FREDCO MANUFACTURING CORPORATION v.

PRESIDENT AND FELLOWS OF

HARVARD COLLEGE
G.R. NO. 185917

FACTS:

Fredco Manufacturing filed a petition to cancel the registration of respondents mark

Harvard Veritas Shield Symbol used in products such as bags and T-shirts. Fredco
alleged that the mark Harvard was first used and registered by New York Garments, a
domestic corporation and its predecessor-in-interest, used in its clothing articles.
Harvard University on the other hand, alleged that it is the lawful owner of the name and
mark in numerous countries worldwide including the Philippines which was used in
commerce as early as 1872. Harvard further contend that it never authorized any
person to use its name or mark in connection with any goods in the Philippines. The
IPO Bureau of Legal Affairs cancelled respondents registration of the mark but only
with regard to the goods which were confusingly similar with that of the petitioner. The
IPO reversed the decision. CA affirmed.

ISSUE: WON respondents trade name is infringed?

HELD: YES.

Fredcos use of the mark Harvard, coupled with its claimed origin in Cambridge,
Massachusetts, obviously suggests a false connection with Harvard University. On this
ground alone, Fredcos registration of the mark Harvard should have been disallowed.
Indisputably, Fredco does not have any affiliation or connection with Harvard University,
or even with Cambridge, Massachusetts. Fredco or its predecessor New York Garments
was not established in 1936, or in the U.S.A. as indicated by Fredco in its oblong logo.

Under Philippine law, a trade name of a national of a State that is a party to the Paris
Convention, whether or not the trade name forms part of a trademark, is protected
without the obligation of filing or registration. Harvard is the trade name of the world
famous Harvard University, and it is also a trademark of Harvard University. Under
Article 8 of the Paris Convention, as well as Section 37 of R.A. No. 166, Harvard
University is entitled to protection in the Philippines of its trade name Harvard even
without registration of such trade name in the Philippines. This means that no
educational entity in the Philippines can use the trade name Harvard without the
consent of Harvard University. Likewise, no entity in the Philippines can claim, expressly
or impliedly through the use of the name and mark Harvard, that its products or
services are authorized, approved, or licensed by, or sourced from, Harvard University
without the latters consent.
 ANA ANG v TORIBIO TEODORO
G.R. No. L-48226

FACTS:

Toribio Teodoro has continuously used "Ang Tibay," both as a trade-mark and as a
trade-name, in the manufacture and sale of slippers, shoes, and indoor baseballs since
1910. On September 29, 1915, he formally registered it as trade-mark and as trade-
name on January 3, 1933.

Petitioner Ana Ang registered the same trade-mark "Ang Tibay" for pants and shirts on
April 11, 1932, and established a factory for the manufacture of said articles in the year
1937.

The Court of First Instance of Manila absolved the defendant (Ms. Ang) on the grounds
that the two trademarks are dissimilar and are used on different and non-competing
goods; that there had been no exclusive use of the trade-mark by the plaintiff; and that
there had been no fraud in the use of the said trade-mark by the defendant because the
goods on which it is used are essentially different from those of the plaintiff.

The Court of Appeals reversed said judgment, directing the Director of Commerce to
cancel the registration of the trade-mark "Ang Tibay" in favor of petitioner, and
perpetually enjoining the latter from using said trade-mark on goods manufactured and
sold by her.

ISSUE: Are the two trademarks used similar or do they belong to the same class of
merchandise?

HELD:

Yes, pants and shirts are goods closely similar to shoes and slippers. They belong to
the same class of merchandise as shoes and slippers. They are closely related goods.

The Supreme Court affirmed the judgment of the Court of Appeals and added that
although two non-competing articles may be classified under to different classes by the
Patent Office because they are deemed not to possess the same descriptive properties,
they would, nevertheless, be held by the courts to belong to the same class if the
simultaneous use on them of identical or closely similar trademarks would be likely to
cause confusion as to the origin, or personal source, of the second users goods. They
would be considered as not falling under the same class only if they are so dissimilar or
so foreign to each other as to make it unlikely that the purchaser would think that the
first user made the second users goods.

MCDONALD'S CORPORATION v. L.C. BIG MAK BURGER, INC.

G.R. No. 143993

FACTS:

McDonald's Corporation ("McDonald's") is a US corporation that operates a global chain

of fast-food restaurants, with McGeorge Food Industries ("McGeorge"), as the Philippine
franchisee.

McDonald's owns the "Big Mac" mark for its "double-decker hamburger sandwich." with
the US 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 the then Philippine Bureau of Patents, Trademarks and
Technology ("PBPTT") (now IPO). On 18 July 1985, the PBPTT allowed registration of
the "Big Mac."

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. Respondent
corporation's 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, which was opposed by
McDonald's. McDonald's also informed LC Big Mak chairman of its exclusive right to the
"Big Mac" mark and requested him to desist from using the "Big Mac" mark or any
similar mark.

Having received no reply, petitioners sued L.C. Big Mak Burger, Inc. and its directors
before Makati RTC Branch 137 ("RTC"), for trademark infringement and unfair
competition.

RTC rendered a Decision finding respondent corporation liable for trademark

infringement and unfair competition. CA reversed RTC's decision on appeal.

ISSUES:
1.) WON respondent corporation is liable for trademark infringement and unfair
competition.
2.) WON Respondents committed Unfair Competition

HELD 1: 1: Yes
Section 22 of Republic Act No. 166, as amended, defines trademark infringement as
follows:

Infringement, what constitutes. - 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 such use is likely to cause
confusion or 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, shall be liable to a civil action by the registrant for any or
all of the remedies herein provided.
To establish trademark infringement, the following elements must be shown: (1) the
validity of plaintiff's mark; (2) the plaintiff's ownership of the mark; and (3) the use of the
mark or its colorable imitation by the alleged infringer results in "likelihood of confusion."
Of these, it is the element of likelihood of confusion that is the gravamen of trademark
infringement.

1st element:

A mark is valid if it is distinctive and not merely generic and descriptive.

The "Big Mac" mark, which should be treated in its entirety and not dissected word for
word, is neither generic nor descriptive. Generic marks are commonly used as the name
or description of a kind of goods, such as "Lite" for beer. Descriptive marks, on the other
hand, convey the characteristics, functions, qualities or ingredients of a product to one
who has never seen it or does not know it exists, such as "Arthriticare" for arthritis
medication. On the contrary, "Big Mac" falls under the class of fanciful or arbitrary marks
as it bears no logical relation to the actual characteristics of the product it represents. As
such, it is highly distinctive and thus valid.

2nd element:

Petitioners have duly established McDonald's exclusive ownership of the "Big Mac"
mark. Prior valid registrants of the said mark had already assigned his rights to
McDonald's.

3rd element:

Section 22 covers two types of confusion arising from the use of similar or colorable
imitation marks, namely, confusion of goods (confusion in which the ordinarily prudent
purchaser would be induced to purchase one product in the belief that he was
purchasing the other) and confusion of business (though the goods of the parties are
different, the defendant's product is such as might reasonably be assumed to originate
with the plaintiff, and the public would then be deceived either into that belief or into the
belief that there is some connection between the plaintiff and defendant which, in fact,
does not exist).

There is confusion of goods in this case since respondents used the "Big Mak" mark on
the same goods, i.e. hamburger sandwiches, that petitioners' "Big Mac" mark is used.

There is also confusion of business due to Respondents' use of the "Big Mak" mark in
the sale of hamburgers, the same business that petitioners are engaged in, also results
in confusion of business. The registered trademark owner may use his mark on the
same or similar products, in different segments of the market, and at different price
levels depending on variations of the products for specific segments of the market. The
registered trademark owner enjoys protection in product and market areas that are the
normal potential expansion of his business.

Furthermore, In determining likelihood of confusion, the SC has relied on the dominancy

test (similarity of the prevalent features of the competing trademarks that might cause
confusion) over the holistic test (consideration of the entirety of the marks as applied to
the products, including the labels and packaging).

Applying the dominancy test, Respondents' use of the "Big Mak" mark results in
likelihood of confusion. Aurally the two marks are the same, with the first word of both
marks phonetically the same, and the second word of both marks also phonetically the
same. Visually, the two marks have both two words and six letters, with the first word of
both marks having the same letters and the second word having the same first two
letters.

Lastly, since Section 22 only requires the less stringent standard of "likelihood of
confusion," Petitioners' failure to present proof of actual confusion does not negate their
claim of trademark infringement.

Ruling: Yes.
Section 29 ("Section 29")73 of RA 166 defines unfair competition, thus:

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, shall be guilty of unfair competition,
and shall be subject to an action therefor.
The essential elements of an action for unfair competition are (1) confusing similarity in
the general appearance of the goods, and (2) intent to deceive the public and defraud a
competitor.

In the case at bar, Respondents have applied on their plastic wrappers and bags almost
the same words that petitioners use on their styrofoam box. Further, Respondents'
goods are hamburgers which are also the goods of petitioners. Moreover, there is
actually no notice to the public that the "Big Mak" hamburgers are products of "L.C. Big
Mak Burger, Inc." This clearly shows respondents' intent to deceive the public.

McDONALDS CORPORATION v. MACJOY

FASTFOOD CORPORATION. G.R. No. 166115.
February 2, 2007
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 petitioners registered and internationally recognized
MCDONALDS marks to its prejudice and irreparable damage.

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.

The IPO held that there is confusing similarity The CA held otherwise
stating there are
predominant difference like the spelling, the font and color of the
trademark and the picture of the logo.

ISSUE: Whether the ruling of the CA is correct.

RULING:

No. Jurisprudence developed two tests, the dominancy and holistic test. The
dominancy test focuses on the similarity of the prevalent features of the
competing trademarks that might cause confusion or deception while the
holistic test requires the court to consider the entirety of the marks as
applied to the products, including the labels and packaging, in determining
confusing similarity. Under the latter test, a comparison of the words is not
the only determinant factor.
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.

Applying the dominancy test to the instant case, the Court 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. Most importantly, both trademarks are
used in the sale of fastfood products.

Petitioner has the right of ownership in the said marks. Petitioner's mark
was registered in 1977 while respondent only in 1991.