McDonald's loses battle against MCBRAT registration
Malcolm McBratney is a partner in a leading Brisbane law firm and a former Rugby Union player. Through his company McBratney Services Pty Ltd he sponsors the Brisbane Irish Rugby Football Club. In March 2004, McBratney conceived and applied for the trademark MCBRAT in respect of "clothing; footwear; headgear" and had produced 75 pairs of rugby shorts bearing the mark on the seat, as part of his sponsorship of the Brisbane Irish team. He deposed that he planned to extend the range to hats, socks, scarves and other clothing and accessories with the view to merchandising under the MCBRAT mark.
The application was opposed by McDonald's on the basis of:
- its extensive reputation in Australia;
- its registration and use of a family of over 100 MC and MAC trademarks, including MCKIDS; and
- its sponsorship of a number of sporting and charitable events including junior basketball.
McDonald's case was put principally on the basis of its extensive reputation in its MC/MAC family of marks and its prior registrations of MCKIDS and MCBABY in respect of clothing. It argued that the words 'brat', 'kids' and 'baby' evoked a common idea and MCBRAT was therefore deceptively similar to its prior registered marks, contrary to Section 44 of the Trademarks Act 1995. It also argued that the MCBRAT mark was misleading and deceptive, and that it was not intended to be used as a trademark in respect of the goods but rather as a sign of McBratney's sponsorship of the team.
A delegate at the Trademarks Registry dismissed McDonald's opposition. She did not accept McDonald's 'common idea' argument, contrasting the pejorative connotation of the word 'brat' with the neutral words 'kid' and 'baby'. She referred also to frequent use of the 'Mc' prefix in the vernacular, in words such as 'McMansion' and 'McJob', and to media references to the current dispute as a 'McRow', 'McBunfight' and 'McBattle'. She distinguished decisions in favour of McDonald's where the words were of the kind McDonald's would be likely to use. The delegate considered that:
"the general public has had sufficient exposure to the 'McJob' type words in the marketplace that it is most unlikely any significant portion of the relevant buying public will be 'caused to wonder' whether there is a connection between the applicant's trademark and the opponent company."
McDonald's submission that the mark was not used or intended to be used as a trademark was rejected. The delegate accepted McBratney's evidence (i) that shorts bearing the mark, albeit on the seat, were available for sale on the rugby football club's website, and (ii) of a declared intention to use the mark on other articles of clothing.
McDonald's has not appealed the decision, but McBratney has filed applications for removal of three of McDonald's marks on the grounds of non-use and has opposed a recent application for MCKIDS.
Desmond J Ryan, Davies Collison Cave, Melbourne
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