Burger Wars

BURGER WARS: USE OF “BIG MAK” in corporate name “L.C. BIG MAK BURGER, INC.” and “SUPER MAK” brand not infringement of McDonald’s famous “BIG MAC” trademark.

The decades-long battle between McDonald’s Corporation, operator of the global McDonald’s food chain, and L.C. Big Mak Burger, Inc., a Philippine corporation operating fast-food outlets in Metro Manila and nearby provinces, ended with the latter being allowed to continue use BIG MAK as part of its corporate name and trade name and use of the brand SUPER MAK.

This burger war started in 1990 with McDonald’s Corporation filing a trademark infringement and unfair competition case against L.C. Big Mak Burger Inc. for its unauthorized use of BIG MAK. In the said case, the Regional Trial Court issued a writ of preliminary injunction directing L.C. Big Mak Burger, Inc. to refrain from:

using for its fast food restaurant business the name “Big Mak” or any other mark, word, name, or device which by colorable imitation is to likely confuse, mislead, or deceive the public into believing that its goods and services originate from, or are sponsored by or affiliated with those of McDonald’s, and from otherwise unfairly trading on the reputation and goodwill of the McDonald’s Marks, in particular the mark “BIG MAC”;
selling, distributing, advertising, offering for sale or procuring to be sold, or otherwise disposing of any article described as or purporting to be manufactured by McDonald’s Corporation;
directly or indirectly using any mark, or doing any set or thing, likely to induce the belief on the part of the public that McDonald’s Corporation and their products and services are in any way connected with L.C. Big Mak Burger, Inc. and their products and services

The writ or preliminary injunction was made permanent with the issuance of the decision of the Regional Trial Court of Makati in 1994 and which was later affirmed and reinstated by the Supreme Court in 2004.

Thereafter, in 2008, McDonald’s Corporation filed a petition for indirect contempt against L.C. Big Mak Burger Inc. and its president, Francis Dy alleging that the respondents have ignore and disobeyed their obligation by continuously using “BIG MAK” despite the finality if the decision in the trademark infringement and unfair competition case. As a defense, respondents argue that the prohibition of use only covers “BIG MAK” and not its corporate name “L.C. Big Mak Burger, Inc.” Respondents pointed out that at the time, it was already using the name “L.C. Big Mak Burger, Inc.” on its stalls and not the mark “BIG MAK”. Moreover, it has also the changed the name of some of its food stalls and products to “Supermak”.

The Regional Trial Court of Makati dismissed the petition for indirect contempt and awarded damages to L.C. Big Mak Burger, Inc. and Francis Dy. On appeal, the Court of Appeals reversed the RTC’s ruling and found L.C. Big Mak Burger, Inc. and Francis Dy guilty of indirect contempt.

The Supreme Court, on appeal, however held that use of L.C. Big Mak Burger, Inc. in the stalls and products cannot by itself be considered tantamount to indirect contempt. The Supreme Court is of the opinion that the proscription in the injunction order is against the use of the mark “BIG MAK”. However, it was proven that respondent has been using its corporate name instead of the proscribed mark.

L.C. Big Mak Burger Inc. for its defense, relied on the final decision of the Securities and Exchange Commission issued in January 3, 1994 wherein McDonald’s Corporation sought the change of the L.C. Big Mak Burger Inc. corporate name for being confusingly or deceptively similar to its “BIG MAC” trademark. In the said case, the SEC ruled that the corporate name is not identical or confusingly similar to the “BIG MAC” mark.

Adding salt to the wound is the reinstatement of the award of damages to L.C. Big Mak Burger Inc. and Francis Dy in the amount of Php 1, 200,000.00 or approximately USD 24,000.

The main takeaway from this case is to ensure that the reliefs to be sought by the IP owner in a trademark infringement and/or unfair competition complaint are exhaustive, unambiguous, explicit and precise. And this includes asking the courts to order the infringer to desist from using the infringed mark both as a brand and trade name or corporate name. Additionally, adverse decisions rendered by quasi-judicial bodies such as the Securities and Exchange Commission, should not be taken lightly. The IP owner should exhaust all necessary means to appeal or reverse such adverse decisions which may be used or relied upon by infringers later on.