McDonalds Corp. vs.

McJoy,
514 SCRA 95
Facts:
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 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 McDonalds Corporation, filed a verified Notice of Opposition against the respondents application claiming
that the trademark "MACJOY & DEVICE" so resembles its corporate logo, otherwise known as the Golden Arches or
"M" design, andits marks "McDonalds," McChicken," "MacFries," etc. (hereinafter MCDONALDS marks) such that
when used on identical or related goods, the trademark applied forwould confuse or deceive purchasers into
believing that the goods originate from thesame source or origin.
Also, petitioner alleged that the respondents use and adoption in bad faith of the"MACJOY & DEVICE" mark would
falsely tend to suggest a connection or affiliation with petitioners restaurant services and food products, thus,
constituting a fraud upon the general public and further cause the dilution of the distinctiveness of petitioners
registered and internationally recognized MCDONALDS marks to its prejudice and irreparable damage.IPO ruled
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 petitioners opposition and rejected the respondents application. (IPO used the
dominancy test).
IPO denied MR. CA reversed the IPO decision, ruling that there was no confusing similarity between the marks
"MACJOY" and "MCDONALDS," for the ff. reasons:
1.
2.

3.
4.

The word "MacJoy" is written in round script while the word "McDonalds" is written in single stroke gothic;
The word "MacJoy" comes with the picture of a chicken head with cap and bowtie and wings sprouting on
both sides, while the word "McDonalds" comes with an arches "M" in gold colors, and absolutely without
any picture of a chicken;
The word "MacJoy" is set in deep pink and white color scheme while "McDonalds" is written in red, yellow
and black color combination;
The faade of the respective stores of the parties are entirely different.

Respondents restaurant is set also in the same bold, brilliant and noticeablecolor scheme as that of its wrappers,
containers, cups, etc., while Petitioners restaurant is in yellow and red colors, and with the mascot of "Ronald
McDonald"being prominently displayed therein."
1st Issue:
Whether or not the dominancy test should be applied, instead of the holistic test - YES.
Ratio:
In determining similarity and 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 competing
trademarks that might cause confusion or deception. 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.
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. 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. Applying the dominancy test to the instant case, the Court finds that
herein petitioners "MCDONALDS" and respondents "MACJOY" marks are confusingly similar with each other such
that an ordinary purchaser can conclude an association or relation between the marks.

2nd Issue:
Whether or not there is a confusing similarity between MACJOY and MCDONALDS trademarks as to justify the IPOs
rejection of Macjoys trademark application - YES.
Ratio:
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.
It is the prefix "Mc," an abbreviation of "Mac,"which visually and aurally catches the attention of the consuming
public.
Both trademarks are used in the sale of fastfood products. Indisputably, the respondents 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.
McDonalds registered trademark covers goods similar if not identical to those covered by the respondents
application. Predominant features such as the "M," "Mc," and "Mac" appearing in both McDonalds marks and the
MACJOY & DEVICE" easily attract the attention of would-be customers.
Even non-regular customers of their fast food 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.
By reason of the respondents 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 there from is that the respondent would want to ride high on the established reputation and
goodwill of the MCDONALDs marks, which, as applied to petitioners restaurant business and food products, is
undoubtedly beyond question.
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.