17. McDonald’s Corporation v. L.C. Big Mak Burger, Inc., G.R. No.

143993,18 August 2004

TOPIC: Dominancy Test

DOCTRINE: 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.

FACTS: McDonald’s owns a family of marks including the “Big Mac” mark for its “double-
decker hamburger sandwich. Pending approval of its application, McDonald’s introduced its
“Big Mac” hamburger sandwiches in the Philippine market in 1981. On 1985, the PBPTT
allowed registration of the “Big Mac” mark in the Principal Register based on its Home
Registration in the United States. L.C. Big MakBurger is a domestic corporatin which operates
fast-food outlets and snack vans ini Metro Manila and nearby provinces. Its Menu includes
hamburger sandwiches.

On 1988, L.C. Big Mark applied with the PBTT for the registration of the “Big Mak” mark for
its hamburger sandwiches. MacDonald’s opposed the application on the ground that “Big Mak”
was a colorable imitation of its registered mark for the same food products. McDonald’s
thereafter requested L.C Bigmak to desist from using the said mark. However, the request fell on
deaf ears. Thus, McDonald’s filed a complaint for infringement before the RTC.

For their part, L.C Bigmak asserts that their “Big Mak” hamburgers cater mainly to the low-
income group while Mcdonald’s “Big Mac” hamburgers cater to the middle and upper income
groups.

A judgement was later rendered in favor of McDonald’s. On appeal, the CA reversed the trial
court’s decision ruling 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.

ISSUE: Whether LC Big Mak’s use of the “Big Mak” Marks results in likelihood of confusion

RULING: YES. 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.
Here, the Court finds that LC Big Mak’s 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.