Petitioner McDonald’s, an American corporation operating a global chain of fast-food restaurants, is the owner of the ‘Big Mac’ mark for its double-decker hamburger sandwich here and in the US. Meanwhile, respondent L.C., a domestic corporation which operates fast-food outlets and snack vans applied for the registration of the ‘Big Mak’ mark for its hamburger sandwiches. Petitioner opposed on the ground that ‘Big Mak’ was a colorable imitation of its registered ‘Big Mac’ mark for the same food products. Respondents denied there is colorable imitation and argued that petitioner cannot exclusively appropriate the mark ‘Big Mac’ because the word ‘Big’ is a generic and descriptive term. Petitioner filed a complaint for trademark infringement and unfair competition. The trial court found for petitioners. CA held otherwise.
(1) Whether or not the word ‘Big Mac’ can be exclusively appropriated by petitioner;
(2) Whether or not there is colorable imitation resulting in likelihood of confusion;
(3) Whether or not there is unfair competition.
(1) YES. A mark is valid if it is “distinctive” and thus not barred from registration under Section 4 of RA 166. However, once registered, not only the mark’s validity but also the registrant’s ownership of the mark is prima facie presumed. The “Big Mac” mark, which should be treated in its entirety and not dissected word for word, is neither generic nor descriptive. Generic marks are commonly used as the name or description of a kind of goods, such as “Lite” for beer or “Chocolate Fudge” for chocolate soda drink. 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, such as “Arthriticare” for arthritis medication. 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. As such, it is highly distinctive and thus valid. Significantly, the trademark “Little Debbie” for snack cakes was found arbitrary or fanciful.
(2) YES. In determining 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. 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. The test of dominancy is now explicitly incorporated into law in Section 155.1 of the Intellectual Property Code which defines infringement as the “colorable imitation of a registered mark xxx or a dominant feature thereof.”
Applying the dominancy test, the Court finds that respondents’ use of the “Big Mak” mark results in likelihood of confusion. Aurally the two marks are the same, with the first word of both marks phonetically the same, and the second word of both marks also phonetically the same. Visually, the two marks have both two words and six letters, with the first word of both marks having the same letters and the second word having the same first two letters. In spelling, considering the Filipino language, even the last letters of both marks are the same. 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. Certainly, “Big Mac” and “Big Mak” for hamburgers create even greater confusion, not only aurally but also visually. Indeed, a person cannot distinguish “Big Mac” from “Big Mak” by their sound. When one hears a “Big Mac” or “Big Mak” hamburger advertisement over the radio, one would not know whether the “Mac” or “Mak” ends with a “c” or a “k.”
(3) YES. 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 confusing similarity may or may not result from similarity in the marks, but may result from other external factors in the packaging or presentation of the goods. The intent to deceive and defraud may be inferred from the similarity of the appearance of the goods as offered for sale to the public. Actual fraudulent intent need not be shown. 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. 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.
Respondents’ goods are hamburgers which are also the goods of petitioners. Since respondents chose to apply the “Big Mak” mark on hamburgers, just like petitioner’s use of the “Big Mac” mark on hamburgers, respondents have obviously clothed their goods with the general appearance of petitioners’ goods. 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. We hold that as found by the RTC, respondent corporation is liable for unfair competition.