ANG vs. TEODORO (1942) (Ang Tibay Case)

"Talent alone cannot make a writer.  There must be a man behind the book"  

                                                 -Ralph Waldo Emerson

Mr. Toribio Teodoro
(Courtesy of Philippine Shocking History)
(anu ba yung buhok ni Mr. Toribio?.. shocking ;p)

Sometimes we all need midnight walks. That is if we can't make it in day-time due to the tightness of our own schedules. Especially us men. To tell us what the day is about. Just to keep things under a clear perspective, bring it into focus.

I've learned that from my grandfather. Of course that's ahm.. the province were talkin about, at summer vacation when we were kids. He loved taking walks. Not to mention the time when people were what they really were, never any ill-intent even in the wee hours of the night. Unlike today when crimes proliferate.

It's all about that man's compelling shadow against the moon that's what they say, that masculine penumbra. A real man thinks.. ponders.. life is like chess moves. It's always touch move. But to the thinking man.. he always retrace back his steps.. the errors he's committed, because he knows there is no better way to move forward.  

Sometimes I don’t understand children. You ask them what piece they want to play and almost uniformly they choose the white piece. There’s a beauty in handling the black piece. All you need to do is defend and defend until you reach that point where your defense becomes an attack. Interesting right? The black piece has a built-in challenge, a challenge for you to rise above everything.  

People don’t realize the chess game is actually a battle of two kingdoms in a form of a siege. It’s the black that raises their draw bridge and it’s the white that draws their catapults. So what do you do when you are under siege? When your enemy is ready to cut your food and water supply? You have to act quickly while there’s enough storage, or your army will soon fail for lack of sustenance. But not too quick, remember you have the upper hand, you occupy a higher ground, you can see everything from where you stand, every slight movement on the ground. Your archers have the trajectory advantage. You act quick, but not too quick for in your quickness you have to wait. You wait for what? You wait for your opponent to commit a mistake. 

That’s the beauty of playing the black piece, it builds patience. And reality reveals in a hundred different chess moves, it is impossible not commit a single mistake. And so you rely on your opponent’s error. A mistake you patiently await even all throughout the game just in case your long learned well established strategies of old had proved to be lacking in order to out-wit him.  It all boils down to your manner of reading. If you don’t know how to read her mistakes as the white queen attacks, you’ll end up a defeated black king and a conquered kingdom.  

Honesty is not weakness. You can read better than that.  Or maybe learn back the basics. The basics of my grandfather, a virtuous honest man.

Well whatever it takes, I guess we just have to do our manly midnight walks in safety and with-in the bounds of our back or front yard for all I care. As long as we thinking men get our paths straightened and regain our focus. There is no better silent teacher than solitude. 

This is trademark infringement. Here's the case.. 

Respondent TORIBIO TEODORO, at first in partnership with JUAN KATINDIG and later as sole proprietor, has continuously used "ANG TIBAY," both as a trade-mark and as a trade-name, in the manufacture and sale of slippers, shoes, and indoor baseballs since 1910. 

He formally registered it as trade-mark and as trade-name. The growth of his business is a thrilling epic of Filipino industry and business capacity. Starting in an obscure shop in 1910 with a modest capital of P210 but with tireless industry and unlimited perseverance it grew into one of the early 100% Filipino owned firms. 

wow.. hats off to the Filipino ingenuity..

Petitioner ANA ANG registered the same trade-mark "Ang Tibay" for pants and shirts on 1932, and established a factory for the manufacture of said articles in the year 1937. 

Good thinking. Very apt you know?.. apelyido nya 'ANG', and just insert 'TIBAY' as kind of suffix and.. it says it all. The problem is may nauna ng nagregister before her.. and I don't think she's unaware of it.. the product was well known all over Philippine islands in those days... 

So parang sinabi nya lang kay Mr. Teodoro... "Ako ang talagang may karapatang gumamit ng 'ANG TIBAY' e ang pangalan ko 'Ang' eh 'Ang' ba pangalan mo? your last name starts with T pero 'Teodoro' naman di naman 'Tibay"  LOL (joke lang ah don't quote me on that)...

ANG was sued by TEODORO for trademark infringement. 

TRIAL COURT FAVORED ANG

The trial court absolved the defendant from the complaint, with costs against the plaintiff, on the grounds that 1. the two trademarks are dissimilar and are used on different and non-competing goods  2. that there had been no exclusive use of the trade-mark by the plaintiff; and 3. that there had been no fraud in the use of the said trade-mark by the defendant because the goods on which it is used are essentially different from those of the plaintiff. 

CA REVERSED

The Court of Appeals, however reversed that judgment, holding that BY UNINTERRUPTED AND EXCLUSIVE USE SINCE 1910 in the manufacture of slippers and shoes, RESPONDENT'S TRADE-MARK HAS ACQUIRED A SECONDARY MEANING; that the goods or articles on which the two trade-marks are used are similar or belong to the same class; and that the use by petitioner of said trade-mark constitutes a violation of sections 3 and 7 of Act No. 666. The defendant Director of Commerce did not appeal from the decision of the Court of Appeals.

ISSUE:  

Is the subsequent registration of existing trade name registrable due to its difference and non-competing products?

RULING:

The court said..

In the present state of development of the law on Trade-Marks, Unfair Competition, and Unfair Trading, THE TEST EMPLOYED BY THE COURTS TO DETERMINE WHETHER NONCOMPETING GOODS ARE OR ARE NOT OF THE SAME CLASS IS CONFUSION AS TO THE ORIGIN OF THE GOODS OF THE SECOND USER. 

Although two noncompeting articles may be classified under two different classes by the Patent Office because they are deemed not to possess the same descriptive properties, THEY WOULD, NEVERTHELESS, BE HELD BY THE COURTS TO BELONG TO THE SAME CLASS IF THE SIMULTANEOUS USE ON THEM OF IDENTICAL OR CLOSELY SIMILAR TRADE-MARKS WOULD BE LIKELY TO CAUSE CONFUSION AS TO THE ORIGIN, OR PERSONAL SOURCE, OF THE SECOND USER'S GOODS. 

They would be considered as NOT FALLING UNDER THE SAME CLASS ONLY IF THEY ARE SO DISSIMILAR OR SO FOREIGN TO EACH OTHER AS TO MAKE IT UNLIKELY THAT THE PURCHASER WOULD THINK THE FIRST USER MADE THE SECOND USER'S GOODS.

Such construction of the law is induced by cogent reasons of equity and fair dealing. The COURTS HAVE COME TO REALIZE THAT THERE CAN BE UNFAIR COMPETITION OR UNFAIR TRADING EVEN IF THE GOODS ARE NON-COMPETING, AND THAT SUCH UNFAIR TRADING CAN CAUSE INJURY OR DAMAGE TO THE FIRST USER OF A GIVEN TRADE-MARK, FIRST, BY PREVENTION OF THE NATURAL EXPANSION OF HIS BUSINESS AND, SECOND, BY HAVING HIS BUSINESS REPUTATION CONFUSED WITH AND PUT AT THE MERCY OF THE SECOND USER. 

The original owner is entitled to the preservation of the valuable link between him and the public that has been created by his ingenuity and the merit of his wares or services. Experience has demonstrated that WHEN A WELL-KNOWN TRADE-MARK IS ADOPTED BY ANOTHER EVEN FOR A TOTALLY DIFFERENT CLASS OF GOODS, IT IS DONE TO GET THE BENEFIT OF THE REPUTATION AND ADVERTISEMENTS OF THE ORIGINATOR OF SAID MARK, TO CONVEY TO THE PUBLIC A FALSE IMPRESSION OF SOME SUPPOSED CONNECTION BETWEEN THE MANUFACTURER OF THE ARTICLE SOLD UNDER THE ORIGINAL MARK AND THE NEW ARTICLES BEING TENDERED TO THE PUBLIC UNDER THE SAME OR SIMILAR MARK. 

In the case at bar, petitioner seems to make a frantic effort to retain the use of the mark "Ang Tibay." Her counsel suggests that instead of enjoining her from using it, she may be required to state in her labels affixed to her products the inscription: "NOT MANUFACTURED BY TORIBIO TEODORO."

Ahm.. "With your permission your honors we suggest to the honorable court that instead of enjoining petitioner from its use that she may be required for the least to affix distinguishing marks inscribed in her labels in fine prints the words  "NOT MANUFACTURED BY TORIBIO TEODORO." anu daw? whatdu fuck..

ehehe.. real funny.. imagine that label carrying your competitor's name plastered on all your products?... well If I'm Mr. Toribio I'd have no qualms with that I'd opt to tolerate it... negative publicity is still publicity... let's see the response of the court...

We think SUCH PRACTICE WOULD BE UNETHICAL AND UNWORTHY OF A REPUTABLE BUSINESSMAN. To the suggestion of petitioner, respondent may say, not without justice though with a tinge of bitterness: "Why offer a perpetual apology or explanation as to the origin of your products in order to use my trade-mark instead of creating one of your own?" On our part may we add, without meaning to be harsh, THAT A SELF-RESPECTING PERSON DOES NOT REMAIN IN THE SHELTER OF ANOTHER BUT BUILDS ONE OF HIS OWN.

The judgment of the Court of Appeals was affirmed.

Mr. Toribio Teodoro wins this case. 

ETEPHA A.G. vs. DIRECTOR OF PATENTS and WESTMONT PHARMACEUTICALS INC.

"Stay with me"

8:15 p.m. I was on top of a building yesterday at the Ortigas area to have coffee and talk to a gorgeous woman. As I wait for her I walked over to the open lounge. I looked at the skies, and I've figured 'why there's not even a slightest trace of a storm coming?'. I could see the metropolis. The lights, the neons. And deep inside me I felt like violin strings in rhythmic patterns were playing some overture like that of a Batman movie. I felt the Dark Knight was standing there like a watchful guardian gazing at our own Gotham City.

Listen you know what? I spent my childhood living and grew up and played in one of the streets in Quezon City, particularly Guyabano St. in Project 2 Q.C. I could say that's one of the best times my life have ever had. My friends and I we played in the streets maybe not all but most of the Pinoy games. Tex, jolens, skateboards, bikes, go-karts, banggaan ng Tonka. We were the type where we're all well kept, sheltered and loved, yung tipong mga likod namen may mga white towel my goodness LOL, yung iba madalas hinahabol ng yaya, kaya pagmagusap kame we understand each other quickly, no proving, walang ere, wala masyadong away. And we loved it when we go out and play at night during summers especially during the 'ber' months where everything looks celebrative, happy and bright? ang sarap maglaro lalo pag Christmas na.. kase alam namen makakahawak na naman kame ng gun powder hehe (patago nga lang).

You know origami? we took out papers? and try learned the folds and make airplanes? So we took out crayons and colored and branded our planes. Mga dominant colors and logos ng superheroes, yung favorite namen. So ako pinapili una.. 'gusto ko si Batman'.. but the group agreed sakin daw dapat si Superman. E di kinuha ko.. since sya may pinakamalakas na powers. My best friend took Greenlantern which is really his favorite of all times, others took Flash, Spiderman... and then somebody took Batman... I told my self "Dang!".   I'd choose Batman over Superman anytime. I dunno for me since I was a kid and first owned my first Batman DC Comics (Although the first comics I've owned was Iron Fist) I've always admired him. Why? I dunno why. Maybe the mystique, the black suit. The mysteriousness of his being. Or maybe because he doesn't have powers, he's human, he feels, he's just like me. He's the outstretch of what the human mind and body can do.. even though the character was just a pigment of one's imagination. That fact that I could identify with him is more real.

Don't you know that Batman started as a detective when he was first written? He wasn't suppose to be a superhero. He was just suppose to be a super scientific hi-tech dude. And Bruce Wayne was an epitome not of a self-made man, he was just a billionaire playboy. The only difference is he's a philanthropist, if you google the word 'philanthropist' it means 'the love of humanity'.  A conventional modern definition is "private initiatives, for the public good, focusing on quality of life". So in a way it more than fits him. He got all the resources.

But you know? if I ever was the one who wrote Batman in DC Comics? I'd write him in a different manner. Maybe I'd keep the billionaire playboy type image, but I'd rewrite its romantic aspect. I would have him fall in love not in an ordinary conventional way. I'd give him a touch of etherealism.

You see if you look at the love interests of Batman (or Bruce Wayne), majority of them are socialites. Yes.. if you think it's only Rachel (Rachel Dawes), you're dead wrong. The real Batman had a string of love interests. Julie Madison was the first one. And she's royalty. Linda Page, another socialite. Of course there's the reporter Vicki Vale. Selina Kyle of course as we all know she's Catwoman. Who else.. Thalia al Ghul who's the daughter of one villain. Pamela Isley of course remember her? Ms. Poison Ivy? Natalia Knight, otherwise known as Nocturna, Julia Penyworth the daughter of Alfred (playboy talaga to eh). Sino pa ba.. si Wonder Woman of course. Although alam ko friends lang sila non.. pero when we were kids and nanunuod kame ng Superfriends (when you say Superfriends that means not on the Avenger side, means I'm talkin' about the Justice League side)  ang tanong ko lage "Bakit si Batman laging nakasakay sa invisible plane ni Wonderwoman? Sila ba?" (hihihi). There were times tatalon si Wonderwoman from the plane so si Batman magdadrive "Whuuuuuuuhhuhuu!!.. sabi na nga ba may something to eh" Who else.. well there's Black Canary na sinulot nya kay Green Arrow. Si Jillian Maxwell. who when he met at a party naging suspicioso si Alfred and therefore led him to check her background, turned out she's another villain. (geez halos lahat may criminal record haha, well not naman lahat). Charlotte Rivers.. but she's just another reporter of course. And many others. But these are not what I'm talking about. What I'm looking for is something like Lorna Shore.. the museum curator he met back then when they were kids. It was love at first sight as Bruce was able to find peace when he was with her for the first time since he was 8 years old after his parents got murdered. Kaya lang ang babaw ng storyline nilang dalawa. He left Lorna Shore co'z the Joker was getting suspicious who were the most important people in his life other than his dead parents, and he just doesn't want anything grave to happen to her. And so he took off to distract the Joker to gear the danger away from her. But that doesn't prove anything when you don't face everything together. I want someone that never left his side.  

I'm looking for something that has depth, something like more of a spirit he carries with him in his battles. Yung hindi lang playboy and met her at the course of his adventures. I want something that is intact. Like it's a contiguous part of him. There must be a base or something, a place not to just go back there to strengthen his weapons, but to nurse his wounds and to feel a peaceful beautiful loving presence. Yung tipong napakagandang babae with ethereal beauty na nakatira in an old Victorian mansion katabi lang ng batcave. That he falls deeply in love and he grew up with, and was sadly taken away from him by death and since then on she remained with him wherever he goes. Dang! that would be something. Yung may substance. Yung nandun sa puso mo at talagang walang makakacompete. And comes out to him in a dream or something and helps him in times of dire need.  Boy I'd rewrite him like that.

Anyway here's the case mga 'pañero.

Respondent WESTMONT PHARMACEUTICALS, INC., a New York corporation, sought registration of trademark "ATUSSIN" a medicine used in the treatment of cough.  

Petitioner, ETEPHA, A. G., a corporation, objected. Petitioner claims  “ATUSSIN” is so CONFUSINGLY SIMILAR to its “PERTUSSIN” which is also used in treatment of coughs. And that the buying public will be misled into believing that Westmont's product is that of petitioner's which allegedly enjoys goodwill. (syempre nauna sila e)

So the Director of Patents is left with a choice..

May trademark ATUSSIN be registered, given the fact that PERTUSSIN, another trademark, which filed its objection had been previously registered in the Patent Office? — the DIRECTOR OF PATENTS ANSWERED AFFIRMATIVELY. 

Hence this appeal. Let's see if his decision will hold.

ISSUE: 

Was there a TRADEMARK INFRINGEMENT?

RULING:

NONE.

Court said the objects of a trademark are :

1. "TO POINT OUT DISTINCTLY THE ORIGIN OR OWNERSHIP of the articles to which it is affixed

2. To secure to him who has been instrumental in bringing into market a superior article or merchandise the fruit of his industry and skill, and 

3.  To PREVENT FRAUD AND IMPOSITION."

1. NO COLORABLE IMITATION 

And the court stressed that we are to be guided by the rule that the validity of a cause for infringement is predicated upon COLORABLE IMITATION. The phrase "colorable imitation" denotes such a "CLOSE OR INGENIOUS IMITATION AS TO BE CALCULATED TO DECEIVE ORDINARY PERSONS, OR SUCH A RESEMBLANCE TO THE ORIGINAL AS TO DECEIVE AN ORDINARY PURCHASER, GIVING SUCH ATTENTION AS A PURCHASER USUALLY GIVES, AND TO CAUSE HIM TO PURCHASE THE ONE SUPPOSING IT TO BE THE OTHER."

2. IT'S COMMON PRACTICE

That the word "TUSSIN" figures as a component of both trademarks (Atussin & Pertussin) is nothing to wonder at. The Director of Patents aptly observes that it is "the common practice in the drug and pharmaceutical industries to 'fabricate' marks by using syllables or words suggestive of the ailments for which they are intended and adding thereto distinctive prefixes or suffixes". 

The "tussin" (in Pertussin and Atussin) was derived from the Latin root-word "tussis" meaning cough."Tussin" is MERELY DESCRIPTIVE; it is generic. It is accordingly barred from registration as trademark. 

E biro mo nga naman you register a generic word as your trademark e parang sinabe mo na na di nyo pede gamitin yung word na "love" kase ginamet ko na naparegister ko na. 

Iregister yon ng Director of Patents then it ends up as appellant having practically a monopoly of the word "tussin" in a trademark. Di ba?

Eto ang sabe ng korte... "While "tussin" by itself cannot thus be used exclusively to identify one's goods, it may properly become the subject of a trademark "by combination with another word or phrase". And this union of words is reflected in petitioner's Pertussin and respondent's Atussin, the first with prefix "Per" and the second with Prefix "A".

So there's no bone of contention right? 

3. VISUAL IMPRESSION

The court continued "The horizontal plain, block letters of Atussin and the diagonally and artistically upward writing of Pertussin leave distinct visual impressions. One look is enough to denude the mind of that illuminating similarity so essential for a trademark infringement case to prosper.

So yun naman pala eh.. horizontal yun lettering nung isa, yun isa naman diagonal upward.. sino pa ba magkakamali non? 

4. PHONETIC SIMILARITY

Eto pa sabe ng korte "As we take up Pertussin and Atussin once again, we cannot escape notice of the fact that the two words do not sound alike — when pronounced."

So it's clear there's no phonetic similarity between the two..

5. BY PRESCRIPTION

"Petitioner's and respondent's products are to be dispensed upon medical prescription.  The respective labels say so. An intending buyer must have to go first to a licensed doctor of medicine; he receives instructions as to what to purchase; he reads the doctor's prescription; he knows what he is to buy."

Yun ang akala nyo..

"We concede the possibility that buyers might be able to obtain Pertussin or Attusin without prescription. When this happens, then the buyer must be one thoroughly familiar with what he intends to get, else he would not have the temerity to ask for a medicine — specifically needed to cure a given ailment." 

Well at least the court conceded to the usual practice.. 

So the registration of Attusin was affirmed. Westmont wins this case. 

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

Back in the 90s you know I've learned power chords actually from a girl. Dig that she's so cool. Co'z actually I was more succumbed to guitar licks and rock leads I didn't know power chords were that amazing.

So  I brought my electric guitar to their house and had one to one session with her. Barbie Almalbis' 'Dahilan' was our first practice piece.

"Kunin mo lang lage yun dalawang heavy strings. Index finger mo dito.. ring finger mo dito.. ganun lang ang porma, tapos move move mo lang follow mo yung chord progression and let it slide" "Ganyan?" "O yan.. tira"... "Ang sarap pala ng power chords grabe" "Sabe sayo eh". 

She took a break, went inside. And after 5 minutes I figured it was taking her so long, so I went in.. found her at the dining table.. nagtitimpla ng Milo. "Nu 'gawa mo?"  "Nagtitimpla ng Milo.. 'tu mo? timpla kita" "Titimpla?" "Helloo?" (she took a drink) "Ang Milo kinakaen yan di yan iniinom... sinasayang mo lang eh!". And she bursted laughing while drinking.. lumabas yung Milo sa ilong hahahaha!. Damn it I was laughing like an hyena on my way out.

Alright. Here's the case.

MCDONALD'S CORPORATION, Petitioner here of course as we all know is a US corporation that operates a global chain of fast-food restaurants. 

Gosh.. If you don't know Ronald McDonald you'd probably take out a stun gun and freeze him or get a club and wack him on the head if he suddenly comes out from the bushes.  

McDonald's owns the "Big Mac"? their trademark for its "double-decker hamburger sandwich." It's actually registered with the US Trademark Registry since 1979. 

So based on this 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") (that's now IPO, Intellectual Property Office). Which was approved of course.

Now here comes the Pinoy ingenuity..

Respondent L.C. BIG MAK BURGER, INC. (LOL) a domestic corporation which operates fast-food outlets and snack vans in Metro Manila and nearby provinces comes out with a menu. Respondent corporation's menu includes hamburger sandwiches and other food items. (natatawa na ako)

Snack van pala ah.. naalala ko yung mga Jollijeep sa Makati... minsan kumakaen ako dun when I used to work at Ayala. Sarap kase kumaen ng nakatayo, presko, and nagdadaldalan kayo habang kumakaen, ang lalakas pa ng tawa nyo kahet nka corporate attire kayo.

So eto na nga si Big Mak..

On  October 1988, respondent corporation L.C. Big Mak Inc. applied with the PBPTT for the registration of the "Big Mak"  mark for its hamburger sandwiches. 

Pasok si Juan de la Cruz.. "ah 'Big Mac ah'??.. meron din kami nyan 'Big Mak' "  ahahaha..

And.. well of course the registration was opposed by Mr. Ronald McDonald's. McDonald's also informed LC Big Mak chairman of its exclusive right to the "Big Mac" mark and requested him to desist from using the "Big Mac" mark or any similar mark.

Pinoy talaga patawa no? "Register naten, register naten dali". 

Having received no reply, petitioners sued L.C. Big Mak Burger, Inc. and its directors before Makati RTC   for TRADEMARK INFRINGEMENT and UNFAIR COMPETITION. 

So.. 'Big Mac' sued 'Big Mak'..

RTC rendered  Decision finding respondent corporation LIABLE FOR TRADEMARK INFRINGEMENT and UNFAIR COMPETITION. 

Here's the thing...

CA reversed the RTC ruling.

ISSUE:  

Is respondent corporation liable for TRADEMARK INFRINGEMENT? 

RULING:    

Yes.

Section 22 of Republic Act No. 166, as amended, defines trademark infringement as follows: 

Infringement, what constitutes. - Any person who 

1. shall use, without the consent of the registrant, any reproduction, counterfeit, copy or colorable imitation of any registered mark or trade-name in connection with the sale, offering for sale, or advertising of any goods, business or services on or in connection with which such use is likely to cause confusion or mistake or to deceive purchasers or others as to the source or origin of such goods or services, or identity of such business; or  

2. reproduce, counterfeit, copy, or colorably imitate any such mark or trade-name and apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used upon or in connection with such goods, business or services, shall be liable to a civil action by the registrant for any or all of the remedies herein provided.

To establish trademark infringement, the following elements must be shown: 

(1) the validity of plaintiff's mark; 

(2) the plaintiff's ownership of the mark; and 

(3) the use of the mark or its colorable imitation by the alleged infringer results in "likelihood of confusion." 

Court said it is the element of likelihood of confusion that is the gravamen of trademark infringement.

1st element:  

A mark is valid if it is distinctive and not merely generic and descriptive. 

The "Big Mac" mark, which should be treated in its entirety and not dissected word for word, is neither generic nor descriptive. Generic marks are commonly used as the name or description of a kind of goods, such as "Lite" for beer. 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. On the contrary, "Big Mac" falls under the class of fanciful or arbitrary marks as it bears no logical relation to the actual characteristics of the product it represents. As such, it is highly distinctive and thus valid. 

2nd element:  

Petitioners have duly established McDonald's exclusive ownership of the "Big Mac" mark. Prior valid registrants of the said mark had already assigned his rights to McDonald's. 

So the court finds that there is confusion of goods in this case since RESPONDENTS USED THE "BIG MAK" MARK ON THE SAME GOODS, I.E. HAMBURGER SANDWICHES, THAT PETITIONERS' "BIG MAC" MARK IS USED.

Ayoown..

There is also confusion of business due to Respondents' use of the "Big Mak" mark in the sale of hamburgers, the same business that petitioners are engaged in, also results in confusion of business. 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. The registered trademark owner enjoys protection in product and market areas that are the normal potential expansion of his business. 

Here's the Dominancy Test Theory.. 

Furthermore, IN DETERMINING LIKELIHOOD OF CONFUSION, THE SC HAS RELIED ON THE DOMINANCY TEST (the similarity of the prevalent features of the competing trademarks that might cause confusion) over the so called HOLISTIC TEST (the consideration of the entirety of the marks as applied to the products, including the labels and packaging).

Applying the dominancy test, Respondents' use of the "Big Mak" mark results in likelihood of confusion. 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. 

So of course Mr. Ronald McDonald wins this case.