Mcdonald's Corporation v. Macjoy (2007)
Mcdonald's Corporation v. Macjoy (2007)
Mcdonald's Corporation v. Macjoy (2007)
Yes. The Supreme Court ruled that the proper test to be used is the dominancy test.
The dominancy test not only looks at the visual comparisons between two trademarks but
also the aural impressions created by the marks in the public mind as well as connotative
comparisons, giving little weight to factors like prices, quality, sales outlets and market
segments. In the case at bar, the Supreme Court ruled that McDonalds and MacJoy
marks are confusingly similar with each other such that an ordinary purchaser can conclude
an association or relation between the marks. To begin with, both marks use the corporate
M design logo and the prefixes Mc and/or Mac as dominant features. The first letter
M in both marks puts emphasis on the prefixes Mc and/or Mac by the similar way in
which they are depicted i.e. in an arch-like, capitalized and stylized manner. For sure, it is
the prefix Mc, an abbreviation of Mac, which visually and aurally catches the attention of
the consuming public. Verily, the word MACJOY attracts attention the same way as did
McDonalds, MacFries, McSpaghetti, McDo, Big Mac and the rest of the
MCDONALDS marks which all use the prefixes Mc and/or Mac. Besides and most
importantly, both trademarks are used in the sale of fastfood products.
Further, the owner of MacJoy provided little explanation why in all the available
names for a restaurant he chose the prefix Mac to be the dominant feature of the
trademark. The prefix Mac and Macjoy has no relation or similarity whatsoever to the
name Scarlett Yu Carcel, which is the name of the niece of MacJoys president whom he said
was the basis of the trademark MacJoy. By reason of the MacJoys implausible and
insufficient explanation as to how and why out of the many choices of words it could have
used for its trade-name and/or trademark, it chose the word Macjoy, the only logical
conclusion deducible therefrom is that the MacJoy would want to ride high on the established
reputation and goodwill of the McDonalds marks, which, as applied to its restaurant
business and food products, is undoubtedly beyond question.