Title
McDonald's Corporation vs. Macjoy Fastfood Corporation
Case
G.R. No. 166115
Decision Date
Feb 2, 2007
MacJoy sought trademark registration for "MACJOY & DEVICE," opposed by McDonald's citing confusion with its "M" and "Mc/Mac" marks. SC ruled in favor of McDonald's, applying the dominancy test, finding similarity likely to confuse consumers.

Case Summary (A.M. RTJ-20-2600)

Factual Background

Respondent filed Application Serial No. 75274 on 14 March 1991 to register the mark “MACJOY & DEVICE” for goods in Classes 29 and 30 (fried chicken, burgers, fries, spaghetti, and similar fast-food items). Petitioner opposed registration on the ground that the applied mark so resembles petitioner’s established “MCDONALD’S” family of marks (including the Golden Arches “M” and various “Mc/Mac” formative marks) that confusion or deception as to source or affiliation was likely; petitioner further alleged respondent adopted the mark in bad faith and that dilution and irreparable prejudice would result.

Procedural History

  • IPO (Inter Partes Case No. 3861): sustained petitioner’s opposition and rejected respondent’s application (Decision, 28 December 1998); motion for reconsideration denied (Order, 14 January 2000).
  • Respondent sought CA review under Rule 43 (CA-G.R. SP No. 57247); CA reversed the IPO, finding no confusing similarity, and ordered the IPO to give due course to respondent’s application (Decision, 29 July 2004). CA denied petitioner’s motion for reconsideration (Resolution, 12 November 2004).
  • Petitioner filed a petition for review on certiorari under Rule 45 before the Supreme Court challenging the CA’s rulings.

Issues Presented

  1. Whether the CA erred in finding that respondent’s “MACJOY & DEVICE” mark is not confusingly similar to petitioner’s “MCDONALD’S” marks, particularly whether the dominancy test was correctly applied.
  2. Whether the CA’s ruling that the IPO decision was not supported by substantial evidence was erroneous.

Standard and Legal Framework

  • Statutory provision: Section 4(d) of R.A. No. 166 (as amended) bars registration of a mark that so resembles a previously used or registered mark as to be likely to cause confusion, mistake, or deception. Registration creates a prima facie presumption of validity and ownership (Section 20). Section 37 and the Paris Convention protect foreign registrants and afford rights comparable to domestic nationals.
  • Tests for confusing similarity recognized by jurisprudence: (a) the dominancy test — focuses on the dominant or prevalent features of competing marks and the aural, visual, and connotative impressions they create; and (b) the holistic (totality) test — examines the marks in their entirety, including color, design, packaging, and other contextual factors. Courts decide which test best suits the facts of each case; however, recent precedents relied upon in this decision favored the dominancy test where appropriate.

IPO and CA Findings

  • IPO: applied the dominancy test, concluded the predominant features (“M,” “Mc,” and “Mac”) in both marks made them confusingly similar when used on substantially identical goods in Classes 29 and 30; difference in design, color, and stylistic details were characterized as minuscule and insufficient to avoid confusion. IPO sustained the opposition and rejected respondent’s application.
  • CA: while stating it purportedly applied the dominancy test, in fact adopted a holistic approach, emphasizing pronounced differences in script, device (chicken head with cap and bowtie and wings in MACJOY vs. Golden Arches “M” and Ronald McDonald imagery for petitioner), color schemes, store facades, and overall visual impression; concluded differences precluded likelihood of confusion and reversed the IPO.

Supreme Court Analysis — Choice of Test and Application

  • Test selection: the Supreme Court determined the dominancy test was the more suitable standard for the factual milieu presented, consistent with the Court’s recent precedents involving marks that share a common dominant formative or feature. The Court observed that precedent must be applied with regard to the specific facts of each case and that where dominant features are dispositive, the dominancy test controls.
  • Comparison and dominancy: the Court found that both marks share dominant elements — notably the letter “M” design/logo and the prefixes “Mc”/“Mac” — which visually and aurally command attention and create similar overall impressions. The Court emphasized that the first letter “M” and the “Mc/Mac” formative functions as the salient and attention-catching element in both marks, thereby satisfying the dominancy criterion.
  • Rejection of CA’s holistic emphasis: although significant differences in color, design, and stylistic detail exist, the Supreme Court held these to be minor variations that are “overshadowed” by the common dominant features. The Court reiterated that under the dominancy test, courts give greater weight to the similarity of dominant features and to the aural and visual impressions created in the public mind, discounting lesser stylistic distinctions.

Priority, Ownership, and Evidentiary Findings

  • Registrations and priority: the Court noted petitioner’s successive trademark registrations in the Philippines for multiple “MCDONALD’S” variants and device marks dating from 1971 onward, and invoked the prima facie presumption of validity and ownership attendant to registration. Respondent’s application was filed in 1991 (with claimed first use in 1987), which did not overcome petitioner’s prior registrations and rights under R.A. No. 166 and protections available under the Paris Convention.
  • Respondent’s explanation for selection of “M

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