Case Summary (G.R. No. 187552-53)
Key Dates
• December 7, 1987: Respondent’s alleged date of first use of “MACJOY & DEVICE” in Cebu City.
• March 14, 1991: Filing of Respondent’s trademark application (Serial No. 75274) with IPO for Classes 29 & 30.
• December 28, 1998: IPO decision rejecting Respondent’s application.
• January 14, 2000: IPO order denying Respondent’s motion for reconsideration.
• July 29, 2004: Court of Appeals decision reversing IPO.
• November 12, 2004: CA resolution denying Petitioner’s motion for reconsideration.
Applicable Law
– Republic Act No. 166, as amended by R.A. 166 and R.A. 865 (old Trademark Law).
– Rules of Court, Rule 45 (petition for review on certiorari).
– Paris Convention for the Protection of Industrial Property (international goodwill of Petitioner’s marks).
Procedural History
- IPO Opposition Proceeding (Inter Partes Case No. 3861): Petitioner opposed registration of “MACJOY & DEVICE” on grounds of confusing similarity with its “Mc”/“Mac”-family marks.
- IPO Decision (December 28, 1998): Opposition sustained; Respondent’s application rejected.
- IPO Reconsideration (January 14, 2000): Motion for reconsideration denied.
- CA Appeal (CA-G.R. SP No. 57247): CA reversed IPO, ordered registration of “MACJOY & DEVICE.”
- Rule 45 Petition: Petitioner filed for review on certiorari to Supreme Court.
Facts
– Respondent has used “MACJOY & DEVICE” for fried chicken, burgers, fries, spaghetti, and related goods in Cebu since 1987.
– Petitioner’s MCDONALD’S marks (e.g., “McDonald’s,” “Big Mac,” “McSpaghetti,” Golden Arches device) are registered in the Philippines since the 1970s–’80s for similar goods under Classes 29 & 30.
– Petitioner alleged confusing similarity, bad-faith adoption, fraud on the public, and dilution of its internationally recognized marks.
– Respondent denied bad faith and claimed distinct design, color, and style elements.
Issue
Whether Respondent’s “MACJOY & DEVICE” mark is confusingly similar to Petitioner’s “Mc”/“Mac”-family marks, thereby violating Section 4(d) of R.A. 166 – i.e., likely to cause confusion, mistake, or deception when applied to identical or related goods.
IPO Decision
– Applied the dominancy test, focusing on the prominence of “M,” “Mc,” and “Mac” prefixes in both marks.
– Held that these dominant features create confusing similarity for goods in Classes 29 & 30.
– Rejected Respondent’s application for registration.
Court of Appeals Decision
– Claimed IPO misapplied the dominancy test by ignoring holistic differences.
– Applied holistic test: compared entire marks (color, design, spelling, size, concept, façade), found no likelihood of confusion.
– Reversed IPO decision and ordered registration of “MACJOY & DEVICE.”
Parties’ Core Arguments
Petitioner
- CA erred in disregarding established dominancy test.
- Petitioner’s family of “Mc”/“Mac” marks enjoy primacy and wide goodwill under Paris Convention; prefix is dominant.
Respondent
– Challenged petition’s procedural sufficiency (certification against forum-shopping).
– Maintained distinct overall impression of its mark; differences in script, device (chicken head), color scheme, and store façades preclude confusion.
Procedural Defects and Exceptions
– Supreme Court found Petitioner’s Managing Counsel duly authorized to sign the certification against forum-shopping.
– Although factual issues are generally beyond Rule 45, conflicting and erroneous factual findings by CA warranted review as an exception (grave abuse of discretion).
Confusing Similarity Tests
Dominancy Test
– Focuses on dominant features (aural, visual, and connotative impressions) that most strongly influence consumer perception.
Holistic (Totality) Test
– Considers the marks in their entirety, including minor details, packaging, labels, and overall commercial impression.
Supreme Court Ruling: Application of Dominancy Test
– Adopted dominancy test as appropriate for this factual context and consistent with recent precedents (e.g., McDonald’s Corp. v. LC Big Mak Burger, Societe Des Produits Nestlé v. CA).
– Identified shared dominant elements:
• Stylized arch-like “M” logo.
• Capitalized “Mc/Mac” prefixes with sa
Case Syllabus (G.R. No. 187552-53)
Procedural History
- Petitioner, McDonald’s Corporation, filed a Rule 45 petition for review on certiorari seeking reversal of CA-G.R. SP No. 57247 decisions.
- The Court of Appeals (CA) on July 29, 2004 reversed the IPO decision rejecting respondent’s trademark application, and on November 12, 2004 denied petitioner’s motion for reconsideration.
- The petition challenges: (I) CA’s finding of no confusing similarity between the marks; (II) CA’s ruling that the IPO decisions were not supported by substantial evidence.
- Respondent MacJoy Fastfood Corporation filed a Comment alleging procedural defects and urging dismissal.
Facts
- On March 14, 1991, MacJoy Fastfood Corporation filed Trademark Application Serial No. 75274 for “MACJOY & DEVICE” covering fast-food items under Classes 29 and 30.
- McDonald’s Corporation opposed the application, citing confusing similarity to its “M” logo (“Golden Arches”) and family of “Mc”/“Mac” marks (e.g., McChicken, Big Mac, McDo).
- Respondent denied bad faith, asserting prior use in Cebu since December 1987 and distinct design and colour schemes.
- Inter Partes Case No. 3861 ensued before the Intellectual Property Office (IPO).
IPO Proceedings and Decision
- IPO Decision (Dec. 28, 1998): Sustained opposition, ruling predominance of “M”, “Mc”/“Mac” in both marks creates confusing similarity on identical goods.
- IPO Order (Jan. 14, 2000): Denied respondent’s motion for reconsideration.
- IPO held that the dominant “M” and “Mc/Mac” prefixes overshadowed stylistic differences in device, colour, lettering.
Court of Appeals Proceedings and Decision
- CA Petition for Review with Prayer for Preliminary Injunction under R. 43 led to CA-G.R. SP No. 57247.
- CA D