LOCAL burger chain L.C. Big Mak Burger, Inc. (Big Mak) has won against fast-food giant McDonald’s Philippines after the Supreme Court (SC) reversed a contempt ruling that stemmed from charges of trademark infringement and unfair competition.
The 13-page decision promulgated on Feb. 14 and penned by SC First Division Associate Justice Noel G. Tijam dismissed McDonald’s complaint accusing Big Mak of defying a Sept. 5, 1994, ruling by Makati Regional Trial Court Branch 137 that ordered them to pay a P600,000 fine and to stop using the “Big Mak” name for being similar to McDonald’s own “Big Mac” mark.
According to the recent decision, McDonald’s accused Big Mak of “using for its fast food restaurant business the name ‘Big Mak’… to confuse, mislead, or deceive the public into believing that (their) goods and services originate from…those of McDo’s, and…otherwise unfairly trading on the reputation and goodwill of the McDonald’s Marks, in particular the mark ‘Big Mac.’”
McDonald’s then filed a petition for contempt against Big Mak and its president Francis Dy for “(continuing) to disobey and ignore their judgement obligation by continuously using, as part of their food and restaurant business, the words ‘Big Mak’” and for “(refusing) to fully pay the damages awarded to the respondent in the said case.” Big Mak denied the claims and said “it offered and tendered payment” to McDonald’s.
The case was brought to the Court of Appeals (CA) where Big Mak was found guilty of indirect contempt in a decision dated Feb. 2, 2017. The CA upheld its ruling in a decision on July 26 that year, following Mr. Dy’s motion for reconsideration.
When the case was elevated to the high court, whose decision read in part: “Contrary to what respondent attempted to impress to the courts, it is not wholly true that petitioner continues to use the mark ‘Big Mak’ in its business, in complete defiance to this Court’s decision.”
It added: “As early as during the trial of the said case, certain changes had already been made by the petitioner to rule out the charge of infringement and unfair competition.”
“The use of petitioner’s corporate name instead of the words ‘Big Mak’ solely was evidently pursuant to the directive of the court in the injunction order. Clearly, as correctly found by the RTC, (petitioner) had indeed desisted from the use of ‘Big Mak to comply with the injunction order,” the decision read further, referring to Big Mak’s decision to use the names “Super Mak” and “L.C. Big Mak Burger, Inc.” after the 1994 ruling.
These acts, the court said, “belie the imputation of disobedience, much less contemptuous acts, against (petitioner).”
The SC decision reversed and set aside the CA’s 2017 decision and reinstated a ruling on April 7, 2014 by Makati RTC Branch 59 favoring Mr. Dy.
Chief Justice Maria Lourdes P.A. Sereno (since on leave) and Associate Justices Teresita L. De Castro, Mariano C. Del Castillo, and Francis H. Jardeleza concurred with Mr. Tijam’s decision. — Dane Angelo M. Enerio

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