G.R. No.

166115 February 2, 2007

McDONALD’S CORPORATION, Petitioner,
vs.
MACJOY FASTFOOD CORPORATION, Respondent

Facts:
MacJoy Devices had been operating in Cebu since 1987. MacJoy , a fast food restaurant
sells fried chicken, chicken barbeque, burgers, fries, spaghetti, palabok, tacos, sandwiches,
halo-halo and steaks. In 1991, MacJoy filed its application for trademark before the Intellectual
Property Office (IPO). McDonald’s opposed the application as it alleged that MacJoy closely
resembles McDonald’s corporate logo such that when used on identical or related goods, the
trademark applied for would confuse or deceive purchasers into believing that the goods
originate from the same source or origin that the use and adoption in bad faith of the “MacJoy
and Device” mark would falsely tend to suggest a connection or affiliation with McDonald’s
restaurant services and food products, thus, deceiving the general public to the detriment of
Mcdonalds.
IPO ruled in favor of McDonald’s. MacJoy appealed before the Court of Appeals and the
latter ruled in favor of MacJoy. The Court of Appeals, used the holistic test (which is a test
commonly used in infringement cases). The holistic test looks upon the visual comparisons
between the two trademarks. In this case, the Court of Appeals ruled that other than the letters
“M” and “C” in the words MacJoy and McDonald’s, there are no real similarities between the
two trademarks. “MacJoy” is written in round script while “McDonald’s” is written in thin
gothic. “MacJoy” is accompanied by a picture of a (cartoonish) chicken while “McDonald’s” is
accompanied by the arches “M”. The color schemes between the two are also different.
“MacJoy” is in deep pink while “McDonald’s” is in gold color.

Issue:
Whether or not MacJoy infringed upon the trademark of McDonald’s.

Held:
Yes. The Supreme Court ruled that the proper test to be used is the dominancy test. The
dominancy test not only looks at the visual comparisons between two trademarks but also the
aural impressions created by the marks in the public mind as well as connotative comparisons,
giving little weight to factors like prices, quality, sales outlets and market segments. In the case
at bar, the Supreme Court ruled that “McDonald’s” and “MacJoy” marks are confusingly
similar with each other such that an ordinary purchaser can conclude an association or relation
between the marks. To begin with, both marks use the corporate “M” design logo and the
prefixes “Mc” and/or “Mac” as dominant features. The first letter “M” in both marks puts
emphasis on the prefixes “Mc” and/or “Mac” by the similar way in which they are depicted i.e.
in an arch-like, capitalized and stylized manner. For sure, it is the prefix “Mc,” an abbreviation
of “Mac,” which visually and aurally catches the attention of the consuming public. Verily, the
word “MACJOY” attracts attention the same way as did “McDonalds,” “MacFries,”
“McSpaghetti,” “McDo,” “Big Mac” and the rest of the MCDONALD’S marks which all use
the prefixes Mc and/or Mac. Besides and most importantly, both trademarks are used in the sale
of fastfood products.
Further, the owner of MacJoy provided little explanation why in all the available names
for a restaurant he chose the prefix “Mac” to be the dominant feature of the trademark. The
prefix “Mac” and “Macjoy” has no relation or similarity whatsoever 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. By reason of the MacJoy’s implausible and insufficient explanation as to
how and why out of the many choices of words it could have used for its trade-name and or
trademark, it chose the word “Macjoy,” the only logical conclusion deducible therefrom is that
the MacJoy would want to ride high on the established reputation and goodwill of the
McDonald’s marks, which, as applied to its restaurant business and food products, is
undoubtedly beyond question.