McDonald's appeals against registration of MAC marks

McDonald's has appealed to the High Court against a Registrar of Trademarks decision to allow Singapore company Future Enterprises Pte Ltd's application to register MACTEA, MACCHOCOLATE and MACNOODLES for instant tea mix, instant cocoa mix and instant noodles respectively (Appeals 11, 12 and 13 of 2003).

At the appeal hearing, McDonald's argued that the proposed registrations were contrary to Section 12(1) of the Trademarks Act 1992 as Future Enterprises had misappropriated the marks from McDonald's. It stated that it has built up a world-famous reputation in its family of MC/MAC marks, including, among others, MCCHICKEN, MCMUFFIN and MCNUGGETS.

McDonald's also contended that the registrations were in breach of Section 15 of the act as use of the marks was likely to cause confusion and/or deception. This, it argued, was as a result of (i) its reputation in its family of MC/MAC marks, and (ii) the common market practice by which restaurants and even fast food establishments sell certain types of unprepared food products under their brand names in supermarkets and grocery stores.

In reply, Future Enterprises argued that the appeal under Section 12(1) should fail as its choice of marks and its claims to proprietorship had been made in good faith. On Section 15, Future Enterprises stated that there was no likelihood of confusion arising from the use of its marks as McDonald's business was confined to fast food restaurants and did not extend to unprepared foodstuffs sold in supermarkets and grocery stores.

The High Court has reserved judgment on the appeal.

For discussion of a dispute involving McDonald's and Future Enterprises in Russia see, MCCAFE dispute boils over.

Penny Leng, Drew & Napier LLC, Singapore