Title
L.C. Big Mak Burger, Inc. vs. McDonald's Corp.
Case
G.R. No. 233073
Decision Date
Feb 14, 2018
McDonald's sued L.C. Big Mak Burger for trademark infringement over "Big Mak." Despite a 2004 Supreme Court ruling favoring McDonald's, the petitioner changed to "Super Mak," avoiding contempt charges due to good faith compliance.

Case Digest (G.R. No. 234346)
Expanded Legal Reasoning Model

Facts:

  • Background of the Case
    • This petition is a review on certiorari under Rule 45, challenging the decisions of the Court of Appeals dated February 2, 2017, and its Resolution dated July 26, 2017.
    • The petition arises from a trademark infringement and unfair competition case originally filed by McDonald’s Corporation against L.C. Big Mak Burger, Inc. and its president, Francis Dy, before the RTC of Makati City, Branch 137.
  • Infringement and Injunction Proceedings
    • The Infringement Case
      • Filed in Civil Case No. 90-1507, McDonald’s sought to prohibit L.C. Big Mak Burger, Inc. from using “Big Mak” or any confusingly similar mark.
      • On August 16, 1990, the RTC issued a writ of preliminary injunction ordering the petitioner to cease:
        • Using “Big Mak” or any mark/colorably imitative of McDonald’s “Big Mac.”
ii. Selling, displaying, or distributing any item alleged to be manufactured by McDonald’s. iii. Creating any impression that its goods or services are connected with McDonald’s, specifically within the National Capital Judicial Region.
  • Trial Court Decision
    • On September 5, 1994, the RTC rendered a decision permanently enjoining petitioner from using the disputed mark, and ordered L.C. Big Mak Burger, Inc. to pay actual damages, exemplary damages, and attorney’s fees.
    • The decision also dismissed counterclaims and unrelated actions against certain individuals due to lack of merit and insufficient evidence.
  • Procedural History
    • The CA reversed the RTC decision on November 26, 1999; however, the Supreme Court reversed the CA’s ruling on August 18, 2004, reinstating the 1994 decision.
    • A writ of execution was issued on November 14, 2005 to enforce the judgment.
  • Contempt Proceedings
    • Petition for Contempt
      • On May 5, 2008, McDonald’s filed a Petition for Contempt against L.C. Big Mak Burger, Inc. and Francis Dy alleging that:
        • Despite being served with the writ of execution, the petitioner continued using “Big Mak” in its restaurants.
ii. The petitioner refused to pay the full amount of damages awarded in the infringement case.
  • Petitioner's Response and Subsequent Trial Court Decision
    • In its Answer with Compulsory Counterclaims, the petitioner contended that it had:
      • Offered and tendered payment through the sheriff, which was refused by the respondent.
ii. Ceased using “Big Mak” by rebranding its stalls to “Super Mak” and employing its full corporate name “L.C. Big Mak Burger, Inc.” iii. Asserted that the injunction was geographically limited to the National Capital Judicial Region.
  • On April 7, 2014, RTC-Makati Branch 59 rendered a decision in favor of the petitioner, dismissing the contempt petition and awarding damages to the petitioner for business reputation and moral damages.
  • Appellate Review
    • The CA reversed the April 7, 2014 decision by finding the petitioner guilty of indirect contempt, imposing a fine of P30,000.00, and enjoining it to comply with the Supreme Court’s earlier decision.
    • The petitioner’s motion for reconsideration was denied by the CA on July 26, 2017.
  • Supreme Court’s Focus in the Current Contempt Issue
    • The only issue before the Supreme Court is whether the petitioner is guilty of indirect contempt for allegedly disobeying the injunction order.
    • Evidence presented included testimonial and documentary proof (e.g., photographs) showing the rebranding from “Big Mak” to “Super Mak” and the continued use of the corporate name.
    • The petitioner also relied on a binding SEC decision (dated January 3, 1994) that supported its use of its corporate name, arguing such use complied with the injunction.

Issues:

  • Whether or not the petitioner, L.C. Big Mak Burger, Inc., is guilty of indirect contempt.
    • Did the petitioner willfully disregard or violate the court’s injunction by continuing to use “Big Mak” in any form?
    • Does the use of the corporate name “L.C. Big Mak Burger, Inc.,” which contains the disputed words, constitute a violation of the injunction that solely proscribed the conflicting mark?
    • How does the evidence (including testimonial affidavits and photographs) reflect on the petitioner’s compliance or non-compliance with the court’s order?
    • To what extent does the petitioner’s reliance on the SEC decision justify its actions under the injunction order?

Ruling:

  • (Subscriber-Only)

Ratio:

  • (Subscriber-Only)

Doctrine:

  • (Subscriber-Only)

Analyze Cases Smarter, Faster
Jur helps you analyze cases smarter to comprehend faster—building context before diving into full texts.