MCCAFÉ opposition dissolves MACCOFFEE application on appeal

The Singapore High Court has dismissed an appeal by Future Enterprises Pte Ltd against a decision of the principal assistant registrar of trademarks to refuse registration to Future's MACCOFFEE mark in Class 30 of the Nice Classification. The registrar held that the MACCOFFEE mark was confusingly similar to McDonald's Corporation's earlier MCCAFÉ mark in the same class (see McDonald's MCCAFÉ mark wards off MACCOFFEE application).

In opposing Future's application, which was voluntarily restricted to "instant coffee mix", McDonald's had relied, among other things, on its earlier registration for MCCAFÉ in Class 30 for "coffee and coffee substitutes". It invoked Section 8(2)(b) of the Trademarks Act 1998, which provides that:

"a trademark shall not be registered if, because … it is similar to an earlier trademark and is to be registered for goods or services identical with or similar to those for which the earlier trademark is protected, there exists a likelihood of confusion on the part of the public."

The issues before the High Court were (i) whether the MACCOFFEE mark and the MCCAFÉ marks are similar, and (ii) whether the goods specified for both marks are identical or similar such that a likelihood of confusion exists on the part of the public.

The court agreed with the registrar's finding that the marks were visually, aurally and conceptually similar. The idea behind the marks, the prefix 'Mc' or 'Mac' together with a coffee-related word, 'café' or 'coffee', was similar. The average person would be slow to notice the difference of meaning between the words 'café' and 'coffee', especially since the mark MCCAFÉ was registered for coffee and may be used on coffee.

The court also found that the goods of both parties were similar if not identical as the basic product in both cases is coffee.

As McDonald's had not used MCCAFÉ in respect of the goods covered by its Class 30 registration, the court assumed use of the mark in a normal and fair manner. In doing so, the court found that the locations and pricing of the two parties' goods and the type of customers were not so starkly different. Both Future's and McDonald's goods were likely to appear in the same shopping centre. The types of customers likely to purchase Future's product were also not likely to be vastly different from those purchasing McDonald's goods.

Due to the high degree of similarity of both the goods and the marks, the court was satisfied that there existed a likelihood of confusion on the part of the public.

Accordingly, it dismissed Future's appeal with costs.

This decision comes in the wake of earlier proceedings between the same parties where McDonald's had failed to prevent Future from registering its MACNOODLES word and eagle device mark for instant noodles, MACCHOCOLATE and eagle device mark for instant cocoa mix and MACTEA and eagle device mark for instant tea mix (see McDonald's appeal against MAC registrations fails again).

Dedar Singh Gill and Paul Teo, Drew & Napier LLC, Singapore