G.R. No.

143993             August 18, 2004

MCDONALD'S CORPORATION and MCGEORGE FOOD INDUSTRIES, INC., petitioners,

vs.
L.C. BIG MAK BURGER, INC., FRANCIS B. DY, EDNA A. DY, RENE B. DY, WILLIAM B. DY,
JESUS AYCARDO, ARACELI AYCARDO, and GRACE HUERTO, respondents.

DECISION

CARPIO, J.:

The Case

This is a petition for review of the Decision dated 26 November 1999 of the Court of Appeals finding
1  2 

respondent L.C. Big Mak Burger, Inc. not liable for trademark infringement and unfair competition
and ordering petitioners to pay respondents P1,900,000 in damages, and of its Resolution dated 11
July 2000 denying reconsideration. The Court of Appeals' Decision reversed the 5 September 1994
Decision of the Regional Trial Court of Makati, Branch 137, finding respondent L.C. Big Mak Burger,
3 

Inc. liable for trademark infringement and unfair competition.

The Facts

Petitioner McDonald's Corporation ("McDonald's") is a corporation organized under the laws of

Delaware, United States. McDonald's operates, by itself or through its franchisees, a global chain of
fast-food restaurants. McDonald's owns a family of marks including the "Big Mac" mark for its
4  5 

"double-decker hamburger sandwich." McDonald's registered this trademark with the United States
6 

Trademark Registry on 16 October 1979. Based on this Home Registration, McDonald's applied
7 

for the registration of the same mark in the Principal Register of the then Philippine Bureau of

Patents, Trademarks and Technology ("PBPTT"), now the Intellectual Property Office
("IPO"). Pending approval of its application, McDonald's introduced its "Big Mac" hamburger
sandwiches in the Philippine market in September 1981. On 18 July 1985, the PBPTT allowed
registration of the "Big Mac" mark in the Principal Register based on its Home Registration in the
United States.

Like its other marks, McDonald's displays the "Big Mac" mark in items and paraphernalia in its
8  9 

restaurants, and in its outdoor and indoor signages. From 1982 to 1990, McDonald's spent P10.5
million in advertisement for "Big Mac" hamburger sandwiches alone. 10

Petitioner McGeorge Food Industries ("petitioner McGeorge"), a domestic corporation, is McDonald's

Philippine franchisee.
11

Respondent L.C. Big Mak Burger, Inc. ("respondent corporation") is a domestic corporation which
operates fast-food outlets and snack vans in Metro Manila and nearby provinces. Respondent
12 

corporation's menu includes hamburger sandwiches and other food items. Respondents Francis B.
13 
Dy, Edna A. Dy, Rene B. Dy, William B. Dy, Jesus Aycardo, Araceli Aycardo, and Grace Huerto
("private respondents") are the incorporators, stockholders and directors of respondent corporation. 14

On 21 October 1988, respondent corporation applied with the PBPTT for the registration of the "Big
Mak" mark for its hamburger sandwiches. McDonald's opposed respondent corporation's application
on the ground that "Big Mak" was a colorable imitation of its registered "Big Mac" mark for the same
food products. McDonald's also informed respondent Francis Dy ("respondent Dy"), the chairman of
the Board of Directors of respondent corporation, of its exclusive right to the "Big Mac" mark and
requested him to desist from using the "Big Mac" mark or any similar mark.

Having received no reply from respondent Dy, petitioners on 6 June 1990 sued respondents in the
Regional Trial Court of Makati, Branch 137 ("RTC"), for trademark infringement and unfair
competition. In its Order of 11 July 1990, the RTC issued a temporary restraining order ("TRO")
against respondents enjoining them from using the "Big Mak" mark in the operation of their business
in the National Capital Region. On 16 August 1990, the RTC issued a writ of preliminary injunction
15 

replacing the TRO. 16

In their Answer, respondents admitted that they have been using the name "Big Mak Burger" for
their fast-food business. Respondents claimed, however, that McDonald's does not have an
exclusive right to the "Big Mac" mark or to any other similar mark. Respondents point out that the
Isaiyas Group of Corporations ("Isaiyas Group") registered the same mark for hamburger
sandwiches with the PBPTT on 31 March 1979. One Rodolfo Topacio ("Topacio") similarly
registered the same mark on 24 June 1983, prior to McDonald's registration on 18 July
1985. Alternatively, respondents claimed that they are not liable for trademark infringement or for
unfair competition, as the "Big Mak" mark they sought to register does not constitute a colorable
imitation of the "Big Mac" mark. Respondents asserted that they did not fraudulently pass off their
hamburger sandwiches as those of petitioners' Big Mac hamburgers. Respondents sought damages
17 

in their counterclaim.

In their Reply, petitioners denied respondents' claim that McDonald's is not the exclusive owner of
the "Big Mac" mark. Petitioners asserted that while the Isaiyas Group and Topacio did register the
"Big Mac" mark ahead of McDonald's, the Isaiyas Group did so only in the Supplemental Register of
the PBPTT and such registration does not provide any protection. McDonald's disclosed that it
had acquired Topacio's rights to his registration in a Deed of Assignment dated 18 May 1981. 18

The Trial Court's Ruling

On 5 September 1994, the RTC rendered judgment ("RTC Decision") finding respondent corporation

liable for trademark infringement and unfair competition. However, the RTC dismissed the
complaint against private respondents and the counterclaim against petitioners for lack of
merit and insufficiency of evidence. The RTC held:

Undeniably, the mark "B[ig] M[ac]" is a registered trademark for plaintiff McDonald's, and as
such, it is entitled [to] protection against infringement.

xxxx

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. But infringement goes beyond the physical features of the questioned name and the
original name. There are still other factors to be considered.
 xxxx

Significantly, the contending parties are both in the business of fast-food chains and
restaurants. An average person who is hungry and wants to eat a hamburger sandwich may
not be discriminating enough to look for a McDonald's restaurant and buy a "B[ig] M[ac]"
hamburger. Once he sees a stall selling hamburger sandwich, in all likelihood, he will dip into
his pocket and order a "B[ig] M[ak]" hamburger sandwich. Plaintiff McDonald's fast-food
chain has attained wide popularity and acceptance by the consuming public so much so that
its air-conditioned food outlets and restaurants will perhaps not be mistaken by many to be
the same as defendant corporation's mobile snack vans located along busy streets or
highways. But the thing is that what is being sold by both contending parties is a food item –
a hamburger sandwich which is for immediate consumption, so that a buyer may easily be
confused or deceived into thinking that the "B[ig] M[ak]" hamburger sandwich he bought is a
food-product of plaintiff McDonald's, or a subsidiary or allied outlet thereof. Surely, defendant
corporation has its own secret ingredients to make its hamburger sandwiches as palatable
and as tasty as the other brands in the market, considering the keen competition among
mushrooming hamburger stands and multinational fast-food chains and restaurants. Hence,
the trademark "B[ig] M[ac]" has been infringed by defendant corporation when it used the
name "B[ig] M[ak]" in its signages, wrappers, and containers in connection with its food
business. xxxx

Did the same acts of defendants in using the name "B[ig] M[ak]" as a trademark or
tradename in their signages, or in causing the name "B[ig] M[ak]" to be printed on the
wrappers and containers of their food products also constitute an act of unfair competition
under Section 29 of the Trademark Law?

The answer is in the affirmative. xxxx

The xxx provision of the law concerning unfair competition is broader and more inclusive
than the law concerning the infringement of trademark, which is of more limited range, but
within its narrower range recognizes a more exclusive right derived by the adoption and
registration of the trademark by the person whose goods or services are first
associated therewith. xxx Notwithstanding the distinction between an action for trademark
infringement and an action for unfair competition, however, the law extends substantially the
same relief to the injured party for both cases. (See Sections 23 and 29 of Republic Act No.
166)

Any conduct may be said to constitute unfair competition if the effect is to pass off on the
public the goods of one man as the goods of another. The choice of "B[ig] M[ak]" as
tradename by defendant corporation is not merely for sentimental reasons but was clearly
made to take advantage of the reputation, popularity and the established goodwill of plaintiff
McDonald's. For, as stated in Section 29, a person is guilty of unfair competition who in
selling his goods shall give them the general appearance, of goods of another manufacturer
or dealer, either as to the goods themselves or in the wrapping of the packages in which they
are contained, or the devices or words thereon, or in any other feature of their appearance,
which would likely influence purchasers to believe that the goods offered are those of a
manufacturer or dealer other than the actual manufacturer or dealer. Thus, plaintiffs have
established their valid cause of action against the defendants for trademark infringement and
unfair competition and for damages. 19

The dispositive portion of the RTC Decision provides:

 WHEREFORE, judgment is rendered in favor of plaintiffs McDonald's Corporation and
McGeorge Food Industries, Inc. and against defendant L.C. Big Mak Burger, Inc., as
follows:

1. The writ of preliminary injunction issued in this case on [16 August 1990] is made
permanent;

2. Defendant L.C. Big Mak Burger, Inc. is ordered to pay plaintiffs actual damages in

the amount of P400,000.00, exemplary damages in the amount of P100,000.00, and
attorney's fees and expenses of litigation in the amount of P100,000.00;

3. The complaint against defendants Francis B. Dy, Edna A. Dy, Rene B. Dy, Wiliam B. Dy,
Jesus Aycardo, Araceli Aycardo and Grace Huerto, as well as all counter-claims, are
dismissed for lack of merit as well as for insufficiency of evidence. 20

Respondents appealed to the Court of Appeals.

The Ruling of the Court of Appeals

On 26 November 1999, the Court of Appeals rendered judgment ("Court of Appeals' Decision")
reversing the RTC Decision and ordering McDonald's to pay respondents P1,600,000
as actual and compensatory damages and P300,000 as moral damages. The Court of Appeals
held:

Plaintiffs-appellees in the instant case would like to impress on this Court that the use
of defendants-appellants of its corporate name – the whole "L.C. B[ig] M[ak] B[urger], I[nc]."
which appears on their food packages, signages and advertisements is an infringement of
their trademark "B[ig] M[ac]" which they use to identify [their] double decker sandwich, sold in
a Styrofoam box packaging material with the McDonald's logo of umbrella "M" stamped
thereon, together with the printed mark in red bl[o]ck capital letters, the words being
separated by a single space. Specifically, plaintiffs-appellees argue that defendants-
appellants' use of their corporate name is a colorable imitation of their trademark "Big Mac".

xxxx

To Our mind, however, this Court is fully convinced that no colorable imitation exists. As the
definition dictates, it is not sufficient that a similarity exists in both names, but that more
importantly, the over-all presentation, or in their essential, substantive and distinctive parts is
such as would likely MISLEAD or CONFUSE persons in the ordinary course of purchasing
the genuine article. A careful comparison of the way the trademark "B[ig] M[ac]" is being
used by plaintiffs-appellees and corporate name L.C. Big Mak Burger, Inc. by defendants-
appellants, would readily reveal that no confusion could take place, or that the ordinary
purchasers would be misled by it. As pointed out by defendants-appellants, the plaintiffs-
appellees' trademark is used to designate only one product, a double decker sandwich sold
in a Styrofoam box with the "McDonalds" logo. On the other hand, what the defendants-
appellants corporation is using is not a trademark for its food product but a business or
corporate name. They use the business name "L.C. Big Mak Burger, Inc." in their restaurant
business which serves diversified food items such as siopao, noodles, pizza, and
sandwiches such as hotdog, ham, fish burger and hamburger. Secondly, defendants-
appellants' corporate or business name appearing in the food packages and signages are
written in silhouette red-orange letters with the "b" and "m" in upper case letters. Above the
words "Big Mak" are the upper case letter "L.C.". Below the words "Big Mak" are the words
"Burger, Inc." spelled out in upper case letters. Furthermore, said corporate or business
name appearing in such food packages and signages is always accompanied by the
company mascot, a young chubby boy named Maky who wears a red T-shirt with the upper
case "m" appearing therein and a blue lower garment. Finally, the defendants-appellants'
food packages are made of plastic material.

xxxx

xxx [I]t is readily apparent to the naked eye that there appears a vast difference in the
appearance of the product and the manner that the tradename "Big Mak" is being used and
presented to the public. As earlier noted, there are glaring dissimilarities between plaintiffs-
appellees' trademark and defendants-appellants' corporate name. Plaintiffs-appellees'
product carrying the trademark "B[ig] M[ac]" is a double decker sandwich (depicted in the
tray mat containing photographs of the various food products xxx sold in a Styrofoam box
with the "McDonald's" logo and trademark in red, bl[o]ck capital letters printed thereon xxx at
a price which is more expensive than the defendants-appellants' comparable food
products. In order to buy a "Big Mac", a customer needs to visit an air-conditioned
"McDonald's" restaurant usually located in a nearby commercial center, advertised and
identified by its logo - the umbrella "M", and its mascot – "Ronald McDonald". A typical
McDonald's restaurant boasts of a playground for kids, a second floor to
accommodate additional customers, a drive-thru to allow customers with cars to make orders
without alighting from their vehicles, the interiors of the building are well-lighted, distinctly
decorated and painted with pastel colors xxx. In buying a "B[ig] M[ac]", it is necessary to
specify it by its trademark. Thus, a customer needs to look for a "McDonald's" and enter it
first before he can find a hamburger sandwich which carry the mark "Big Mac". On the other
hand, defendants-appellants sell their goods through snack vans xxxx

Anent the allegation that defendants-appellants are guilty of unfair competition,

We likewise find the same untenable.

Unfair competition is defined as "the employment of deception or any other means contrary

to good faith by which a person shall pass off the goods manufactured by him or in which he
deals, or his business, or service, for those of another who has already established good will
for his similar good, business or services, or any acts calculated to produce the same result"
(Sec. 29, Rep. Act No. 166, as amended).

To constitute unfair competition therefore it must necessarily follow that there was malice

and that the entity concerned was in bad faith.

In the case at bar, We find no sufficient evidence adduced by plaintiffs-appellees that

defendants-appellants deliberately tried to pass off the goods manufactured by them for
those of plaintiffs-appellees. The mere suspected similarity in the sound of the defendants-
appellants' corporate name with the plaintiffs-appellees' trademark is not sufficient evidence
to conclude unfair competition. Defendants-appellants explained that the name "M[ak]" in
their corporate name was derived from both the first names of the mother and father of
defendant Francis Dy, whose names are Maxima and Kimsoy. With this explanation, it is up
to the plaintiffs-appellees to prove bad faith on the part of defendants-appellants. It is a
settled rule that the law always presumes good faith such that any person who seeks to be
awarded damages due to acts of another has the burden of proving that the latter acted in
bad faith or with ill motive. 
21
Petitioners sought reconsideration of the Court of Appeals' Decision but the appellate court denied
their motion in its Resolution of 11 July 2000.

Hence, this petition for review.

Petitioners raise the following grounds for their petition:

I. THE COURT OF APPEALS ERRED IN FINDING THAT RESPONDENTS' CORPORATE

NAME "L.C. BIG MAK BURGER, INC." IS NOT A COLORABLE IMITATION OF THE
MCDONALD'S TRADEMARK "BIG MAC", SUCH COLORABLE IMITATION BEING
AN ELEMENT OF TRADEMARK INFRINGEMENT.

A. Respondents use the words "Big Mak" as trademark for their products and not
merely as their business or corporate name.

B. As a trademark, respondents' "Big Mak" is undeniably and unquestionably similar

to petitioners' "Big Mac" trademark based on the dominancy test and the idem
sonans test resulting inexorably in confusion on the part of the consuming public.

II. THE COURT OF APPEALS ERRED IN REFUSING TO CONSIDER THE INHERENT

SIMILARITY BETWEEN THE MARK "BIG MAK" AND THE WORD MARK "BIG MAC" AS
AN INDICATION OF RESPONDENTS' INTENT TO DECEIVE OR DEFRAUD
FOR PURPOSES OF ESTABLISHING UNFAIR COMPETITION. 22

Petitioners pray that we set aside the Court of Appeals' Decision and reinstate the RTC Decision.

In their Comment to the petition, respondents question the propriety of this petition as it allegedly
raises only questions of fact. On the merits, respondents contend that the Court of Appeals
committed no reversible error in finding them not liable for trademark infringement and unfair
competition and in ordering petitioners to pay damages.

The Issues

The issues are:

1. Procedurally, whether the questions raised in this petition are proper for a petition for review under
Rule 45.

2. On the merits, (a) whether respondents used the words "Big Mak" not only as part of the
corporate name "L.C. Big Mak Burger, Inc." but also as a trademark for their hamburger products,
and (b) whether respondent corporation is liable for trademark infringement and unfair competition. 23

The Court's Ruling

The petition has merit.

On Whether the Questions Raised in the Petition are Proper for a Petition for Review

A party intending to appeal from a judgment of the Court of Appeals may file with this Court a
petition for review under Section 1 of Rule 45 ("Section 1") raising only questions of law. A question
24 
of law exists when the doubt or difference arises on what the law is on a certain state of facts. There
is a question of fact when the doubt or difference arises on the truth or falsity of the alleged facts. 
25

Here, petitioners raise questions of fact and law in assailing the Court of Appeals' findings on
respondent corporation's non-liability for trademark infringement and unfair competition. Ordinarily,
the Court can deny due course to such a petition. In view, however, of the contradictory findings of
fact of the RTC and Court of Appeals, the Court opts to accept the petition, this being one of the
recognized exceptions to Section 1. We took a similar course of action in Asia Brewery, Inc. v.
26 

Court of Appeals which also involved a suit for trademark infringement and unfair competition in
27 

which the trial court and the Court of Appeals arrived at conflicting findings.

On the Manner Respondents Used

"Big Mak" in their Business

Petitioners contend that the Court of Appeals erred in ruling that the corporate name "L.C. Big Mak
Burger, Inc." appears in the packaging for respondents' hamburger products and not the words "Big
Mak" only.

The contention has merit.

The evidence presented during the hearings on petitioners' motion for the issuance of a writ of
preliminary injunction shows that the plastic wrappings and plastic bags used by respondents for
their hamburger sandwiches bore the words "Big Mak." The other descriptive words "burger" and
"100% pure beef" were set in smaller type, along with the locations of branches. Respondents' cash
28 

invoices simply refer to their hamburger sandwiches as "Big Mak." It is respondents' snack vans that
29 

carry the words "L.C. Big Mak Burger, Inc." 30

It was only during the trial that respondents presented in evidence the plastic wrappers and bags for
their hamburger sandwiches relied on by the Court of Appeals. Respondents' plastic wrappers and
31 

bags were identical with those petitioners presented during the hearings for the injunctive writ except
that the letters "L.C." and the words "Burger, Inc." in respondents' evidence were added above and
below the words "Big Mak," respectively. Since petitioners' complaint was based on facts existing
before and during the hearings on the injunctive writ, the facts established during those hearings are
the proper factual bases for the disposition of the issues raised in this petition.

On the Issue of Trademark Infringement

Section 22 ("Section 22) of Republic Act No. 166, as amended ("RA 166"), the law applicable to this
case, defines trademark infringement as follows:
32 

Infringement, what constitutes. — Any person who [1] shall use, without the consent of the
registrant, any reproduction, counterfeit, copy or colorable imitation of any registered mark or
trade-name in connection with the sale, offering for sale, or advertising of any goods,
business or services on or in connection with which such use is likely to cause confusion or
mistake or to deceive purchasers or others as to the source or origin of such goods or
services, or identity of such business; or [2] reproduce, counterfeit, copy, or colorably
imitate any such mark or trade-name and apply such reproduction, counterfeit, copy, or
colorable imitation to labels, signs, prints, packages, wrappers, receptacles or
advertisements intended to be used upon or in connection with such goods, business or
services, shall be liable to a civil action by the registrant for any or all of the
remedies herein provided. 33
Petitioners base their cause of action under the first part of Section 22, i.e. respondents allegedly
used, without petitioners' consent, a colorable imitation of the "Big Mac" mark in advertising and
selling respondents' hamburger sandwiches. This likely caused confusion in the mind of the
purchasing public on the source of the hamburgers or the identity of the business.

To establish trademark infringement, the following elements must be shown: (1) the validity of
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 "likelihood of confusion." Of these, it is the element
34 

of likelihood of confusion that is the gravamen of trademark infringement. 35

On the Validity of the "Big Mac"Mark

and McDonald's Ownership of such Mark

A mark is valid if it is "distinctive" and thus not barred from registration under Section 4 of RA 166
36 

("Section 4"). However, once registered, not only the mark's validity but also the registrant's
ownership of the mark is prima facie presumed. 37

Respondents contend that of the two words in the "Big Mac" mark, it is only the word "Mac" that is
valid because the word "Big" is generic and descriptive (proscribed under Section 4[e]), and thus
"incapable of exclusive appropriation." 38

The contention has no merit. The "Big Mac" mark, which should be treated in its entirety and not
dissected word for word, is neither generic nor descriptive. Generic marks are commonly used as
39 

the name or description of a kind of goods, such as "Lite" for beer or "Chocolate Fudge" for
40  41 

chocolate soda drink. Descriptive marks, on the other hand, convey the characteristics, functions,
42 

qualities or ingredients of a product to one who has never seen it or does not know it exists, such as
43 

"Arthriticare" for arthritis medication. On the contrary, "Big Mac" falls under the class of fanciful or
44 

arbitrary marks as it bears no logical relation to the actual characteristics of the product it

represents. As such, it is highly distinctive and thus valid. Significantly, the trademark "Little Debbie"
45 

for snack cakes was found arbitrary or fanciful. 46

The Court also finds that petitioners have duly established McDonald's exclusive ownership of the
"Big Mac" mark. Although Topacio and the Isaiyas Group registered the "Big Mac" mark ahead of
McDonald's, Topacio, as petitioners disclosed, had already assigned his rights to McDonald's. The
Isaiyas Group, on the other hand, registered its trademark only in the Supplemental Register. A
mark which is not registered in the Principal Register, and thus not distinctive, has no real
protection. Indeed, we have held that registration in the Supplemental Register is not even a prima
47 

facie evidence of the validity of the registrant's exclusive right to use the mark on the goods specified
in the certificate.
48

On Types of Confusion

Section 22 covers two types of confusion arising from the use of similar or colorable imitation
marks, namely, confusion of goods (product confusion) and confusion of business (source or origin
confusion). In Sterling Products International, Incorporated v. Farbenfabriken Bayer
Aktiengesellschaft, et al., the Court distinguished these two types of confusion, thus:
49 

[Rudolf] Callman notes two types of confusion. The first is the confusion of goods "in which
event the ordinarily prudent purchaser would be induced to purchase one product in the
belief that he was purchasing the other." xxx The other is the confusion of business: "Here
though the goods of the parties are different, the defendant's product is such as might
reasonably be assumed to originate with the plaintiff, and the public would then be deceived
 either into that belief or into the belief that there is some connection between the plaintiff and
defendant which, in fact, does not exist."

Under Act No. 666, the first trademark law, infringement was limited to confusion of goods only,
50 

when the infringing mark is used on "goods of a similar kind." Thus, no relief was afforded to the
51 

party whose registered mark or its colorable imitation is used on different although related goods. To
remedy this situation, Congress enacted RA 166 on 20 June 1947. In defining trademark
infringement, Section 22 of RA 166 deleted the requirement in question and expanded its scope to
include such use of the mark or its colorable imitation that is likely to result in confusion on "the
source or origin of such goods or services, or identity of such business." Thus, while there is
52 

confusion of goods when the products are competing, confusion of business exists when the
products are non-competing but related enough to produce confusion of affiliation. 53

On Whether Confusion of Goods and

Confusion of Business are Applicable

Petitioners claim that respondents' use of the "Big Mak" mark on respondents' hamburgers results in
confusion of goods, particularly with respect to petitioners' hamburgers labeled "Big Mac." Thus,
petitioners alleged in their complaint:

1.15. Defendants have unduly prejudiced and clearly infringed upon the property rights of
plaintiffs in the McDonald's Marks, particularly the mark "B[ig] M[ac]". Defendants'
unauthorized acts are likely, and calculated, to confuse, mislead or deceive the public into
believing that the products and services offered by defendant Big Mak Burger, and the
business it is engaged in, are approved and sponsored by, or affiliated with,
plaintiffs. (Emphasis supplied)
54 

Since respondents used the "Big Mak" mark on the same goods, i.e. hamburger sandwiches, that
petitioners' "Big Mac" mark is used, trademark infringement through confusion of goods is a proper
issue in this case.

Petitioners also claim that respondents' use of the "Big Mak" mark in the sale of hamburgers, the
same business that petitioners are engaged in, results in confusion of
business. Petitioners alleged in their complaint:

1.10. For some period of time, and without the consent of plaintiff McDonald's nor its
licensee/franchisee, plaintiff McGeorge, and in clear violation of plaintiffs' exclusive right to
use and/or appropriate the McDonald's marks, defendant Big Mak Burger acting through
individual defendants, has been operating "Big Mak Burger", a fast food restaurant business
dealing in the sale of hamburger and cheeseburger sandwiches, french fries and other food
products, and has caused to be printed on the wrapper of defendant's food products and
incorporated in its signages the name "Big Mak Burger", which is confusingly similar
to and/or is a colorable imitation of the plaintiff McDonald's mark "B[ig] M[ac]",
xxx. Defendant Big Mak Burger has thus unjustly created the impression that its
business is approved and sponsored by, or affiliated with, plaintiffs . xxxx

2.2 As a consequence of the acts committed by defendants, which unduly prejudice and
infringe upon the property rights of plaintiffs McDonald's and McGeorge as the real owner
and rightful proprietor, and the licensee/franchisee, respectively, of the McDonald's
marks, and which are likely to have caused confusion or deceived the public as to the
true source, sponsorship or affiliation of defendants' food products and restaurant
business, plaintiffs have suffered and continue to suffer actual damages in the form of injury
 to their business reputation and goodwill, and of the dilution of the distinctive quality of the
McDonald's marks, in particular, the mark "B[ig] M[ac]". (Emphasis supplied)
55 

Respondents admit that their business includes selling hamburger sandwiches, the same food
product that petitioners sell using the "Big Mac" mark. Thus, trademark infringement through
confusion of business is also a proper issue in this case.

Respondents assert that their "Big Mak" hamburgers cater mainly to the low-income group while
petitioners' "Big Mac" hamburgers cater to the middle and upper income groups. Even if this is true,
the likelihood of confusion of business remains, since the low-income group might be led to believe
that the "Big Mak" hamburgers are the low-end hamburgers marketed by petitioners. After all,
petitioners have the exclusive right to use the "Big Mac" mark. On the other hand, respondents
would benefit by associating their low-end hamburgers, through the use of the "Big Mak" mark, with
petitioners' high-end "Big Mac" hamburgers, leading to likelihood of confusion in the identity of
business.

Respondents further claim that petitioners use the "Big Mac" mark only on petitioners' double-decker
hamburgers, while respondents use the "Big Mak" mark on hamburgers and other products like
siopao, noodles and pizza. Respondents also point out that petitioners sell their Big Mac double-
deckers in a styrofoam box with the "McDonald's" logo and trademark in red, block letters at a price
more expensive than the hamburgers of respondents. In contrast, respondents sell their Big Mak
hamburgers in plastic wrappers and plastic bags. Respondents further point out that petitioners'
restaurants are air-conditioned buildings with drive-thru service, compared to respondents' mobile
vans.

These and other factors respondents cite cannot negate the undisputed fact that respondents use
their "Big Mak" mark on hamburgers, the same food product that petitioners' sell with the use of their
registered mark "Big Mac." Whether a hamburger is single, double or triple-decker, and whether
wrapped in plastic or styrofoam, it remains the same hamburger food product. Even respondents'
use of the "Big Mak" mark on non-hamburger food products cannot excuse their infringement of
petitioners' registered mark, otherwise registered marks will lose their protection under the law.

The registered trademark owner may use his mark on the same or similar products, in different
segments of the market, and at different price levels depending on variations of the products for
specific segments of the market. The Court has recognized that the registered trademark owner
enjoys protection in product and market areas that are the normal potential expansion of his
business. Thus, the Court has declared:

Modern law recognizes that the protection to which the owner of a trademark is entitled is not
limited to guarding his goods or business from actual market competition with identical or
similar products of the parties, but extends to all cases in which the use by a junior
appropriator of a trade-mark or trade-name is likely to lead to a confusion of source, as
where prospective purchasers would be misled into thinking that the complaining party has
extended his business into the field (see 148 ALR 56 et seq; 53 Am Jur. 576) or is
in any way connected with the activities of the infringer; or when it forestalls the normal
potential expansion of his business (v. 148 ALR, 77, 84; 52 Am. Jur. 576, 577). (Emphasis
56 

supplied)

On Whether Respondents' Use of the "Big Mak"

Mark Results in Likelihood of Confusion
In determining likelihood of confusion, jurisprudence has developed two tests, the dominancy test
and the holistic test. The dominancy test focuses on the similarity of the prevalent features of the
57 

competing trademarks that might cause confusion. 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.

The Court of Appeals, in finding that there is no likelihood of confusion that could arise in the use
of respondents' "Big Mak" mark on hamburgers, relied on the holistic test. Thus, the Court of
Appeals ruled that "it is not sufficient that a similarity exists in both name(s), but that more
importantly, the overall presentation, or in their essential, substantive and distinctive parts is such as
would likely MISLEAD or CONFUSE persons in the ordinary course of purchasing the genuine
article." The holistic test considers the two marks in their entirety, as they appear on the goods with
their labels and packaging. It is not enough to consider their words and compare the spelling and
pronunciation of the words. 58

Respondents now vigorously argue that the Court of Appeals' application of the holistic test to this
case is correct and in accord with prevailing jurisprudence.

This Court, however, 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
59 

by the marks in the public mind, giving little weight to factors like prices, quality, sales outlets and
market segments.

Thus, in the 1954 case of Co Tiong Sa v. Director of Patents, the Court ruled:
60 

xxx It has been consistently held that the question of infringement of a trademark is to
be determined by the test of dominancy. Similarity in size, form and color, while relevant, is
not conclusive. If the competing trademark contains the main or essential or dominant
features of another, and confusion and deception is likely to result, infringement takes
place. Duplication or imitation is not necessary; nor is it necessary that the infringing label
should suggest an effort to imitate. (G. Heilman Brewing Co. vs. Independent Brewing Co.,
191 F., 489, 495, citing Eagle White Lead Co. vs. Pflugh (CC) 180 Fed. 579). The question
at issue in cases of infringement of trademarks is whether the use of the marks involved
would be likely to cause confusion or mistakes in the mind of the public or deceive
purchasers. (Auburn Rubber Corporation vs. Honover Rubber Co., 107 F. 2d 588; xxx)
(Emphasis supplied.)

The Court reiterated the dominancy test in Lim Hoa v. Director of Patents, Phil. Nut Industry,
61 

Inc. v. Standard Brands Inc., Converse Rubber Corporation v. Universal Rubber Products,
62 

Inc., and Asia Brewery, Inc. v. Court of Appeals. In the 2001 case of Societe Des Produits
63  64 

Nestlé, S.A. v. Court of Appeals, the Court explicitly rejected the holistic test in this wise:
65 

[T]he 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 realities of the marketplace.
(Emphasis supplied)
The test of dominancy is now explicitly incorporated into law in Section 155.1 of the Intellectual
Property Code which defines infringement as the "colorable imitation of a registered mark xxx or
a dominant feature thereof."

Applying the dominancy test, the Court finds that respondents' use of the "Big Mak" mark results in
likelihood of confusion. First, "Big Mak" sounds exactly the same as "Big Mac." Second, the first
word in "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 first two letters in "Mac." Fourth, the last letter in "Mak" while a "k" sounds
the same as "c" when the word "Mak" is pronounced. Fifth, in Filipino, the letter "k" replaces "c" in
spelling, thus "Caloocan" is spelled "Kalookan."

In short, aurally the two marks are the same, with the first word of both marks phonetically the same,
and the second word of both marks also phonetically the same. Visually, the two marks
have both two words and six letters, with the first word of both marks having the same letters and the
second word having the same first two letters. In spelling, considering the Filipino language, even
the last letters of both marks are the same.

Clearly, respondents have adopted in "Big Mak" not only the dominant but also almost all the
features of "Big Mac." Applied to the same food product of hamburgers, the two marks will likely
result in confusion in the public mind.

The Court has taken into account the aural effects of the words and letters contained in the marks
in determining the issue of confusing similarity. Thus, in Marvex Commercial Co., Inc. v. Petra
Hawpia & Co., et al., the Court held:
66 

The following random list of confusingly similar sounds in the matter of trademarks, culled
from Nims, Unfair Competition and Trade Marks, 1947, Vol. 1, will reinforce our view that
"SALONPAS" and "LIONPAS" are confusingly similar in sound: "Gold Dust" and "Gold Drop";
"Jantzen" and "Jass-Sea"; "Silver Flash" and "Supper Flash"; "Cascarete" and "Celborite";
"Celluloid" and "Cellonite"; "Chartreuse" and "Charseurs"; "Cutex" and "Cuticlean"; "Hebe"
and "Meje"; "Kotex" and "Femetex"; "Zuso" and "Hoo Hoo". Leon Amdur, in his book "Trade-
Mark Law and Practice", pp. 419-421, cities, as coming within the purview of the idem
sonans rule, "Yusea" and "U-C-A", "Steinway Pianos" and "Steinberg Pianos", and "Seven-
Up" and "Lemon-Up". In Co Tiong vs. Director of Patents, this Court unequivocally said that
"Celdura" and "Cordura" are confusingly similar in sound; this Court held in Sapolin Co. vs.
Balmaceda, 67 Phil. 795 that the name "Lusolin" is an infringement of the trademark
"Sapolin", as the sound of the two names is almost the same. (Emphasis supplied)

Certainly, "Big Mac" and "Big Mak" for hamburgers create even greater confusion, not only aurally
but also visually.

Indeed, a person cannot distinguish "Big Mac" from "Big Mak" by their sound. When one hears a
"Big Mac" or "Big Mak" hamburger advertisement over the radio, one would not know whether the
"Mac" or "Mak" ends with a "c" or a "k."

Petitioners' aggressive promotion of the "Big Mac" mark, as borne by their advertisement expenses,
has built goodwill and reputation for such mark making it one of the easily recognizable marks in the
market today. This increases the likelihood that consumers will mistakenly associate petitioners'
hamburgers and business with those of respondents'.

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. As petitioners well
noted:

[R]espondents, particularly Respondent Mr. Francis Dy, could have arrived at a more
creative choice for a corporate name by using the names of his parents, especially since he
was allegedly driven by sentimental reasons. For one, he could have put his father's name
ahead of his mother's, as is usually done in this patriarchal society, and derived letters from
said names in that order. Or, he could have taken an equal number of letters (i.e., two) from
each name, as is the more usual thing done. Surely, the more plausible reason behind
Respondents' choice of the word "M[ak]", especially when taken in conjunction with the word
"B[ig]", was their intent to take advantage of Petitioners' xxx "B[ig] M[ac]" trademark, with
their alleged sentiment-focused "explanation" merely thought of as a
convenient, albeit unavailing, excuse or defense for such an unfair choice of name. 67

Absent proof that respondents' adoption of the "Big Mak" mark was due to honest mistake or was
fortuitous, the inescapable conclusion is that respondents adopted the "Big Mak" mark to "ride on
68 

the coattails" of the more established "Big Mac" mark. This saves respondents much of the expense
69 

in advertising to create market recognition of their mark and hamburgers. 70

Thus, we hold that confusion is likely to result in the public mind. We sustain petitioners' claim of
trademark infringement.

On the Lack of Proof of

Actual Confusion

Petitioners' failure to present proof of actual confusion does not negate their claim of trademark
infringement. As noted in American Wire & Cable Co. v. Director of Patents, Section
71 

22 requires the less stringent standard of "likelihood of confusion" only. While proof

of actual confusion is the best evidence of infringement, its absence is inconsequential. 72

On the Issue of Unfair Competition

Section 29 ("Section 29") of RA 166 defines unfair competition, thus:

73 

xxxx

Any person who will employ deception or any other means contrary to good faith by which
he shall pass off the goods manufactured by him or in which he deals, or his business, or
services for those of the one having established such goodwill, or who shall commit any acts
calculated to produce said result, shall be guilty of unfair competition, and shall be subject to
an action therefor.

In particular, and without in any way limiting the scope of unfair competition, the

following shall be deemed guilty of unfair competition:

(a) Any person, who in selling his goods shall give them the general appearance of

goods of another manufacturer or dealer, either as to the goods themselves or in the
wrapping of the packages in which they are contained, or the devices or words thereon, or
in any feature of their appearance, which would be likely to influence purchasers to believe
that the goods offered are those of a manufacturer or dealer, other
 than the actual manufacturer or dealer, or who otherwise clothes the goods with such
appearance as shall deceive the public and defraud another of his legitimate trade,
or any subsequent vendor of such goods or any agent of any vendor engaged in selling such
goods with a like purpose;

(b) Any person who by any artifice, or device, or who employs any other means calculated to

induce the false belief that such person is offering the services of another who has identified
such services in the mind of the public; or

(c) Any person who shall make any false statement in the course of trade or

who shall commit any other act contrary to good faith of a nature calculated to discredit the
goods, business or services of another. (Emphasis supplied)

The essential elements of an action for unfair competition are (1) confusing similarity in the general
appearance of the goods, and (2) intent to deceive the public and defraud a competitor. The
74 

confusing similarity may or may not result from similarity in the marks, but may result from other
external factors in the packaging or presentation of the goods. The intent to deceive and defraud
may be inferred from the similarity of the appearance of the goods as offered for sale to the
public. Actual fraudulent intent need not be shown.
75  76

Unfair competition is broader than trademark infringement and includes passing off goods with or
without trademark infringement. Trademark infringement is a form of unfair competition. Trademark
77 

infringement constitutes unfair competition when there is not merely likelihood of confusion, but
also actual or probable deception on the public because of the general appearance of the goods.
There can be trademark infringement without unfair competition as when the infringer discloses on
the labels containing the mark that he manufactures the goods, thus preventing the public from
being deceived that the goods originate from the trademark owner. 78

To support their claim of unfair competition, petitioners allege that respondents fraudulently passed
off their hamburgers as "Big Mac" hamburgers. Petitioners add that respondents' fraudulent intent
can be inferred from the similarity of the marks in question. 79

Passing off (or palming off) takes place where the defendant, by imitative devices on the general
appearance of the goods, misleads prospective purchasers into buying his merchandise under the
impression that they are buying that of his competitors. Thus, the defendant gives his goods the
80 

general appearance of the goods of his competitor with the intention of deceiving the public that the
goods are those of his competitor.

The RTC described the respective marks and the goods of petitioners and respondents in this wise:

The mark "B[ig] M[ac]" is used by plaintiff McDonald's to identify its double decker
hamburger sandwich. The packaging material is a styrofoam box with the McDonald's logo
and trademark in red with block capital letters printed on it. All letters of the "B[ig] M[ac]"
mark are also in red and block capital letters. On the other hand, defendants' "B[ig] M[ak]"
script print is in orange with only the letter "B" and "M" being capitalized and the packaging
material is plastic wrapper. xxxx Further, plaintiffs' logo and mascot are the umbrella "M" and
"Ronald McDonald's", respectively, compared to the mascot of defendant Corporation which
is a chubby boy called "Macky" displayed or printed between the words "Big" and
"Mak." (Emphasis supplied)
81 

Respondents point to these dissimilarities as proof that they did not give their hamburgers the
general appearance of petitioners' "Big Mac" hamburgers.
The dissimilarities in the packaging are minor compared to the stark similarities in the words that
give respondents' "Big Mak" hamburgers the general appearance of petitioners' "Big Mac"
hamburgers. Section 29(a) expressly provides that the similarity in the general appearance of the
goods may be in the "devices or words" used on the wrappings. Respondents have applied on their
plastic wrappers and bags almost the same words that petitioners use on their styrofoam box. What
attracts the attention of the buying public are the words "Big Mak" which are almost 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.

Section 29(a) also provides that the defendant gives "his goods the general appearance of goods of
another manufacturer." Respondents' goods are hamburgers which are also the goods of petitioners.
If respondents sold egg sandwiches only instead of hamburger sandwiches, their use of the "Big
Mak" mark would not give their goods the general appearance of petitioners' "Big Mac" hamburgers.
In such case, there is only trademark infringement but no unfair competition. However, since
respondents chose to apply the "Big Mak" mark on hamburgers, just like petitioner's use of the "Big
Mac" mark on hamburgers, respondents have obviously clothed their goods with the general
appearance of petitioners' goods.

Moreover, there is no notice to the public that the "Big Mak" hamburgers are products of "L.C. Big
Mak Burger, Inc." Respondents introduced during the trial plastic wrappers and bags with the words
"L.C. Big Mak Burger, Inc." to inform the public of the name of the seller of the
hamburgers. However, petitioners introduced during the injunctive hearings plastic wrappers and
bags with the "Big Mak" mark without the name "L.C. Big Mak Burger, Inc." Respondents' belated
presentation of plastic wrappers and bags bearing the name of "L.C. Big Mak Burger, Inc." as the
seller of the hamburgers is an after-thought designed to exculpate them from their unfair business
conduct. As earlier stated, we cannot consider respondents' evidence since petitioners' complaint
was based on facts existing before and during the injunctive hearings.

Thus, there is actually no notice to the public that the "Big Mak" hamburgers are products of "L.C.
Big Mak Burger, Inc." and not those of petitioners who have the exclusive right to the "Big Mac"
mark. This clearly shows respondents' intent to deceive the public. Had respondents' placed a notice
on their plastic wrappers and bags that the hamburgers are sold by "L.C. Big Mak Burger, Inc.", then
they could validly claim that they did not intend to deceive the public. In such case, there is only
trademark infringement but no unfair competition. Respondents, however, did not give such notice.
82 

We hold that as found by the RTC, respondent corporation is liable for unfair competition.

The Remedies Available to Petitioners

Under Section 23 ("Section 23") in relation to Section 29 of RA 166, a plaintiff who successfully
83 

maintains trademark infringement and unfair competition claims is entitled to injunctive and monetary
reliefs. Here, the RTC did not err in issuing the injunctive writ of 16 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. The injunctive writ is indispensable to prevent further acts of infringement by
respondent corporation. Also, the amount of actual damages is a reasonable percentage (11.9%) of
respondent corporation's gross sales for three (1988-1989 and 1991) of the six years (1984-1990)
respondents have used the "Big Mak" mark. 84

The RTC also did not err in awarding exemplary damages by way of correction for the public
good in view of the finding of unfair competition where intent to deceive the public is essential. The
85 

award of attorney's fees and expenses of litigation is also in order.

86
WHEREFORE, we GRANT the instant petition. We SET ASIDE the Decision dated 26 November
1999 of the Court of Appeals and its Resolution dated 11 July 2000 and REINSTATE the Decision
dated 5 September 1994 of the Regional Trial Court of Makati, Branch 137, finding respondent L.C.
Big Mak Burger, Inc. liable for trademark infringement and unfair competition.

SO ORDERED.

Davide, C.J. (Chairman), Quisumbing, Ynares-Santiago and Azcuna, JJ., concur.

Footnotes

Under Rule 45 of the 1997 Rules of Civil Procedure.

1 

Penned by Associate Justice Eloy R. Bello, Jr. with Presiding Justice Jainal D. Rasul and
2 

Associate Justice Ruben T. Reyes concurring.

Penned by Judge Santiago Ranada, Jr.

3 

Itself a registered service mark.

4 

Some of McDonald's registered marks representing food items (f) and services (s) are:
5 

McDONALD'S HAMBURGERS (s); McDONALD'S (f); RONALD McDONALD (s);

McDONALDLAND (s); McCHEESE & DESIGN (f); EGG McMUFFIN (s); EGG McMUFFIN
(f); McDONALDLAND (f); McDONALD'S & ARCHES (s); McFEAST (f); McCHICKEN (f);
McDONALD'S & ARCHES (f); McDONUTS (f); McPIZZA (f); McPIZZA (s); McHAPPY DAY
(s); MINI MAC (s); McDOUBLE (f); TOGETHER-McDONALD'S & YOU (s); CHICKEN
McNUGGETS (f); McDONALD'S & YOU (s); SUPER MAC (f); McSNACK (s); MAC FRIES
(f); McRIB (f); MAPLE McCRISP (f); LITE MAC (f); BIG MAC (s); CHICKEN McSWISS (f);
McMUFFIN (f); McD.L.T. (f). (McDonald's Corporation v. McBagel's, Inc., 649 F.Supp. 1268
[1986]).

Aside from Big Mac sandwiches, McDonald's menu includes cheeseburgers, special
6 

sandwiches, fried french potatoes, chicken nuggets, fried fish sandwiches, shakes, hot pies,
sundaes, softdrinks, and other beverages.

Certificate of Registration No. 1,126,102.

7 

Table napkins, tray liners, cups and food wrappers.

8 

Labels, promotional items and packages.

9 

10 
TSN (Arlene Manalo), 26 July 1990, pp. 34-35.

11 
McDonald's and petitioner McGeorge are referred to as petitioners.

12 
Rizal, Laguna, Bulacan and Quezon.
 E.g. pizzas, noodles, siopaos, hotdog sandwiches, ham sandwiches, fish burgers, fruit
13 

juices, softdrinks and other beverages.

14 
Respondent corporation and private respondents are referred to as respondents.

15 
Records, p. 37.

16 
Ibid., pp. 457-458.

17 
Ibid., pp. 414-426.

18 
Ibid., pp. 460-463.

19 
Rollo, pp. 149-154.

20 
Records, pp. 1431-1432.

21 
Rollo, pp. 233-237 (Capitalization in the original).

22 
Ibid., p. 24.

While petitioners seek to hold liable respondent corporation only, the Court's opinion will
23 

refer not only to the latter but also to all the respondents as all of them filed the pleadings in
this petition.

This provision states: "Filing of petition with Supreme Court. — A party desiring to appeal
24 

by certiorari from a judgment or final order or resolution of the Court of Appeals, the
Sandiganbayan, the Regional Trial Court or other courts whenever authorized by law, may
file with the Supreme Court a verified petition for review on certiorari. The petition shall raise
only questions of law which must be distinctly set forth."

25 
Ramos, et al. v. Pepsi-Cola Bottling Co. of the Phils., et al., 125 Phil. 701 (1967).

26 
Ducusin, et al. v. CA, et al., 207 Phil. 248 (1983).

27 
G.R. No. 103543, 5 July 1993, 224 SCRA 437.

28 
Exhibits E-1 to 2, F-1 to 2 and G-1 to 2.

29 
Exhibits E, F and G.

30 
Exhibits L-10, L-16 to 27.

31 
Exhibits 34, 36-37.

RA 166 has been superseded by Republic Act No. 8293 ("RA 8293"), the Intellectual
32 

Property Code of the Philippines, which took effect on 1 January 1998. Section 22 is
substantially identical with Section 16 of the United States' 1946 Trademark Act ("Lanham
Act").
33 
Superseded by Section 155 of RA 8293 ("Section 155").

34 
See A & H Sportswear Co. v. Victoria's Secret Stores, Inc., 167 F.Supp.2d 770 (2001).

Shaley's Inc. v. Covalt, 704 F.2d 426 (1983). Also referred to as the "lynchpin" (Suncoast
35 

Tours, Inc. v. Lambert Groups, Inc. 1999 WL 1034683 [1999]) or "touchstone" (VMG
Enterprises, Inc. v. F. Quesada and Franco, Inc., 788 F. Supp. 648 [1992]) of trademark
infringement.

This provision states: "Registration of trade-marks, trade-names and service-marks on the

36 

principal register. — There is hereby established a register of trade-marks, trade-names and

service-marks which shall be known as the principal register. The owner of a trade-mark,
trade-name or service-mark used to distinguish his goods, business or services from the
goods, business or services of others shall have the right to register the same on the
principal register, unless it:

(a) Consists of or comprises immoral, deceptive or scandalous matter; or matter

which may disparage or falsely suggest a connection with persons, living or dead,
institutions, beliefs, or national symbols, or bring them into contempt or disrepute;

(b) Consists of or comprises the flag or coat of arms or other insignia of the
Philippines or any of its political subdivisions, or of any foreign nation, or any
simulation thereof;

(c) Consists of or comprises a name, portrait, or signature identifying a particular

living individual except by his written consent, or the name, signature, or portrait of a
deceased President of the Philippines, during the life of his widow, if any, except by
the written consent of the widow;

(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 a 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; or

(e) Consists of a mark or trade-name which, when applied to or used in connection

with the goods, business or services of the applicant is merely descriptive or
deceptively misdescriptive of them, or when applied to or used in connection with the
goods, business or services of the applicant is primarily geographically descriptive or
deceptively misdescriptive of them, or is primarily merely a surname;

(f) Except as expressly excluded in paragraphs (a), (b), (c) and (d) of this section
nothing herein shall prevent the registration of a mark or trade-name used by the
applicant which has become distinctive of the applicant's goods, business or
services. The Director may accept as prima facie evidence that the mark or trade-
name has become distinctive, as applied to or used in connection with the applicant's
goods, business or services, proof of substantially exclusive and continuous use
thereof as a mark or trade-name by the applicant in connection with the sale of
goods, business or services for five years next preceding the date of the filing of the
application for its registration." This has been superseded by Section 123 of RA
8293.
 Section 20, RA 166. This provision states: "Certificate of registration prima facie evidence of
37 

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."
This has been superseded by Section 138 of RA 8293. Neither RA 166 nor RA 8293
provides when the presumption of validity and ownership becomes indubitable. In contrast,
under the Lanham Act, as amended, (15 United States Code § 1065), such takes place once
the trademark has become "incontestable" i.e. after the mark owner files affidavits stating
that the mark is registered and has been in continuous use for five consecutive years; that
there is no pending proceeding; and that there has been no adverse decision concerning the
registrant's ownership or right to registration (See Luis Vuitton Malletier and Oakley, Inc. v.
Veit, 211 F.Supp.2d 556 [2002]). However, both RA 166 (Section 12) and RA 8293 (Section
145) require the filing of the affidavit attesting to the continuous use of the mark for five years
and, under Section 145, failure to file such affidavit will result in the removal of the mark from
the Register.

38 
Rollo, pp. 525-527.

Societe Des Produits Nestlé, S.A. v. Court of Appeals, G.R. No. 112012, 4 April 2001, 356
39 

SCRA 207; McKee Baking Co. v. Interstate Brands Corporation, 738 F. Supp. 1272 (1990).

Societe Des Produits Nestlé, S.A. v. Court of Appeals, supra note 39; Miller Brewing Co. v.
40 

Heileman Brewing Co., 561 F.2d 75 (1977).

41 
Miller Brewing Co. v. Heileman Brewing Co., supra note 40.

42 
A. J. Canfield Co. v. Honickman, 808 F.2d 291 (1986).

Societe Des Produits Nestlé, S.A. v. Court of Appeals, supra note 39 citing § 43(A) of the
43 

Lanham Act, as amended.

44 
Bernard v. Commerce Drug Co., 964 F.2d 1338 (1992).

45 
Keebler Co. v. Rovira Biscuit Corp., 624 F.2d 366 (1980).

46 
McKee Baking Co. v. Interstate Brands Corporation, supra note 39.

See A. Miller and M. Davis, Intellectual Property, Patents, Trademarks and Copyright in a
47 

Nutshell 177-178 (1983).

See Lorenzana v. Macagba, No. L-33773, 22 October 1987, 154 SCRA 723; La Chemise

48 

Lacoste, S.A. v. Hon. Fernandez, etc., et al. 214 Phil. 332 (1984). RA 8293 no longer
provides for a Supplemental Register and instead mandates a single registry system
(Section 137). Under Section 239, marks registered in the Supplemental Register under RA
166 will remain in force but are no longer subject to renewal.

49 
137 Phil. 838 (1969).

50 
Enacted on 6 March 1903.
 Section 3 of Act No. 666 provides: "The ownership or possession of a trade-mark,
51 

heretofore or hereafter appropriated, as in the foregoing section provided, shall be

recognized and protected in the same manner and to the same extent, as are other property
rights known to the law. To this end any person entitled to the exclusive use of a trade-mark
to designate the origin or ownership of goods he has made or deals in may recover damages
in a civil action from any person who has sold goods of a similar kind, bearing such trade-
mark, and the measure of the damages suffered, at the option of the complaining party, shall
be either the reasonable profit which the complaining party would have made had the
defendant not sold the goods with the trade-mark aforesaid, or the profit which the defendant
actually made out of the sale of the goods with the trade-mark, and in cases where actual
intent to mislead the public or to defraud the owner of the trade-mark shall be shown, in the
discretion of the court, the damages may be doubled. The complaining party, upon proper
showing, may have a preliminary injunction, restraining the defendant temporarily from use
of the trade-mark pending the hearing, to be granted or dissolved in the manner provided in
the Code of Civil Procedure, and such injunction upon final hearing, if the complainant's
property in the trade-mark and the defendant's violation thereof shall be fully established,
shall be made perpetual, and this injunction shall be part of the judgment for damages to be
rendered in the same cause as above provided." (Emphasis supplied)

The United States Congress had introduced the same amendment to the Lanham Act in
52 

1946. In 1962, the US Congress again amended Section 16 of the Lanham Act ("Sec.
43(A)") by deleting the phrase "the source or origin of such goods or services, or identity of
such business" in the definition of trademark infringement. This led courts in that jurisdiction
to hold that post-sale confusion by the public at large (Esercizio v. Roberts, 944 F.2d 1235
[1991]. See also Koppers Company, Inc. v. Krup-Koppers, 517 F.Supp. 836 [1981]) or
"subliminal confusion," defined as confusion on a subliminal or subconscious level, causing
the consumer to identify the properties and reputation of one product with those of another,
although he can identify the particular manufacturer of each, (Ortho Pharmaceutical
Corporation v. American Cyanamid Company, 361 F.Supp. 1032 [1973]. See also
Farberware, Inc. v. Mr. Coffee, Inc., 740 F.Supp. 291 (1990); Dreyfus Fund Incorporated v.
Royal Bank of Canada, 525 F. Supp. 1108 [1981]) are sufficient to sustain a trademark
infringement claim. Section 155 substantially reproduces Sec. 43(A).

53 
Agpalo, The Law on Trademark, Infringement and Unfair Competition 45-46 (2000).

54 
Records, p. 5.

55 
Ibid., pp. 4, 6-7.

56 
Sta. Ana v. Maliwat, et al., 133 Phil. 1006 (1968).

Societe Des Produits Nestlé, S.A. v. Court of Appeals, supra note 39; Emerald Garment

57 

Manufacturing Corporation v. Court of Appeals, G.R. No. 100098, 29 December 1995, 251

SCRA 600.

58 
V. Amador, Trademarks Under The Intellectual Property Code 260 (1999).

59 
Ibid., p. 263.

60 
95 Phil. 1 (1954).
61 
100 Phil. 214 (1956).

62 
No. L-23035, 31 July 1975, 65 SCRA 575.

63 
No. L-27906, 8 January 1987, 147 SCRA 154.

64 
Supra note 27.

65 
Supra note 39.

66 
125 Phil. 295 (1966).

67 
Rollo, pp. 588-589.

68 
Time v. Life Television Co. of St. Paul, 123 F. Supp. 470 (1954);

Conde Nast Publications v. Vogue School of Fashion Modelling, 105 F. Supp. 325 (1952);
69 

Hanson v. Triangle Publications, 163 F.2d 74 (1947).

70 
See Fisons Horticulture, Inc. v. Vigoro Industries, Inc., 30 F.3d 466 (1994).

71 
No. L-26557, 18 February 1970, 31 SCRA 544.

72 
PACCAR Inc. v. Tele Scan Technologies, L.L.C., 319 F.3d 243 (2003).

73 
Reiterated in Section 168 of RA 8293.

74 
V. Amador, supra note 58 at 278.

Shell Co. of the Philippines, Ltd. v. Ins. Petroleum Refining Co., Ltd., 120 Phil. 434 (1964);
75 

"La Insular" v. Jao Oge, 42 Phil. 366 (1921).

76 
Alhambra Cigar, etc., Co. v. Mojica, 27 Phil. 266 (1914).

Co Tiong Sa v. Director of Patents, supra note 60; Clarke v. Manila Candy Co., 36 Phil. 100
77 

(1917).

78 
See Q-Tips, Inc. v. Johnson & Johnson, 108 F.Supp 845 (1952).

79 
Rollo, pp. 40-45.

80 
Suncoast Tours, Inc. v. Lambert Groups, Inc. 1999 WL 1034683 (1999).

81 
Rollo, pp. 148-149.

82 
See Q-Tips, Inc. v. Johnson & Johnson, supra note 78.

This provision reads: "Actions, and damages and injunction for infringement. — Any person
83 

entitled to the exclusive use of a registered mark or trade-name may recover damages in a
civil action from any person who infringes his rights, and the measure of the damages
 suffered shall be either the reasonable profit which the complaining party would have made,
had the defendant not infringed his said rights, or the profit which the defendant actually
made out of the infringement, or in the event such measure of damages cannot be readily
ascertained with reasonable certainty, then the court may award as damages a reasonable
percentage based upon the amount of gross sales of the defendant of the value of the
services in connection with which the mark or trade-name was used in the infringement of
the rights of the complaining party. In cases where actual intent to mislead the public or to
defraud the complaining party shall be shown, in the discretion of the court, the damages
may be doubled.

The complaining party, upon proper showing, may also be granted injunction."

84 
TSN, (Francis Dy), 15 March 1993, p. 32; TSN (Francis Dy), 22 March 1993, pp. 1-2.

85 
Article 2229, Civil Code.

86 
Article 2208(1), Civil Code.

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