IP News

Supreme Court Decides "Big Mak" Controversy
September 20, 2007

The Supreme Court has settled the issue on whether the use of "Big Mak" on hamburgers by a domestic corporation operating fast food outlets and snack vans constitutes trademark infringement and unfair competition in relation to McDonald's "Big Mac" trademark. 

In a decision dated 18 August 2004 written by Justice Antonio Carpio for the First Division, the Court ruled that L.C. Big Mak Burger, Inc. is indeed liable for trademark infringement and unfair competition. Actual damages, exemplary damages, attorney's fees and costs of the suit were awarded to the plaintiffs McDonald's Corporation and McGeorge Food Industries, Inc.

To establish trademark infringement under the old trademark law (R.A. No. 166) the Court ruled that the following elements must be shown: 1) the validity of the 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 a likelihood of confusion.

Citing Section 22 of the trademark law, the Court discussed that there are 2 types of confusion that arise from the use of similar marks: product confusion (as to the goods themselves) and source/origin confusion (as to the identity of businesses). The defendants admittedly used "Big Mak" on its hamburgers plus the fact that it is engaged in the same line of business (fast food), the Court concluded that confusion as to competing goods and as to identity of source would likely result. 

The Court rejected the defendants' arguments that they used "Big Mak" on other food products like siopao, pizza, and noodles; that the packaging of their hamburgers are different; and that they sell their food through mobile vans as compared to the popular McDonald's chain stores which are normally in airconditioned buildings with drive thru service.

The "dominancy test" where the dominant features of the competing marks are considered was used by the Court to determine likelihood of confusion. It found the two marks to be confusingly similar in that: 1) "Big Mak" and "Big Mac" sound exactly same; 2) the first words are exactly the same; 3) the first 2 letters in "Mak" are the same as the first 2 letters in "Mac"; 4) the "k" in "Mak" sounds the same as "c" and 5) In Filipino, the letter "k" replaces "c" in spelling, e.g. "Caloocan" is spelled "Kalookan." The court significantly rejected the "holistic test" as it firmly established its preference for the "dominancy test."

In finding that there was indeed unfair competition, the Court rejected the defendants' arguments that there were numerous differences in the packaging of their hamburgers. Those differences were "minor" compared to the "stark similarities" in the words used. "What attracts the attention of the buying public," said the court, "are the words "Big Mak" which are the same, aurally and visually, as the words "Big Mac." The dissimilarities in the material and other devices are insignificant compared to the glaring similarity in the words used in the wrappings." 

The Court also pointed out that during the injunctive hearings, plastic wrappers and bags with the "Big Mak" mark without the name "L.C. Big Mak Burger, Inc." were presented by the plaintiff; thus there was no actual notice to the public that the defendants' "Big Mak" hamburgers are actually made by them, and their intent to deceive the public was thus shown.

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