G.R. No. 166115.
February 02, 2007 (Case Brief / Digest)
### Title:
McDonald’s Corporation vs. MacJoy Fastfood Corporation: Trademark Infringement and the
Dominancy Test
### Facts:
This case involves a legal dispute over trademark registration between McDonald’s
Corporation, a well-established international fast-food chain, and MacJoy Fastfood
Corporation, a local fast-food entity in Cebu City, Philippines. MacJoy filed an application on
March 14, 1991, for the registration of the trademark “MACJOY & DEVICE” for various food
items under International Classification of Goods classes 29 and 30. McDonald’s opposed
MacJoy’s application, claiming that “MACJOY & DEVICE” closely resembled its own
trademarks, potentially causing confusion among consumers.
The Intellectual Property Office (IPO) initially rejected MacJoy’s application, siding with
McDonald’s based on the similarity between the trademarks, particularly the use of the
prefixes “Mac/Mc” and the overall product similarity. MacJoy appealed this decision to the
Court of Appeals (CA), which reversed the IPO’s decision, emphasizing the differences
between the trademarks. McDonald’s moved for reconsideration, but the CA upheld its
initial decision, prompting McDonald’s to appeal to the Supreme Court.
### Issues:
1. Whether the Court of Appeals erred in applying the holistic test instead of the dominancy
test in determining the confusing similarity between McDonald’s and MacJoy’s trademarks.
2. Whether the trademarks “McDonald’s” and “MacJoy & Device” are confusingly similar
under the dominancy test.
3. Whether McDonald’s Corporation has a better claim of ownership over the questioned
trademark.
### Court’s Decision:
The Supreme Court granted McDonald’s petition, applying the dominancy test and
emphasized the importance of focusing on the dominant features of competing trademarks.
The Court ruled that the trademarks “McDonald’s” and “MacJoy & Device” are confusingly
similar, primarily because both incorporated the “Mc/Mac” prefix prominently, catered to
the same product market, and could potentially cause consumer confusion.
Furthermore, the Court reiterated McDonald’s well-established claim over the “Mc/Mac”
prefix within the fast-food industry, backed by international trademark registrations
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G.R. No. 166115. February 02, 2007 (Case Brief / Digest)
predating MacJoy’s. Thus, the IPO’s original decision to reject MacJoy’s application for
trademark registration was reinstated.
### Doctrine:
This case reaffirmed the applicability of the dominancy test over the holistic test in
determining trademark infringement, especially when the competing marks are used on
identical or closely related goods. The dominancy test focuses on the similarity of the
prevalent features of the competing trademarks that may cause confusion, rather than
considering the marks in their entirety.
### Class Notes:
– Dominancy Test vs. Holistic Test: The dominancy test concentrates on the dominant
features of trademarks to determine potential confusion, while the holistic test considers the
entirety of the marks and their impact on consumer perception.
– Trademark Infringement: Occurs when a trademark closely resembles another
registered trademark in a way that may cause confusion among consumers about the source
or origin of the goods.
– International Classification of Goods: A system used to classify goods and services for
the purposes of trademark registration, essential for determining potential product overlap
in infringement cases.
### Historical Background:
This case underscores the importance of international agreements and conventions, such as
the Paris Convention, in shaping domestic laws on intellectual property protection. It
reflects the balance between safeguarding well-established international trademarks and
considering the rights of local businesses to register trademarks that could potentially
infringe on existing ones.
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