Thursday, August 26, 2004 SC reverses CA ruling v. McDo
A LOCAL fastfood operator was served an unsavory meal by the Supreme Court (SC) as the High Tribunal Wednesday upheld a lower court decision imposing P600,000 in damages on the establishment for using an imitation of a registered trademark.
In a 39-page decision, the SC reinstated a 1994 Makati City court ruling in favor of US-based firm McDonald's Corporation and McGeorge Food Industries Inc. against LC Big Mak Burger Inc."
The SC decision reversed a 1999 ruling of the Court of Appeals (CA), which held the local firm "Big Mak" not liable for trademark infringement and unfair competition and had ordered McDonald's to pay P1,900,000 in damages.
The CA ruling in part had said there could be no possibility of the public mistaking a "Big Mak" which is sold in stalls and vans with a "Big Mac".
In ruling against the CA, the SC noted that McDonald's first registered "Big Mac" mark for its double-decker hamburger sandwich with the US Trademark Registry on Oct. 16, 1979.
Based on the Home Registration, McDonald's applied for the registration of the same mark in the Principal Register of the then Philippine Bureau of Patents, Trademarks and Technology (PBPTT) now known as 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, which was subsequently allowed on July 18, 1985 by the PBPTT.
>From 1982 to 1990, McDonald's spent P10.5 million in advertisements for "Big Mac" hamburger sandwiches alone.
On the other hand, L.C. Big Mak Burger Inc. operates fast-food outlets and snack vans in Metro Manila and nearby provinces owned by Francis B. Dy, Edna A. Dy, Rene B. Dy, William B. Dy, Jesus Aycardo, Araceli Aycardo, and Grace Huerto.
It applied on Oct. 21, 1988 with the PBPTT the registration of the "Big Mak" mark for its hamburger sandwiches which McDonald's opposed.
Having received no reply from Dy, the petitioners sued the respondents before the Makati Regional Trial Court (RTC) Branch 137 on June 6, 1990 for alleged "trademark infringement and unfair competition."
In its order dated July 11, 1990, the RTC issued a temporary restraining order (TRO) against Big Mak from using the "Big Mak" mark in the operation of their business in the National Capital Region (NCR).
On Aug. 16, 1990, the RTC issued a writ of preliminary injunction replacing the TRO. Big Mak then appealed the case before the CA. Benjamin B. Pulta
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