McDonalds Corp v MacJoy Fastfood Corp., G.R. No.

166115, February 2, 2007

Facts:
McDonalds Corporation the owner of the trademark McDonalds and its wellknown Golden Arches logo, shaped like the letter M, is a fast food corporation
established in the US with stores in the Philippines. McDonalds products
include MacFries, McSpaghetti, Big Mac and McChicken. MacJoy is a Cebua
based corporation who owns the fast food chain MACJOY & DEVICE.
MacJoys logo is an artistic representation of the letter M which is similar to
the Golden Arches of McDonalds. MacJoy wants to register its mark in the
Intellectual Property Office. McDonalds opposed the registration because
MacJoys logo resembles to its logo.
Issue: Whether or Not MacJoy can register its logo?
Ruling:
No, because the logo of MacJoy is confusingly similar to McDonalds mark.
Using the dominancy test, both logos are confusingly similar that an ordinary
purchaser can conclude that the two logos are related or associated. Both
marks use a dominant M that are similar, MacJoy made a few alteration but
the substance and the essence of its logo is still closely similar to
McDonalds. MacJoys use of the word Mac also attracts customers or
people that are familiar the word Mac because of McDonalds brand and
products. In Addition, both establishments are engage in the same business
and if these two have confusingly similar marks it may lead to confuse an
ordinary purchaser the difference of the two brands. The dominant use of
M and the prefix Mc/Mac will result a confusing similarities of both brands
especially that the two corporation are both engaged in the same business.

Fruit of the Loom, Inc. v. Court of Appeals and General Garments Corporation,
G.R. No. L-32747, November 29, 1984
Facts:
Fruit of the Loom is a US brand which is registered in the Philippine Bureau of
Patent is engaged in selling mens and ladies garments and under garments.
Fruit for eve is a local brand duly registered in the Bureau of Patent, Fruit for
eves products are garments and under garments for ladies. Fruit of the
Loom filed for an action for cancellation of Fruit for eves registered trade

name and for damages because of trademark infringement and unfair

competition because Fruit for eves logo is confusingly similar with its logo
and trademark. The source of infringement is the use of the word FRUIT by
Fruit for eve which is confusingly similar to Fruit of the Loom.
Issue:
Whether or not FRUIT FOR EVE AND FRUIT OF THE LOOM confusingly similar?
Ruling:
No because the word FRUIT alone is not enough basis to show that there is
dominant similarity between the marks which will confuse buyers. There is
no similarity if there are substantial differences between the marks even
there are few similarities. In this case, both brands both uses the word
FRUIT but comparing each logo as a whole, essential differences will be
seen. Fruit of the Loom hang tang is round with a base of a rolled paper while
Fruit for Eve hang tang is a simple rectangle. Second, Fruit of the Looms
trademark is written in a semi-circle while Fruit for Eve is in a straight line.
Fruit of the Loom has a light red apple and grapes in their logo but Fruit for
Eve contains a dark red apple only. There is also difference in the hang tags;
Fruit of the Loom is brown while Fruit for Eve is pink and white. There are no
similarities if there are substantial differences; the consumers are intelligent
to know these substantial differences.
Dermaline, Inc. v. Myra Pharmaceuticals, Inc., G.R. No. 190065, August 16,
2010
Facts:
Dermaline, Inc. filed an application to register its trademark DERMALINE
DERMALINE Inc in the Intellectual Property Office. Myra Pharmaceuticals, has
a registered trademark DERMALIN, filed an opposition because DERMALINE
and DERMALIN are confusingly similar. Myra claims that the similarities will
bring confusion which the consumers will associate DERMALINE to their
products.
Issue: Whether or not DERMALINE can be registered as trademark.
Ruling:
No because DERMALINE and DERMALIN are aurally similar which DERMALINE
will benefit from Myras reputation, goodwill and advertising and will lead the
public into believing that DERMALINE is, in any way, connected to Myra.

Using the dominancy test both marks are almost spelled in the same way,
except for Dermalines mark which ends with the letter "E," and they are
pronounced practically in the same manner in three (3) syllables, with the
ending letter "E" in Dermalines mark pronounced silently. Thus, when an
ordinary purchaser, for example, hears an advertisement of Dermalines
applied trademark over the radio, chances are he will associate it with Myras
registered mark.
Myra as a registered trademark owner, it has the right to prevent third
parties from using a trademark, or similar signs or containers for goods or
services, without its consent, identical or similar to its registered trademark,
where such use would result in a likelihood of confusion.
Juno Batistis v People of the Philippines, G.R. No. 181571, December 16,
2009
Facts:
Batistis is selling counterfeit liquors such as Johnny Walker, Carlos I and
Fundador. Allied Domecq Philippines, Inc., a Philippine corporation exclusively
distributing Fundador in the Philippines filed a complaint against Batistis for
counterfeiting and sale of counterfeit Fundador. With the power of a search
warrant, NBI agents raided the property of Batistis where they seized
counterfeit Fundador and other paraphernalia.
Issue: Whether or not Batistis is liable.
Ruling:
Yes because Batistis made effort in making the counterfeit products genuine,
from the product up to its packaging. Batistis exerted the effort to make the
counterfeit products look genuine to deceive the unwary public into
regarding the products as genuine. The consumers will be easily deceived by
the counterfeit products because the appearance closely resemble to the
genuine product. Batistis may not exactly copy the complex anti counterfeit
protection of Domecq but consumer will have difficulty of detecting whether
the products were fake or real if the buyers had no experience and the tools
for detection, like black light. He thereby infringed the registered Fundador
trademark by the colorable imitation of it through applying the dominant
features of the trademark on the fake products.