McDONALD’S CORPORATION v. MACJOY FASTFOOD 1.
The word “MacJoy” is written in round script while the word
CORPORATION. G.R. No. 166115. February 2, 2007 “McDonald’s is written in single stroke gothic;
2. The word “MacJoy” comes with the picture of a chicken head
FACTS: Macjoy Fastfood Corporation (Macjoy), a corporation selling
with cap and bowtie and wings sprouting on both sides, while
fried chicken, chicken barbeque, burgers, fries, spaghetti, palabok,
the word “McDonald’s” comes with an arches “M” in gold
tacos, sandwiches, halo-halo and steaks (fastfood products) in Cebu
colors, and absolutely without any picture of a chicken;
City filed with the BPTT-IPO an application for the registration of the
3. The word “MacJoy” is set in deep pink and white color
trademark “MACJOY & DEVICE”.
scheme while the word “McDonald’s” is written in red,
McDonald’s Corporation, a corporation organized under the laws of yellow, and black color combination;
Delaware, USA opposed against the respondent’s application 4. The facade of the respective stores of the parties, are entirely
claiming that such trademark so resembles its corporate logo (Golden different.
Arches) design and its McDONALD’s marks such that when used on
ISSUE: Whether there is a confusing similarity between the
identical or related goods, the trademark applied for would confuse
McDonald’s marks of the petitioner and the respondent’s “MACJOY
or deceive purchasers into believing that the goods originated from
& DEVICE” trademark when it applied to classes 29 ad 30 of the
the same source or origin.
International Classification of Goods.
HELD: YES.
Macjoy on the other hand averred that the it has used the mark
“MACJOY” for tha past many years in good faith and has spent
considerable sums of money for extensive promotions x x x. The Supreme Court ruled that the proper test to be used is the
dominancy test. The dominancy test not only looks at the visual
The IPO ratiocinated that the predominance of the letter “M” and the
comparisons between two trademarks but also the aural impressions
prefixes “Mac/Mc” in both the Macjoy and McDonald’s marks lead to
created by the marks in the public mind as well as connotative
the conclusion that there is confusing similarity between them x x x.
comparisons, giving little weight to factors like prices, quality, sales
Therefore, Macjoy’s application was denied.
outlets and market segments.
Upon appeal to the CA it favored with MacJoy and against
In the case at bar, the Supreme Court ruled that “McDonald’s” and
McDonald’s. The Court of Appeals, in ruling over the case, actually
“MacJoy” marks are confusingly similar with each other such that an
used the holistic test (which is a test commonly used in infringement
ordinary purchaser can conclude an association or relation between
cases). The holistic test looks upon the visual comparisons between
the marks. To begin with, both marks use the corporate “M” design
the two trademarks. The justifications are the following:
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. For sure, it is the prefix
“Mc,” an abbreviation of “Mac,” which visually and aurally catches
the attention of the consuming public. Verily, the word “MACJOY”
attracts attention the same way as did “McDonalds,” “MacFries,”
“McSpaghetti,” “McDo,” “Big Mac” and the rest of the MCDONALD’S
marks which all use the prefixes Mc and/or Mac. Besides and most
importantly, both trademarks are used in the sale of fastfood
products.
Further, the owner of MacJoy provided little explanation why in all
the available names for a restaurant he chose the prefix “Mac” to be
the dominant feature of the trademark. The prefix “Mac” and
“Macjoy” has no relation or similarity whatsoever to the name
Scarlett Yu Carcel, which is the name of the niece of MacJoy’s
president whom he said was the basis of the trademark MacJoy. By
reason of the MacJoy’s implausible and insufficient explanation as to
how and why out of the many choices of words it could have used for
its trade-name and/or trademark, it chose the word “Macjoy,” the
only logical conclusion deducible therefrom is that the MacJoy would
want to ride high on the established reputation and goodwill of the
McDonald’s marks, which, as applied to its restaurant business and
food products, is undoubtedly beyond question.
