Philippine Intellectual Property

Confusing Case Law on Confusing Similarity:

Deciding the McDonald's v. Big Mak Controversy

Well has it been said that the most successful form of copying is to employ enough points of similarity to confuse the public with enough points of difference to confuse the courts.

- Justice Isagani Cruz, dissenting in Asia Brewery, Inc. v. CA

Introduction

Imitation is considered the highest form of flattery, but not so when it is committed against an enterprise who has first created goodwill, and carved a niche in the market through advertising investments, product development, and other intensive operations. An entity which has built a name over the years through hard work only to find out that another entity has copied its name or symbol stands to lose to this competitor who has taken undue advantage of the reputation associated with the trademark. The trademark therefore becomes a property right, the exclusive use of which ought to be, and is, legally recognized in accordance with the basic tenets of equity and fair play. Otherwise, the appropriation of the mark, along with the reputation the public associates with it, results to unjust enrichment[1] at the very least.
Consumer trust or patronage of a genuine good or service is born out of a fulfilled satisfaction from the product’s quality. If so satisfied, the consumer only has to look for the product’s distinguishing mark among the other competing articles in the market. An imitation confuses the public as to the origin of the goods or services and leads them to purchase the articles marked by the infringer under the impression that it is the real thing. If the imitation somehow fails to live up to the consuming public’s expectation, there is reason to believe that the patronage of the product will drop, to the damage and prejudice of the entity which produced the original. If the spurious mark passes the courts’ scrutiny for infringement, the imitation may be further scrutinized to see if it falls under the broader category of unfair competition. Legally, therefore, imitation is not flattery, but a crime.[2]

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[1]. An Act to Ordain and Institute the Civil Code of the Philippines [Civil Code of the Philippines] Republic Act No. 386, (1950), art. 22. (The article provides that “[e]very person who through an act or performance by another, or any other means, acquires or comes into possession of something at the expense of the latter without just or legal ground, shall return the same to him.”).
[2]. See An Act Prescribing the Intellectual Property Code and Establishing the Intellectual Property Office, Providing For Its Powers and Functions, and For Other Purposes, [intellectual Property Code] Republic Act No. 8293, §155 (infringement), 168 (unfair competition), 169 (false designations of origin; false description or representation) and 170 (penalties for §155, 168, 169.1).