McDONALD’S Corporation vs. MACJOY
FASTFOOD CORPORATION, G.R. No.
166115
John Romano M. Amansec
FACTS:
MacJoy Fastfood Corp. is a corporation in the sale of fastfood based in Cebu filed with IPO for
the registration of their name.
McDonald's Corporation filed an opposition to the application. McDonald's claims that their
logo and use of their name would falsely tend to suggest a connection with MacJoy's services
and food products, thus, constituting a fraud upon the general public and further cause the
dilution of the distinctiveness of petitioner’s registered and internationally recognized
MCDONALD’S marks to its prejudice and irreparable damage.
FACTS:
Respondent averred that MACJOY has been used for the past many years in good faith and has
spent considerable sums of money for said mark. Furthermore, it avers that it had been doing
business long before McDonald’s opened its outlet in Cebu and that there would be no
confusion as between the two marks because of the differences in the design and detail of
the two marks.
FACTS:
IPO: Rules in favor of McDonalds and held that there is confusing similarity between Mcdonalds and Macjoy.
(Dominancy)
CA: Rules in favor of Macjoy. According to the CA, the word Macjoy is written in round script while the word
McDonalds is written in single stroke gothic. Furthermore, according to the CA, the word “MacJoy” comes with
the picture of a chicken head with a 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. In addition,
the CA avers that the word Macjoy is set in deep pink and white color scheme while McDonald’s is written in
red, yellow, and black color combination.
ISSUE:
Whether or not the Court of Appeals is correct in saying that there is
a predominant difference between McDonalds and Macjoy
RULING:
NO. Jurisprudence developed two tests, the dominancy and holistic test.
RULING:
Dominancy test
Focuses on the similarity of the prevalent features of the competing trademarks
that might cause confusion or deception
Holistic Test
The holistic test considers the mark as a whole in determining confusing similarity
among the trademarks. Under the holistic test, the marks are considered as a
whole. Visual comparisons are often used.
RULING:
The IPO, though they correctly used the dominancy, they should have taken more
considerations. In recent cases, the SC has consistently used and applied the dominancy
test in determining confusing similarity or likelihood of confusion between competing
trademarks. The CA, while seemingly applying the dominancy test, in fact actually
applied the holistic test.
RULING:
Applying the dominancy test to the instant case, the Court ruled that both marks are
confusingly similar with each other such that an ordinary purchaser can conclude an
association or relation between the marks. The predominant features such as the "M,"
"Mc," and "Mac" appearing in both easily attract the attention of would-be customers.
More importantly, both trademarks are used in the sale of fastfood products and that
both marks are being used on almost the same products falling under Classes 29 and 30
of the International Classification of Goods.
RULING:
As to the issue of rightful claims on the marks, the Court ruled that McDonalds
registered their marks successfully :
-McDonalds in 04 October, 1971
-the corporate logo, which is “M” or the golden arches design and the
“McDonald’s” with the “M” or golden arches design both in 30 June 1977;
-and so on as compared to “Macjoy”, which had its application on 14 March 1991