McDonald’s opposition to MAC marks fails

In McDonald's Corp v Future Enterprises Pte Ltd ([2004] SGHC 81, April 26 2004), the Singapore High Court has upheld a decision of the trademark registrar that rejected McDonald’s opposition to the registration of the word and device marks MACNOODLES, MACTEA and MACCHOCOLATE.

Future Enterprises Pte Ltd had applied to register its MAC marks for instant noodle, instant tea mix and instant cocoa mix respectively. McDonald’s opposed the applications on the basis of its MC/MAC family of trademarks (eg, MCCHICKEN, MCMUFFIN and MCNUGGETS). The registrar dismissed McDonald’s opposition and McDonald’s filed an appeal to the High Court (see McDonald's appeals against registration of MAC marks). McDonald’s argued that:

• Future Enterprises could not claim to be the owner of the marks under Section 12 of the Trademarks Act 1992 (now revoked) as it had copied McDonald’s family of MC/MAC marks, as well as the McDonald’s system of naming products;
  
  
• Future Enterprises’ trademarks were developed with either the intention to deceive or cause confusion in the minds of consumers as to the origin of the foodstuffs to which they apply in contravention of Section 15 of the act; and
  
  
• Future Enterprises’ applications violated Section 23 of the act as they (i) are identical or nearly resemble McDonald’s MC/MAC marks, and (ii) apply to goods that were likely to be associated with McDonald’s restaurant and catering services.

The High Court dismissed the appeal. It first noted that an opposition under Section 12 can only succeed where the mark applied for and the opponent’s mark are either identical or substantially identical. The test to determine the requisite degree of identity involves “a side by side comparison of the marks”, which is different from the test applying to other provisions of the act. Here, the court found that the rival marks are neither identical nor substantially identical. It duly noted that Future Enterprises was not seeking to register merely the word ‘Mac’: its marks are composite marks comprising an eagle device and a word component.

Further, the court held that, in substance, McDonald’s complaint was not that Future Enterprises had imitated McDonald’s trademarks but rather McDonald’s idea or business marketing practice of naming its fast food products. Section 12 was not the correct provision for safeguarding the rights of owners of such marketing concepts, assuming that such rights are protectable.

The court then considered the claim that Future Enterprises deliberately tried to confuse the public by registering marks similar to those of McDonald’s. The court held that for such a claim to succeed, there had to be a real, tangible danger of confusion. The court considered the overall resemblance of the marks at issue, as well as all the surrounding circumstances pertaining to their fair and normal use. It concluded that:

• the rival marks are neither visually nor aurally confusingly similar;
  
  
• they are not used in respect of the same products;
  
  
• McDonald’s and Future Enterprises engage in different fields of business; and
  
  
• the products to which the marks apply are sold through different trade channels.

The court noted that while reputation is relevant, it was not the only factor to be taken into account. The court was careful to guard against transforming Section 15 into a provision that protects the reputation of the earlier mark unconditionally. Similarly, the fact that McDonald’s had used a series of marks comprising the prefix ‘Mc’ or ‘Mac’ and a fast food descriptive, and the resulting degree of recognition thereby evoked, was but one factor to be taken into account. The court was of the opinion that it was not so much the word ‘Mc’ or ‘Mac’ in the McDonald’s series of marks but rather the “golden arches forming the letter ‘M’ on a red background” logo that the public in Singapore would likely associate with McDonald’s.

Further, the court held that while McDonald’s had a well-established reputation in Singapore as a fast food restaurant at the relevant date, there was no evidence that McDonald’s had acquired an extensive reputation in relation to tea, chocolate and noodles such that the use of MACTEA, MCCHOCOLATE and MACNOODLES on instant tea mix, instant cocoa mix and instant noodles would naturally lead purchasers to believe that there was a commercial connection between Future Enterprises’ goods and McDonald’s. It specifically noted that third-party beverages (like Lipton tea and Coca-Cola) were sold at McDonald’s restaurants.

Accordingly, the Section 15 claim failed.

Lastly, the court reiterated its finding that the goods covered by McDonald’s and Future Enterprises’ marks are not identical. Accordingly, it dismissed the Section 23 claim.

Regina Quek & Chay Mei Ber, Tan JinHwee Eunice & Lim ChooEng, Singapore