[G.R. No. 114508.
November 19, 1999] constitutes a reproduction, liable to create confusion, of a mark considered
PRIBHDAS J. MIRPURI, petitioner, vs. COURT OF APPEALS, DIRECTOR
OF PATENTS and the BARBIZON CORPORATION, respondents.
The Paris Convention
The Convention of Paris for the Protection of Industrial Property is a
multi-lateral treaty which the Philippines bound itself to honor and enforce in
this country.
The Convention of Paris for the Protection of Industrial Property,
otherwise known as the Paris Convention, is a multilateral treaty that seeks
to protect industrial property consisting of patents, utility models, industrial
designs, trademarks, service marks, trade names and indications of source
or appellations of origin, and at the same time aims to repress unfair
competition.[41]
Nationality Principle
The Convention is essentially a compact among various countries
which, as members of the Union, have pledged to accord to citizens of the
other member countries trademark and other rights comparable to those
accorded their own citizens by their domestic laws for an effective protection
against unfair competition.[42] In short, foreign nationals are to be given the
same treatment in each of the member countries as that country makes
available to its own citizens.[43] Nationals of the various member nations are
thus assured of a certain minimum of international protection of their
industrial property.[44]
Article 6bis
(1) The countries of the Union undertake, either administratively if their
legislation so permits, or at the request of an interested party, to refuse or to
cancel the registration and to prohibit the use, of a trademark which
constitutes a reproduction, an imitation, or a translation, liable to create
confusion, of a mark considered by the competent authority of the country of
registration or use to be well-known in that country as being already the mark
of a person entitled to the benefits of this Convention and used for identical
or similar goods. These provisions shall also apply when the essential part of
the mark constitutes a reproduction of any such well-known mark or an
imitation liable to create confusion therewith.
This Article governs protection of well-known trademarks. Under the
first paragraph, each country of the Union bound itself to undertake to refuse
or cancel the registration, and prohibit the use of a trademark which is a
reproduction, imitation or translation, or any essential part of which trademark
by the competent authority of the country where protection is sought, to be
well-known in the country as being already the mark of a person entitled to
the benefits of the Convention, and used for identical or similar goods.
The essential requirement under Article 6bis is that the trademark to be
protected must be "well-known" in the country where protection is
sought. The power to determine whether a trademark is well-known lies in
the "competent authority of the country of registration or use." This
competent authority would be either the registering authority if it has the
power to decide this, or the courts of the country in question if the issue
comes before a court.[54]
Self-executing Provision
Article 6bis was first introduced at The Hague in 1925 and amended in
Lisbon in 1952.[51] It is a self-executing provision and does not require
legislative enactment to give it effect in the member country. [52] It may be
applied directly by the tribunals and officials of each member country by the
mere publication or proclamation of the Convention, after its ratification
according to the public law of each state and the order for its execution.[53]
Competent Authority
Both the Villafuerte and Ongpin Memoranda were sustained by the
Supreme Court in the 1984 landmark case of La Chemise Lacoste, S.A. v.
Fernandez.[60] This court ruled therein that under the provisions of Article
6bis of the Paris Convention, the Minister of Trade and Industry was the
"competent authority" to determine whether a trademark is well-known in this
country.[61]
Trademark
A "trademark" is defined under R.A. 166, the Trademark Law, as
including "any word, name, symbol, emblem, sign or device or any
combination thereof adopted and used by a manufacturer or merchant to
identify his goods and distinguish them from those manufactured, sold or
dealt in by others."[11]
This definition has been simplified in R.A. No. 8293, the Intellectual
Property Code of the Philippines, which defines a "trademark" as "any visible
sign capable of distinguishing goods."[12]
In Philippine jurisprudence, the function of a trademark is to point out
distinctly the origin or ownership of the goods to which it is affixed; to secure
to him, who has been instrumental in bringing into the market a superior
article of merchandise, the fruit of his industry and skill; to assure the public
that they are procuring the genuine article; to prevent fraud and imposition;
and to protect the manufacturer against substitution and sale of an inferior
and different article as his product.[13]
Three Distinct Functions
(1) they indicate origin or ownership of the articles to which they are
attached;
(2) they guarantee that those articles come up to a certain standard of
quality; and
(3) they advertise the articles they symbolize.[14]
It was not intended to create or continue monopoly but to give the
customer an index or guarantee of quality.[21]
Today, the trademark is not merely a symbol of origin and goodwill; it
is often the most effective agent for the actual creation and protection of
goodwill. It imprints upon the public mind an anonymous and impersonal
guaranty of satisfaction, creating a desire for further satisfaction. In other
words, the mark actually sells the goods.[28] The mark has become the "silent
salesman," the conduit through which direct contact between the trademark
owner and the consumer is assured.
The Case
FACTS:
First Round
On June 15, 1970, one Lolita Escobar, the predecessor-in-interest of
petitioner Pribhdas J. Mirpuri, filed an application with the Bureau of Patents
for the registration of the trademark "Barbizon" for use in brassieres and
ladies undergarments. Escobar alleged that she had been manufacturing and
selling these products under the firm name "L & BM Commercial" since
March 3, 1970.
Private respondent Barbizon Corporation, a corporation organized and
doing business under the laws of New York, U.S.A., opposed the
application. It claimed that:
"The mark BARBIZON of respondent-applicant is confusingly similar to the
trademark BARBIZON which opposer owns and has not abandoned.
This was docketed as Inter Partes Case No. 686 (IPC No. 686). After
filing of the pleadings, the parties submitted the case for decision.
On June 18, 1974, the Director of Patents rendered judgment dismissing the
opposition and giving due course to Escobar's application.
Second Round
Escobar later assigned all her rights and interest over the trademark to
petitioner Pribhdas J. Mirpuri who, under his firm name then, the "Bonito
Enterprises," was the sole and exclusive distributor of Escobar's "Barbizon"
products.
In 1979, however, Escobar failed to file with the Bureau of Patents the
Affidavit of Use of the trademark required under Section 12 of Republic Act
(R.A.) No. 166, the Philippine Trademark Law. Due to this failure, the Bureau
of Patents cancelled Escobar's certificate of registration.
On May 27, 1981, Escobar reapplied for registration of the cancelled
trademark. Mirpuri filed his own application for registration of Escobar's
trademark. Escobar later assigned her application to herein petitioner and
this application was opposed by private respondent. The case was docketed
as Inter Partes Case No. 2049 (IPC No. 2049).
Again private respondent, Barbizon Corporation, opposed the said
application. It now anchors its opposition on Art. 6bis of the Paris
Convention, where both the Philippines and the United States are signatories
thereof.
The Opposer has adopted the trademark BARBIZON (word), sometime
in June 1933 and has then used it on various kinds of wearing apparel and
that it obtained several certificate of registration in the United States Patent
Office in relation to the said trademark.
The Opposer's goods bearing the trademark BARBIZON have been
used in many countries, including the Philippines, for at least 40 years and
has enjoyed international reputation and good will for their quality. To protect
its registrations in countries where the goods covered by the registrations are
being sold, Opposer has procured the registration of the trademark
BARBIZON in the following countries:Australia, Austria, Abu Dhabi,
Argentina, Belgium, Bolivia, Bahrain, Canada, Chile, Colombia, Denmark,
Ecuador, France, West Germany, Greece, Guatemala, Hongkong, Honduras,
Italy, Japan, Jordan, Lebanon, Mexico, Morocco, Panama, New Zealand,
Norway, Sweden, Switzerland, Syria, El Salvador, South Africa, Zambia,
Egypt, and Iran, among others;
Replying to private respondent's opposition, petitioner raised the
defense of res judicata.
 On March 2, 1982, Escobar assigned to petitioner the use of the The mere fact that the same relief is sought in the subsequent action will
business name "Barbizon International." Petitioner registered the name with not render the judgment in the prior action operative as res judicata, such as
the Department of Trade and Industry (DTI) for which a certificate of where the two actions are based on different statutes.[74] Res
registration was issued in 1987. judicata therefore does not apply to the instant case and respondent Court of
Appeals did not err in so ruling.
DTI: Certificate of Registration was granted in favor of Mirpuri.
Intellectual and industrial property rights cases are not simple property
DTI Office of Legal Affairs: Cancelled petitioner's certificate of registration, cases. Trademarks deal with the psychological function of symbols and the
and declared private respondent the owner and prior user of the business effect of these symbols on the public at large.[75]
name "Barbizon International."
On the Main Issue:
Director of Patents: Ruled in favor of Mirpuri.
The respondent in this case established that the trademark Barbizon
Court of Appeals: Reversed. Ruled in favor of Respondent. is a well-known mark. As a well-known mark, it is entitled to protection under
MAIN ISSUE: the Paris Convention where both the United States, the state of the
Respondent Corporation and the Philippines, where registration was sought,
Whether or not the treaty affords protection to a foreign corporation against a are both signatories.
Philippine applicant for the registration of a similar trademark is the principal
issue in this case.
RULING:
Yes.
On record, there can be no doubt that respondent-applicant's sought-
to-be-registered trademark BARBIZON is similar, in fact obviously identical,
to opposer's alleged trademark BARBIZON, in spelling and pronunciation.
The only appreciable but very negligible difference lies in their respective
appearances or manner of presentation. Respondent-applicant's trademark
is in bold letters (set against a black background), while that of the opposer is
offered in stylish script letters.
On the issue of Res Judicata
In the instant case, the issue of ownership of the trademark "Barbizon"
was not raised in IPC No. 686. Private respondent's opposition therein was
merely anchored on different grounds.
IPC No. 2049 raised the issue of ownership of the trademark, the first
registration and use of the trademark in the United States and other
countries, and the international recognition and reputation of the trademark
established by extensive use and advertisement of private respondent's
products for over forty years here and abroad.
Respondent Corporation also introduced in the second case a fact that
did not exist at the time the first case was filed and terminated. The
cancellation of petitioner's certificate of registration for failure to file the
affidavit of use arose only after IPC No. 686. It did not and could not have
occurred in the first case, and this gave respondent another cause to oppose
the second application.
G.R. No. L-48226 December 14, 1942 originally incapable of exclusive appropriation with reference to an article of
the market, because geographically or otherwise descriptive, might
ANA L. ANG, petitioner, nevertheless have been used so long and so exclusively by one producer
vs. with reference to his article that, in that trade and to that branch of the
TORIBIO TEODORO, respondent. purchasing public, the word or phrase has come to mean that the article was
FACTS: his product. We have said that the phrase Ang Tibay, being neither
geographic nor descriptive, was originally capable of exclusive appropriation
as a trade-mark. But were it not so, the application of the doctrine of
Respondent Teodoro has long been using Ang Tibay both as trademark and
secondary meaning made by the Court of Appeals could nevertheless be
tradename in the manufacture and sale of its slippers, shoes and indoor
fully sustained because, in any event, by respondents long and exclusive
baseballs when he formally registered it. Meanwhile, petitioner Ang
use of said phrase with reference to his products and his business, it has
registered the same trademark Ang Tibay for its products of pants and
acquired a proprietary connotation.
shirts. Respondent moved to cancel the registration of petitioners mark. The
trial court found for petitioner Ang. CA reversed the judgment. Petitioner
YES. In the present state of development of the law on Trade-Marks, Unfair
argues the validity of the mark being descriptive; that it had not acquired
Competition, and Unfair Trading, the test employed by the courts to
secondary meaning in favor of respondent; and that there can be no
determine whether noncompeting goods are or are not of the same class is
infringement/unfair competition because the goods are not similar.
confusion as to the origin of the goods of the second user. Although two
noncompeting articles may be classified under two different classes by the
ISSUES: Patent Office because they are deemed not to possess the same descriptive
(1) Whether or not ANG TIBAY is a descriptive term not registrable. properties, they would, nevertheless, be held by the courts to belong to the
(2) Whether or not the trademark ANG TIBAY has acquired a secondary same class if the simultaneous use on them of identical or closely similar
meaning. trade-marks would be likely to cause confusion as to the origin, or personal
(3) Whether or not there is trademark infringement and/or unfair competition source, of the second users goods. They would be considered as not falling
between unrelated goods. under the same class only if they are so dissimilar or so foreign to each other
as to make it unlikely that the purchaser would think the first user made the
RULING: second users goods. The Court of Appeals found in this case that by
uninterrupted and exclusive use since 1910 of respondents registered trade-
NO. The phrase Ang Tibay is an exclamation denoting administration of mark on slippers and shoes manufactured by him, it has come to indicate the
strength or durability. For instance, one who tries hard but fails to break an origin and ownership of said goods. It is certainly not farfetched to surmise
object exclaims, Ang tibay! (How strong!) The phrase ang tibay is never that the selection by petitioner of the same trade-mark for pants and shirts
used adjectively to define or describe an object. One does not say, ang tibay was motivated by a desire to get a free ride on the reputation and selling
sapatos or sapatos ang tibay is never used adjectively to define or power it has acquired at the hands of the respondent.
describe an object. One does not say, ang tibay sapatos or sapatos ang
tibay to mean durable shoes, but matibay na sapatos or sapatos na
matibay. From all of this we deduce that Ang Tibay is not a descriptive
term within the meaning of the Trade-Mark Law but rather a fanciful or coined
phrase which may properly and legally be appropriated as a trademark or
tradename. In this connection we do not fail to note that when the petitioner
herself took the trouble and expense of securing the registration of these
same words as a trademark of her products she or her attorney as well as
the Director of Commerce was undoubtedly convinced that said words (Ang
Tibay) were not a descriptive term and hence could be legally used and
validly registered as a trademark.

NO. In view of the conclusion we have reached upon the first assignment of
error, it is unnecessary to apply here the doctrine of secondary meaning in
trade-mark parlance. This doctrine is to the effect that a word or phrase
PHILIP MORRIS, INC., BENSON & HEDGES (CANADA), INC., and
FABRIQUES DE TABAC REUNIES, S.A., (now known as PHILIP MORRIS
PRODUCTS S.A.),
versus
FORTUNE TOBACCO CORPORATION,
G.R. No. 158589
June 27, 2006
Philip Morris, Inc.(US) and its subsidiaries, Benson & Hedges
(Canada) and Fabriques de Tabac Reunies, S.A.(Switzerland) are
the registered owners of trademark MARK VII, MARK TEN and
LARK (assigned to Fabriques originally registered by Liget and
Myers Tobacco Company) respectively, as evidenced by Certificate
of Registration No. 18723, PPO Certificate of Registration No. 11147
and Trademark Certificate of Registration No. 19053.
Plaintiffs are all foreign corporations not doing business in the
Philippines and are suing on an isolated transaction.
They filed a Complaint for Infringement of Trademark and Damages
against respondent Fortune Tobacco Corporation, a company
organized in the Philippines, manufactures and sells cigarettes using
the trademark MARK.
Plaintiffs invoked Paris Convention for the Protection of Industrial
and Intellectual Property (Philippines is a signatory) wherein upon
the request of an interested party, a country of the Union may
prohibit the use of a trademark which constitutes a reproduction,
imitation, or translation of a mark already belonging to a person
entitled to the benefits of the said Convention.
They also invoked Section 21A in relation to Section 23 of Republic
Act 166, as amended, they are entitled to relief in the form of
damages and the issuance of a writ of preliminary injunction to enjoin
the other party from violating their right to exclusively use their
trademark.
Trial Court dismissed the complaint which was affirmed by CA. CA
likewise dismissed the Motion for Reconsideration filed by Plaintiffs.
The Registration of a trademark lets the registrant enjoy some
statutory presumptions such as the validity registration, ownership
and the exclusive right to use the registered marks.
However, considering that they are still foreign corporations, it must
be also proven that their countries also grant substantially the same
rights and privileges to Filipinos pursuant to Section 21-A, RA 166.
(Reciprocity)
In this case, the above-stated conditions will still not suffice to
automatically entitle Plaintiffs the protection of their trademark even if
the Plaintiffs home countries were signatories of the Paris
Convention absent actual use of the marks in local and commerce
trade.
The provisions Paris Convention can be invoked subject to the
limitations of Philippine laws. The incorporation of an international
law does not grant the same primacy over national law.
Sections 2 and 2-A of RA 166 requires actual use of marks in local
commerce and trade before it can be registered and owned. The
certificate of registration is only a prima facie evidence that the
registrant is the owner of the mark. Evidence, or admission in
Plaintiffs case, of non-usage in local commerce rebuts the
presumption of trademark ownership.

ISSUE: Whether or not Plaintiffs have the right to sue respondents for
infringement

HELD: NO

On the strength of registration of their trademarks in the Philippines and

entitlement of protection
G.R. No. 143993 August 18, 2004
MCDONALD'S CORPORATION and MCGEORGE FOOD INDUSTRIES,
INC., petitioners, vs. L.C. BIG MAK BURGER, INC., FRANCIS B. DY,
EDNA A. DY, RENE B. DY, WILLIAM B. DY, JESUS AYCARDO, ARACELI
AYCARDO, and GRACE HUERTO, respondents.
FACTS:
- McDonald's Corporation ("McDonald's") is a corporation organized
under the laws of Delaware, United States which operates, by itself or
through its franchisees, a global chain of fast-food restaurants. It owns a
family of marks5 including the "Big Mac" mark.
- McDonald's registered this trademark with the United States Trademark
Registry on 16 October 1979 and it applied for the registration of the
same mark in the Principal Register of the then Philippine Bureau of
Patents, Trademarks and Technology ("PBPTT"), now the Intellectual
Property Office ("IPO").
- Pending approval of its application, McDonald's introduced its "Big Mac"
hamburger sandwiches in the Philippine market in September 1981. On
18 July 1985, the PBPTT allowed registration of the "Big Mac" mark in
the Principal Register based on its Home Registration in the United
States.
- Respondent L.C. Big Mak Burger, Inc. ("respondent corporation") is a
domestic corporation which operates fast-food outlets and snack vans in
Metro Manila and nearby provinces.
- On 21 October 1988, respondent corporation applied with the PBPTT
for the registration of the "Big Mak" mark for its hamburger sandwiches.
McDonald's opposed the application on the ground that "Big Mak" was a
colorable imitation of its registered "Big Mac" mark for the same food
products and asked Dy, chairman of BODs of LC Mak from using the
mark.
- Subsequently, a TRO and then a preliminary injunction was issued
against the respondents.
- In respondents answer they point out that the Isaiyas Group of
Corporations ("Isaiyas Group") registered the same mark for hamburger
sandwiches with the PBPTT on 31 March 1979. One Rodolfo Topacio
("Topacio") similarly registered the same mark on 24 June 1983, prior to
McDonald's registration on 18 July 1985.
- RTC rendered judgment finding respondent corporation liable for
trademark infringement and unfair competition.
- CA rendered judgment reversing the RTC Decision.
ISSUE:
1. WON respondents used the words "Big Mak" not only as part of the
corporate name "L.C. Big Mak Burger, Inc." but also as a trademark for their
hamburger products.
2. WON respondent corporation is liable for trademark infringement and
unfair competition.
RULING:
1. Yes. Respondents' plastic wrappers and bags were identical with those
petitioners presented during the hearings for the injunctive writ except that
the letters "L.C." and the words "Burger, Inc." in respondents' evidence were
added above and below the words "Big Mak," respectively.
2. Yes.
On the Issue of Trademark Infringement
Section 22 ("Section 22) of Republic Act No. 166, as amended ("RA 166"),
the law applicable to this case,32defines trademark infringement as follows:
Infringement, what constitutes. Any person who [1] shall use, without the
consent of the registrant, any reproduction, counterfeit, copy or colorable
imitation of any registered mark or trade-name in connection with the sale,
offering for sale, or advertising of any goods, business or services on or in
connection with which such use is likely to cause confusion or mistake or to
deceive purchasers or others as to the source or origin of such goods or
services, or identity of such business; or [2] reproduce, counterfeit, copy, or
colorably imitate any such mark or trade-name and apply such reproduction,
counterfeit, copy, or colorable imitation to labels, signs, prints, packages,
wrappers, receptacles or advertisements intended to be used upon or in
connection with such goods, business or services, shall be liable to a civil
action by the registrant for any or all of the remedies herein provided.33
To establish trademark infringement, the following elements must be shown:
(1) the validity of plaintiff's mark;
(2) the plaintiff's ownership of the mark; and
(3) the use of the mark or its colorable imitation by the alleged infringer
results in "likelihood of confusion."34
Of these, it is the element of likelihood of confusion that is the gravamen of
trademark infringement.35

(1) On the Validity of the "Big Mac"Mark and (2) McDonald's Ownership
of such Mark
A mark is valid if it is "distinctive" and thus not barred from registration under
Section 436 of RA 166 ("Section 4"). However, once registered, not only the
mark's validity but also the registrant's ownership of the mark is prima facie
presumed.37
Generic marks are commonly used as the name or description of
a kind of goods,40 such as "Lite" for beer41 or "Chocolate Fudge" for
chocolate soda drink.42
Descriptive marks, on the other hand, convey the characteristics, functions,
qualities or ingredients of a product to one who has never seen it or does not
know it exists,43 such as "Arthriticare" for arthritis medication.44
On the contrary, "Big Mac" falls under the class of fanciful or arbitrary marks
as it bears no logical relation to the actual characteristics of the product it
represents.45 As such, it is highly distinctive and thus valid.
The Court also finds that petitioners have duly established McDonald's
exclusive ownership of the "Big Mac" mark. Although Topacio and the Isaiyas
Group registered the "Big Mac" mark ahead of McDonald's, it had already
assigned his rights to McDonald's. The Isaiyas Group, on the other hand,
registered its trademark only in the Supplemental Register. A mark which is
not registered in the Principal Register, and thus not distinctive, has no real
protection.
(3) On Whether Confusion of Goods and
Confusion of Business are Applicable
Types of Confusion
1. confusion of goods (product confusion)- "in which event the ordinarily
prudent purchaser would be induced to purchase one product in the belief
that he was purchasing the other."
2.confusion of business (source or origin confusion)- "Here though the
goods of the parties are different, the defendant's product is such as might
reasonably be assumed to originate with the plaintiff, and the public would
then be deceived either into that belief or into the belief that there is some
connection between the plaintiff and defendant which, in fact, does not exist."
Trademark infringement expanded its scope to include such use of the mark
or its colorable imitation that is likely to result in confusion on "the source or
origin of such goods or services, or identity of such business." 52Thus, while
there is confusion of goods when the products are competing, confusion of
business exists when the products are non-competing but related enough to
produce confusion of affiliation.
Since respondents used the "Big Mak" mark on the same
goods, i.e. hamburger sandwiches, that petitioners' "Big Mac" mark is used,
trademark infringement through confusion of goods is a proper issue in this
case.
Respondents admit that their business includes selling hamburger
sandwiches, the same food product that petitioners sell using the "Big Mac"
mark. Thus, trademark infringement through confusion of business is also a
proper issue in this case.
It cannot be negated the undisputed fact that respondents use their "Big
Mak" mark on hamburgers, the same food product that petitioners' sell
with the use of their registered mark "Big Mac." The use of the "Big Mak"
mark on non-hamburger food products cannot excuse their infringement of
petitioners' registered mark, otherwise registered marks will lose their
protection under the law.
The registered trademark owner may use his mark on the same or similar
products, in different segments of the market, and at different price levels
depending on variations of the products for specific segments of the market.
The Court has recognized that the registered trademark owner enjoys
protection in product and market areas that are the normal potential
expansion of his business.
On Whether Respondents' Use of the "Big Mak"
Mark Results in Likelihood of Confusion
In determining likelihood of confusion, jurisprudence has developed two
tests, the dominancy test and the holistic test. 57 The dominancy test
focuses on the similarity of the prevalent features of the competing
trademarks that might cause confusion. In contrast, the holistic
test requires the court to consider the entirety of the marks as applied to the
products, including the labels and packaging, in determining confusing
similarity.
This Court, however, has relied on the dominancy test rather than the holistic
test. Applying the dominancy test, the Court finds that respondents' use of
the "Big Mak" mark results in likelihood of confusion. First, "Big Mak"
sounds exactly the same as "Big Mac." Second, the first word in "Big Mak"
is exactly the same as the first word in "Big Mac." Third, the first two letters in
"Mak" are the same as the first two letters in "Mac." Fourth, the last letter in
"Mak" while a "k" sounds the same as "c" when the word "Mak" is
pronounced.
Clearly, respondents have adopted in "Big Mak" not only the dominant
but also almost all the features of "Big Mac." Applied to the same food
product of hamburgers, the two marks will likely result in confusion in the
public mind.
Mac" mark on hamburgers, respondents have obviously clothed their goods
with the general appearance of petitioners' goods.
Moreover, there is actually no notice to the public that the "Big Mak"
hamburgers are products of "L.C. Big Mak Burger, Inc." and not those of
petitioners who have the exclusive right to the "Big Mac" mark. This clearly
shows respondents' intent to deceive the public.

On the Issue of Unfair Competition

Unfair competition is broader than trademark infringement and includes

passing off goods with or without trademark infringement. Trademark
infringement is a form of unfair competition.77 Trademark infringement
constitutes unfair competition when there is not merely likelihood of
confusion, but also actual or probable deception on the public because of the
general appearance of the goods. There can be trademark infringement
without unfair competition as when the infringer discloses on the labels
containing the mark that he manufactures the goods, thus preventing the
public from being deceived that the goods originate from the trademark
owner.78

The essential elements of an action for unfair competition are

(1) confusing similarity in the general appearance of the goods, and

(2) intent to deceive the public and defraud a competitor.

The dissimilarities in the packaging are minor compared to the stark

similarities in the words that give respondents' "Big Mak" hamburgers the
general appearance of petitioners' "Big Mac" hamburgers. Section 29(a)
expressly provides that the similarity in the general appearance of the goods
may be in the "devices or words" used on the wrappings. Respondents have
applied on their plastic wrappers and bags almost the same words that
petitioners use on their styrofoam box. What attracts the attention of the
buying public are the words "Big Mak" which are almost the same, aurally
and visually, as the words "Big Mac."

Section 29(a) also provides that the defendant gives "his goods the general
appearance of goods of another manufacturer." Ssince respondents chose to
apply the "Big Mak" mark on hamburgers, just like petitioner's use of the "Big
McDONALDS CORPORATION v. MACJOY FASTFOOD CORPORATION
G.R. No. 166115 February 2, 2007
Facts:
Respondent MacJoy Fastfood Corporation, a domestic corporation engaged
in the sale of fast food products in Cebu City, filed with, now the (IPO), an
application for the registration of the trademark "MACJOY & DEVICE" for
fried chicken, chicken barbeque, burgers, fries, spaghetti, palabok, tacos,
sandwiches, halo-halo and steaks under classes 29 and 30 of the
International Classification of Goods.
Petitioner McDonalds Corporation, filed a verified Notice of
Opposition against the respondents application claiming that the trademark
"MACJOY & DEVICE" so resembles its corporate logo, otherwise known as
the Golden Arches / "M" design, and its marks "McDonalds," McChicken,"
"MacFries," etc. (hereinafter MCDONALDS marks) such that when used on
identical / related goods, the trademark applied for would confuse / deceive
purchasers into believing that the goods originate from the same source or
origin.
Petitioner alleged that the respondents use and adoption in bad faith of the
"MACJOY & DEVICE" mark would falsely tend to suggest a connection or
affiliation with petitioners restaurant services and food products, thus,
constituting a fraud upon the general public and further cause the dilution of
the distinctiveness of petitioners registered and internationally recognized
MCDONALDS marks to its prejudice and irreparable damage.
IPO ruled that the predominance of the letter "M," and the prefixes "Mac/Mc"
in both the "MACJOY" and the "MCDONALDS" marks lead to the conclusion
that there is confusing similarity between them especially since both are
used on almost the same products . IPO sustained the opposition and
rejected the respondents application
CA reversed the IPO decision, ruling that there was no confusing similarity
between the marks "MACJOY" and "MCDONALDS," for the ff. reasons:
1. The word "MacJoy" is written in round script while the word "McDonalds"
is written in single stroke gothic;
2. The word "MacJoy" comes with the picture of a chicken head with cap and
bowtie and wings sprouting on both sides, while the word "McDonalds"
comes with an arches "M" in gold colors, and absolutely without any picture
of a chicken;
3. The word "MacJoy" is set in deep pink and white color scheme while
"McDonalds" is written in red, yellow and black color combination;
4. The faade of the respective stores of the parties are entirely different.
Respondents restaurant is set also in the same bold, brilliant and noticeable
color scheme as that of its wrappers, containers, cups, etc., while Petitioners
restaurant is in yellow and red colors, and with the mascot of "Ronald
McDonald" being prominently displayed therein."
Issues:
1. Whether or not the dominancy test should be applied, instead of the
holistic test?
2. Whether or not there is a confusing similarity between MACJOY and
MCDONALDS trademarks?
Held:
1. Dominancy test applies.
In determining similarity and likelihood of confusion, jurisprudence has
developed two tests, the dominancy test and the holistic test. The dominancy
test focuses on the similarity of the prevalent features of the competing
trademarks that might cause confusion or deception. In contrast, the holistic
test requires the court to consider the entirety of the marks as applied to the
products, including the labels and packaging, in determining confusing
similarity.
In recent cases with a similar factual milieu as here, the Court has
consistently used and applied the dominancy test in determining confusing
similarity or likelihood of confusion between competing trademarks.
Under the dominancy test, courts give greater weight to the similarity of the
appearance of the product arising from the adoption of the dominant features
of the registered mark, disregarding minor differences. Courts will consider
more the aural and visual impressions created by the marks in the public
mind, giving little weight to factors like prices, quality, sales outlets and
market segments.
Applying the dominancy test to the instant case, the Court finds that herein
petitioners "MCDONALDS" and respondents "MACJOY" marks are
confusingly similar with each other such that an ordinary purchaser can
conclude an association or relation between the marks
 2. YES, it is confusingly similar.
Both marks use the corporate "M" design logo and the prefixes "Mc" and/or
"Mac" as dominant features. The first letter "M" in both marks puts emphasis
on the prefixes "Mc" and/or "Mac" by the similar way in which they are
depicted i.e. in an arch-like, capitalized and stylized manner.
It is the prefix "Mc," an abbreviation of "Mac," which visually and aurally
catches the attention of the consuming public.
Both trademarks are used in the sale of fastfood products.
Predominant features such as the "M," "Mc," and "Mac" appearing in both
McDonalds marks and the MACJOY & DEVICE" easily attract the attention
of would-be customers. Even non-regular customers of their fastfood
restaurants would readily notice the predominance of the "M" design,
"Mc/Mac" prefixes shown in both marks. Such that the common awareness
or perception of customers that the trademarks McDonalds mark and
MACJOY & DEVICE are one and the same, / an affiliate, / under the
sponsorship of the other is not far-fetched.
When one applies for the registration of a trademark or label which is almost
the same or very closely resembles one already used and registered by
another, the application should be rejected and dismissed outright, even
without any opposition on the part of the owner and user of a previously
registered label or trademark, this not only to avoid confusion on the part of
the public, but also to protect an already used and registered trademark and
an established goodwill.
VICTORIAS MILLING COMPANY, INC., petitioner,
vs.
ONG SU AND THE HONORABLE TIBURCIO S. EVALLE IN HIS
CAPACITY AS DIRECTOR OF PATENT'S, respondents.
G.R. No. L-28499 September 30, 1977
Facts:
The petitioner, Victorias Milling Company, Inc., a domestic corporation and
engaged in the manufacture and sale of refined granulated sugar is the
owner of the trademark "VICTORIAS" and d design registered in the
Philippines Patent Office on November 9, 1961.
The respondent Ong Su is engaged in the repacking and sale of refine sugar
and is the owner of the trademark "VALENTINE" and design registered in the
Philippines Patent Office on June 20, 1961.
On October 4, 1963, Victorias Mining Company, Inc. filed with the Philippine
Patent Office a petition to cancel the registration of the Ong Su trademark
"Valentine."
Petitioners contention:
Purchasers of sugar are likely to confuse petitioner's "Victorias" trademark
and respondent Ong Su's "Valentine" trademark because of the following
similarities:
1. Both trademarks have the same diamond design with the slight
modification that the lines of the "VALENTINE" diamond design are a little
protruding at the ends.
2. The lines forming the diamond design in both trademarks consist of
two lines, namely, the outer portion and the inner portion.
3. The outer portion of the diamond design of both trademarks has the
color black as shown in the specimens (Exhibits "A" and "B"). The, inner line
of the diamond design in both trademarks has the color red.
4. In both trade marks, the word "PURE" in black print appears inside of
the upper portion of the diamond design.
5. In both trade marks, the word "VICTORIAS" and the word
VALENTINE' placed within the diamond design are conspicuously colored
red.
6. The letter "V" in Victorias and the letter "V" in Valentine are
Identically placed.
7. The word "VICTORIAS" and the word "VALENTINE" are Identically
arranged, the same containing the same number of letters.
8. Immediately below the words "VICTORIAS" and
"VALENTINE"appears the words "REFINED SUGAR".
9. underneath the diamond design in both trademarks are the words
"FINE GRANULATED" and below said phrase are the words 'CANE
SUGAR'with a small diamond design.
10. Both, trade marks are used on refines sugar.
11. The words "PURE," "VALENTINE," "VICTORIAS," "FINE
GRANULATED" and "CANE SUGAR" in both trade marks are same has
arranged and printed.9
Respondents answer:
In his answer to the petition the respondent averred that he is doing business
under the name and style "Valentine Packaging" and has registered the
trademark "Valentine" with a design for sugar and was issued Certificate of
Registration No. 8891 dated June 20, 1961; that the trademark "Victorias"
with diamond design and the trademark "Valentine" with a design are two
different marks; and that there is absolutely no likelihood of confusion,
mistake or deception to purchasers through the concurrent use of the
petitioner's mark "Victorias" with a diamond design and the respondents'
mark "Valentine" with a design in connection with sugar.
Director of Patents
Denied the petition to cancel the certificate of registration of the respondent
Ong Su covering the trademark "Valentine" and design.
There is no question that as to their respective literal designation the
trademarks are different. One is VALENTINE while the other is VICTORIAS.
Thus, as to sound and connotation there is no dispute as to their dissimilarity.
However, from the evidence and pleadings, it appears that petitioner is
relying heavily on its diamond design, the color scheme, and the printing
sequence or arrangement of such legends as weight, contents and
manufacturer or packer.
The diamond Portion of petitioner's trademark has not bolstered its cause.
Common geometric shapes such as circles, ovals, squares, triangles,
diamonds, and the like, when used as vehicles for display on word marks,
ordinarily are not retarded as indicia of origin for goods to which the marks
are applied, unless of course they have acquired secondary meaning. It is
the common practice for trademark owners to register designs forming
outline of their distinguishing mark, but when the registrant of such design
relies upon registration in proceeding based upon likelihood of confusion of
purchasers, he assumes the burden of showing that the design portion of the
mark has been so used that purchasers recognize the design, standing
alone, as indicating goods emanating from the registrant.
As regards the colors black and red used, it is fundamental in trademark
jurisprudence that color alone, unless displayed in a distinct or arbitrary
design, does not function as a trademark, inasmuch as here, or elsewhere,
the colors black and red are not so displayed by the petitioner, and are
primary colors commonly and freely used in the printing business.
Issue:
Whether or not the concurrent use of the petitioner's mark "Victorias" with a
diamond design and the respondents' mark "Valentine" with a design in
connection with sugar would result to confusion, mistake or deception to
purchasers.
Ruling:
The contention of petitioner that the diamond design in its trademark is an
index of origin has no merit. The petitioner has not shown that the design
portion of the mark has been so used that purchasers recognize the design,
standing alone, as indicating goods coming from the registrant. As correctly
stated by the Director of Patents, common geometric shapes such as
diamonds ordinarily are not regarded as indicia of origin for goods to which
the remarks are applied unless they have acquired a secondary meaning.
And there is no evidence that the diamond design in the trademark of the
petitioner has acquired a secondary meaning with respect to its sugar
business. The word "Victorias" is what Identifies the sugar contained in the
bag as the product of the petitioner. Indeed, the petitioner has advertised its
sugar in bags marked "Victorias" with oval, hexagor. and other designs.
The evidence is that Ong Su has been using his trademark since prior to the
last World War and he obtained the registration thereof on June 20, 1961.
Vijandre, the VP of Victoria Milling Co. Inc. declared that the petitioner
started to use its trademark only in 1947. Said trademark was registered on
November 9, 1961. It cannot be said, therefore, that the respondent Ong Su
imitated the trademark of the petitioner.
It seems clear that the words "Valentine" and "Victorias" and the names and
places of business of Victorias Milling Company, Inc. and Ong Su are the
dominant features of the trademarks in question. The petitioner has not
established such a substantial similarity between the two trademarks in
question as to warrant the cancellation of the trademark 'Valentine'of the
respondent Su.