Validity of the mark. A mark is valid if it is “distinctive” and thus not barred from registration. Once registered, not only the mark’s validity but also the registrant’s ownership of the mark is presumed.
Generic marks are commonly used as the name or description of a kind of goods, such as “Lite” for beer or “Chocolate Fudge” for chocolate soda drink. Descriptive marks, on the other hand, convey the characteristics, functions, qualities or ingredients of a product to one who has never seen it or does not know it exists, such as “Arthriticare” for arthritis medication.
Big Mak argues that only the word "Mac" in the “Big Mac” mark is valid because the word “Big” is generic and descriptive, and thus “incapable of exclusive appropriation.” However, the “Big Mac” mark should be treated in its entirety and not dissected word for word. It falls under the class of fanciful or arbitrary marks as it bears no logical relation to the actual characteristics of the product it represents. It's neither generic nor descriptive. It’s highly distinctive and thus valid.
Types of confusion. The law covers two types of confusion arising from the use of similar or colorable imitation marks, namely:
a. Confusion of goods (product confusion). The ordinarily prudent purchaser would be induced to purchase one product in the belief that he was purchasing the other. This applies because the “Big Mak” mark is used on the same goods, i.e. hamburger sandwiches.
b. Confusion of business (source or origin confusion). 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. This is also applicable because Big Mak’s business includes selling hamburger sandwiches.
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. It doesn’t matter that: (1) “Big Mak” hamburgers cater mainly to the low-income group, while “Big Mac” hamburgers cater to the middle and upper income groups, because the low-income group might be led to believe that the “Big Mak” hamburgers are the low-end hamburgers marketed by McDo; (2) the “Big Mac” mark is used only in double-decker hamburgers, while the “Big Mak” mark on hamburgers and other products like siopao, noodles and pizza; (3) Big Mac double-deckers are sold in a styrofoam box with the “McDonald’s” logo and trademark in red, block letters at a more expensive price, while Big Mak hamburgers are sold in plastic wrappers and plastic bags; and (4) McDonald’s restaurants are air-conditioned buildings with drive-thru service, compared to Big Mak’s mobile vans. Otherwise, registered marks will lose their protection under the law. The registered trademark owner enjoys protection in product and market areas that are the normal potential expansion of his business.
Tests to determine the likelihood of confusion. Only the less stringent standard of “likelihood of confusion” is required. Failure to present proof of actual confusion does not negate a claim of trademark infringement. There are two tests to determine the likelihood of confusion:
a. The holistic test, which considers the entirety of the marks as applied to the products, including the labels and packaging, in determining confusing similarity.
b. The dominancy test, which focuses on the similarity of the prevalent features of the competing trademarks that might cause confusion. Greater weight is given 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. The test of dominancy is now explicitly incorporated into law.
Applying the dominancy test, the use of the “Big Mak” mark results in likelihood of confusion: (1) “Big Mak” sounds exactly the same as “Big Mac;” (2) the first word in “Big Mak” is exactly the same as the first word in “Big Mac;” (3) the first two letters in “Mak” are the same as the first two letters in “Mac;” (4) the last letter in “Mak” while a “k” sounds the same as “c” when the word “Mak” is pronounced; and (5) in Filipino, the letter “k” replaces “c” in spelling, thus “Caloocan” is spelled “Kalookan.”
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.
Applied to the same food product of hamburgers, the two marks will likely result in confusion in the public mind. 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.”
(Read Part I. Source: McDonald's Corporation vs. L.C. Big mak Burger, Inc., G.R. No. 143993, 18 August 2004)
