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CARPIO, J.:
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." Of these, it is the element of likelihood of confusion
that is the gravamen of trademark infringement.
1st element:
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:
3rd element:
Ruling: Yes.
Section 29 ("Section 29")73 of RA 166 defines unfair competition,
thus:
Any person who will employ deception or any other means
contrary to good faith by which he shall pass off the goods
manufactured by him or in which he deals, or his business, or
services for those of the one having established such goodwill, or
who shall commit any acts calculated to produce said result, shall
be guilty of unfair competition, and shall be subject to an action
therefor.
The essential elements of an action for unfair competition are (1)
confusing similarity in the general appearance of the goods, and
(2) intent to deceive the public and defraud a competitor.