Case Digest: L.C. Big Mak Burger Inc. vs. McDonalds

Facts of the case: Petitioner McDonald’s operates an international chain of fast food restaurants. McDonald’s owns a numerous marks, one of which is the “Big Mac” mark for one of its hamburger sandwiches. McDonald’s registered this trademark with the US Trademark Registry, and based on this registration, McDonald’s applied for the registration of the same mark in the Principal Register of the Philippine Bureau of Patents, Trademark and Technology (PBPTT), now Intellectual Property Office (IPO). Pending on the approval of the application, McDonald’s proceeded to introduce “Big Mac” as one of their products. Afterwards, the office approved the registration of the mark in the Principal Register based on its Home Registration in the US.

Respondent L.C. Big Mak Burger Inc. is a domestic corporation which operates fast-food outlets locally in Metro Manila and nearby provinces in the Philippines. L.C. Big Mak Burger applied with the PBPTT for the registration of the “Big Mak” mark for their hamburger sandwiches. McDonald’s opposed their (L.C. Big Mak Burger) application for the mark, saying that it was a “colorable imitation of their ‘Big Mac’ mark for similar products”. McDonald’s also informed the chairman of the local corporation, of their (McDonald’s) ownership and exclusive right over the “Big Mac” mark, and requested him to discontinue the use of the “Big Mac” mark or any other similar marks. Having received no reply from the respondent, McDonald’s sued the local corporation in the Regional Trial Court of Makati (RTC), for trademark infringement and unfair competition. The RTC issued a temporary restraining order (TRO) against L.C. Big Mak Burger Inc. prohibiting them from using the “Big Mak” mark in the operation of their business in the National Capital Region (NCR). A month after, the RTC issued a