CASE STUDY 5: BIG MAK BURGER McDonald’s Corporation (McDonald’s) sued L.C Big Mak Burger, Inc. for trademark infringement and unfair competition by “Big Mak” due to colorable imitation on the signages, wrappers, and containers of its registered :Big Mac” mark for the same food products. Big Mak appealed the case. But the final decision of the court favored McDonald’s There exist some distinctions between the names “B[ig] M[ac]” and “B[ig] M[ak]” as appearing in the respective signages, wrappers and containers of the food products of the parties, The infringement goes beyond the physical features of the questioned name and the original name. There are still other factors to be considered. Applying the dominancy test, the Court finds the respondent’s use of the “Big Mak” mark results in livelihood of confusion. First, “Big Mak” sounds exactly the same as “Big Mac”. Second, the first word “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 two letters in “Mac”. Fourth, the last letter in “Mak” while a “k” sounds the same as “c” when the word “Mac” is pronounced. Fifth, in Filipino, the letter “k” replaces “c” in spelling, thus “Caloocan” is spelled “Kalookan” Furthermore, the respondents’ inability to explain sufficiently how and why they came to choose “Big Mak” for their hamburger sandwiches indicates their intent to imitate petitioners’ “Big Mac” mark. Contrary to the Court of Appeals’ finding, respondents’ claim that their “Big Mak” mark was inspired by the first names of respondent Dy’s mother (Maxima) and father (Kimsoy) is not credible. For one, he could have put his father’s name ahead of his mother’s, as is usually done in the patriarchal society, and derived letters from said names an that order. Or, he could have taken as equal number of letter (e.g., two) from each name, as is the more usual thing done, the more plausible behind respondents’ choice of the word “Mak” Under Section 23, in relation to Section 29 of RA 166, a plaintiff who successfully maintains trademark infringement and unfair competition claims is entitled to injunctive and monetary relief. Here, the RTC’s decision was upheld in issuing the injunction as August 1990 (made permanent in its Decision of 5 September 1994) and in ordering the payment of P400,000 actual damages in favor of petitioners, exemplary damages of P100,000 plus attorney’s fees and litigation expenses. The injunctive writ is indispensible to prevent further acts of infringement by the respondent’s corporation. Also, the amount of actual damages is reasonable percentage (11.9%) of the respondent corporation’s gross sales for three (1988-1991) of the six years (1984-1990) respondents have used the “Big Mak” mark. Case Discussion Questions 1.Why is unfair competition also unethical and not just illegal? 2.Research and comment on R.A. 8293 (IPC) on Registration of Trademarks and Service Marks. Cite some reasons why a mark cannot be registered.
CASE STUDY 5: BIG MAK BURGER
McDonald’s Corporation (McDonald’s) sued L.C Big Mak Burger, Inc. for trademark infringement and unfair competition by “Big Mak” due to colorable imitation on the signages, wrappers, and containers of its registered :Big Mac” mark for the same food products.
Big Mak appealed the case. But the final decision of the court favored McDonald’s
There exist some distinctions between the names “B[ig] M[ac]” and “B[ig] M[ak]” as appearing in the respective signages, wrappers and containers of the food products of the parties, The infringement goes beyond the physical features of the questioned name and the original name. There are still other factors to be considered. Applying the dominancy test, the Court finds the respondent’s use of the “Big Mak” mark results in livelihood of confusion. First, “Big Mak” sounds exactly the same as “Big Mac”. Second, the first word “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 two letters in “Mac”. Fourth, the last letter in “Mak” while a “k” sounds the same as “c” when the word “Mac” is pronounced. Fifth, in Filipino, the letter “k” replaces “c” in spelling, thus “Caloocan” is spelled “Kalookan”
Furthermore, the respondents’ inability to explain sufficiently how and why they came to choose “Big Mak” for their hamburger sandwiches indicates their intent to imitate petitioners’ “Big Mac” mark. Contrary to the Court of Appeals’ finding, respondents’ claim that their “Big Mak” mark was inspired by the first names of respondent Dy’s mother (Maxima) and father (Kimsoy) is not credible. For one, he could have put his father’s name ahead of his mother’s, as is usually done in the patriarchal society, and derived letters from said names an that order. Or, he could have taken as equal number of letter (e.g., two) from each name, as is the more usual thing done, the more plausible behind respondents’ choice of the word “Mak”
Under Section 23, in relation to Section 29 of RA 166, a plaintiff who successfully maintains trademark infringement and unfair competition claims is entitled to injunctive and monetary relief. Here, the RTC’s decision was upheld in issuing the injunction as August 1990 (made permanent in its Decision of 5 September 1994) and in ordering the payment of P400,000 actual damages in favor of petitioners, exemplary damages of P100,000 plus attorney’s fees and litigation expenses. The injunctive writ is indispensible to prevent further acts of infringement by the respondent’s corporation. Also, the amount of actual damages is reasonable percentage (11.9%) of the respondent corporation’s gross sales for three (1988-1991) of the six years (1984-1990) respondents have used the “Big Mak” mark.
Case Discussion Questions
1.Why is unfair competition also unethical and not just illegal?
2.Research and comment on R.A. 8293 (IPC) on Registration of Trademarks and Service Marks. Cite some reasons why a mark cannot be registered.
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