Topic: COLORABLE IMITATION

12. L.C. BIG MAK BURGER, INC., vs. MCDONALD'S CORPORATION,

G.R. No. 233073, February 14, 2018
TIJAM, J.:

FACTS:

The instant petition stemmed which McDonald's Corporation filed against L.C. Big Mak Burger,
Inc. for trademark infringement and unfair competition RTC of Makati City.

In the said case, the Infringement Court, acting on the prayer for the issuance of a writ
preliminary injunction, issued an Order dated August 16, 1990, directing petitioner to refrain
from:

a) using for its fast food restaurant business the name "Big Mak" or any other mark, word,
name, or device, which by colorable imitation is likely to confuse, mislead or deceive the
public into believing that the [petitioner's] goods and services originate from, or are
sponsored by or affiliated with those of [respondent's], and from otherwise unfairly
trading on the reputation and goodwill of the Mcdonald's Marks, in particular the mark
"BIG MAC";
b) selling, distributing, advertising, offering for sale or procuring to be sold, or otherwise
disposing of any article described as or purporting to be manufactured by [respondent];
c) directly or indirectly using any mark, or doing any set or thing, likely to induce the belief
on the part of the public that [petitioner] and their products and services are in any way
connected with [respondent's] and their products and services

What is actually being argued in this case is petitioner's use of its corporate name. According to
the respondent, as the proscribed "Big Mak" words appears in petitioner's corporate name, the
use of the same in petitioner's stalls and products is still an infringement of respondent's mark.
Ultimately, thus, respondent argues that petitioner's use of its corporate name is a defiance to
the injunction order. This argument was sustained by the CA in its assailed Decision.

April 7, 2014, RTC of Makati rendered in favor of L.C. BIG MAK BURGER, INC. and FRANCIS
DY, and against DISMISSING this instant petition for lack of merit. Respondent is also ordered
to pay the petitioner and Francis Dy damages and cost.

ISSUE:

 Whether or not there is colorable imitation resulting in likelihood of confusion

HELD:

NO. The Supreme Court (SC) dismissed the contempt case filed by fast food giant McDonald's
Corp. against local burger company L.C. Big Mak Burger Inc. over the latter's usage of the
popular "Big Mac" brand.

In a 13-page ruling penned by Associate Justice Noel Tijam, the SC's first division affirmed the
April 7, 2014 decision of Makati City Regional Trial Court Branch 59, and reversed and set aside
the Feb. 2, 2017 decision of the Court of Appeals (CA) that favored McDonald's and found
petitioner guilty of indirect contempt and also ordered it to pay a fine of PHP30,000.

The SC also ordered McDonald's to pay total of PHP1.2 million for moral and exemplary
damages and attorney fees to L.C. Big Mak Burger Inc. and owner Francis Dy.

"Contrary to what respondent attempted to impress to the courts, it is not wholly true that
petitioner continues to use the mark 'Big Mak' in its business, in complete defiance to this
Court's decision," read the SC ruling promulgated last Feb. 14 but received by parties only
recently.
"Testimonial and documentary evidence were in fact presented to show that petitioner had been
using 'Super Mak' and/or its corporate name 'L.C. Big Mak Burger Inc.' in its business
operations instead of the proscribed mark 'Big Mak' pursuant to the ruling of the Infringement
Court," the court stressed.

It further explained that petitioner's use of its corporate name that includes 'Big Mak' is not
tantamount to defiance of the court's ruling.

The high court stressed that the changes made by L.C. Big Mak Burger Inc. as early as during
trial of the case "belie the imputation of disobedience, much less contemptuous acts, against
petitioner."

"Petitioner's good faith in complying with the court's order is manifest in this case," it noted.
Topic: CONFUSING SIMILARITY

14. ASIA BREWERY, INC. vs. THE HON. COURT OF APPEALS and SAN MIGUEL
CORPORATION
G.R. 103543 ; July 5, 1993
GRIÑO-AQUINO, J.:

FACTS:

San Miguel Corporation (SMC) filed a complaint against Asia Brewery Inc. (ABI) for infringement
of trademark and unfair competition on account of the latter's BEER PALE PILSEN or BEER NA
BEER product which has been competing with SMC's SAN MIGUEL PALE PILSEN for a share
of the local beer market.

The trial court dismissed SMC's complaint because ABI "has not committed trademark
infringement or unfair competition against" SMC

On appeal by SMC, the Court of Appeals reversed the decision rendered by the trial court,
finding the defendant Asia Brewery Incorporated GUILTY of infringement of trademark and
unfair competition. ABI then filed a petition for certiorari.

ISSUE:

 Whether or not there is confusing similarity between the two trademarks.

RULING:

NO. There is hardly any dispute that the dominant feature of SMC’s trademark is the name of
the product: SAN MIGUEL PALE PILSEN, written in white Gothic letters with elaborate serifs at
the beginning and end of the letters “S” and “M” on an amber background across the upper
portion of the rectangular design. On the other hand, the dominant feature of ABI’s trademark is
the name: BEER PALE PILSEN, with the word “Beer” written in large amber letters, larger than
any of the letters found in the SMC label.

The trial court perceptively observed that the word “BEER” does not appear in SMC’s
trademark, just as the words “SAN MIGUEL” do not appear in ABI’s trademark. Hence, there is
absolutely no similarity in the dominant features of both trademarks. Neither in sound, spelling
or appearance can BEER PALE PILSEN be said to be confusingly similar to SAN MIGUEL
PALE PILSEN. No one who purchases BEER PALE PILSEN can possibly be deceived that it is
SAN MIGUEL PALE PILSEN. No evidence whatsoever was presented by SMC proving
otherwise. There is no confusing similarity between the competing beers for the name of one is
“SAN MIGUEL” while the competitor is plain “BEER” and the points of dissimilarity between the
two outnumber their points of similarity.

\
Topic: GENERIC MARKS

23. LYCEUM OF THE PHILS. V. COURT OF APPEALS

G.R. No. 101897; March 5, 1993.
FELICIANO, J.:

FACTS:

Petitioner Lyceum of the Philippines had commenced before the SEC a proceeding against the
Lyceum of Baguio to change its corporate name alleging that the 2 names are substantially
identical because of the word ‘Lyceum’.

SEC found for petitioner and the SC denied the consequent appeal of Lyceum of Baguio in a
resolution. Petitioner then basing its ground on the resolution, wrote to all educational
institutions which made use of the word ‘Lyceum’ as part of their corporate name to discontinue
their use.

When this recourse failed, petitioner moved before the SEC to enforce its exclusive use of the
word ‘Lyceum.’ Petitioner further claimed that the word ‘Lyceum’ has acquired a secondary
meaning in its favor.

The SEC Hearing Officer found for petitioner. Both SEC En Banc and CA ruled otherwise.

ISSUES:

 Whether or not ‘Lyceum’ is a generic word which cannot be appropriated by

petitioner to the exclusion of others.

RULING:

YES. “Lyceum” is in fact as generic in character as the word “university.” In the name of the
petitioner, “Lyceum” appears to be a substitute for “university;” in other places, however,
“Lyceum,” or “Liceo” or “Lycee” frequently denotes a secondary school or a college. It may be
that the use of the word “Lyceum” may not yet be as widespread as the use of “university,” but it
is clear that a not inconsiderable number of educational institutions have adopted “Lyceum” or
“Liceo” as part of their corporate names. Since “Lyceum” or “Liceo” denotes a school or
institution of learning, it is not unnatural to use this word to designate an entity which is
organized and operating as an educational institution.
Topic: False Description or Representation

31. CHESTER UYCO v. VICENTE LO

GR No. 202423; January 28, 2013
BRION, J.:

FACTS:

Petitioners in this case are the officers of Wintrade Industrial Sales Corp (WINTRADE),
seller of kerosene burners in the Philippines. Vicente Lo, on the other hand, claims to be
the assignee of the disputed marks "HIPOLITO & SEA HORSE & TRIANGULAR
DEVICE," "FAMA," and other related marks, service marks and trade names “Casa
Hipolito S.A. Portugal”, to be used in kerosene burners as well.

Lo further alleged that the ultimate owner of said marks is the Portuguese Company
GASIREL and that the latter executed a deed of assignment in favor of Lo to use the
marks in all countries except Europe and America. Lo subsequently authorized his
agent Philippine Burners Manufacturing Corporation (PBMC) to manufacture burners
with the aforementioned marks and trade name “Casa Hipolito S.A. Portugal”. During a
test buy, Lo was able to purchase a burner with marked "Made in Portugal" and
"Original Portugal".

He noted that such burners were manufactured by WINTRADE. As such, Lo filed a

complaint on the ground that the kerosene burners sold by WINTRADE have caused
confusion, mistake and deception on the part of the buying public as to the origin of
goods. WINTRADE and its officers contend that the marks "Made in Portugal" and
"Original Portugal" refer to “origin of the design” and not “origin of the goods” and that
they have certificates of registration with the IPO for use of marks, derived their
authority to use from WONDER, their predecessor-in-interest and that PBMC’s licensing
agreement with Lo is ineffective for being not notarized, among others.

ISSUE:

 Whether or not WINTRADE and its officers are liable for violation of the law
on trademarks, trade names and false designation of origin.

HELD:

YES. WINTRADE and its officers are liable for violation of the law on trademarks and
trade names and for false designation of origin.

They placed the words "Made in Portugal" and "Original Portugal" with the disputed
marks knowing fully well — because of their previous dealings with the Portuguese
company — that these were the marks used in the products of another.

More importantly, they used the marks without any authority from the owner
notwithstanding that their products are, in reality, produced in the Philippines, not in
Portugal.

Hence, probable cause exists to charge the petitioners with false designation of origin.
Had they intended to refer to the source of the design or the history of the manufacture,
they should have explicitly said so in their packaging.
The Supreme Court emphasized that the law on trademarks and trade names precisely
precludes a person from profiting from the business reputation built by another and from
deceiving the public as to the “origin” of products.