G.R. No.

166115 February 2, 2007

McDONALDS CORPORATION, Petitioner,
vs.
MACJOY FASTFOOD CORPORATION, Respondent.

FACTS:
MacJoy Fastfood Corp. is a corporation in the sale of fastfood based in Cebu filed with IPO for the
registration of their name.

McDonald's Corporation filed an opposition to the application. McDonald's claims that their logo
and use of their name would falsely tend to suggest a connection with MacJoy's 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.

Respondent averred that MACJOY has been used for the past many years in good faith and has
spent considerable sums of money for said mark.

The IPO held that there is confusing similarity The CA held otherwise stating there are
predominant difference like the spelling, the font and color of the trademark and the picture of
the logo.

ISSUE: Whether the ruling of the CA is correct.

RULING:

No. Jurisprudence developed two tests, the dominancy and holistic test. The dominancy test
focuses on the similarity of the prevalent features of the competing trademarks that might cause
confusion or deception while 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. Under the latter test, a comparison of the words is not the only determinant factor.

The IPO, though they correctly used the dominancy, they should have taken more considerations.
In recent cases, the SC has consistently used and applied the dominancy test in determining
confusing similarity or likelihood of confusion between competing trademarks. The CA, while
seemingly applying the dominancy test, in fact actually applied the holistic test.

Applying the dominancy test to the instant case, the Court both marks are confusingly similar
with each other such that an ordinary purchaser can conclude an association or relation between
the marks. The predominant features such as the "M," "Mc," and "Mac" appearing in both easily
attract the attention of would-be customers. Most importantly, both trademarks are used in the
sale of fastfood products.

Petitioner has the right of ownership in the said marks. Petitioner's mark was registered in 1977
while respondent only in 199

G.R. No. 179127 December 24, 2008

IN-N-OUT BURGER INC., Petitioner,
vs.

INC VS SEHWANI, Respondent.

Facts:
Petitioner IN-N-OUT BURGER, INC., a business entity incorporated under the laws of US, which is a signatory to the
Convention of Paris on Protection of Industrial Property and the Agreement on Trade Related Aspects of
Intellectual Property Rights (TRIPS). Petitioner isengaged mainly in the restaurant business, but it has never
engaged in business in the Philippines. Respondents Sehwani, Incorporatedand Benita Frites, Inc. are corporations
organized in the Philippines.On 2 June 1997, petitioner filed trademark and service mark applications with the
Bureau of Trademarks (BOT) of the IPO for "IN-N-OUT"and "IN-N-OUT Burger & Arrow Design." Petitioner later
found out, through the Official Action Papers issued by the IPO on 31 May 2000,that respondent Sehwani,
Incorporated had already obtained Trademark Registration for the mark "IN N OUT (the inside of the letter
"O"formed like a star)." Petitioner eventually filed on 4 June 2001 before the Bureau of Legal Affairs (BLA) of the
IPO an administrativecomplaint against respondents for unfair competition and cancellation of trademark
registration. Respondents asserted therein that theyhad been using the mark "IN N OUT" in the Philippines since
15 October 1982. Respondent then filed with the BPTTT an application for theregistration of the mark. BPTTT
approved its application and issued the corresponding certificate of registration in favor of the respondent.On Dec
22, 2003, IPO Director of Legal Affairs rendered a decision in favor of petitioner stating petitioner had the right to
use itstradename and mark in the Philippines to the exclusion of others. However, the decision also includes that
respondent is not guilty of unfair competition. Upon appeal by petitioner, the new IPO Director General declared
that respondents were guilty of unfair competitionon December 23, 2005. On 18 July 2006, the Court of Appeals
promulgated a Decision reversing the Decision dated 23 December 2005 of the IPO Director General. The
appellate court declared that Section 163 of the Intellectual Property Code specifically confers upon theregular
courts, and not the BLA-IPO, sole jurisdiction to hear and decide cases involving provisions of the Intellectual
Property Code,particularly trademarks. Hence, the present petition.
Issue:
(1) Whether the IPO (administrative bodies) have jurisdiction to cases involving unfair competition(2)
Whether respondent Sehwani is liable of unfair competition

Held:
(1) Yes. Sec. 160 and 170, which are found under Part III of the IP Code, recognize the concurrent jurisdiction
of civil courts and theIPO over unfair competition cases. Therefore, the IPO Director of Legal Affairs have jurisdiction
to decide the petitioner's administrativecase against respondents and the IPO Director General have exclusive
jurisdiction over the appeal of the judgment of the IPO Director of Legal Affairs.(2) Yes. The evidence on record
shows that the respondents were not using their registered trademark but that of the petitioner. Further,
respondents are giving their products the general appearance that would likely influence purchasers to believe
that these products are those of the petitioner. The intention to deceive may be inferred from the similarity of the
goods as packed and offered for sale, and, thus, action will lie to restrain such unfair competition. Also,
respondents use of IN-N-OUT BURGER in businesses signages reveals fraudulent intent to deceive
purchasers.
N.B.
The essential elements of an action for unfair competition are 1) confusing similarity in the general appearance of
the goods and (2) intentto deceive the public and defraud a competitor

G.R. No. 111580, June 21, 2001

Shangri-La International Hotel Management, Petitioner,
vs.

CA, Respondent.

Facts:
On June 21, 1988, the Shangri-La International Hotel Management filed with theBureau of Patents, Trademarks
and Technology Transfer (BPTTT) a petition praying for the cancellation of the registration of the "Shangri-
La" mark and "S" device/logo issuedto the Developers Group of Companies, Inc., on the ground
that the same was illegallyand fraudulently obtained and appropriated for the latter's
restaurant business. TheShangri-La Group alleged that it is the legal and beneficial owners of
the subject markand logo; that it has been using the said mark and logo for its
corporate affairs and business since March 1962 and caused the same to be specially
designed for their international hotels in 1975, much earlier than the alleged first
use thereof by the
Developers Group in 1982.It also filed with the BPTTT its own app
l i c a t i o n f o r registration of the subject mark and logo. The Developers Group filed an
opposition to the application, which was docketed as Inter Partes Case No. 3529.
Almost 3 years later, or on April 15, 1991, the Developers Group instituted with the RTC of Quezon City a
complaint for infringmenent and damages with prayer for injunction.
On January 8, 1992, the ShangriLa Group moved for the suspensio
n o f t h e proceedings in the infringement case on account of the pendency of the
administrative proceedings before the BPTTT.

This was denied by the trial court in a Resolution issued on January 16, 1992.
Issue:
Whether, despite the institution of an Inter Partes case for cancellation of a mark with the BPTTT (now the
Bureau of Legal Affairs, Intellectual Property Office) by one party, the adverse party can file a
subsequent action for infringement with the regular courts of justice in connection with the same
registered mark.

Held:
Section 151.2 of Republic Act No. 8293, otherwise known as the Intellectual Property
Code, provides, as follows Section 151.2. Notwithstanding the foregoing provisions, the
court or the administrative agency vested with jurisdiction to hear and adjudicate
any action to enforce the rights to a registered mark shall likewise
exercise jurisdiction to determine whether the registration of said mark may becancelled in
accordance with this Act. The filing of a suit to enforce the registered mark with the
proper court or agency shall exclude any other court or agency from assuming jurisdiction over a
subsequently filed petition to cancel the same mark.
On the other hand, the earlier filing of petition to cancel the mark with the Bureau of Legal Affairs
shall not constitute prejudicial question that must be resolved before an action to enforce the
rights to same registered mark may be decided. Similarly, Rule 8, Section 7, of the Regulations on Inter
Partes Proceedings, provides to wit

Section 7.
Effect of filing of a suit before the Bureau or with the proper court
.- The filing of a suit to enforce the registered mark with the proper court or Bureau shall exclude
any other court or agency from assuming jurisdiction over a subsequently filed petition to cancel
the same mark.
On the other hand, the earlier filing of petition to cancel the mark with the
Bureau s h a l l n o t c o n s t i t u t e a p r e j u d i c i a l q u e s t i o n t h a t m u s t b e r e s
o l v e d before an action to enforce the rights to same registered mark may be
decided.
Hence, as applied in the case at bar, the earlier institution of an Inter Partes case by the Shangri-La Group for the
cancellation of the "Shangri-La" mark and "S" device/logo with the BPTTT cannot effectively bar the
subsequent filing of an infringement case by registrant Developers Group. The law and the rules
are explicit. The rationale is plain: Certificate of Registration No. 31904, upon which the infringement case is
based, remains valid and subsisting for as long as it has not been cancelled by the Bureau or by
an infringement court. As such, Developers Group's Certificate of Registration in
the principal register continues as "prima facie evidence of the validity
of t h e r e g i s t r a t i o n , t h e r e g i s t r a n t ' s o w n e r s h i p o f t h e m a r k o r t r a d e -
n a m e , a n d o f t h e registrant's exclusive right to use the same in connection with the goods,
businessor services specified in the certificate." Since the certificate still subsists, D
evelopersGroup may thus file a corresponding infringement suit and recover damages from any
person who infringes upon the former's rights.