McD Asia Pacific LLC v Hoseyin Dogon
[2014] ATMO 52
•12 June 2014
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 1509266(29) - MCKebabs - filed in the name of Huseyin Dogan.
Delegate: Iain Campbell Thompson Representation: Opponent: Khajaque Kortian, solicitor and partner in the firm Spruson & Ferguson
Applicant: Written submissions by CK Stewart.Decision: 2014 ATMO 52
s52 proceedings; s60: proposed mode of use or derivation of the Trade Mark are not factors that may be taken into account while assessing likelihood of deception or confusion – opposed application to be considered for full breadth of claim; reputation of Opponent’s ‘Mc-’ family of trade marks; likelihood of confusion; registration refused.
Costs – having regard to the conduct of proceedings, the Opponent may not claim item 13 of Schedule 8 to the Regulations.Background
In this matter Huseyin Dogan (‘the Applicant’) has applied under the Trade Marks Act 1995 (‘the Act’) to register a trade mark the amended[1] form of which appears below:
Application No: 1509266
Priority Date: 20 August 2012
Goods: Class 29: Kebabs
Trade Mark: MCKebabs(‘the Trade Mark’)
[1] The Trade Mark was amended by the Applicant from McKebabs to MCKebabs on 7 November 2013.
The Trade Mark was duly examined in compliance with section 31 of the Act, accepted for possible registration and advertised as such in the Australian Official Journal of Trade Marks on 22 November 2012.
On 22 February 2013 McD Asia Pacific LLC (‘the Opponent’) filed Notice of Opposition (‘the Notice’) to the registration of the Trade Mark. The Notice includes the section 60 ground under which I will decide this matter.
The Opponent filed evidence in support of its Opposition. The Applicant did not then file evidence in answer.
The parties were both informed of their right to be heard or, on payment of the official fee, make written submissions for consideration at a hearing.
The Opponent elected to be heard and I was tasked, as a delegate of the Registrar of Trade Marks, to hear this matter in Sydney at 2 pm on 7 April 2014. On 12 March 2014 I issued draft directions to the parties setting out a timetable for the exchange of a written summary of submissions from the Opponent on 20 March 2014 and from the Applicant on 3 April 2014. Neither party objected to the timetable or gave any indication as to whether or not they would file such submissions and as a consequence the directions were set.
A written summary of submissions was received from the Applicant on Friday 4 April 2014 and from the Opponent on the morning of the hearing on 7 April 2014.
Khajaque Kortian, solicitor and partner of Spruson & Ferguson, represented the Opponent at the hearing in person. The Applicant relied on written submissions by CK Stewart.
Evidence
The evidence in support comprises statutory declarations by:
Madeleine Fitzpatrick made on 22 May 2013; and
Khajaque Kortian made on 22 May 2013
Formalities
As previously noted, the Applicant did not file evidence in answer. However, on or about 5 April 2014 the Applicant lodged a statutory declaration by himself as further evidence. This declaration was not accompanied by an application to file further evidence or a fee and these formalities were attended to by the Applicant on the morning of 7 April 2014.
Concerning the Applicant’s further evidence, there are a number of factors which must be considered concerning its admissibility; as explained by a delegate of the Registrar in Gregory Paul Roebuck v News Ltd [2014] ATMO 19 at [11]:
The principles for deciding whether it is appropriate to allow an application for further evidence[2] were set out in the UK case of Oxon Italia SpA’s Application [1981] FSR 408. In summary, they are: that the evidence could not reasonably have been obtained earlier; that the evidence would have an important influence on the result of the case; and that it is credible. There is also the question of the public interest in allowing the evidence in, bearing in mind that fresh evidence cannot be excluded on appeal to the court. As Hearing Officer Homann observed in Studio Buying Systems Srl v Buying Systems (Aust) Pty Ltd (1991) 22 IPR 580 at 585, ‘Obviously it would be preferable for the matter to be finally decided by the registrar if the admission of further evidence would allow this to be done.’
[2] The Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1) came into effect on 15 April 2013. The amending Regulation has repealed regulation 5.15, which provided for the service of further evidence. However, the repealed further evidence provisions continue to apply here, because the opposition was commenced by a notice of opposition filed before 15 April 2013. (See regulation 22.9(1), Item 1.)
The further evidence upon which the Applicant seeks to rely states his reasons for adopting the trade mark, his prior experience in running small businesses, his intention to sell halal kebabs and his intended mode of use of the Trade Mark. The Applicant further asserts that he adopted the Trade Mark because he is Turkish and that the letters MC in the Trade Mark stand for the words ‘My Country’.
At the hearing I stated that I would not allow this declaration into evidence. This is because the facts to which the declaration attests could reasonably have been obtained and declared earlier and those facts are not, in any case, germane to the grounds under which these proceedings are prosecuted by the Opponent. In particular, I am not to decide this matter by reference to how the Applicant intends to use the Trade Mark or how the Applicant may have used the Trade Mark but by a consideration of what the Applicant may do within the scope of the registration if the Trade Mark is registered. In the words of Mason J 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.”
Additionally, how the Trade Mark was derived does not bear on the question of whether the use of the Trade Mark by the Applicant would deceive or cause confusion. By analogy, if a person other than the Coca-Cola Company derived a trade mark to use on soft drink from the initials of the words Can Of Kola Extract, the resultant confusion arising from this postulated person’s use of the trade mark COKE® would not be in any way ameliorated by that trade mark’s mode of derivation. Further, the mode of derivation may not necessarily be on display to the public when the Trade Mark is in use in order to address confusion or dispel deception.
Outline of Evidence
Madeleine Fitzpatrick is Director of Marketing of McDonald’s Australia Limited (‘McDonald’s Australia’) who states she is authorized to make her declaration on behalf of McDonald’s Australia and on behalf of McDonald’s Australia’s licensor, the Opponent.
By way of brief history and background to the operations of the Opponent, Ms Fitzpatrick says:
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 890 McDonald’s Restaurants operating in Australia (both directly by and under franchise from McDonald’s Australia).
Ms Fitzpatrick’s declaration asserts a family of both registered and unregistered trade marks which incorporate the prefix ‘Mc-’ owned[3] by the Opponent which are of the ilk, ‘McFood’ where the element ‘Food’ is variable and may refer to, for example, Chicken, Cheese, or ‘BLT’ as ingredients of burgers, sandwiches, takeaway foods, etc. For the sake of neutrality, I will term these trade marks ‘the McXXX trade marks’. And, for the sake of brevity and convenience (and conformity with the case-law mentioned below) I will tie together both the registered and unregistered trade marks of the Opponent and list all of the McXXX trade marks which the Opponent has used in Australia and footnote those which are registered.
[3] Ownership of a trade mark may arise at common law through use, independent of registration; see, for example, Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936; (1994) 120 ALR 495; (1994) 31 IPR 375; [1994] AIPC 91-049.
Trade Mark Food Product Period of Use
“McFEAST”[4] Burger 1981 - 1997; Aug 2011
[4] 305961(30) All goods included in this Class.
“McBACON DELUXE” Burger Dec 1990; Dec 1996 to
Feb 1997; Jan 2000
“McCHICKEN”[5] Chicken Burger 1991 to date
[5] 354158(30) Biscuits, bread, cakes, cookies, chocolate, coffee, coffee substitutes, tea, edible sandwiches, chicken sandwiches, mustard, oatmeal, pastries, sauces, seasonings, sugar and sweetmeats.
“McRIB”[6] Pork Burger 1992 - 1996; May
[6] 371540(30) 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
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”[7] Burger Aug 1999 to date
[7] 798576(30) 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
“McCHICKEN DELUXE” Chicken Burger Mar 2000 - Apr 2000
“MASSIVE McMUFFIN”[8] Muffin Burger Apr 2001
[8] 504132(30) All goods in this class
“McDOUBLE”[9] Burger Oct 2009 to date
[9] 1323922(30) 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
“McDONALDLAND
COOKIES”[10] Biscuit 1978 to date
[10] 305959(30) Cookies
“CHICKEN
McNUGGETS”[11] Chicken Nuggets 1986 to date
[11] 385379(29) Pieces of chicken, battered and deep fried
“SHANGHAI Chinese style Chicken Jul 1987
McNUGGETS” Nuggets
“BACON & EGG Bacon & Egg Muffin 1987 to date
McMUFFIN”
“SAUSAGE McMUFFIN”[12]Sausage Muffin 1987 to date
[12] 459192(30) All goods included in this class containing sausage meat.
“SAUSAGE AND EGG Sausage and Egg Muffin 1987 to date
McMUFFIN”
“McSALAD ROLL” Salad 1991-1994
“McPAVLOVA” Dessert Dec 1997 - Jan 1998
“McSHAKER FRIES”[13] Seasoned French Fries May-June 1999
[13] 732382(29) 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
“McFLURRY”[14] Dessert 1999 to date
[14] 763084(29) 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
“McDELICIOUS” Dessert June 2000
“McWRAP”[15] Food Wrap Aug 2000 - Mar 2001
“McFLOAT”[16] Drink/Dessert Nov 2012 to date
“CHICKEN McBITES”[17] Chicken Snack Pieces Apr 2011 to date
“McDIPPERS”[18] Chicken Strips Dec 2007
“McGRIDDLES”[19] Mini Flavoured Pancakes Mar - Apr 2011
“McWINGS”[20] Chicken Wings June 2011
McVALUE Meals[21] Meals 1992 to date
“McSPICY”[22] Chicken Burger Apr 2013
“McCHAMP”[23] Chicken Burger Apr 2013
“McGRILLED”[24] Chicken Burger Apr 2013
[15] 774968(29)(30) McWraps 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[16] 1519548(30) Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices, ice; ice cream floats
[17] 1380672(29) 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
[18] 1195756(29) Prepared chicken pieces sold as a unit or in combination with prepared meals consisting primarily of chicken pieces sold for consumption on and off the premises
[19] 1403827(30) Sandwiches consisting of hot cakes, beef, chicken, pork, and egg and cheese products
[20] 1415644(29) Foods prepared from meat, pork, fish and poultry products, preserved and cooked fruits and vegetables, eggs, cheese, milk, milk preparations, pickles, desserts
[21] 663394(42) 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 specialties; services rendered in the preparation of carry-out foods; designing of such restaurants, establishments and facilities
[22] 1544040(30) 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
[23] 1550398(30) 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
[24] 1544035(30) 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
I note that the latter three trade marks, above, have priority dates and dates of first use which are after the priority date of the Trade Mark and are hence not relevant to these proceedings except inasmuch they conform with and confirm the ongoing nature of the Opponent’s pattern of use and registration of its McXXX trade marks.
I also note that several of the above McXXX trade marks which are not registered, such as McFEAST DELUXE, BACON & EGG McMUFFIN and SAUSAGE & EGG McMUFFIN are substantially identical to registered McXXX trade marks such as McFEAST and McMUFFIN and may thus be deemed by the Registrar or Courts to be use of those registered trade marks in terms of PB Foods Ltd v Malanda Dairy Foods Ltd [1999] FCA 1602; (1999) 47 IPR 47; [1999] AIPC 40-117 and/or E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15; (2010) 241 CLR 144; (2010) 265 ALR 645; (2010) 86 IPR 224; (2010) 84 ALJR 352; [2010] AIPC 92-381 under the provisions of section 7(1) of the Act which provides:
7Use of trade mark
(1)If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.
Note:For prescribed court see section 190.
I note that the trade mark McCAFÉ[25] which the Opponent has used in Australia since 1993 does not appear in the list given by Ms Fitzpatrick which appears at [17] of this decision as the cafés in relation to which this trade mark is used are (or appear to be) ‘a business operation within a business operation’. Ms Fitzpatrick states of the McCAFÉ trade mark:
“McCAFÉ” Outlets are generally built within standard McDonald’s restaurants and are designed to provide customers with a cosmopolitan, neighbourhood cafe-style experience where customers have been able to obtain cafe-style food and beverages including cakes, cookies, macarons [sic], muffins, pastries, biscuits, savoury foods and prepared meals such as panini and foccacia-style [sic] sandwiches, as well as coffee (including Italian-style coffees such as cappuccino and latte, and Vienna coffee), decaffeinated coffee, hot chocolate and tea (including gourmet tea).
[25] 591033(42) Restaurant services
There are now 890 McDonald’s restaurants in Australia, 700 of which (as at May 2013) contained McCAFÉ outlets.
Ms Fitzpatrick provides confidential sales figures for both the McDONALDS restaurants and McCAFÉ outlets in Australia. These figures are, by any standards, high.
The Opponent’s pattern of coinages of its McXXX family of trade marks has become sufficiently well-known for it to influence headlines in the general news press – particularly in articles about the Opponent. Some examples given at Exhibit MF-8 of Ms Fitzpatrick’s declaration include, Italians Stage McProtest,[26] McScanning – What Does It All Mean?[27] McDispute,[28] McNappers,[29] McBreakfast?[30] and, The Making of the McBosses.[31]
[26] The Sun, Monday 21 Aril 1986.
[27] CB Action, May/June 1990
[28] Marketing Week, 27 November, further details not stated
[29] Telegraph, Monday 23 June 1986
[30] Choice, November 1987
[31] Good Weekend, further details not stated.
Ms Fitzpatrick states that the advertising and promotion of the Opponent’s goods and services involves the expenditure of millions of dollars a year. Relevant to this matter she states that the Opponent has run the following promotions which involve either McXXX trade marks or what I will term McYYY trade marks (where the YYY element indicates the nature of the promotion):
McXXX trade mark Advert/Promotion Period
“McMetric” Ruler 1973
“McLunch” Pencil Case 1989
“McFavourite” Puzzle 1990
“McMenu Song” Puzzle 1990
“McSpin ‘N’ Win” Game 1993
“McDonald’s Olympic Game 1996
“McMatch & Win”
“McMillion $” Game Jan-Feb 1997
“McMatch & Win” Game July-Aug 1998
Jun 1999
“McHatch - Match & Win” Game June-Aug 2000
“Relax and recharge at Game May 2004
McCafe”
Also included with Ms Fitzpatrick’s declaration are some 59 media files (both audio and video files) which feature advertising in Australia of the McXXX products and services already mentioned as well as those sold or provided under the trade marks CHICKEN & McCHEESE, McAFRICA, McAMERICA, McASIA, McCHILI, McHAPPY DAY and McONE.
Mr Kortian’s declaration exhibits ATMO decisions which involve the Opponent’s McXXX trade marks: McDonald's Corporation v Macri Fruit Distributors Pty Ltd [2000] ATMO 37 (McSalad and McFresh); McDonalds Corporation v Sheli Lubowski [2004] ATMO 56 (McChina); and . McDonald's Inc v Future Enterprises Pte Ltd [2007] ATMO 22 (MacCoffee). For the sake of completeness, I note that other decisions which involve similar trade marks include McDonalds Corporation v David Bellamy [2004] ATMO 26 (MacBaby) and McDonald’s Corporation v McBratney Services Pty Ltd [2006] ATMO 71 (McBrat)[32].
[32] This trade mark is registered in Class 25 for’ Clothing; footwear; headgear’.
Section 60
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.
References to ‘another trade mark’ and ‘that other trade mark’ within section 60 must be read as referring to ‘other trade marks’ and ‘those other trade marks’ by virtue of section 23 of the Acts Interpretation Act 1901 which provides:
23 Rules as to gender and number
In any Act:
(a)words importing a gender include every other gender; and
(b)words in the singular number include the plural and words in the plural number include the singular.
Additionally, there is no requirement within section 60 that the trade marks on which an opponent relies to found this ground must be registered.
Here the Opponent relies on the reputation of what it asserts to be its family of McXXX trade marks which have been extensively used in promoting and advertising its fast food goods and services.
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?
Heerey J in Le Cordon Bleu B.V. v Cordon Bleu International Ltee[33] said that the reputation required to be demonstrated was to be:
… 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.
[33] [2000] FCA 1587; (2000) 50 IPR 1 (decided under subparagraph 28(a) of the Trade Marks Act 1955 which in the circumstances of that case required ‘reputation’ to be established).
The evidence demonstrates that the McXXX trade marks on which the Opponent relies have a strong reputation in Australia – as it does the Opponent’s practice of coining additional trade marks within that asserted family with the prefix ‘Mc-’ and the suffix of some form of food. This practice is, in my consideration, so well-known as to be notorious and that most people in Australia must be aware of it whether they are patrons of the Opponent’s restaurants or not.
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].
While 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) the Opponent has the only registrations (and, more importantly, reputation through use) of the McXXX trade marks where those McXXX trade marks are not the name of a person. The Opponent’s McXXX trade marks are thus a family of trade marks as prescribed by Sundberg J, above.
And, concerning the assessment of the likelihood of deception and confusion, 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 (‘Woolworths’) French J said at [50] that considerations are to be informed by the following factors:[34]
[34] Since there is no requirement within section 60 that the trade marks on which an opponent relies be deceptively similar to the opposed trade mark, I have redacted references to deceptive similarity from the quoted passage.
(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.”
Additionally, although the concepts of deception and confusion are often conflated, the words refer to different mental states. In Parker-Knoll Limited v. Knoll International Limited [1962] RPC 265 at page 174 Lord Denning said of the differences between ‘confusion’ and ‘deception’:
Secondly, ‘to deceive’ is one thing. To ‘cause confusion’ is another. The difference is this: When you deceive a man, you tell him a lie. You make a false representation to him and thereby cause him to believe a thing to be true which is false. You may not do it knowingly, or intentionally, but still you do it, and so you deceive him. But you may cause confusion without telling him a lie at all, and without making any false representation to him. You may indeed tell him the truth, the whole truth and nothing but the truth, but still you may cause confusion in his mind, not by any fault of yours, but because he has not the knowledge or ability to distinguish it from the other pieces of truth known to him or because he may not even take the trouble to do so.
The Applicant submits that, “The prefix “MC” to “Kebabs” is in a sufficiently different mode – the upper case being used to be clearly distinguishable from the distinctive “Mc” or “MAC”.”
As indicated above, the Applicant, on 7 November 2013, amended the Trade Mark from McKebabs to MCKebabs under the provisions of section 65 which relevantly provides:
65Amendment after particulars of application have been published—request for amendment not advertised
(1)If the particulars of the application have been published under section 30, the application may be amended as provided in this section.
(2)An amendment may be made to the representation of the trade mark if the amendment does not substantially affect the identity of the trade mark as at the time when the particulars of the application were published. [stress added]
Thus, if the amendment was one such that the ground under section 60 could no longer apply, the amendment must have been one which substantially affected the identity of the Trade Mark and hence one which is not permitted under the Act. (Additionally, if the amendment was not permitted and contrary to the Act, the Trade Mark should be refused registration under Ground 5 of the Notice filed and argued by the Opponent – that is, in terms of subsection 62(a) of the Act, ‘the application, or a document filed in support of the application, was amended contrary to this Act’).
The amendment is thus one which is immaterial and does not affect the identity of the Trade Mark which is, to all intents, the same trade mark and forms the basis of comparison. The trade marks McKebabs or MCKebabs or, indeed, MCKEBABS are, in terms of the Act, substantially identical to each other[35]. The ground under section 60 must therefor be viewed as applying equally to either version of the Trade Mark.
[35] Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd [1963] HCA 66; (1963) 109 CLR 407.
The Applicant also argues that:
To this can be added the fact that in the opponent’s declarations is no evidence that it has ever ever stocked kebabs of any kind - let alone the doner/Turkish [halal] variety. Mr Dogan’s declaration states that this form of kebab is not something sold by the opponent - nor are Mr Dogan’s prospective suppliers of kebabs known to supply the opponent’s outlets - see his paragraphs [d] & [e][cf John Crowther & Sons Ltd’s App (1949) 65 RPC 372 ].There is nil that suggests otherwise.
Leaving to one side the issue of the status of Mr Dogan’s declaration, the issue is not whether the Opponent has ever sold kebabs; 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]:[36]
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.
[36] Albeit in relation to section 44 of the Act – the words ‘confusion’ in section 44 and 60 indicate the same state of mind.
The Applicant further states:
Competition should remain free from being stifled. The applicant has a product that is readily distinguishable from those of the opponent [see Cadbury -Schweppes Pty Ltd v The Pub Squash Co Pty Ltd (1980) 32 ALR 387] [‘Pub Squash’]
The issue is not whether the Applicant’s product is readily distinguishable from the Opponent’s product: the issue is whether the use of the Trade Mark by the Applicant or under his aegis would cause confusion. The copying of product in the context of the Pub Squash decision was discussed in Dr Martens Australia Pty Ltd v Figgins Holdings Pty Ltd [1999] FCA 461 where Goldberg J said at [306]:
There is a substantial body of evidence to the effect that interpreting and copying fashion styles and fashion looks is endemic in the fashion and footwear industries and is therefore justifiable. Such a proposition depends upon whether a right is infringed or a statutory provision is contravened by such copying. In the absence of copyright, design or trade mark protection there is no infringement of any right by such interpretation and copying unless the copy product can be said to be passed off as and for the genuine product or that consumers are misled and deceived into believing that the copy product is a genuine product or as emanating from the trade source of the genuine product, or has the sponsorship of, or an association with, the manufacturer of the genuine product. The tenor of some of the cross-examination of the respondents’ witnesses was that in principle there was something wrong or illegitimate about copying somebody else’s product. Whatever view one may have about the moral or social propriety of such copying that is not a matter for the Court. The matter was put succinctly by Lord Scarman speaking for the Privy Council in Cadbury-Schweppes Pty Ltd v The Pub Squash Co Pty Ltd (1980) 32 ALR 387 at 393:
“But competition must remain free: and competition is safeguarded by the necessity for the plaintiff to prove that he has built up an `intangible property right’ in the advertised descriptions of his product: or, in other words, that he has succeeded by such methods in giving his product a distinctive character accepted by the market. A defendant, however, does no wrong by entering a market created by another and there competing with its creator. The line may be difficult to draw: but, unless it is drawn, competition will be stilled. The test applied by Powell J in the instant case was to inquire whether the consuming public was confused or misled by the get-up, the formula or the advertising of the respondent’s product into thinking that it was the appellants’ product. And he held on the facts that the public was not deceived. Their Lordships do not think that his approach in law (save in one respect, as will later appear), to the central problem of the case can be faulted.”
The issue for the Court is whether there has been an infringement of a right given by law or the contravention of any statutory provision. Accordingly, it forms no part of my task to be critical of persons for copying products unless they have infringed such a right or brought about such a contravention.
Such also is the case here – I am not comparing products, I am comparing trade marks.
In John Fitton & Co Ltd’s Appn (1949) 66 RPC 110, where, in considering the new mark EASYJEST in face of the registered mark JESTS, the Assistant Comptroller said, at page 113, that no limitation was to be placed, “upon the nature of the confusion or deception so envisaged, whether it be visual or phonetic confusion of the marks themselves, or what is termed contextual confusion, or deception as to the trade provenance of the goods”. The issue is whether the Applicant’s use of the Trade Mark would deceive or cause confusion rather than whether the product itself would deceive or confuse.
This matter involves contextual confusion – the question being whether the Applicant’s use of the Trade Mark would cause people to wonder or speculate that the Applicant’s goods are, or might be those of the Opponent, or at there being some connection between the Applicant’s operations and those of the Opponent. I find myself in agreement with the Opponent’s submissions that:
In our submission, the Trade Mark is clearly deceptively similar to the Opponent’s Family of “Mc” Trade Marks. Given the many “Mc” prefix with food-type word marks, there is a very real likelihood that a significant number of consumers seeing Class 29 kebabs by reference to the mark McKebabs, would be confused or caused to wonder that such branded goods were one of the Family of “Mc Trade Marks. Further, the Scottish name prefix “Mc” is incongruent and completely unrelated to the middle-eastern, near-eastern foods known as “kebabs”. Therefore, consumers would be more likely to associate or confuse with one or more of the Family of “Mc” Trade Marks. The Opponent is known for adding the “Mc” prefix to difference cuisine associated with different nations as “McPIZZA” (Italian), “McRIB” (US); “McMUFFIN” (UK), “McOZ” (Aust), “McPAVOLVA (Aust)”, “SHANGHAI McNUGGETS” (China), “McMalibu[37]” (US), “El Maco” (Mexican). The opposed mark “McKEBABS” would be seen by consumers of the Opponent’s “Mc” prefix food products, as another extension or variation of the Opponent’s “Mc” prefix marks.
…
In the McSalad Case Hearing Officer Nancarrow found that the (then) 17 or so Family of “Mc” Trade Marks, taken together supplies a sufficient expectation that any trade mark with the prefix “Mc” which is conjoined to a word which is describes either the goods or services themselves or a quality or characteristic of the goods, would form part of the Opponent’s family of marks (at page 13). This was on the proviso that the goods or services referred to in the part word conjoined with the “Mc” prefix would be seen to form a normal or usual part of the Opponent’s business. This is clearly the case in this instance given that we are dealing with another form of popular food, in this case near eastern “kebabs” and the opponent’s practice of having other national cuisines in its Family of “Mc” Trade Marks.
[37] To this list one should add the Opponent’s trade marks McAFRICA, McAMERICA and McASIA, referred to above.
I consider that confusion would inevitably arise from the Applicant’s use of the Trade Mark. The reputation of the Opponent’s McXXX trade marks is strong and the public has effectively been educated by the Opponent that it (and it alone) coins, registers and uses trade marks according to the formula ‘McFood’ where the variable element ‘Food’ might be anything from burgers to French fries to Chinese or African fare. The initial wonderment or mis-formed conclusion of a person seeing the Trade Mark for the first time that it is, or might well be, a further McFood coinage by the Opponent is, in my consideration, natural and unavoidable and this amounts to confusion. It is, as discussed above, no answer to assert that by the time that people have purchased goods sold under the Trade Mark that this confusion will have been dispelled. As stated by French J in Woolworths at [47]:
The trade mark law concept of confusion in the sense of mere wonderment as to common origin or connection has little part to play in the consumer protection statutes. That, no doubt, is because “confusion” used in that sense, does not of itself lead into error or affect choices at the point of sale. It is perhaps best described in trade mark law as effecting a prophylactic support for commercial distinctiveness.
In Radio Corp Pty Ltd v Disney [1937] HCA 38; (1937) 57 CLR 448 (the Mickey Mouse case) Rich J, at page 454, said of ‘confusion’:
In matters such as this we are dealing with the vague and indefinite impressions of the great mass of the public who neither are required nor desire to refine upon distinctions of this sort. To them it is shown that the name "Walt Disney" summons up a picture of "Mickey Mouse" and the picture of Mickey Mouse reminds them of "Walt Disney". The foundation of this is authorship no doubt. But somehow or other, how, it is fruitless to inquire, they connect the appearance on an article of the name or form of "Mickey Mouse" with "Walt Disney". This being so, it is, I think, impossible for the appellant to negative all likelihood of confusion. It is no part of our duty to state in definite terms precisely how the public will be misled or what kind of connection they will impute. Confusion involves indefiniteness of ideas.
Similarly, to the great mass of the public, trade marks of the ‘McFood’ ilk in relation to takeaway food would, in my consideration, immediately summon up a picture of the Opponent and its operations. I am therefore satisfied that the Applicant’s use of the Trade Mark would, at the least, confuse. The ground under section 60 is established.
Decision
At the relevant date, subsection 55(1) of the Act provided:
55Decision
(1)Unless the proceedings are discontinued or dismissed, 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.
I refuse to register application 1509266.
Costs
Section 202 of the Act provides:
202Registrar’s powers
The Registrar may, for the purposes of this Act:
(a)summon witnesses; and
(b)receive written or oral evidence on oath or affirmation; and
(c)require the production of documents or articles; and
(d)award costs against a party to proceedings brought before the Registrar; and
(e)notify, as he or she considers fit, any person of any matter that, in his or her opinion, should be brought to the person’s notice.
Note:For the awarding of costs see section 221.
The use of the word ‘may’ in section 202 indicates that the power to award costs against a party to proceedings before the Registrar is discretionary. That is, considerations in the exercise of the power may have regard to the conduct of the proceedings before the Registrar. Section 221 further emphasises the discretionary nature of the power as does regulation 21.13.
Having regard to the conduct of the proceedings here, I note that neither party complied with the Registrar’s directions in relation to the timetable for the exchange of a summary of each party’s submissions prior to the hearing. Accordingly, while I award costs against the Applicant as it is the unsuccessful party, the Opponent may not claim its costs in relation to item 13 of Schedule 8 of the Trade Mark Regulations 1995 in relation to its preparation of its case for hearing.
Iain Campbell Thompson
Hearing Officer
Trade Marks Hearings
12 June 2014
Edible sandwiches, meat sandwiches, pork sandwiches, fish sandwiches, chicken sandwiches, biscuits, bread cakes, cookies, chocolate, coffee, coffee substitutes, tea, mustard, oatmeal, pastries, sauces, seasonings
1578639(30) 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
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