Case Digest (G.R. No. 224849)
Facts:
This is McDonalds Corporation and McGeorge Food Industries, Inc. v. L.C. Big Mak Burger, Inc., et al., G.R. No. 143993, August 18, 2004, Supreme Court First Division, Carpio, J., writing for the Court.Petitioner McDonalds Corporation (McDonalds), a Delaware corporation and owner of the Big Mac mark, introduced the Big Mac sandwich to the Philippine market in September 1981 and obtained registration of the mark in the Philippines on July 18, 1985; petitioner McGeorge Food Industries, Inc. is McDonalds’ Philippine franchisee. Respondent L.C. Big Mak Burger, Inc. is a domestic fast-food operator whose menu includes hamburgers; the private respondents are its incorporators, stockholders and directors. On October 21, 1988 respondent corporation applied to register the mark Big Mak for hamburgers with the PBPTT (now IPO). McDonalds opposed that application and, after receiving no satisfactory reply, filed suit on June 6, 1990 in the Regional Trial Court (RTC) of Makati, Branch 137, for trademark infringement and unfair competition.
During the RTC proceedings the court issued a temporary restraining order on July 11, 1990 and a writ of preliminary injunction on August 16, 1990 enjoining respondents from using the Big Mak mark in the NCR. In the RTC trial respondents admitted using the name Big Mak Burger but contended that others had earlier registered Big Mac in the Philippines (the Isaiyas Group on the Supplemental Register in 1979 and one Topacio in 1983) and that their use did not constitute a colorable imitation. McDonalds pointed to an assignment of Topacio’s rights and to the lack of protection afforded a supplemental registration.
On September 5, 1994 the RTC rendered judgment finding respondent corporation liable for trademark infringement and unfair competition, made the preliminary injunction permanent, and awarded actual, exemplary damages and attorneys’ fees against the corporate respondent; the RTC dismissed the complaint against the individual respondents and dismissed respondents’ counterclaims. Respondents appealed to the Court of Appeals (CA). On November 26, 1999 the CA reversed the RTC, held there was no colorable imitation or unfair competition, and instead ordered McDonalds to pay respondents P1,600,000 (actual/compensatory) and P300,000 (moral) damages; the CA denied reconsideration in a July 11, 2000 resolution.
Petitioners filed a petition for review on certiorari under Rule 45 seeking reinstatement of the RTC decision. The petition raises procedural questions (whether mixed questions of fact and law are cognizable under Rule 45) and substantive issues whethe...(Subscriber-Only)
Issues:
- Are the questions raised—challenging the Court of Appeals’ factual and legal findings—properly brought in a petition for review under Rule 45?
- Did respondents use the words “Big Mak” as a trademark for their hamburger products (and not merely as part of a corporate name)?
- Did respondent L.C. Big Mak Burger, Inc. commit trademark infringement and unfair compet...(Subscriber-Only)
Ruling:
- (Subscriber-Only)
Ratio:
- (Subscriber-Only)
Doctrine:
- (Subscriber-Only)