Case Digest (G.R. No. 261612) Core Legal Reasoning Model
Core Legal Reasoning Model
Facts:
In McDonald’s Corporation (a Delaware corporation) and its Philippine franchisee McGeorge Food Industries, Inc. (collectively “petitioners”) filed suit in June 1990 before the Regional Trial Court of Makati, Branch 137 (“RTC”) against L.C. Big Mak Burger, Inc. and its incorporators-directors (Francis B. Dy et al., “respondents”) for trademark infringement and unfair competition. Petitioners own the registered U.S. and Philippine mark Big Mac for their double-decker hamburger (U.S. registration: 16 October 1979; Philippine registration: 18 July 1985). They had introduced “Big Mac” sandwiches in the Philippines in September 1981 and spent over ₱10.5 million advertising it from 1982 to 1990. Respondent corporation applied on 21 October 1988 to register Big Mak for hamburgers. Petitioners opposed, demanded respondents desist, and upon non-compliance secured a TRO (11 July 1990) and a preliminary injunction (16 August 1990) enjoining use of the mark. Respondents admitted using “Big M Case Digest (G.R. No. 261612) Expanded Legal Reasoning Model
Expanded Legal Reasoning Model
Facts:
- Parties and Marks
- Petitioners
- McDonald’s Corporation (Delaware), global fast-food chain, owns the “Big Mac” trademark registered in the U.S. (1979) and in the Philippines (1985); introduced “Big Mac” in PH market in 1981; spent ₱10.5 M on “Big Mac” advertising (1982–1990).
- McGeorge Food Industries, Inc., McDonald’s Philippine franchisee.
- Respondents
- L.C. Big Mak Burger, Inc., Philippine corporation operating fast-food outlets and snack vans since 1988, uses the name/mark “Big Mak” on hamburger wrappers and vending vans.
- Private respondents (Dy and Aycardo families and Grace Huerto), incorporators and directors of respondent corporation.
- Pre-trial and Trial Proceedings
- 21 October 1988: Respondent corp. applied to PBPTT to register “Big Mak” for hamburgers; petitioners opposed as colorable imitation of “Big Mac” and demanded cessation.
- 6 June 1990: Petitioners filed trademark infringement and unfair competition suit in RTC Makati Branch 137.
- 11 July 1990: RTC issued TRO; 16 August 1990: preliminary injunction granted.
- 5 September 1994: RTC Decision – respondent corp. liable for trademark infringement and unfair competition; permanent injunction; actual damages ₱400,000; exemplary ₱100,000; attorney’s fees ₱100,000; suit dismissed vs. private respondents and their counterclaim.
- Court of Appeals and Supreme Court Proceedings
- 26 November 1999: Court of Appeals reversed RTC; held “Big Mak” not a colorable imitation; no infringement or unfair competition; awarded respondents ₱1.6 M actual/compensatory and ₱300,000 moral damages.
- 11 July 2000: CA denied reconsideration.
- 18 August 2004: SC Decision on Rule 45 petition reinstated RTC Decision.
Issues:
- Procedural
- Whether the mixed questions of fact and law raised are proper for a Rule 45 petition given the conflicting RTC and CA findings.
- Substantive
- Whether respondents used “Big Mak(a)” as a trademark on hamburger products, not merely as a corporate name.
- Whether respondent corporation is liable for trademark infringement under Section 22, R.A. 166, and for unfair competition under Section 29, R.A. 166.
Ruling:
- (Subscriber-Only)
Ratio:
- (Subscriber-Only)
Doctrine:
- (Subscriber-Only)