`Big Mak' wins infringement case filed by McDonald's

A court victory may beef up the sales of this local burger chain.

Big Mak Burger Inc. has won an infringement suit filed against it by the local licensee of the US-based McDonald's Corp. after the Court of Appeals (CA) threw out the latter's complaint of unfair competition.

"The mere suspected similarity in the sound of the defendant-appellant's corporate name (Big Mak) with the plaintiff-appellee's (McDonald's) trademark is not sufficient evidence to conclude unfair competition," ruled Justice Eloy Bello of the CA's first division.

The court ruled that Big Mak Burger Inc. didn't violate the law even if its food stalls' name sounded very much like "Big Mac," the trademark hamburger sandwich of McDonald's.

The decision, concurred in by Justices Jainal Rasul and Ruben Reyes, stated that Big Mak did not violate the laws of infringement since its corporate name was "derived from both the first names of the mother and father of defendant Francis Dy, whose names are Maxima and Kimsoy."

The CA ruling reversed and set aside the November 1990 decision of the Makati court, which decided in McDonald's favor, ordering Big Mak to pay McDonald's P600,000 in damages. McDonald's local licensee is McGeorge Food Industries Inc.

Instead, McDonald's was ordered to pay the local food chain a total of P1.9 million in damages, saying Big Mak "lost profits" when it closed four of its branches in Metro Manila and Rizal between 1989 and 1990. Big Mak also reported losses because it was not able to implement its expansion program in 1991 as a result of the lower court's preliminary injunction.

The appeals court also pointed out that it does not see any ill motive or bad faith on the part of Big Mak.

"We believe that the buying public possesses enough discernment nowadays to differentiate one product from the other," the CA stressed.

The court also cited the "glaring dissimilarities" between Big Mak and McDonald's, saying the former uses an orange color scheme in all its signages and is always accompanied by its mascot, a chubby boy named Maky. On the other hand, McDonald's uses red and black in all its products, an "umbrella M" and a tall and slender "Ronald McDonald."

"There appears a vast difference in the appearance of the product and the manner that the tradename Big Mak is being used and presented to the public," the court said.