McDonald’s fails to prevent registration of 'arch' mark

New Zealand
In AJ Enterprises (Aust) Pty Ltd v McDonald's International Property Company Ltd ([2009] NZIPOTM 12, June 29 2009), the assistant commissioner of trademarks has ruled that a figurative trademark which included an arch design was not confusingly similar to McDonald's International Property Company Ltd's 'golden arches' trademark.

Bellbird Resort Central Coast Pty Limited applied to register the figurative trademark ANISHA'S (and arch design) for goods and services in Classes 16, 25, 29, 30, 32, 35 and 43 of the Nice Classification (including restaurant services).
The assistant commissioner noted that the ANISHA'S mark was to be registered without limitation of colour, which meant that it could be used in the same colours as McDonald’s golden arches logo (ie, red and gold). McDonald’s brought evidence that in Australia, Bellbird had adopted the same corporate colours as McDonald’s. The assistant commissioner agreed with McDonald’s that:

  • the ANISHA'S logo and McDonald's golden arches shared the same type of stylized arch, which could be used in the same colouring; and
  • the marks were thus similar to that extent. 
However, the assistant commissioner held that the marks viewed as a whole were different because:
  • McDonald's golden arches made the letter 'M', whereas the ANISHA'S logo represented the letter A;
  • the name Anisha’s reinforces the letter 'A', as opposed to the letter 'M' in the golden arches; and
  • the ANISHA'S logo would not be seen as part of the McDonald’s family of trademarks such as McChicken, McNuggets and McMuffin. 
In relation to whether the purchasing public would assume a connection in the course of trade, the assistant commissioner arguably misdirected himself in two ways.
Firstly, the assistant commissioner stated that the fame of McDonald’s name and brand put beyond doubt that the golden arches mark belonged to McDonald’s. The golden arches were said to be so central to McDonald’s brand that they would only ever be associated with McDonald’s. However, the question is not whether the opponent’s trademarks would be associated with itself, but whether the applicant’s trademark would be associated with the opponent. 
Secondly, the assistant commissioner phrased the test for confusion and deception in this way:

For a substantial number of the purchasing public to be caused to wonder if there were a connection in the course of trade between the applicant’s mark and the opponent, which of course there is not, I consider that the opponent or the applicant would need to educate the public about such a connection in trade.”

The test is normally phrased by asking whether a substantial number of the purchasing public would be caused to wonder whether there is a connection in the course of trade between the applicant and the opponent, rather than asking whether the public would need to be educated about such a connection. 
McDonald’s has until the end of July 2009 to file an appeal.

Kate Duckworth, Baldwins, Wellington

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