Big Mak thumps Big Mac: SC reverses CA ruling, orders McDonald’s to pay P1.6M to local businessman
The Supreme Court (SC) dismissed the contempt case filed by fast food giant McDonald’s Corp. against local burger company L.C. Big Mak Burger Inc. over the latter’s usage of the popular “Big Mac” brand.
In a 13-page ruling penned by Associate Justice Noel Tijam, the SC’s first division affirmed the April 7, 2014 decision of Makati City Regional Trial Court Branch 59, and reversed and set aside the Feb. 2, 2017 decision of the Court of Appeals (CA) which favored McDonald’s and found petitioner guilty of indirect contempt and also ordered it to pay a fine of P30,000.
The SC also ordered McDonald’s to pay total of P1.2 million for moral and exemplary damages and attorney fees to Big Mak and owner Francis Dy.
The high court said the CA erred in finding Big Mak guilty of indirect contempt following McDonald’s Corporation’s allegation that it continued to use the words “Big Mak” in its stalls and products despite the earlier court ruling on the trade infringement case.
“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,” read the SC ruling promulgated last Feb. 14 but received by parties only recently.
“Testimonial and documentary evidence were in fact presented to show that petitioner had been using ‘Super Mak’ and/or its corporate name ‘L.C. Big Mak Burger Inc.’ in its business operations instead of the proscribed mark ‘Big Mak’ pursuant to the ruling of the Infringement Court,” the court stressed.
It further explained that petitioner’s use of its corporate name that included ‘Big Mak’ was not tantamount to defiance of the court’s ruling.
“It bears stressing that the proscription in the injunction order is against petitioner’s use of the mark ‘Big Mak.’ However, as established, petitioner had already been using its corporate name instead of the proscribed mark… Clearly, as correctly found by the RTC, petitioner had indeed desisted from the use of ‘Big Mak’ to comply with the injunction order,” stated the ruling concurred by Chief Justice Ma. Lourdes Sereno and Associate Justices Teresita Leonardo-De Castro, Mariano Del Castillo and Francis Jardeleza.
Lastly, the SC pointed out that L.C. Big Mak Burger Inc. cannot be held liable for contempt as it showed good faith in complying with the earlier ruling on the infringement case.
It cited the changes implemented by petitioner in its business “to address the matter of infringement and unfair competition.”
The high court stressed that the changes made by L.C. Big Mak Burger Inc. as early as during trial of the case “belie the imputation of disobedience, much less contemptuous acts, against petitioner.”
“Petitioner’s good faith in complying with the court’s order is manifest in this case,” it noted. (PNA)