McDonald's successfully opposes MACDIMSUM application

Multiple trademark registrations that each contain a common element and are all owned by a single party may constitute what is known in Canadian law as a 'family' of trademarks. Ownership of a family of trademarks can in certain circumstances lead to a broader scope of protection than might otherwise be applied to individual trademarks. For example, a pre-existing family of trademarks can be a significant consideration weighed against a third-party applicant who applies for a trademark containing the element common to the family.

The July 10 2013 Federal Court decision in Cheah v McDonald’s Corporation (2013 FC 774) is an example of the potential benefit of owning a family of trademarks. In this case, the applicant applied for the trademark MACDIMSUM based on proposed use in association with numerous food and beverage items. The mark applied for consisted of the prefix 'Mac' and the generic food term 'dim sum'.  

McDonald’s opposed the application with one of the primary grounds being a likelihood of confusion with its family of trademarks that include the term 'Mc', and the phonetic equivalent 'Mac', in association with food products and restaurant services.

In support of its opposition, McDonald’s filed extensive evidence of the use of its family of marks in Canada. In addition, McDonald’s filed evidence from a consumer survey expert. The results of the survey demonstrated that a statistically significant proportion of consumers would identify McDonald’s as the source of food products bearing the trademark MACDIMSUM. The most common reason given for identifying McDonald's was the presence of the element 'Mac' in the applied-for trademark.

The Trademarks Opposition Board allowed McDonald’s opposition and refused the application. In finding that the applicant had not met its burden of demonstrating no likelihood of confusion, the board in part relied on McDonald’s family of trademarks, noting:

"[…] the parties' marks are prefixed by the phonetic equivalents 'Mc' and 'Mac' and the opponents have established a family of trademarks which include the prefixes 'Mc' and 'Mac'  for food products, […] the opponents' evidence shows that they continuously create, use, advertise and promote marks comprised of the prefix 'Mc' followed by the name of a food product."

The applicant appealed the decision of the board to the Federal Court. On appeal, the Federal Court framed the primary issue as follows: was the member of the board correct in determining that MACDIMSUM was likely to be confusing with McDonald’s 'family' of trademarks, including the prefix 'Mc' and 'Mac'  together with a food product?

The Federal Court held that the board’s finding of a likelihood of confusion was reasonable and thus dismissed the applicant’s appeal. In addition, the Federal Court noted that the board’s reliance on the consumer survey evidence was also appropriate. In particular, while the survey was not the principal reason behind the board’s conclusion as to confusion, the survey nevertheless supported the board’s conclusions and there was no reason to doubt its reliability.

Ultimately, the McDonald’s decision illustrates the scope of protection that can be afforded to a brand holder when it secures registrations for multiple trademarks having a common element. In addition, the decision demonstrates that consumer surveys still remain relevant in certain circumstances when seeking to demonstrate a likelihood of confusion.

Keltie Luft, Smart & Biggar/Fetherstonhaugh, Toronto

Smart & Biggar represented McDonald’s in this matter