FIRST DIVISION
|
McDONALD’S CORPORATION, Petitioner, -
versus - MACJOY FASTFOOD CORPORATION,
Respondent. |
|
G.R. No. 166115 Present: PUNO, C.J., Chairperson, SANDOVAL-GUTIERREZ,
AZCUNA,
GARCIA, JJ. Promulgated: February
2, 2007 |
x----------------------------------------------------------------------------------------x
D E C I S I O N
GARCIA, J.:
In this petition for review on
certiorari under Rule 45 of the Rules of Court, herein petitioner McDonald’s
Corporation seeks the reversal and setting aside of the following issuances of
the Court of Appeals (CA) in CA-G.R. SP
No. 57247, to wit:
1.
Decision dated 29 July 2004[1]
reversing an earlier decision of the Intellectual Property Office (IPO) which rejected herein respondent MacJoy FastFood Corporation’s
application for registration of the trademark “MACJOY & DEVICE”; and
2. Resolution dated
As
culled from the record, the facts are as follows:
On
14 March 1991, respondent MacJoy Fastfood Corporation, a domestic corporation
engaged in the sale of fast food products in Cebu City, filed with the then Bureau
of Patents, Trademarks and Technology Transfer (BPTT), now the Intellectual Property
Office (IPO), an application, thereat identified as
Application Serial No. 75274, for the registration of the trademark “MACJOY
& DEVICE” for fried
chicken, chicken barbeque, burgers, fries, spaghetti, palabok, tacos,
sandwiches, halo-halo and steaks under classes 29 and 30 of the International
Classification of Goods.
Petitioner
McDonald’s Corporation, a corporation duly organized and existing under the
laws of the State of Delaware, USA, filed a verified Notice of Opposition[3] against the respondent’s application claiming
that the trademark “MACJOY & DEVICE”
so resembles its corporate logo, otherwise known as the Golden Arches or “M”
design, and its marks “McDonalds,” McChicken,” “MacFries,” “BigMac,” “McDo,”
“McSpaghetti,” “McSnack,” and “Mc,” (hereinafter collectively known as the
MCDONALD’S marks) 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. Likewise, the petitioner alleged
that the respondent’s use and adoption in bad faith of the “MACJOY &
DEVICE” mark would falsely tend to suggest a connection or affiliation with petitioner’s
restaurant services and food products, thus, constituting a fraud upon the
general public and further cause the dilution of the distinctiveness of petitioner’s
registered and internationally recognized MCDONALD’S marks to its prejudice and
irreparable damage. The application and the opposition thereto was docketed as Inter Partes Case No. 3861.
Respondent
denied the aforementioned allegations of the petitioner and averred that it has
used the mark “MACJOY” for the past many years in good faith and has spent
considerable sums of money for said mark’s extensive promotion in tri-media,
especially in Cebu City where it has been doing business long before the petitioner
opened its outlet thereat sometime in
1992; and that its use of said mark would not confuse affiliation with the petitioner’s
restaurant services and food products because of the differences in the design
and detail of the two (2) marks.
In
a decision[4] dated December 28, 1998, the
IPO, ratiocinating that the predominance of the letter “M,” and the prefixes
“Mac/Mc” in both the “MACJOY” and the “MCDONALDS” marks lead to the conclusion
that there is confusing similarity between them especially since both are used
on almost the same products falling under classes 29 and 30 of the
International Classification of Goods, i.e.,
food and ingredients of food, sustained the petitioner’s opposition and
rejected the respondent’s application,
viz:
WHEREFORE, the Opposition to the registration of the mark
MACJOY & DEVICE for use in fried
chicken and chicken barbecue, burgers, fries, spaghetti, palabok, tacos,
sandwiches, halo-halo, and steaks is, as it is hereby, SUSTAINED. Accordingly,
Application Serial No. 75274 of the herein Respondent-Applicant is REJECTED.
Let the filewrapper of
MACJOY subject matter of this case be sent to the Administrative, Financial and
Human Resources Development Bureau for appropriate action in accordance with
this Decision, with a copy to be furnished the Bureau of Trademarks for
information and to update its record.
SO
ORDERED.
In
time, the respondent moved for a reconsideration but the IPO denied the motion in
its Order[5]
of
Therefrom, the
respondent went to the CA via a Petition for Review with prayer for
Preliminary Injunction[6]
under Rule 43 of the Rules of Court, whereat its appellate recourse was
docketed as CA-G.R. SP No. 57247.
Finding no
confusing similarity between the marks “MACJOY” and “MCDONALD’S,” the CA, in
its herein assailed Decision[7]
dated July 29, 2004, reversed and set aside the appealed IPO decision and order,
thus:
WHEREFORE, in view of the foregoing,
judgment is hereby rendered by us REVERSING and SETTING ASIDE the Decision of
the IPO dated 28 December 1998 and its Order dated 14 January 2000 and ORDERING
the IPO to give due course to petitioner’s Application Serial No. 75274.
SO ORDERED.
Explains
the CA in its decision:
xxx, it is clear that
the IPO brushed aside and rendered useless the glaring and drastic differences
and variations in style of the two trademarks and even decreed that these
pronounced differences are “miniscule” and considered them to have been
“overshadowed by the appearance of the predominant features” such as “M,” “Mc,”
and “Mac” appearing in both MCDONALD’S and MACJOY marks. Instead of taking into account these
differences, the IPO unreasonably shrugged off these differences in the device,
letters and marks in the trademark sought to be registered. The IPO brushed aside and ignored the
following irrefutable facts and circumstances showing differences between the
marks of MACJOY and MCDONALD’S. They
are, as averred by the petitioner [now respondent]:
1. The word “MacJoy” is written in round
script while the word “McDonald’s” is written in single stroke gothic;
2. The word “MacJoy” comes with the
picture of a chicken head with cap and bowtie and wings sprouting on both
sides, while the word “McDonald’s” comes with an arches “M” in gold colors, and
absolutely without any picture of a chicken;
3. The word “MacJoy” is set in deep pink
and white color scheme while “McDonald’s” is written in red, yellow and black
color combination;
4. The façade of the respective stores of
the parties are entirely different.
Exhibits 1 and 1-A, show that [respondent’s] restaurant is set also in
the same bold, brilliant and noticeable color scheme as that of its wrappers,
containers, cups, etc., while [petitioner’s] restaurant is in yellow and red
colors, and with the mascot of “Ronald McDonald” being prominently displayed
therein.” (Words in brackets supplied.)
Petitioner promptly filed a motion for reconsideration. However, in its similarly challenged Resolution[8] of
Whether a mark or label
of a competitor resembles another is to be determined by an inspection of the
points of difference and resemblance as a whole, and not merely the points of
resemblance. The articles and trademarks
employed and used by the [respondent] Macjoy Fastfood Corporation are so different and distinct as to preclude any probability or likelihood
of confusion or deception on the part of the public to the injury of the trade
or business of the [petitioner] McDonald’s Corporation. The “Macjoy & Device” mark is dissimilar
in color, design, spelling, size, concept and appearance to the McDonald’s
marks. (Words in brackets supplied.)
Hence, the petitioner’s present recourse on the
following grounds:
I.
THE
COURT OF APPEALS ERRED IN RULING THAT RESPONDENT’S “MACJOY & DEVICE” MARK
IS NOT CONFUSINGLY SIMILAR TO PETITIONER’S “McDONALD’S MARKS.” IT FAILED TO CORRECTLY APPLY THE DOMINANCY
TEST WHICH HAS BEEN CONSISTENTLY APPLIED BY THIS HONORABLE COURT IN DETERMINING
THE EXISTENCE OF CONFUSING SIMILARITY BETWEEN COMPETING MARKS.
A. The McDonald’s Marks belong to a
well-known and established “family of marks” distinguished by the use of the
prefix “Mc” and/or “Mac” and the corporate “M” logo design.
B. The prefix “Mc” and/or “Mac” is the
dominant portion of both Petitioner’s McDonald’s Marks and the Respondent’s
“Macjoy & Device” mark. As such, the
marks are confusingly similar under the Dominancy Test.
C. Petitioner’s McDonald’s Marks are
well-known and world-famous marks which must be protected under the Paris
Convention.
II.
THE COURT OF APPEALS
ERRED IN RULING THAT THE DECISION OF THE IPO DATED
In its Comment,[9] the
respondent asserts that the petition should be dismissed outright for being
procedurally defective: first, because the person who signed the certification
against forum shopping in behalf of the petitioner was not specifically
authorized to do so, and second, because the petition does not present a
reviewable issue as what it challenges are the factual findings of the CA. In any event, the respondent insists that the
CA committed no reversible error in finding no confusing similarity between the
trademarks in question.
The petition is impressed with merit.
Contrary to respondent’s claim, the petitioner’s
Managing Counsel, Sheila Lehr, was specifically authorized to sign on behalf of
the petitioner the
Verification and Certification[10]
attached to the petition. As can be gleaned from the petitioner’s Board of
Director’s Resolution dated December 5, 2002,
as embodied in the Certificate of the Assistant Secretary dated December 21, 2004,[11]
Sheila Lehr was one of those authorized and empowered “to execute and deliver for and on behalf of [the petitioner] all
documents as may be required in connection with x x
x the protection and maintenance
of any foreign patents, trademarks, trade-names, and copyrights owned now or hereafter
by [the petitioner], including, but not limited to, x x
x documents required to institute
opposition or cancellation proceedings against conflicting trademarks, and to
do such other acts and things and to execute such other documents as may be
necessary and appropriate to effect and carry out the intent of this
resolution.” Indeed, the
afore-stated authority given to Lehr necessarily includes the authority to
execute and sign the mandatorily required certification of non-forum shopping
to support the instant petition for review which stemmed from the “opposition proceedings” lodged by the
petitioner before the IPO. Considering
that the person who executed and signed the certification against forum
shopping has the authority to do so, the petition, therefore, is not
procedurally defective.
As regards the respondent’s argument
that the petition raises only questions of fact which are not proper in a
petition for review, suffice it to say that the contradictory findings of the
IPO and the CA constrain us to give due course to the petition, this being one
of the recognized exceptions to Section 1, Rule 45 of the Rules of Court. True,
this Court is not the proper venue to consider factual issues as it is not a
trier of facts.[12] Nevertheless,
when the factual findings of the appellate court are mistaken, absurd,
speculative, conjectural, conflicting, tainted with grave abuse of discretion,
or contrary to the findings culled by the court of origin,[13]
as here, this Court will review them.
The old Trademark Law, Republic Act
(R.A.) No. 166, as amended, defines a “trademark” as any distinctive word,
name, symbol, emblem, sign, or device, or any combination thereof adopted and
used by a manufacturer or merchant on his goods to identify and distinguish
them from those manufactured, sold, or dealt in by others.[14]
Under the same law, the registration
of a trademark is subject to the provisions of Section 4 thereof, paragraph (d)
of which is pertinent to this case. The provision
reads:
Section 4. Registration of trademarks, trade-names and service-marks on the principal register. – There is hereby established a register of trademarks, tradenames and service-marks which shall be known as the principal register. The owner of the trade-mark, trade-name or service-mark used to distinguish his goods, business or services of others shall have the right to register the same on the principal register, unless it:
xxx xxx xxx
(d) Consists of or comprises a mark or trade-name
which so resembles a mark or trade-name registered in the Philippines or a mark
or trade-name previously used in the Philippines by another and not abandoned,
as to be likely, when applied to or used in connection with the goods, business
or services of the applicant, to cause confusion or mistake or to deceive
purchasers;
xxx xxx xxx
Essentially, the issue here is
whether there is a confusing similarity between the MCDONALD’S marks of the
petitioner and the respondent’s “MACJOY & DEVICE” trademark when applied to
Classes 29 and 30 of the International Classification of Goods, i.e., food and
ingredients of food.
In determining similarity and
likelihood of confusion, jurisprudence has developed two tests, the dominancy test and the holistic test.[15] The dominancy test focuses on the similarity
of the prevalent features of the competing trademarks that might cause
confusion or deception.[16] In contrast, the holistic test requires the
court to consider the entirety of the marks as applied to the products,
including the labels and packaging, in determining confusing similarity.[17] Under the latter test, a comparison of the
words is not the only determinant factor.[18]
Here, the IPO used the
dominancy test in concluding that there was confusing similarity between the two
(2) trademarks in question as it took note of the appearance of the predominant
features “M”, “Mc” and/or “Mac” in both the marks. In reversing the conclusion reached by the
IPO, the CA, while seemingly applying the dominancy test, in fact actually
applied the holistic test. The
appellate court ruled in this wise:
Applying the Dominancy test to the present case, the IPO
should have taken into consideration the entirety of the two marks instead of
simply fixing its gaze on the single letter “M” or on the combinations “Mc” or
“Mac”. A mere cursory look of the
subject marks will reveal that, save for the letters “M” and “c”, no other
similarity exists in the subject marks.
We agree with the [respondent] that it is entirely
unwarranted for the IPO to consider the prefix “Mac” as the predominant feature
and the rest of the designs in [respondent’s] mark as details. Taking into account such paramount factors as
color, designs, spelling, sound, concept, sizes and audio and visual effects,
the prefix “Mc” will appear to be the only similarity in the two completely
different marks; and it is the prefix “Mc” that would thus appear as the
miniscule detail. When pitted against
each other, the two marks reflect a distinct and disparate visual impression
that negates any possible confusing similarity in the mind of the buying
public. (Words in brackets supplied.)
Petitioner now
vigorously points out that the dominancy test should be the one applied in this
case.
We agree.
In trademark cases,
particularly in ascertaining whether one trademark is confusingly similar to
another, no set rules can be deduced because each case must be decided on its
merits.[19] In such cases, even more than in any other
litigation, precedent must be studied in the light of the facts of the
particular case.[20] That is the reason why in trademark cases,
jurisprudential precedents should be applied only to a case if they are
specifically in point.[21]
While we agree with the
CA’s detailed enumeration of differences between the two (2) competing trademarks
herein involved, we believe that the holistic test is not the one applicable in
this case, the dominancy test being the one more suitable. In recent cases with
a similar factual milieu as here, the Court has consistently used and applied
the dominancy test in determining confusing similarity or likelihood of
confusion between competing trademarks.[22]
Notably, in McDonalds Corp. v. LC Big Mak Burger, Inc.,[23] a case where the trademark “Big Mak” was
found to be confusingly similar with the “Big Mac” mark of the herein the petitioner,
the Court explicitly held:
This Court, xxx, has
relied on the dominancy test rather than the holistic test. The dominancy test considers the dominant
features in the competing marks in determining whether they are confusingly
similar. Under the dominancy test,
courts give greater weight to the similarity of the appearance of the product
arising from the adoption of the dominant features of the registered mark,
disregarding minor differences. Courts
will consider more the aural and visual impressions created by the marks in the
public mind, giving little weight to factors like prices, quality, sales
outlets and market segments.
Moreover, in Societe Des Produits Nestle, S.A. v. CA[24] the Court, applying the dominancy test,
concluded that the use by the respondent therein of the word “MASTER” for its
coffee product “FLAVOR MASTER” was likely to cause confusion with therein petitioner’s
coffee products’ “MASTER ROAST” and “MASTER BLEND” and further ruled:
xxx, the totality or
holistic test is contrary to the elementary postulate of the law on trademarks
and unfair competition that confusing similarity is to be determined on the
basis of visual, aural, connotative comparisons and overall impressions engendered by the marks in
controversy as they are encountered in the marketplace. The totality or holistic test only relies on
visual comparisons between two trademarks whereas the dominancy test relies not
only on the visual but also on the aural and connotative comparisons and
overall impressions between the two trademarks.
Applying the dominancy
test to the instant case, the Court finds that herein petitioner’s “MCDONALD’S”
and respondent’s “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.[25]
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. Indisputably, the respondent’s
trademark application for the “MACJOY & DEVICE” trademark covers goods
under Classes 29 and 30 of the International Classification of Goods, namely,
fried chicken, chicken barbeque, burgers, fries, spaghetti, etc. Likewise, the petitioner’s trademark
registration for the MCDONALD’S marks in the
Thus, we concur with the IPO’s findings
that:
In the case at bar, the predominant features
such as the “M,” “Mc,” and “Mac” appearing in both McDonald’s marks and the
MACJOY & DEVICE” easily attract the attention of would-be customers. Even non-regular customers of their fastfood
restaurants would readily notice the predominance of the “M” design, “Mc/Mac”
prefixes shown in both marks. Such that
the common awareness or perception of customers that the trademarks McDonalds
mark and MACJOY & DEVICE are one and the same, or an affiliate, or under
the sponsorship of the other is not far-fetched.
The differences and variations in
styles as the device depicting a head of chicken with cap and bowtie and wings
sprouting on both sides of the chicken head, the heart-shaped “M,” and the
stylistic letters in “MACJOY & DEVICE;” in contrast to the arch-like “M”
and the one-styled gothic letters in McDonald’s marks are of no moment. These minuscule variations are overshadowed
by the appearance of the predominant features mentioned hereinabove.
Thus, with the predominance of the
letter “M,” and prefixes “Mac/Mc” found in both marks, the inevitable
conclusion is there is confusing similarity between the trademarks Mc Donald’s
marks and “MACJOY AND DEVICE” especially considering the fact that both marks
are being used on almost the same products falling under Classes 29 and 30 of
the International Classification of Goods i.e. Food and ingredients of food.
With
the existence of confusing similarity between the subject trademarks, the
resulting issue to be resolved is who, as between the parties, has the rightful
claim of ownership over the said marks.
We rule for the petitioner.
A mark is valid if it is distinctive
and hence not barred from registration under the Trademark Law. However, once registered, not only the mark’s
validity but also the registrant’s ownership thereof is prima facie presumed.[26]
Pursuant to Section 37[27] of
R.A. No. 166, as amended, as well as the provision regarding the protection of
industrial property of foreign nationals in this country as embodied in the
Paris Convention[28] under
which the Philippines and the petitioner’s domicile, the United States, are
adherent-members, the petitioner was able to register its MCDONALD’S marks
successively, i.e., “McDonald’s” in 04 October, 1971[29];
the corporate logo which is the “M” or the golden arches design and the
“McDonald’s” with the “M” or golden arches design both in 30 June 1977[30]; and so on and so forth.[31]
On the other hand, it is not disputed
that the respondent’s application for registration of its trademark “MACJOY
& DEVICE” was filed only on
Hence, from the evidence on record,
it is clear that the petitioner has duly established its ownership of the
mark/s.
Respondent’s contention that it was
the first user of the mark in the
Likewise wanting in merit is the respondent’s
claim that the petitioner cannot acquire ownership of the word “Mac” because it
is a personal name which may not be monopolized as a trademark as against
others of the same name or surname. As stated earlier, once a trademark has
been registered, the validity of the mark is prima facie presumed. In this case, the respondent failed to
overcome such presumption. We agree with
the observations of the petitioner regarding the respondent’s explanation that
the word “MACJOY” is based on the name of its president’s niece, Scarlett Yu
Carcell. In the words of the petitioner:
First of all, Respondent
failed to present evidence to support the foregoing claim which, at best, is a
mere self-serving assertion. Secondly,
it cannot be denied that there is absolutely no connection between the name
“Scarlett Yu Carcel” and “MacJoy” to merit the coinage of the latter word. Even assuming that the word “MacJoy” was
chosen as a term of endearment, fondness and affection for a certain Scarlett
Yu Carcel, allegedly the niece of Respondent’s president, as well as to supposedly
bring good luck to Respondent’s business, one cannot help but wonder why out of
all the possible letters or combinations of letters available to Respondent,
its president had to choose and adopt a mark with the prefix “Mac” as the
dominant feature thereof. A more
plausible explanation perhaps is that the niece of Respondent’s president was
fond of the food products and services of the Respondent, but that is beside
the point.” [34]
By reason of the respondent’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 respondent would want to ride high on the established reputation and
goodwill of the MCDONALD’s marks, which, as applied to petitioner’s restaurant
business and food products, is undoubtedly beyond question.
Thus, the IPO was correct in
rejecting and denying the respondent’s application for registration of the
trademark “MACJOY & DEVICE.” As this
Court ruled in Faberge Inc. v. IAC,[35]
citing Chuanchow Soy & Canning Co. v.
Dir. of Patents and Villapanta:[36]
When one applies for the
registration of a trademark or label which is almost the same or very closely
resembles one already used and registered by another, the application should be
rejected and dismissed outright, even without any opposition on the part of the
owner and user of a previously registered label or trademark, this not only to
avoid confusion on the part of the public, but also to protect an already used
and registered trademark and an established goodwill.
WHEREFORE,
the instant petition is GRANTED. Accordingly, the assailed Decision and Resolution of the Court of
Appeals in CA-G.R. SP NO. 57247, are REVERSED and SET ASIDE and
the Decision of the Intellectual Property Office in Inter Partes Case No. 3861 is REINSTATED.
No pronouncement as to costs.
SO ORDERED.
CANCIO C. GARCIA
Associate Justice
WE CONCUR:
REYNATO S. PUNO
Chief Justice
Chairperson
|
ANGELINA SANDOVAL-GUTIERREZ Associate Justice |
RENATO C. CORONA Associate Justice |
ADOLFO S. AZCUNA
Associate Justice
C
E R T I F I C A T I O N
Pursuant to Article VIII, Section 13 of the
Constitution, it is hereby certified that the conclusions in the above decision
had been reached in consultation before the case was assigned to the writer of
the opinion of the Court’s Division.
REYNATO S. PUNO
Chief Justice
[1] Penned by Associate Justice Isaias P. Dicdican and concurred in by Associate Justices Elvi John S. Asuncion and Ramon Bato, Jr.; Rollo, pp. 209-219.
[2]
[3]
[4]
[5]
[6]
[7] Supra note 1.
[8] Supra note 2.
[9] Rollo, pp. 291-306.
[10]
[11]
[12] Moomba
Mining Exploration Co. v. CA, G.R. No. 108846,
[13] Smith
Kline Beckman Corporation v. CA, G.R. No. 126627,
[14] Section 38, R.A. 166, as amended
[15] Mighty
Corporation v. E & J Gallo Winery, G.R. No. 154342, July 14, 2004, 434
SCRA 473, 506.
[16] McDonald’s
Corporation v. L.C. Big Mak Burger, Inc., supra
[17]
[18] Emerald
Garment Manufacturing Corporation v. Court of Appeals, G.R. No. 100098,
December 29, 1995, 251 SCRA 600, 615-616.
[19] Societe Des Produits Nestle,
[20]
[21]
[22] Applied in McDonald’s Corp. v. L.C. Big Mak Burger, Inc., supra; Societe Des Produits Nestle, S.A. v. CA,
supra; Asia Brewery, Inc. v. CA, G.R.
No. 103543, July 5, 1993, 224 SCRA 437; Converse
Rubber Corp. v. Universal Rubber Products, Inc., G.R. No. L-27906,
[23] Supra note 14, at 32.
[24] Supra note 23.
[25] “MacJoy”
mark, Rollo p. 297 and “MCDONALDS” marks, Rollo, pp. 86, 89 & 91.
[26] McDonald’s Corporation v L.C. Big Mak Burger
Inc., supra note 14; SEC. 20. Certificate of registration prima facie evidence of validity.
- A certificate of registration of a mark or trade name shall be prima facie
evidence of the validity of the registration, the registrant’s ownership of the
mark or trade name, and of the registrant’s exclusive right to use the same in
connection with the goods, business or services specified in the certificate,
subject to any conditions and limitations stated therein.
[27] Sec.
37. Rights of Foreign
Registrants-Persons who are nationals of, domiciled in, or have a bona fide or
effective business or commercial establishment in any foreign country, which is
a party to an international convention or treaty relating to marks or
tradenames on the repression of unfair competition to which the Philippines may
be a party, shall be entitled to the benefits and subject to the provisions of
this Act . . . x x x
“Tradenames of persons described in the first
paragraph of this section shall be protected without the obligation of filing
or registration whether or not they form parts of marks.”
[28] The Paris Convention is essentially
a compact among the various member countries to accord in their own countries
to citizens of the other contracting parties’ trademarks and other rights
comparable to those accorded their own citizens by their domestic laws. The underlying principle is that foreign
nationals should be given the same treatment in each of the member countries as
that country makes available to its own citizens. In addition, the Convention sought to create
uniformity in certain respects by obligating each nation to assure to nationals
of countries of the
[29] Rollo, p. 86
[30]
[31] Registration No. 31966, dated June 24, 1983 for the mark
“McChicken”, Id. at 93; Registration No. 34065, dated March 06, 1985, for the
mark “McDonald’s with “corporate logo”arches design, Id. at 94; Registration
No. 34065, dated July 18, 1985 for the mark “Big Mac”, Id. at 97; Registration
No. 39988, dated July 14, 1988 for the mark “MacFries”, Id. at 99; Registration No. 45583, dated July 14,
1988, for the mark “McSpaghetti”, Id. at 101; Registration No. 50987, dated
July 24, 1991, for the servicemark “McDo” , Id. at 100; Registration No. 32009,
dated June 24, 1983 for the trademark “Big Mac” and Circle Design Rollo, p.
106; Registration No. 48491, dated June 25, 1990 for the service mark “McSnack”
Id. at 105; Registration No. 51789, dated December 02, 1991, for the trademark
“Mc” (Id. at 107).
[32] IPO Decision; Rollo, pp. 120-121.
[33] Section 2 of R.A. 166, as amended,
provides: Sec. 2. What are registrable. – Trademarks,
tradenames and service marks owned by persons, corporations, partnerships or
associations domiciled in the Philippines and by persons, corporations,
partnerships or associations domiciled in any foreign country may be registered
in accordance with the provisions of this Act; Provided, That said trademarks, tradenames, or service marks are
actually in use in commerce and services not less than two months in the Philippines before the time the
applications for registration are filed; And provided, further, That the
country of which the applicant for registration is a citizen grants by law
substantially similar privileges to citizens of the Philippines, and such fact
is officially certified, with a certified true copy of the foreign law
translated into the English language, by the government of the foreign country
to the Government of the Republic of the Philippines. (As amended by R.A. No.
865).
[34] Rollo, pp. 55-56.
[35] G.R. No. 71189,
[36] G.R. No. L-13947,
108 Phil. 833, 836.