McD Asia Pacific LLC v Coffee Cartel Pty Lt

[2014] ATMO 70

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by MCD Asia Pacific LLC to registration of trade mark application 1521167(29) - McSlider - filed in the name of Coffee Cartel Pty Ltd.

Delegate:	Iain Campbell Thompson
Representation:	Opponent: Khajaque Kortian, a partner of Spruson & Ferguson Applicant: Sharyn Johnston a director of the Applicant
Decision:	2014 ATMO 70 s52 opposition - s60 - reputation of Opponent's Mc[Food] trade marks; likelihood of confusion; opposition established. Registration refused

Background

1. This is an opposition to registration under section 52 of the Trade Marks Act 1995 (‘the Act’) to the registration of the trade mark detailed below which is owned by Coffee Cartel Pty Ltd, (‘the Applicant’):

Application No:         1521167
Priority Date:             20 October 2012
Goods:  Class 29: Food preparations consisting principally of meat products
  (‘the Goods’)
Trade Mark:               McSlider

(‘the Trade Mark’)

1. The Trade Mark was examined as is mandated by section 31 of the Act and advertised on 7 February 2013 in the Australian Official Journal of Trade Marks as having been accepted for possible registration. On 7 May 2013, within the time allowed to do so, MCD Asia Pacific LLC (‘the Opponent’) filed Notice of Intention to Oppose.

2. On 7 June 2013 the Opponent filed its Statement of Grounds and Particulars nominating and detailing grounds under sections 44, 60, 42, 59. 62A and 62 of the Act. On 27 June 2013 the Applicant filed a Notice of Intention to Defend.

3. Thereafter the Opponent filed its evidence in support of the opposition and the Applicant filed its evidence in answer.  Subsequently, both parties requested to be heard.  The hearing was before me as a delegate of the Registrar of Trade Marks in Canberra on 29 July 2014.  Ms Sharyn Johnston who is a director of the Applicant represented the Applicant in person and Mr Khajaque Kortian, a partner of Spruson & Ferguson, appeared by teleconference for the Opponent.

Onus & Relevant Date

1. The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.[1]

   [1] Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 per Sundberg J at [22] to [26]; Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664; (2010) 87 IPR 300 per Kenny J at [30] to [40]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051; (2011) 198 FCR 435; (2011) 283 ALR 743 per Greenwood J at [16] to 32]; Allergan, Inc v Di Giacomo [2011] FCA 1540; (2011) 199 FCR 126; 94 IPR 541 per Stone J at [11] to [12]; Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 per McKerracher J at [9] to [10]; Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81; ( 2012 ) 94 IPR 551 per Dodds-Streeton J at [13]; DC Comics v Cheqout Pty Limited [2013] FCA 478 per Bennett J at [13]; and, most recently, Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited [2014] FCA 373 per Murphy J at [30] to [37].

2. The relevant date at which the grounds must be considered is the filing date of the opposed application: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592; The Seven Up Company v O.T. Limited [1947] 75 CLR 203 at 211; Rael Marcus v Sabra International Pty Ltd (1995) 30 IPR 261 at 266.

Evidence

1. The evidence in support in this matter comprises the following statutory declarations:

   Brecht Robert Olga Valcke made on 3 October 2013;

   Tim Kenward made on 3 October 2013;

   Simon D Williams made on 3 October 2013 (‘First Williams Declaration’);

   Paul Robert Pontello made on 2 October 2013; and,

   Simon D Williams made on 4 October 2013 (‘Second Williams Declaration’).

2. The evidence in answer comprises a declaration by Ms Johnston who is, as I have mentioned, a director of the Applicant.

3. Attached to the First Williams Declaration are copies of three decisions by delegates of the Registrar of Trade Marks involving what I will characterise as ‘Mc[Food]’ trade marks:

   McDonald's Corporation v Macri Fruit Distributors Pty Ltd [2000] ATMO 37;

   McDonalds Corporation v Sheli Lubowski [2004] ATMO 56

   McDonald's Inc v Future Enterprises Pte Ltd [2007] ATMO 22

4. Mr Valcke in his declaration attests to searches he performed for the meaning of the word ‘slider’.  The current entry (with references omitted) in Wikipedia[2] is representative of these meanings:

   A slider is a small sandwich, typically around 3 in (7.6 cm) across, served in a bun. The term primarily refers to small hamburgers, but can also cover any small sandwich served on a slider roll. The term, when used in reference to a small hamburger, refers to a small hamburger patty served on a small bun. According to the earliest citations, the name may have originated aboard U.S. Navy ships, due to the way greasy burgers slid across the galley grill while the ship pitched and rolled. White Castle trademarked[3] the spelling variant "Slyder" and used it between 1985 and 2009.

   Sliders can be served as an hors d'oeuvre/appetizer, amuse-bouche, or entrée.

   [2] at 30 July 2014

   [3] In the USA

5. Mr Kenward, who is National Brand Manager of McDonald’s Australia Limited, encloses his resume and attests to his knowledge that the word ‘slider’ has the meaning mentioned in the foregoing paragraph of this decision.

6. Mr Pontello is a Senior Brand Manager of McDonald’s Australia Limited, and he attests to registration and the use of the Opponent’s trade marks in Australia as well as elsewhere in the world.  Mr Pontello states:

   McDonald's, by itself (and by its predecessor in title), and/or by its parent company (McDonald's Corporation), their franchisees, divisions, subsidiaries, affiliates and licensees, or any of them ("McDonald's Affiliates"), in business have conducted a system of self-service restaurants ("McDonald's Restaurants") since 1948. Today, McDonald's Corporation, through its McDonald's Affiliates, is one of the largest food service organisations in the world and, as at 2012, McDonald's Affiliates were operating over 34,000 such restaurants in 119 countries and territories. Every day, the McDonald's Affiliates serve an average of 69 million people around the world. The first McDonald's Restaurant in Australia was opened in 1971 and there are now in excess of 900 McDonald's Restaurants operating in Australia (both directly by and under franchise from McDonald's Australia).

7. Mr Pontello refers to trade marks used and registered by the Opponent in Australia (‘the Mc[Food] trade marks’).  Apart from the Opponent’s McDONALD’S and BIG MAC registrations, the Opponent’s Mc[Food] trade marks include:

Registration No:         591033

Priority Date:             24 November 1992
Services:  Restaurant services

Trade Mark:               McCAFÉ

Registration No:         328971
Priority Date:             19 February 1979
Goods:  Fried potatoes and potatoes adapted for frying

Trade Mark:               MAC FRIES

Registration No:         305961
Priority Date:             31 March 1977
Goods:  All goods included in this class (30)

Trade Mark:               McFEAST

Registration No:         354158
Priority Date:             4 December 1980

Goods:"biscuits, bread, cakes, cookies, chocolate, coffee, coffee substitutes, tea, edible sandwiches, chicken sandwiches, mustard, oatmeal, pastries, sauces, seasonings, sugar and sweetmeats

Trade Mark:               McCHICKEN

Registration No:         371540
Priority Date:             12 February 1980

Goods:edible sandwiches, meat sandwiches, pork sandwiches, fish sandwiches, chicken sandwiches, biscuits, bread, cakes, cookies, chocolate, coffee, coffee substitutes, tea, mustard, oatmeal, pastries, sauces, seasonings, sugar and sweetmeats

Trade Mark:               McRIB

Registration No:         385379
Priority Date:             20 December 1982
Goods:  Pieces of chicken, battered and deep fried

Trade Mark:               CHICKEN McNUGGETS

Registration No:         479211
Priority Date:             5 January 1988

Services:services in this class rendered by restaurants and other establishments or facilities primarily engaged in procuring food and drink prepared for consumption; services rendered in the sale of food combination specialities; services rendered in the preparation of carry-out foods

Trade Mark:               McBURGER

Registration No:         479212
Priority Date:             5 January 1988

Goods:All goods in this class (30) including edible sandwiches, meat sandwiches, pork sandwiches, fish sandwiches, chicken sandwiches, biscuits, bread, cakes, cookies, chocolate, coffee, coffee substitutes, tea, mustard, oatmeal, pastries, sauces, seasonings, sugar and sweetmeats; all the foregoing being goods included in this class

Trade Mark:               McBURGER

Registration No:         504132
Priority Date:             3 February 1989
Goods:  All goods in this class (30)

Trade Mark:               McMUFFIN

Registration No:         1380672
Priority Date:             27 August 2010

Goods:Foods prepared from meat, pork, fish and poultry products, meat sandwiches, fish sandwiches, pork sandwiches, chicken sandwiches, preserved and cooked fruits and vegetables, eggs, cheese, milk, milk preparations, pickles, desserts

Trade Mark:               CHICKEN McBITES

Registration No:         774968
Priority Date:             6 October 1998

Goods:foods prepared from meat, pork, fish and poultry products; preserved and cooked fruits and vegetables; eggs, cheese, milk preparations, pickles and desserts in this class

Trade Mark:               McWRAPS

Registration No:         732382
Priority Date:             15 April 1997

Goods:Foods prepared from meat, pork, fish and poultry products, meat sandwiches, fish sandwiches, pork sandwiches, chicken sandwiches, preserved and cooked fruits and vegetables, eggs, cheese, milk, milk preparations, pickles, desserts

Trade Mark:               McSHAKER FRIES

1. The Opponent specifies the use of its Mc[Food] trade marks in Australia as follows:

Trade Mark   Food Product   Period of Use

McFEAST   Burger   1981 - 1997; Aug 2011

McBACON DELUXE          Burger   Dec 1990; Dec 1996 to

Feb 1997; Jan 2000

McCHICKEN   Chicken Burger   1991 to date

McRIB    Pork Burger   1992 - 1996; May 2012

McBEEFSTEAK   Burger   Oct-Nov 1993

McBREAKFAST BURGER Muffin Burger   June-July 1996; Oct-Nov 1996

CHICKEN McDELUXE       Chicken Burger   Mar 1997 - Apr 1997

McFISH DELUXE                Fish Burger   1997 - Apr 1997

MacAMORE   Italian style Burger                June 1997 - July 1997

McMALIBU   Hawaiian style Burger           Dec 1996 - Jan 1997

McFEAST DELUXE            Burger   1997 - 1999

McCHICK   Chicken Burger   Dec 1998 - Jan 1999

McBLT   Burger   Dec 1998 - Jan 1999

McOZ    Burger   Aug 1999 to date

McCHICKEN DELUXE       Chicken Burger   Mar 2000 - Apr 2000

MASSIVE McMUFFIN        Muffin Burger   Apr 2001

McDOUBLE    Burger   Oct 2009 to date

McDONALDLAND

COOKIES    Biscuit   1978 to date

CHICKEN

McNUGGETS    Chicken Nuggets                   1986 to date

SHANGHAI  Chinese style Chicken           Jul 1987

McNUGGETS”  Nuggets

BACON & EGG                    Bacon & Egg Muffin             1987 to date

McMUFFIN

SAUSAGE McMUFFIN       Sausage Muffin   1987 to date

SAUSAGE AND EGG         Sausage and Egg Muffin       1987 to date

McMUFFIN               

McSALAD ROLL                 Salad   1991-1994

McPAVLOVA   Dessert   Dec 1997 - Jan 1998

McSHAKER FRIES             Seasoned French Fries           May-June 1999

McFLURRY       Dessert    1999 to date

McDELICIOUS                    Dessert   June 2000

McWRAP         Food Wrap   Aug 2000 - Mar 2001

McFLOAT    Drink/Dessert   Nov 2012 to date

CHICKEN McBITES            Chicken Snack Pieces            Apr 2011 to date

McDIPPERS    Chicken Strips   Dec 2007

McGRIDDLES    Mini Flavoured Pancakes      Mar - Apr 2011

McWINGS   Chicken Wings   June 2011

McVALUE Meals                 Meals  1992 to date

McSPICY         Chicken Burger   Apr 2013

McCHAMP    Chicken Burger   Apr 2013

McGRILLED    Chicken Burger   Apr 2013

1. Mr Pontello exhibits various examples of the above trade marks on packaging and promotional materials at Exhibit PRP-2 of his declaration and television commercials at Exhibits PRP-9 of his declaration.

2. The Opponent uses similar coinages to the above in relation to combination meals (those which include selections of different foods and a drink).  These include:

Combination Meal  Period
"McValue Meals" (adult combination of  1992 to date
a burger, French fries/salad and soft drink
or a "McMuffin", hash browns and orange
 juice or coffee)
"McCafe" meal deals  2001 to date

1. Mr Pontello also provides evidence which shows the McValue Meals and McCafe trade marks in use in relation to combination meals.

2. Concerning the reputation of the Opponent’s trade marks, Mr Pontello provides confidential evidence of the unit sales of the Opponent’s hamburgers between 210 and 2012. 

3. The Second Williams Declaration exhibits the results of Freedom of Information requests by the Opponent to the Trade Marks Office concerning two applications where the trade marks consisted of the word ‘slider’.  The results showed that grounds for rejection were raised by the examiners in each instance on the basis that the word ‘slider’ is, in effect, generic, when used in relation to hamburgers.

4. The Applicant’s evidence, the declaration by Ms Johnston, states that the Applicant adopted the Trade Mark as a reference to Ms Johnston’s uncle Gordon, who was both a devout Scot and aviator who, when he died left Ms Johnston an aircraft, the sale of which provided the start-up money for Ms Johnston’s business.  The Trade Mark is, states Ms Johnston, a fun reference to both the late Uncle Gordon and the eponymous slider which she wishes to serve at her chain of cafés.

Section 60

1. Section 60 of the Act provides:

   60Trade mark similar to trade mark that has acquired a reputation in Australia

   The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

   (a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

   (b)because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

   Note:For priority date see section 12.

2. Section 60 requires answers to two questions: did the Opponent’s trade mark(s) have a reputation before the priority date? And, if so, was the reputation of the Opponent’s trade marks such that the use of the Trade Mark would confuse or deceive?

3. In McCormick & Co Inc v McCormick [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192 (‘McCormick’) at [81] Kenny J said of reputation:

   What is intended by the word "reputation" in s 60? The word is defined in The Macquarie Dictionary as follows:

   reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

   Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to "the recognition of the McCormick & Co marks by the public generally".

   Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public's mistakenly attributing a business connection between the two or attributing her product to the company?

and Heerey J in Le Cordon Bleu B.V. v Cordon Bleu International Ltee [2000] FCA 1587; (2000) 50 IPR 1[4] said that the reputation required to be demonstrated was:

one of which a significant number of persons were aware…What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient.

[4]. Albeit in relation to subparagraph 28(a) of the Trade Marks Act 1995 which, in the circumstances of that matter, required that reputation be established.

1. Here the goods and services of the Opponent are not (in the sense intended by the above) within a specialised market – they are, or involve, mass-marketed foods and beverages.

2. In McCormick at [86] Kenny J said of the assessment of reputation:

   In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 ("Gymboree"), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 ("Nettlefold"), in which Heerey J relied upon the public visibility of the applicant's marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.

3. By any measure, the sales and advertising in relation to the Opponent’s trade mark in Australia are very large.  The trade marks on which the Opponent relies have a very extensive reputation in Australia.

4. Concerning the assessment of the likelihood of deception and confusion, French J said in Registrar of Trade Marks v Woolworths [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 at [50]:

   (i) […] it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

   (ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

   It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

   (iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

   (iv) The rights of the parties are to be determined as at the date of the application.

   (v) The question […] must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

   In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:

   "...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion."

1. The latter test stated by Mason J cannot be stressed too highly.  I am not to assess the likelihood of confusion or deception by the way that the Applicant has previously used the Trade Mark or on the basis of the way that the Applicant states that it intends to use the Trade Mark.  I am to assess the likelihood of deception or confusion in the light of what the Applicant might lawfully do within the full scope of the specification and the possible uses it might make of the Trade Mark if it gains registration.  As I observed in McD Asia Pacific LLC v Huseyin Dogan 2014 ATMO 52 (‘McKebabs’):

   … the issue is whether the public, relying on the Applicant’s Trade Mark and/or advertising featuring the Trade Mark as indicating the origin of the goods, is likely to be confused into wrongly linking the trade marks, or believing that the Opponent might sell kebabs, or that Mr Dogan claims to sell kebabs similar to those that the Opponent might sell or have sold, or that there is some connection between the Applicant’s product and those of the Opponent. The Act does not put any restriction on the nature of the deception or confusion which might ensue from the use of a trade mark. Neither is it necessary that the confusion persist to the point of sale (or, indeed, be a factor in influencing the sale itself): Dodds-Streeton J said in Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252 at [105]: [5]

   It is well established that trade marks may be deceptively similar for the purposes of ss 44(1) and (2) of the Act even if confusion is unlikely to persist up to the point of, and contribute to, inducing sale.

   [5] Albeit in relation to section 44 of the Act – the words ‘confusion’ in section 44 and 60 indicate the same state of mind.

2. Further, one of the things that the Applicant might do is license the Trade Mark to someone who is more prepared than the Applicant is to use the Trade Mark to the full extent of the registration.  Accordingly, when I refer to the Applicant’s use of the Trade Mark, I am referring to all possible uses the Applicant or a licensee could (and not necessarily would) make of the Trade Mark within the scope of the registration which the Applicant seeks.

3. I also observe that if the Applicant’s intention is to parody the Opponent’s trade marks, I do not consider that this case sits well within the parody cases.  In Southcorp Ltd v Morris McKeeman [2006] ATMO 48 (‘Tenfolds Grunge’), where I found parody to be established, I stated:

   The approach of the Courts in cases where parody is claimed is to consider each instance on its facts. 

   21. In Pacific Dunlop Ltd v Hogan [1989] FCA 185; (1989) 14 IPR 398; 87 ALR 14, Burchett J stated at IPR 430:

   The suggestion in the present case, as his Honour found the facts, was of an endorsement of the appellant’s shoes by Mr Hogan’s almost universally appreciated Crocodile Dundee personality, and through that of an association between Mr Hogan and the product so endorsed. The television audience would accordingly hold the shoes in higher regard. On the evidence, some evocation of Crocodile Dundee was admittedly both intended and achieved; I do not see any basis for disturbing Gummow J’s view of its true effect. That view owed much to the special nature and circumstances of Mr Hogan’s portrayal of a character really indistinguishable from his own public image. It is, too, consistent with the concession made by the advertisement’s author, as noted by his Honour (ALR at 410; IPR at 232), "that the intention of the advertisement was that viewers should get an impression of Crocodile Dundee in connection with Grosby shoes". I reject the appellant’s attempt to avoid, by miscalling its advertisement a parody, the consequences of representing Crocodile Dundee (actually addressed in the advertisement by his name Mick) as endorsing its shoes. The essence of Mr Hogan’s performance is parody, which can hardly itself be parodied, at least by what would be more accurately described as a parasitic copy -- parasitic because its vitality is drawn entirely from the audience’s memory of the original. As well might an attempt to imitate "HMS Pinafore" be called a parody of Gilbert and Sullivan!

   22. Thus, the parody, if it be such, must be of a nature that it is immediately and principally recognizable as both parody and distinct from the original and not imply some endorsement by the its owner, or a connection with the original or its owner such that the goods would be seen by the public as originating from the owner of the original. 

   23. In Coca-Cola Company v All-Fect Distributors Ltd (T/as Millers Distributing Company) (1998) 43 IPR 47 Merkel J observed

   An analogous commercial use, which has also been held to fall short of representing a trade or commercial connection, can arise when an imitation product is created as a parody. In Nike Inc v "Just Did It'’ Enterprises [1993] USCA7 1181; 6 F 3d 1225 (7th Cir 1993 at 1227–8 the United States Court of Appeals for the Seventh Circuit said:

   Parodies date back as far as Greek antiquity ... "Parody or satire, as we understand it, is when one artist, for comic effect or social commentary, closely imitates the style of another artist and in so doing creates a new art work that makes ridiculous the style and expression of the original'’ ... But parodies have a legal hurdle to overcome. Federal law prohibits copies or imitations that confuse consumers ... This protects trademarks as a form of intellectual property ... and guards against confusion, deception or mistake by the consuming public ... Whether a customer is confused is the ultimate question. If the defendant employs a successful parody, the customer would not be confused, but amused ... Thus, we agree with the district court that parody is not an affirmative defence but an additional factor in the analysis. "[T]he keystone of parody is imitation. It is hard to imagine, for example, a successful parody of Time magazine that did not reproduce Time’s trade marked red border. A parody must convey two simultaneous -- and contradictory -- messages: that it is the original, but also that is not the original and is instead a parody. To the extent that it does only the former but not the latter, it is not only a poor parody, but also vulnerable under trade mark law, since the customer will be confused'’ ... Thus the parody has to be a take-off, not a rip-off.

   24. Merkel J continued with the caution that:

   However, as was said by Lehane J in McIlhenny[6] (citing authority at 195–6) many cases are illustrative of circumstances:

   ... where in the public mind the association between a particular image and a particular source is so strong that the evocation of the image in the get-up or marketing of a wide range of disparate goods or services will lead people to conclude that there is a commercial connection of some kind between the goods or services and the originator (or "owner'’) of the image.

   The authorities demonstrate that in the final analysis each case will turn on its own facts.

   [6] McIlhenny Co v Blue Yonder Holdings Pty Ltd formerly trading as Tabasco Design [1997] FCA 962

4. It necessarily follows from the above that the fact that a trade mark is a parody must be immediately apparent from the trade mark itself – not from some circumstance extraneous to the trade mark such as the environment in which the trade mark is used.  Here if the Trade Mark is intended to be a parody, it is not immediately apparent.

5. In his submissions Mr Kortian argues that the coinage ‘McSlider’ will be seen as a further member of the Opponent’s family of Mc[Food] trade marks.  The ‘family of trade marks’ argument was discussed by Sundberg J in Scotch Whisky Association v De Witt [2007] FCA 1649; (2007) 74 IPR 382; [2008] AIPC 92-264 at [74]- [78]:

   74. The applicant put its s 60 case in an alternative way. This was that the respondent’s mark contravened s 60 because one or more trade marks (namely, a family of marks with the prefix ‘GLEN’ used in relation to Scotch whisky) had acquired a reputation in Australia before 31 October 2003. The respondent referred to these marks as the ‘GLEN’ marks.

   75.     As I understood the submission it was that use of the GLENN OAKS mark is likely to result in confusion because a family of ‘GLEN’ marks exists in the market. The applicant relied upon a Trade Mark Office decision in McDonalds Corporation v Bellamy (2004) 62 IPR 133 at 139 to support the submission. There, the delegate said:

   "[In] the line of ‘family’ trade mark cases...the trade marks of an opponent have been found to have a common element, usually a prefix, which is so thoroughly associated with the opponent’s goods or services that the use by another person of a trade mark incorporating that element, would deceive or confuse."

   76.     The family marks argument is not persuasive. The applicant is not the registered owner of all the ‘Glen’ marks. Beck Koller & Co (1947) 64 RPC 76 at 83 provides guidance, in dicta, as to how family marks should be examined:

   "When an application for registration is before the Registrar, it frequently happens that the search for conflicting marks reveals several marks having some characteristic feature in common with the mark of the application, which marks may stand on the register in the name of one proprietor only, or in the name of several different proprietors.

   If, therefore, all the marks were owned by one proprietor, the Registrar would presume that the latter was using a ‘series’ of marks and judge the conflict between the applicants’ mark and each of the proprietor’s mark with this consideration in mind.

   On the other hand, if the registered marks were owned by several different proprietors, this would be a circumstance which might considerably assist the applicant who would be in a position to submit that the common characteristic was one well recognised in marks in use in the particular trade. In short, when the Registrar comes to compare the applicant’s mark with the registered marks, ... the presence of marks on the register other than the one with which the comparison is being made is regarded as one of the surrounding circumstances which he is required to take into account."

   (Emphasis added)

   77.     The "applicant" referred to in that passage is the applicant for the trade mark. So if the marks were owned by the same party, that would have gone against the applicant, but where there were a number of prior registered marks belonging to different parties, that was in the applicant’s favour. In the present case, the respondent is the applicant for the trade mark. The passage above cuts in favour of the GLENN OAKS mark.

   78.     In both Woolworths Metro and McDonalds there was only one registered owner of the relevant trade marks. Several United States authorities, including J & J Snack Foods Corp v McDonald’s Corp 932 F 2d 1460 (Fed Cir 1991) and American Standard Inc v Scott & Fetzer Co 200 USPQ 457 461 (TTAB 1978), support the distinction referred to at [77]-[78].

6. There are a number of ‘McSurname’ trade marks (such as McCormick, McVitie, McAlpin’s or McCain) registered in Classes 29-33 (those associated with food and drink); however, the Opponent has the only registrations (and, more importantly, reputation through use) of the Mc[Food] trade marks where those Mc[Food] trade marks are not the name of a person. The Opponent’s Mc[Food] trade marks are thus a family of trade marks as prescribed by Sundberg J, above.

7. Further, I agree with Ms Johnston’s submission that the Opponent cannot claim rights in all ‘McCoinages’.  However, that is not the issue that I must consider: the question is whether the use of the Trade Mark by the Applicant or a licensee to the extent available within the postulated registration is likely to confuse or deceive.

8. A ‘slider’ is a ‘fast food’; it is by definition a hamburger which is a part of the Opponent’s core business.  I consider that it is inevitable that the public would, because of the reputation of the Opponent’s Mc[Food] trade marks, its pre-existing hamburger business and its well-known habit of making further ‘McCoinages’, immediately associate the coinage ‘McSlider’ with the Opponent and that this association would be likely to give rise to confusion.

9. Accordingly, the Opponent has established its opposition under section 60 of the Act.

Decision

1. Section 55 of the Act relevantly provides:

   55Decision

   (1)Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

   (a)to refuse to register the trade mark; or

   (b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the application was opposed has been established.

   Note:For limitations see section 6.

2. The Opponent has established its opposition and I refuse to register the Trade Mark.

Costs

1. The Opponent, having been successful, is entitled to its cost which I order against the Applicant.

Iain Campbell Thompson
Hearing Officer
Trade Marks Hearings
8 August 2014