8. McDonald’s Corporation vs. L.C. Big Mak Burger, Inc., G.R. No. 143993.

August
18, 2004

Facts:

Petitioner McDonald's Corporation (McDonalds), a U.S. corporation is a global

chain of fast-food restaurants It owns the "Big Mac" mark for its "double-decker
hamburger sandwich” and which is registered with the US Trademark Registry. Based
on this Home Registration, it applied for the registration of the same mark in the
Principal Register of the then Philippine Bureau of Patents, Trademarks and
Technology (PBPTT). In 1985, PBPTT allowed registration of the "BigMac."

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.

In 1988, Respondent applied with the PBPTT for the registration of the "Big Mak"
mark for its hamburger sandwiches. McDonald’s opposed respondent application on the
ground that “Big Mak” was a colorable imitation of its registered “Big Mac” mark for the
same food products. 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, for trademark infringement and unfair competition.
Respondents admitted that they have been using the name “Big Mak Burger” for
their fast-food business. However, they claimed that McDonald’s does not have an
exclusive right to the “Big Mac” mark or to any other similar mark. Moreover they have
registration of the mark in the Supplemental Register with BPTT ahead of petitioner.
RTC rendered a Decision finding respondent corporation liable for trademark
infringement and unfair competition. CA reversed RTC's decision. Hence this appeal.
Issue:
Whether or not the “Big Mac” mark is a valid mark and McDonald’s has the right
for ownership.
Held:
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 4e), 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. “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.
The Court also finds that petitioners have duly established McDonald’s exclusive
ownership of the “Big Mac” mark. Although Topacio and the Isaiyas Group registered
the “Big Mac” mark ahead of McDonald’s, Topacio, as petitioners disclosed, had already
assigned his rights to McDonald’s. The Isaiyas Group, on the other hand, registered its
trademark only in the Supplemental Register. A mark which is not registered in the
Principal Register, and thus not distinctive, has no real protection. Indeed, we have held
that registration in the Supplemental Register is not even a prima facie evidence of the
validity of the registrant’s exclusive right to use the mark on the goods specified in the
certificate.