In 2004, McDonald filed a case against MacJoy Fastfood Corporation engaged in the sale of the fast-food products in Cebu City. McJoy filed the trademark application in the IP Office on 14th March 1991 for the registration of the “MACJOY & DEVICE” for the fried chicken, tacos, burgers, fries, spaghetti and sandwiches under classes 29 and 30 of the Nice Classification. However, McDonald has successively registered its trademark on 4th October 1971. McDonald is a famous brand or image in the fast-food field across the globe.
Facts of the case
The facts of the case are that the petitioner claimed that the MACJOY & DEVICE used their trademark and resembles their corporate logo. The respondent creates confusion by using the same prefixes “Mc or Mac”.
Further, cause the dilution of the distinctiveness petitioner has registered and internationally recognized MCDONALD’S marks to its irreparable damages. McDonald’s Corporation filed the case against the MacJoy Fastfood Corporation. In this case, McDonald’s and MacJoys marks are completely similar to each other. Like, both marks use the “M” design logo and the prefixes “Mc” or “Mac” as the dominant feature, which usually and aurally catches the attention of the consuming public. Truly, the word “MACJOY” attracts attention the same way, as did “McDonald’s,” “MacFries,” “McSpaghetti,” “McDo,” “Big Mac” and the rest of the MCDONALD’S marks, which all use the prefixes Mc, and/or Mac.
Issues of the case
Whether or not there is a confusing similarity between the McDOnald’s and MacJoy trademark when it applied to the classes 29 and 30 of the International Classification of Goods?
The old Trademark Law, Republic Act (R.A.) No. 166, as amended, defines a “trademark” registration of trademarks, trade-names and service-marks on the principal register. – There is hereby established a register of trademarks, tradenames and service-marks which shall be known as the principal register. The owner of the trade-mark, trade-name or service-mark used to distinguish his goods, business or services of others shall have the right to register the same on the principal register, unless it:
Section 4(d) of the Republic Act (R.A.) No.166: “Consists of or comprises a mark or trade-name which so resembles a mark or trade-name registered in the Philippines or a mark or trade-name previously used in the Philippines by another and not abandoned, as to be likely, when applied to or used in connection with the goods, business or services of the applicant, to cause confusion or mistake or to deceive purchasers”
Section 37 of the Republic Act (R.A.) No.166. “Rights of Foreign Registrants-Persons who are nationals of, domiciled in, or have a bona fide or effective business or commercial establishment in any foreign country, which is a party to an international convention or treaty relating to marks or tradenames on the repression of unfair competition to which the Philippines may be a party, shall be entitled to the benefits and subject to the provisions of this Act”
MacJoy & Device created the confusion in the market with their products which are completely similar by the McDonald’s “M” design logo and the prefix “Mc or Mac” as the dominant features. McJoy attracts the consumer like McDonald McDonalds,” “MacFries,” “McSpaghetti,” “McDo,” “Big Mac” and the rest of the MCDONALD’S marks, which all use the prefixes Mc, and/or Mac. The respondent tried to differentiate their mark from McDonald’s by stating that it has used the mark “MACJOY” for the past many years in good faith and has spent considerable sums of money for extensive promotions. The Court of Appeals used the Holistic test, and it favored McJoy and against the McDonald. The Hostilic Test commonly used in infringement cases. The Court of Appeal looks upon the visual comparisons between the two marks. McJoy provided little explanation of why he chose the prefix of “Mac” to be the dominant feature of the trademark. The prefix “Mac” and “Macjoy” have relation or similarity 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. However, the Supreme Court relied on the dominancy test rather than the hostile test because the dominancy test considered the dominant features in determining whether they are confusing similar and McJoys marks completely related to the McDonald’s mark. The provision of Section 37 of R.A.No.166, protecting the industrial property of foreign nationals in this country embodied in the Paris Convention, under this section the petitioner and the respondent both fell under the dominancy test. Although, there is no relation or similarity 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. The Court found that McJoy’s explanation is insufficient; the only logical conclusion is that McJoy would want to ride high on the reputation and goodwill of the McDonald’s mark.
McDonald’s is the leader in the fast-food; in the period of the 90s, McDonald has faced lots of difficulties to protect its image in the market. The key threats of the image or brand of McDonald’s are the lack of growth opportunities. McDonald’s has the rightful ownership of the said marks, it registers their mark with “MCDONALD’S”, with the corporate logo which is the “M” or the golden arches design and the “McDonald’s” with the “M” or golden arches design. McJoy used the “M” design logo and the prefix “Mc or Mac” as the dominant features, which visually or aurally catches the attention of the consumers. In this case, McJoy has tried to popular its image over the trademark of McDonald. Besides, most importantly both the competing trademarks are used in the sale of the fast-food products and both the fall under the classes 29 and 30 of the International Classification of Goods. The word MacJoy attracts attention like the “McDonalds,” “MacFries,” “McSpaghetti,” “McDo,” “Big Mac” and the rest of the MCDONALD’S marks which all use the prefixes Mc and/or Mac. The company’s main effort is not to overshadow its marketing initiatives by the other companies in the world.