Case Digest (G.R. No. 166115)
Facts:
McDonald's Corporation v. MacJoy Fastfood Corporation, G.R. No. 166115, February 02, 2007, the Supreme Court First Division, Garcia, J., writing for the Court.Petitioner McDonald's Corporation (a Delaware corporation) opposed respondent MacJoy Fastfood Corporation's application to register the trademark "MACJOY & DEVICE" filed on March 14, 1991 with the then Bureau of Patents, Trademarks and Technology Transfer (now the Intellectual Property Office, IPO) for goods in Classes 29 and 30 (fried chicken, burgers, fries, spaghetti, etc.). McDonald's alleged that the applied-for mark so resembled its well‑known family of marks (the Golden Arches corporate "M" logo and Mc‑/Mac‑ prefixed marks such as "McDonald’s," "Big Mac," "McChicken," "MacFries," etc.) that use on similar goods would likely confuse or deceive the buying public and dilute McDonald’s marks.
The IPO, in a decision dated December 28, 1998, sustained petitioner’s opposition and rejected MacJoy's application; the IPO denied MacJoy's motion for reconsideration in an order dated January 14, 2000. MacJoy then filed a petition for review with prayer for preliminary injunction under Rule 43 before the Court of Appeals (docketed CA‑G.R. SP No. 57247). The Court of Appeals, by decision dated July 29, 2004, reversed the IPO, finding no confusing similarity between the marks and relying on what the CA characterized as a holistic comparison emphasizing differences in script, device (a chicken head with cap and bowtie and wings), color schemes, and store facades. The CA denied McDonald’s motion for reconsideration in a resolution dated November 12, 2004.
McDonald’s filed a petition for review on certiorari under Rule 45 of the Rules of Court seeking reversal of the CA decision and resolution. Respondent argued, inter alia, procedural defects in the petition (an allegedly unauthorized signature on the certification against forum shopping) and that the petition rai...(Subscriber-Only)
Issues:
- Was the petition for review procedurally defective because the person who signed the certification against forum shopping lacked authority?
- Did the Court of Appeals err in finding that respondent’s "MACJOY & DEVICE" mark is not confusingly similar to petitioner’s family of MCDONALD'S marks (i.e., did the CA misapply the dominancy test)?
- Was the IPO’s rejection of respondent’s application supported by substantial evidence, and do respondent’s asserted prior local use or the origin of the name...(Subscriber-Only)
Ruling:
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Ratio:
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Doctrine:
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