owner thereof in the
country from which the goods are imported. Thus, this Court has on
several occasions ruled that where the applicant's alleged ownership is
not shown in any notarial document and the applicant appears to be
merely an importer or distributor of the merchandise covered by said
trademark, its application cannot be granted.
DEED OF ASSIGNMENT; PROOF OF OWNERSHIP: The Director of
Patents correctly found that ample evidence was presented that
Centennial Mills, Inc. was the owner and prior user in the Philippines of
the trademark "All Montana" through a local importer and broker. The
Deed of Assignment itself constitutes sufficient proof of its ownership
of the trademark "All Montana, "showing that Centennial Mills was a
corporation duly organized and existing under and by virtue of the laws
of the State of Oregon, U.S.A. with principal place and business at
Portland, Oregon, U.S.A. and the absolute and registered owner of
several trademarks for wheat fl our, i.e. (I mperial, White Lily, Duck,
General, Swan, White Horse, Vinta, El Paro, Baker's J oy, Choice, Red
Bowl, All Montana and Dollar) all of which were assigned by it to
respondent General Milling Corporation.
Ownership of a trademark is not acquired by the mere fact of
registration alone. Registration merely creates a prima facie
presumption of the validity of the registration, of the registrant's
ownership of the trademark and of the exclusive right to the use
thereof. Registration does not perfect a trademark right. As conceded
itself by petitioner, evidence may be presented to overcome the
presumption. Prior use by one will controvert a claim of legal
appropriation by subsequent users.
Under Rule 178 of the Rules of the Patent Office in Trademark Cases,
the Director of Patents is expressly authorized to order the cancellation
of a registered mark or trade name or name or other mark of
ownership in an inter partes case, such as the interference proceeding
at bar.
SHANGRI-LA INTERNATIONAL HOTEL MANAGEMENT V. DEVELOPERS
GROUP OF COMPANIES (G.R. NO. 159938)
Facts:
Respondent DGCI applied for and was granted registration of the
‘Shangri-La’ mark and ‘S’ logo in its restaurant business. Petitioner
Shangri-La, chain of hotels and establishments owned by the Kuok
family worldwide, moved to cancel the registration of the mark on the
ground that it was illegally and fraudulently obtained and appropriated
by respondents. Petitioner also moved to register the mark and logo in
its own name. Later, respondent DGCI filed before the trial court a
complaint for infringement against petitioner alleging that DGCI had
been the prior exclusive user and the registered owner in the
Philippines of said mark and logo. Petitioner Shangri-La argued that
respondent had no right to apply for the registration because it did not
have prior actual commercial use thereof. The trial court found for
respondent. CA affirmed.
Issue:
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Whether or not respondent’s prior use of the mark is a requirement for
its registration.
Ruling:
YES.
While the present law on trademarks has dispensed with the
requirement of prior actual use at the time of registration, the law in
force at the time of registration must be applied. Under the provisions
of the former trademark law, R.A. No. 166, as amended, hence, the law
in force at the time of respondent’s application for registration of
trademark, the root of ownership of a trademark is actual use in
commerce. Section 2 of said law requires that before a trademark can
be registered, it must have been actually used in commerce and service
for not less than two months in the Philippines prior to the filing of an
application for its registration. Trademark is a creation of use and
therefore actual use is a pre-requisite to exclusive ownership and its
registration with the Philippine Patent Office is a mere administrative
confirmation of the existence of such right.
While the petitioners may not have qualified under Section 2 of R.A.
No. 166 as a registrant, neither did respondent DGCI, since the latter
also failed to fulfill the 2-month actual use requirement. What is worse,
DGCI was not even the owner of the mark. For it to have been the
owner, the mark must not have been already appropriated (i.e., used)
by someone else. At the time of respondent DGCI’s registration of the
mark, the same was already being used by the petitioners, albeit
abroad, of which DGCI’s president was fully aware.
ASIA BREWERY INC. VS CA
FACTS:
In September 1988, San Miguel Corporation (SMC) sued Asia Brewery
Inc. for allegedly infringing upon their trademark on their beer product
popularly known as “San Miguel Pale Pilsen”; that Asia Brewery’s “Beer
na Beer” product, by infringing upon SMC’s trademark has committed
unfair competition as “Beer na Beer” creates confusion between the
two products. The RTC ruled in favor of Asia Brewery but the Court of
Appeals reversed the RTC.
ISSUE: Whether or not Asia Brewery infringed upon the trademark of
SMC.
HELD:
No. Both products are manufactured using amber colored steinie
bottles of 320 ml. Both were labeled in a rectangular fashion using
white color paint. But other than these similarities, there are salient
differences between the two. As found by the Supreme Court, among
others they are the following:
1. The dominant feature of SMC’s trademark are the words “San
Miguel Pale Pilsen” while that of Asia Brewery’s trademark is the word
“Beer”. Nowhere in SMC’s product can be seen the word “Beer” nor in
Asia Brewery’s product can be seen the words “San Miguel Pale
Pilsen”. Surely, someone buying “Beer na Beer” cannot mistake it as
“San Miguel Pale Pilsen” beer.
2. The bottle designs are different. SMC’s bottles have slender tapered
neck while that of “Beer na Beer” are fat. Though both beer products
use steinie bottles, SMC cannot claim that Asia Brewery copied the
idea from SMC. SMC did not invent but merely borrowed the steinie
bottle from abroad and SMC does not have any patent or trademark to
protect the steinie bottle shape and design.
3. In SMC bottles, the words “pale pilsen” are written diagonally while
in “Beer na Beer”, the words “pale pilsen” are written horizontally.
Further, the words “pale pilsen” cannot be said to be copied from SMC
for “pale pilsen” are generic words which originated from Pilsen,
Czechoslovakia. “Pilsen” is a geographically descriptive word and is
non-registrable.
4. SMC bottles have no slogans written on them while Asia Brewery’s
bottles have a copyrighted slogan written on them that is “Beer na
Beer”.
5. In SMC bottles, it is expressly labeled as manufactured by SMC. In
Asia Brewery beer products, it is likewise expressly labeled as
manufactured by Asia Brewery. Surely, there is no intention on the part
of Asia Brewery to confuse the public and make it appear that “Beer na
Beer” is a product of SMC, a long-established and more popular brand.
Justice Cruz Dissenting:
A number of courts have held that to determine whether a trademark
has been infringed, we must consider the mark as a whole and not as
dissected. If the buyer is deceived, it is attributable to the marks as a
totality, not usually to any part of it. The court therefore should be
guided by its first impression, for a buyer acts quickly and is governed
by a casual glance, the value of which may be dissipated as soon as the
court assumes to analyze carefully the respective features of the mark.
(Del Monte vs CA & Sunshine Sauce)
Sterling Products Vs. Farbenfabriken Bayer
GR L-19906, 30 April 1969; En Banc, Sanchez (J).
Facts:
The Bayer Cross in circle “trademark was registered in Germany in
1904 to Farbenfabrikenvorm. Friedr.Bayer (FFB), successor to the
original Friedr.Bauyeret. Comp., and predecessor to Farbenfabriken
Bayer aktiengessel craft (FB2). The “Bayer, and “Bayer Cross in circle”
trademarks were acquired by sterling Drug Inc. when it acquired FFB’s
subsidiary Bayer Co. of New York as a result of the sequestration of its
assets by the US Alien Property Custodian during World War I. Bayer
products have been known in Philippines by the close of the 19th
century. Sterling Drugs, Inc., however, owns the trademarks “Bayer” in
relation to medicine. FBA attempted to register its chemical products
with the “Bayer Cross in circle” trademarks. Sterling Products
International and FBA seek to exclude each other from use of the
trademarks in the Philippines. The trial court sustained SPI’s right to
use the Bayer trademark for medicines and directed FBA to add
distinctive word(s) in their mark to indicate their products come from
Germany.” Both appealed.
Issue:
Whether SPI’s ownership of the trademarks extends to products not
related to medicine.
Held:
No. SPI’s certificates of registration as to the Bayer trademarks
registered in the Philippines cover medicines only. Nothing in the
certificates include chemicals or insecticides. SPI thus may not claim
“first use” of the trademarks prior to the registrations thereof on any
product other than medicines. For if otherwise held, a situation may
arise whereby an applicant may be tempte3d to register a trademark
on any and all goods which his mind may conceive even if he had never
intended to use the trademark for the said goods. Omnibus registration
is not contemplated by the Trademark Law. The net result of the
decision is that SPI may hold on its Bayer trademark for medicines and
FBA may continue using the same trademarks for insecticide and other
chemicals, not medicine. The formula fashioned by the lower court
avoids the mischief of confusion of origin, and does not visit FBA with
reprobation and condemnation. A statement that its product came
from Germany anyhow is but a statement of fact.
Pagasa Industrial Corporation vs CA
216 Phil. 533
Facts:
Yoshida Kogyo Kabushiki Kaisha was issued a certificate of Registration
in 1961 for the trademark YKK for slide fastener and zippers. The
trademark is claimed to have been used since 1950. Notwithstanding
the prior registration, a certificate of registration was issued to Pagasa
Industrial for the same trademark for zippers in 1966. In 1975, Yoshida
asked the Director of Patents to cancel the registration of Pagasa,
which it did. Pagasa appealed. The appellate court affirmed the
cancellation. Pagasa appealed to the Supreme Court.
Issue:
Whether Pagasa is entitled to the trademark YKK.
Held:
No.Pagasa has not shown any semblance of justification for usurping
the trademark YKK. In fact, Pagasa knew prior to 1968 that Yoshida was
the registered owner and user of the YKK trademark, which is an
acronym of its corporate name. The registration of Pagasa was
admittedly a mistake. Pag-asa’s application should have been denied
outright. Further, Pag-asa’s knowledge of the trademark’s prior use
precludes the application of the equitable principle of laches, estoppel
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and acquiescence. He who comes into equity must come with clean
hands.
MCDONALD’S CORPORATION VS.L.C. BIG MAK BURGER, INC.
G.R. No. 143993 18 August 2004
FACTS:
Petitioner McDonald’s Corporation is a corporation organized under
the laws of Delaware, United States. McDonald’s operates a global
chain of fast-food restaurants. McDonald’s own a family of marks
including the “Big Mac” mark for its double-decker hamburger
sandwich.
McDonald’s registered this trademark with the United States
Trademark Registry on 16 October 1979. Based on this Home
Registration, McDonald’s applied for the registration of the same mark
in the Principal Register of then then Philippine Bureau of Patents,
Trademarks and Technology (PBPTT) – now the Intellectual Property
Office (IPO).
Pending approval of its application, McDonald’s introduced its “Big
Mac” hamburger sandwiches in the Philippine market in September
1981. On 18 July 1985, the PBPTT allowed registration of the “Big Mac”
mark in the Philippine Register based on its Home Registration in the
United States. From 1982 to 1990, McDonald’s spent P10.5 million in
advertisement for “Big Mac” hamburger sandwiches alone.
Respondent L.C. Big Mak Burger, Inc. is a domestic corporation which
operates fast-food outlets and snack vans in Metro Manila and nearby
provinces. Its menu includes hamburger sandwiches and other food
items.
On 21 October 1988, respondent corporation applied with the PBPTT
for the registration of the “Big Mak” mark for its hamburger
sandwiches.
McDonald’s opposed respondent corporation’s application on the
ground that “Big Mak” was a colorable imitation of its registered “Big
Mac” mark for the same food products.
ISSUES:
1. Is the respondent guilty of trademark infringement and unfair
competition?
2. Is the “Big Mac” mark valid and does McDonald’s have rightful
ownership to the same?
RULING:
1. YES.
Trademark Infringement
RA 166 defines trademark infringement as “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 CONFUSION 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; or (2) reproduce, counterfeit,
copy, or colorably 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.”
Clearly, there is cause for confusion in the case at bar. By using the “Big
Mak” mark on the same goods, i.e. hamburger sandwiches, that
petitioners’ “Big Mac” mark is used, they have unjustly created the
impression that its business is approved and sponsored by, or affiliated
with plaintiffs.
Furthermore, using the dominancy test (rather than the holistic test),
wherein the dominant features in the competing marks are considered,
Big Mak failed to show that there could be no confusion. The Court
found that respondents’ use of the “Big Mak” mark results in likelihood
of confusion. First, “Big Mak” sounds exactly the same as “Big Mac.”
Second, the first word in “Big Mak” is exactly the same as the first word
in “Big Mac.” Third, the first two letters in “Mak” are the same as the
first two letters in “Mac.” Fourth, the last letter in “Mak” while a “k”
sounds the same as “c” when the word “Mak” is pronounced. Fifth, in
Filipino, the letter “k” replaces “c” in spelling, thus “Caloocan” is
spelled “Kalookan.” In short, aurally, the two marks are the same.
Unfair Competition
With regard to unfair competition, RA 166, Section 29 defines the same
as 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.
Unfair competition is broader than trademark infringement and
includes passing off goods with or without trademark infringement.
Trademark infringement is a form of unfair competition. Trademark
infringement constitutes unfair competition when there is not merely
likelihood of confusion, but also actual or probable deception on the
public because of the general appearance of the goods.
L.C. Big Mak tried to pass off their goods as though it were connected
to “Big Mac.” The mark “B[ig] M[ac]” is used by plaintiff McDonald’s to
identify its double decker hamburger sandwich. The packaging material
is a styrofoam box with the McDonald’s logo and trademark in red with
block capital letters printed on it. All letters of the “B[ig] M[ac]” mark
are also in red and block capital letters. On the other hand, defendants’
“B[ig] M[ak]” script print is in orange with only the letter “B” and “M”
being capitalized and the packaging material is plastic wrapper. x xxx
Further, plaintiffs’ logo and mascot are the umbrella “M” and “Ronald
McDonald’s,” respectively, compared to the mascot of defendant
Corporation which is a chubby boy called “Macky” displayed or printed
between the words “Big” and “Mak.”(Emphasis supplied)
Respondents point to these dissimilarities as proof that they did not
give their hamburgers the general appearance of petitioners’ “Big Mac”
hamburgers.
The dissimilarities in the packaging are minor compared to the stark
similarities in the words that give respondents’ “Big Mak” hamburgers
the general appearance of petitioners’ “Big Mac” hamburgers. Section
29(a) expressly provides that the similarity in the general appearance
of the goods may be in the “devices or words” used on the wrappings.
Respondents have applied on their plastic wrappers and bags almost
the same words that petitioners use on their styrofoam box. What
attracts the attention of the buying public are the words “Big Mak”
which are almost the same, aurally and visually, as the words “Big
Mac.” The dissimilarities in the material and other devices are
insignificant compared to the glaring similarity in the words used in the
wrappings.
2. YES.
A mark is valid if it is “distinctive” and thus not barred from registration
under Section 4 of RA 166. However, once registered, not only the
mark’s validity but also the registrant’s ownership of the mark is prima
facie presumed.
Respondents contend that of the two words in the “Big Mac” mark, it is
only the word “Mac” that is valid because the word “Big” is generic and
descriptive (proscribed under Section 4[e]), and thus “incapable of
exclusive appropriation.”
The contention has no merit. The “Big Mac” mark, which should be
treated in its entirety and not dissected word for word,is neither
generic nor descriptive.