SOCIETE DES PRODUITS NESTLE, S.A.
v CA and CFC CORP
SOCIETE DES PRODUITS NESTLE, S.A. v CA and CFC CORP
G.R. NO. 112012
April 4, 2001
Ynares-Santiago, J.
FACTS:
CFC corporation filed with Bureau of Patents a registration of the Trademark “FLAVOR
MASTER” for instant coffee. Petitioner Societe Des Produits Nestle filed an unverified Notice of
Opposition, claiming that the trademark of respondent’s product is confusingly similar to its
Trademarks for coffee: “MASTER ROAST AND MASTER BLEND”. Nestle Philippines also filed
notice of opposition against the registration Petitioners argued that it would cause confusion in
trade, or deceive purchasers and would falsely suggest to the public a connection between the
two marks.
ISSUE: Is the TM, FLAVOR MASTER, a colorable imitation of the TMs MASTER ROAST and
MASTER BLEND?
RULING:
YES. The TM sought to be registered is likely to cause confusion.
A trademark has been generally defined as any word, name, symbol, or device adopted and
used by a merchant to identify his goods and distinguish them from those sold by others. Such
is entitled to protection
Under the Philippine Trademark Law, the owner of a TM cannot register if it resembles a mark
or trade-name registered in the Philippines or a mark previously used and not abandoned
WHICH IS LIKELY TO CAUSE CONFUSION OR MISTAKE OR TO DECEIVE PURCHASERS.
The law prescribes a stringent standard proscribes registration if it causes confusing similarity,
and if it is likely to cause confusion or mistake or deceive purchasers. Colorable imitation
denotes a close imitation as to be calculated to deceive ordinary persons as to cause him to
purchase the one supposing it to be the other.
In determining colorable imitation there are two tests: Dominancy Test and Holistic Test.
The test of dominancy focuses on the similarity of the prevalent features of the competing
trademarks; the holistic test mandates the entirety of the marks in question must be
considered in determining confusing similarity
The Dominancy test should be applied as it relies not only on the visual but also on the aural
and connotative comparisons and overall impressions between the two TMs.
· The word MASTER is the dominant feature which is neither a generic nor a descriptive
term. As such said term cannot be invalidated as a trademark and therefore, may be protected.
· Generic terms are those which constitute the common descriptive name of an article or
substance and are not legally protectable.
· The term MASTER is a suggestive which require imagination, thought, and perception to
reach a conclusion as to the nature of the goods.
The term MASTER has acquired a certain connotation to mean the coffee products MASTER
ROAST and Master Blend produced by NESTLE. AS SUCH the use of CFC of the term “MASTER” is
likely to cause confusion or mistake.
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SMITH KLINE BECKMAN CORP. v. COURT OF APPEALS
SMITH KLINE BECKMAN CORP. v. COURT OF APPEALS
G.R. NO. 126627
August 14, 2003
CARPIO-MORALES, J
FACTS:
Smith Kline Beckman Corp. (US corporation) filed as assignee, before the Philippine Patent
Office an application for patent over an invention entitled Methods and Compositions for
Producing Biphasic Parasiticide Activity Using Methyl 5 Propylthio-2-Benzimidazole
[Link] Patent for the aforesaid invention was issued to petitioner for a term of 17
years, which provides that the patented invention consisted of a new com ound named methyl
5 propylthio-2benzimidazole carbamate and the methods or compositions utilizing the
compound as an active ingredient in fighting infections caused by gastrointestinal parasites and
lungworms in animals such as swine, sheep, cattle, goats, horses, and even pet animals.
Tryco Pharma Corp. is a domestic corporation that manufactures, distributes and sells
veterinary products, including Impregon, a drug that has Albendazole for its active ingredient
and is claimed to be effective against gastrointestinal roundworms, lungworms, tapeworms and
fluke infestation in carabaos, cattle and goats.
Petitioner sued private respondent for infringement of patent and unfair competition before
the Caloocan City RTC. It claimed that its patent covers or includes the substance Albendazole
such that private respondent, by manufacturing, selling, using, and causing to be sold and used
the drug Impregon without its authorization, committed infringement and unfair competition
under RPC and The Trademark Law for advertising and selling as its own the drug Impregon
although the same contained petitioner’s patented Albendazole.
Private respondent averred that petitioner’s letter patent does not cover the substance
Albendazole for nowhere in it does that word appear.
RTC ruled for the Respondent. CA upheld trial court’s ruling and held that respondent was not
liable for any infringement of the patent of petitioner in light of the latter’s failure to show that
Albendazole is the same as the compound subject of its Letters Patent, considered the U.S.
patent as implying that Albendazole is different from methyl 5 propylthio-2-benzimidazole
carbamate, and likewise found that private respondent was not guilty of deceiving the public by
misrepresenting that Impregon is its product.
ISSUE/S: Whether private respondent committed patent infringement to the prejudice of
petitioner.
RULING: NO. From a reading of the 9 claims of Letters Patent No. 14561 in relation to the other
portions thereof, no mention is made of the compound Albendazole. All that the claims disclose
are: the covered invention, that is, the compound methyl 5 propylthio-2-benzimidazole
carbamate; the compounds being anthelmintic but nontoxic for animals or its ability to destroy
parasites without harming the host animals; and the patented methods, compositions or
preparations involving the compound to maximize its efficacy against certain kinds of parasites
infecting specified animals.
When the language of its claims is clear and distinct, the patentee is bound thereby and may
not claim anything beyond them. And so are the courts bound which may not add to or detract
from the claims matters not expressed or necessarily implied, nor may they enlarge the patent
beyond the scope of that which the inventor claimed and the patent office allowed, even if the
patentee may have been entitled to something more than the words it had chosen would
include. The mere absence of the word Albendazole in Letters Patent No. 14561 is not
determinative of Albendazoles non-inclusion in the claims of the patent. While Albendazole is
admittedly a chemical compound that exists by a name different from that covered in
petitioner’s letters patent, the language of Letter Patent No. 14561 fails to yield anything at all
regarding Albendazole. And no extrinsic evidence had been adduced to prove that Albendazole
inheres in petitioner’s patent in spite of its omission therefrom or that the meaning of the
claims of the patent embraces the same.
While petitioner concedes that the mere literal wordings of its patent cannot establish private
respondent’s infringement, it urges this Court to apply the doctrine of equivalents. The doctrine
of equivalents provides that an infringement also takes place when a device appropriates a
prior invention by incorporating its innovative concept and, although with some modification
and change, performs substantially the same function in substantially the same way to achieve
substantially the same result.
A scrutiny of petitioner’s evidence fails to convince this Court of the substantial sameness of
petitioners patented compound and Albendazole. While both compounds have the effect of
neutralizing parasites in animals, identity of result does not amount to infringement of patent
unless Albendazole operates in substantially the same way or by substantially the same means
as the patented compound, even though it performs the same function and achieves the same
result. In other words, the principle or mode of operation must be the same or substantially the
same.
The doctrine of equivalents thus requires satisfaction of the function-means-and-result test, the
patentee having the burden to show that all three components of such equivalency test are
met. As stated early on, petitioners evidence fails to explain how Albendazole is in every
essential detail identical to methyl 5 propylthio-2-benzimidazole carbamate.
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SEHWANI INCORPORATED vs. IN-N-OUT BURGER, INC.
SEHWANI INCORPORATED vs. IN-N-OUT BURGER, INC.
G.R. No. 171053
October 15, 2007
YNARES-SANTIAGO, J.:
FACTS:
Respondent IN-N-OUT Burger, Inc., a foreign corporation (California, USA), and not doing
business in the Philippines, filed before the Bureau of Legal Affairs of the IPO, an administrative
complaint against petitioners Sehwani, Inc. and Benita’s Frites, Inc. for violation of intellectual
property rights, attorney’s fees and damages with prayer for the issuance of a restraining order
or writ of preliminary injunction.
Respondent, alleges that it is the owner of the tradename “IN-N-OUT” and trademarks “IN-N-
OUT,” “IN-N-OUT Burger & Arrow Design” and “IN-N-OUT Burger Logo” which are used in its
business since 1948 up to the present. These tradename and trademarks were registered in the
United States as well as in other parts of the world. Petitioner Sehwani allegedly had obtained
a trademark registration for the mark “IN N OUT” (with the inside letter O formed like a star)
without its authority.
In their answer with counterclaim, petitioners alleged that respondent lack the legal capacity to
sue because it was not doing business in the Philippines and that it has no cause of action
because its mark is not registered or used in the Philippines. Petitioner Sehwani, Inc. also
claimed that as the registered owner of the "IN-N-OUT" mark, it enjoys the presumption that
the same was validly acquired and that it has the exclusive right to use the mark. Moreover,
petitioners argued that other than the bare allegation of fraud in the registration of the mark,
respondent failed to show the existence of any of the grounds for cancellation thereof under
Section 151 of Republic Act (R.A.) No. 8293, otherwise known as The Intellectual Property Code
of the Philippines.
The Bureau ruled in favor of In-N-Out and cancelled the registration of Shwani.
ISSUE/S:
1. Whether or not the Respondent has the legal capacity to sue for the protection of its
trademarks albeit it is not doing business in the Philippines
2. Whether or not a ground exists for the cancellation of the Petitioners’ registration
RULING:
1. Yes. Section 160 RA No. 8293 provides for the right of foreign corporations to sue in
trademark or service mark enforcement action, provided that it meets the requirements under
Section 3 thereof, which are a) Any convention, treaty or agreement relation to intellectual
property right or the repression of unfair competition wherein Philippines is also a party; and b)
An extension therein of reciprocal rights.
Moreoever, Article 6 of The Paris Convention, which governs the protection of well-known
trademarks, is a self-executing provision and does not require legislative enactment to give it
effect in the member country. The essential requirement therein is that the trademark must be
well-known in the country where protection is sought. In this case, Director Beltran-Abelardo
found that In-n-out Burger and Arrow Design is an internationally well known mark as
evidenced by its trademark registrations around the world and its comprehensive
advertisements therein.
2. Yes. Section 151(b) of RA 8293 provides that a petition to cancel a registration of a mark may
be filed with the Bureau of Legal Affairs by any person who believes that he is or will be
damaged by the registration of a mark at any time, if the registered mark becomes the generic
name for the goods or services, or a portion thereof, for which it is registered, or has been
abandoned, or its registration was fraudulently or contrary to the provisions of this Act, or if the
registered mark is being used by or with the permission of, the registrant so as to misrepresent
the source of goods or services on or in connection with which the mark is used. The evidence
showed that not only did the petitioners use the IN-N-OUT Burger trademark for the name of
their restaurant, but they also used identical or confusingly similar mark for their hamburger
wrappers and French-fries receptacles, thereby effectively misrepresenting the source of the
goods and services.
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SAMSON V. DAWAY AND CATERPILLAR, INC.
SAMSON V. DAWAY AND CATERPILLAR, INC.
G.R. NO. 160054-55
DATE: July 21, 2004
PONENTE: YNARES-SANTIAGO
FACTS: Two informations for unfair competition were filed against Samson, the registered
owner of ITTI shoes. The infomations state that Samson did then and there willfully, unlawfully
and feloniously distribute, sell and/or offer for sale CATERPILLAR products such as footwear,
garments, clothing, bags, accessories and paraphernalia which are closely identical to and/or
colorable imitations of the authentic Caterpillar products and likewise using trademarks,
symbols and/or designs as would cause confusion, mistake or deception on the part of the
buying public to the damage and prejudice of CATERPILLAR, INC., the prior adopter, user and
owner of the following internationally: “CATERPILLAR,” “CAT,” “CATERPILLAR & DESIGN,” “CAT
AND DESIGN,” “WALKING MACHINES” and “TRACK-TYPE TRACTOR & DESIGN.”
Samson filed a motion to suspend the arraignment and other proceedings in view of the
existence of an alleged prejudicial question involving a civil case for unfair competition pending
with the same branch, and also in view of the pendency of a petition for review filed with the
Secretary of Justice assailing the Chief State Prosecutor’s resolution finding probable cause to
charge petitioner with unfair competition.
The TC judge denied the motion and arraignment ensued. Thereafter, Samson filed a motion to
quash the informations contending that since under Section 170 of R.A. No. 8293, the penalty
of imprisonment for unfair competition does not exceed six years, the offense is cognizable by
the Municipal Trial Courts and not by the Regional Trial Court, per R.A. No. 7691. The TC judge
denied the motion. Hence, this petition for certiorari.
ISSUE/S:
1. Which court has jurisdiction over criminal and civil cases for violation of intellectual property
rights?
2. Did the TC judge commit grave abuse of discretion when he refused to suspend the
proceedings on the ground of existence of prejudicial question and a pending petition for
review before the Sec. of Justice on the finding of probable cause for unfair competition?
RULING:
1. RTC. Under Section 170 of R.A. No. 8293, which took effect on January 1, 1998, the criminal
penalty for infringement of registered marks, unfair competition, false designation of origin and
false description or representation, is imprisonment from 2 to 5 years and a fine ranging from
Fifty Thousand Pesos to Two Hundred Thousand Pesos. Corollarily, Section 163 of the same
Code states that actions (including criminal and civil) under Sections 150, 155, 164, 166, 167,
168 and 169 shall be brought before the proper courts with appropriate jurisdiction under
existing laws.
The existing law referred to in the foregoing provision is Section 27 of R.A. No. 166 (The
Trademark Law) which provides that jurisdiction over cases for infringement of registered
marks, unfair competition, false designation of origin and false description or representation, is
lodged with the CFI (now RTC). We find no merit in the claim of Samson that R.A. No. 166 was
expressly repealed by R.A. No. 8293. The use of the phrases “parts of Acts” and “inconsistent
herewith” only means that the repeal pertains only to provisions which are repugnant or not
susceptible of harmonization with R.A. No. 8293.7 Section 27 of R.A. No. 166, however, is
consistent and in harmony with Section 163 of R.A. No. 8293. Had R.A. No. 8293 intended to
vest jurisdiction over violations of intellectual property rights with the Metropolitan Trial
Courts, it would have expressly stated so under Section 163 thereof.
Moreover, the settled rule in statutory construction is that in case of conflict between a general
law and a special law, the latter must prevail. Jurisdiction conferred by a special law to Regional
Trial Courts must prevail over that granted by a general law to Municipal Trial Courts. In the
case at bar, R.A. No. 8293 and R.A. No. 166 are special laws conferring jurisdiction over
violations of intellectual property rights to the Regional Trial Court. They should therefore
prevail over R.A. No. 7691, which is a general law. Hence, jurisdiction over the instant criminal
case for unfair competition is properly lodged with the Regional Trial Court even if the penalty
therefor is imprisonment of less than 6 years, or from 2 to 5 years and a fine ranging from
P50,000.00 to P200,000.00.
In fact, to implement and ensure the speedy disposition of cases involving violations of
intellectual property rights under R.A. No. 8293, the Court issued A.M. No. 02-1-11-SC dated
February 19, 2002 designating certain Regional Trial Courts as Intellectual Property Courts. On
June 17, 2003, the Court further issued a Resolution consolidating jurisdiction to hear and
decide Intellectual Property Code and Securities and Exchange Commission cases in specific
Regional Trial Courts designated as Special Commercial Courts.
2. NO. Samson failed to substantiate his claim that there was a prejudicial question. He made
no discussion in support of said prayer in his petition and reply to comment. Neither did he
attach a copy of the complaint in Civil Case nor quote the pertinent portion thereof to prove
the existence of a prejudicial question. At any rate, there is no prejudicial question if the civil
and the criminal action can, according to law, proceed independently of each other.
In the case at bar, the common element in the acts constituting unfair competition under
Section 168 of R.A. No. 8293 is fraud. Pursuant to Article 33 of the Civil Code, in cases of
defamation, fraud, and physical injuries, a civil action for damages, entirely separate and
distinct from the criminal action, may be brought by the injured party. Hence, Civil Case No. Q-
00-41446, which as admitted by Caterpilar also relate to unfair competition, is an independent
civil action under Article 33 of the Civil Code. As such, it will not operate as a prejudicial
question that will justify the suspension of the criminal cases at bar.
While the pendency of a petition for review is a ground for suspension of the arraignment, the
aforecited provision limits the deferment of the arraignment to a period of 60 days reckoned
from the filing of the petition with the reviewing office. It follows, therefore, that after the
expiration of said period, the trial court is bound to arraign the accused or to deny the motion
to defer arraignment.
In the instant case, Samson failed to establish that respondent Judge abused his discretion in
denying his motion to suspend. His pleadings and annexes submitted before the Court do not
show the date of filing of the petition for review with the Secretary of Justice.15Moreover, the
Order dated August 9, 2002 denying his motion to suspend was not appended to the petition.
He thus failed to discharge the burden of proving that he was entitled to a suspension of his
arraignment and that the questioned orders are contrary to Section 11 (c), Rule 116 of the
Revised Rules on Criminal Procedure. Indeed, the age-old but familiar rule is that he who
alleges must prove his allegations.
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MIGHTY CORP. vs. E&J GALLO
MIGHTY CORP. vs. E&J GALLO
G.R. NO. 154342
July 14, 2004
PONENTE CORONA; J.
FACTS:
On March 12, 1993, E. & J. GALLO WINERY and THE ANDRESONS GROUP, INC (respondents)
sued MIGHTY CORPORATION and LA CAMPANA FABRICA DE TABACO, INC. (petitioners) in the
RTC-Makati for trademark and trade name infringement and unfair competition, with a prayer
for damages and preliminary injunction.
They claimed that petitioners adopted the Gallo trademark to ride on Gallo Winery’s and Gallo
and Ernest & Julio Gallo trademark’s established reputation and popularity, thus causing
confusion, deception and mistake on the part of the purchasing public who had always
associated Gallo and Ernest and Julio & Gallo trademarks with Gallo Winery’s wines.
In their answer, petitioners alleged, among other affirmative defenses that: petitioners Gallo
cigarettes and Gallo Winery’s wine were totally unrelated products. To wit:
1. Gallo Winery’s GALLO trademark registration certificates covered wines only, and not
cigarettes;
2. GALLO cigarettes and GALLO wines were sold through different channels of trade;
3. the target market of Gallo Winery’s wines was the middle or high-income bracket while
Gallo cigarette buyers were farmers, fishermen, laborers and other low-income workers;
4. that the dominant feature of the Gallo cigarette was the rooster device with the
manufacturer’s name clearly indicated as MIGHTY CORPORATION, while in the case of Gallo
Winery’s wines, it was the full names of the founders-owners ERNEST & JULIO GALLO or just
their surname GALLO;
The Makati RTC denied, for lack of merit, respondent’s prayer for the issuance of a writ of
preliminary injunction. CA likewise dismissed respondent’s petition for review on certiorari.
After the trial on the merits, however, the Makati RTC held petitioners liable for committing
trademark infringement and unfair competition with respect to the GALLO trademark.
On appeal, the CA affirmed the Makati RTC’s decision and subsequently denied petitioner’s
motion for reconsideration.
ISSUE/S: Whether GALLO cigarettes and GALLO wines were identical, similar or related goods
for the reason alone that they were purportedly forms of vice.
RULING: NO.
Wines and cigarettes are not identical, similar, competing or related goods.
In resolving whether goods are related, several factors come into play:
· the business (and its location) to which the goods belong
· the class of product to which the good belong
· the product’s quality, quantity, or size, including the nature of the package, wrapper or
container
· the nature and cost of the articles
· the descriptive properties, physical attributes or essential characteristics with reference
to their form, composition, texture or quality
· the purpose of the goods
· whether the article is bought for immediate consumption, that is, day-to-day household
items
· the field of manufacture
· the conditions under which the article is usually purchased and
· the articles of the trade through which the goods flow, how they are distributed,
marketed, displayed and sold.
The test of fraudulent simulation is to the likelihood of the deception of some persons in some
measure acquainted with an established design and desirous of purchasing the commodity with
which that design has been associated. The simulation, in order to be objectionable, must be as
appears likely to mislead the ordinary intelligent buyer who has a need to supply and is familiar
with the article that he seeks to purchase.
The petitioners are not liable for trademark infringement, unfair competition or damages.
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MCDONALD’S CORPORATION VS. L.C. BIG MAK BURGER, INC.
MCDONALD’S CORPORATION VS. L.C. BIG MAK BURGER, INC.
G.R. No. 143993
18 August 2004
PONENTE: CARPIO, J.
FACTS:
Petitioner McDonald’s Corporation is a corporation organized under the laws of Delaware,
United States. McDonald’s operates a global chain of fast-food restaurants. McDonald’s own a
family of marks including the “Big Mac” mark for its double-decker hamburger sandwich.
McDonald’s registered this trademark with the United States Trademark Registry on 16 October
1979. Based on this Home Registration, McDonald’s applied for the registration of the same
mark in the Principal Register of then then Philippine Bureau of Patents, Trademarks and
Technology (PBPTT) – now the Intellectual Property Office (IPO).
Pending approval of its application, McDonald’s introduced its “Big Mac” hamburger
sandwiches in the Philippine market in September 1981. On 18 July 1985, the PBPTT allowed
registration of the “Big Mac” mark in the Philippine Register based on its Home Registration in
the United States. From 1982 to 1990, McDonald’s spent P10.5 million in advertisement for “Big
Mac” hamburger sandwiches alone.
Respondent L.C. Big Mak Burger, Inc. is a domestic corporation which operates fast-food outlets
and snack vans in Metro Manila and nearby provinces. Its menu includes hamburger
sandwiches and other food items.
On 21 October 1988, respondent corporation applied with the PBPTT for the registration of the
“Big Mak” mark for its hamburger sandwiches.
McDonald’s opposed respondent corporation’s application on the ground that “Big Mak” was a
colorable imitation of its registered “Big Mac” mark for the same food products.
ISSUES:
1. Is the respondent guilty of trademark infringement and unfair competition?
2. Is the “Big Mac” mark valid and does McDonald’s have rightful ownership to the same?
RULING:
1. YES.
Trademark Infringement
RA 166 defines trademark infringement as “any person who (1) shall use, without the consent
of the registrant, any reproduction, counterfeit, copy or colorable imitation of any registered
mark or trade-name in connection with the sale, offering for sale, or advertising of any goods,
business or services on or in connection with which use is likely to CAUSE CONFUSION or
otherwise mistake or to deceive purchasers or others as to the source or origin of such goods or
services or identity of such business; or (2) reproduce, counterfeit, copy, or colorably imitate
any such mark or trade-name and apply such reproduction, counterfeit, copy, or colorable
imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to
be used upon or in connection with such goods, business or services.”
Clearly, there is cause for confusion in the case at bar. By using the “Big Mak” mark on the same
goods, i.e. hamburger sandwiches, that petitioners’ “Big Mac” mark is used, they have unjustly
created the impression that its business is approved and sponsored by, or affiliated with
plaintiffs.
Furthermore, using the dominancy test (rather than the holistic test), wherein the dominant
features in the competing marks are considered, Big Mak failed to show that there could be no
confusion. The Court found that respondents’ use of the “Big Mak” mark results in likelihood of
confusion. First, “Big Mak” sounds exactly the same as “Big Mac.” Second, the first word in “Big
Mak” is exactly the same as the first word in “Big Mac.” Third, the first two letters in “Mak” are
the same as the first two letters in “Mac.” Fourth, the last letter in “Mak” while a “k” sounds
the same as “c” when the word “Mak” is pronounced. Fifth, in Filipino, the letter “k” replaces
“c” in spelling, thus “Caloocan” is spelled “Kalookan.” In short, aurally, the two marks are the
same.
Unfair Competition
With regard to unfair competition, RA 166, Section 29 defines the same as any person who will
employ deception or any other means contrary to good faith by which he shall pass off the
goods manufactured by him or in which he deals, or his business, or services for those of the
one having established such goodwill, or who shall commit any acts calculated to produce said
result.
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.
L.C. Big Mak tried to pass off their goods as though it were connected to “Big Mac.” The mark
“B[ig] M[ac]” is used by plaintiff McDonald’s to identify its double decker hamburger sandwich.
The packaging material is a styrofoam box with the McDonald’s logo and trademark in red with
block capital letters printed on it. All letters of the “B[ig] M[ac]” mark are also in red and block
capital letters. On the other hand, defendants’ “B[ig] M[ak]” script print is in orange with only
the letter “B” and “M” being capitalized and the packaging material is plastic wrapper. x x x x
Further, plaintiffs’ logo and mascot are the umbrella “M” and “Ronald McDonald’s,”
respectively, compared to the mascot of defendant Corporation which is a chubby boy called
“Macky” displayed or printed between the words “Big” and “Mak.”(Emphasis supplied)
Respondents point to these dissimilarities as proof that they did not give their hamburgers the
general appearance of petitioners’ “Big Mac” hamburgers.
The dissimilarities in the packaging are minor compared to the stark similarities in the words
that give respondents’ “Big Mak” hamburgers the general appearance of petitioners’ “Big Mac”
hamburgers. Section 29(a) expressly provides that the similarity in the general appearance of
the goods may be in the “devices or words” used on the wrappings. Respondents have applied
on their plastic wrappers and bags almost the same words that petitioners use on their
styrofoam box. What attracts the attention of the buying public are the words “Big Mak” which
are almost the same, aurally and visually, as the words “Big Mac.” The dissimilarities in the
material and other devices are insignificant compared to the glaring similarity in the words used
in the wrappings.
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.
Respondents contend that of the two words in the “Big Mac” mark, it is only the word “Mac”
that is valid because the word “Big” is generic and descriptive (proscribed under Section 4[e]),
and thus “incapable of exclusive appropriation.”
The contention has no merit. The “Big Mac” mark, which should be treated in its entirety and
not dissected word for word,is neither generic nor descriptive.
