McD Asia Pacific LLC v Hui Zhang and Holo 55 Pty Ltd

[2022] ATMO 192

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 2114095 (30) – MACDOO (Figurative) – in the names of Hui Zhang and Holo 55 Pty Ltd

Delegate:

Nicholas Smith

Representation:

Opponent: Spruson & Ferguson

Applicant: Self-represented

Decision:

2022 ATMO 192

Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 42(b), 44, 60 and 62A considered – none established – trade mark to proceed to registration

Background

1. This decision concerns an opposition brought by McD Asia Pacific LLC (‘Opponent’) to the registration of the trade mark which is the subject of the application detailed below in the names of Hui Zhang and Holo 55 Pty Ltd (‘Applicant’): 

Application Number:

2114095

Filing Date:

24 August 2020

Goods:

Class 30: Chai tea; Herbal tea (other than for medicinal use); Packaged tea (other than for medicinal use); Tea (not medicinal)

(‘Applicant’s Goods’)

Trade Mark:

(‘Trade Mark’)

2.  Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

3.  Following the advertisement of the application’s acceptance for possible registration in the Australian Official Journal of Trade Marks, the Opponent filed a Notice of Intention to Oppose the registration followed by a Statement of Grounds and Particulars on 19 May 2021 (‘SGP’).  The SGP raised grounds of opposition under ss 42(b), 44, 60 and 62A.  The Applicant filed a Notice of Intention to Defend on 10 August 2021. 

Evidence

1. The Opponent filed the following evidence in support of its opposition:

   ·Declaration made on 15 November 2021 by Khajaque Kortian, Principal of Spruson & Ferguson, the legal representative of the Opponent, with Annexures KK-1 to KK-9 (‘Kortian declaration’).

   5.  The Applicant filed the following evidence in answer:

   ·Declaration made on 10 February 2022 by Hui Zhang (one of the Applicants) and Hui Chen (the director of the other Applicant), with Exhibits 1-11 (‘Applicant declaration’).

   6.  The Opponent did not file evidence in reply.

   7.  Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing in this matter or a decision without hearing.  The Applicant requested that the matter proceed to a decision without hearing and paid the appropriate fee.  As a result the matter has been allocated to a delegate of the Registrar for a decision based on the written record.

   8.  I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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. 

   In doing so I take account of       the written record comprised of the materials mentioned in the preceding paragraphs.

   The Opponent

2. The Opponent is the licensor of all intellectual property, including the trade marks listed below in Annexure A to this decision (‘Opponent’s Trade Marks’) in connection with the McDonald’s system of self-service restaurants. As set out in Exhibit KK-7 to the Kortian declaration, the McDonald’s brand is extraordinarily well-known in Australia and a significant proportion of the Opponent’s Trade Marks consist or include words ‘mc’ or ‘mac’ (as a prefix or stand-alone word). In addition to the Opponent’s Trade Marks McDonald’s restaurants have offered a variety of food and beverages under marks incorporating the elements ‘mc’ or ‘mac’.

3. The remainder of the Kortian declaration consists of decisions by delegates of the Registrar of Trade Marks in which the Opponent successfully opposed various trade marks consisting of the prefix ‘mc’ or ‘mac’ and a descriptive word.

   The Applicant

4. The Applicant seeks to establish a tea brand in Australia under the Trade Mark.  It is involved in the production and sale of tea under the Trade Mark in China.  Much of the Applicant declaration consists of submissions about the distinctive nature of the Trade Mark, including submissions on cases exhibited to the Kortian declaration, that are not necessary to summarise here.   In addition, both the Applicant declaration and the Kortian declaration refer to various other applications made by the Applicant, both in Australia and internationally, that are not relevant to the present proceeding.

   Grounds of Opposition, Onus and Standard of Proof

5. As indicated above in the SGP the Opponent nominated grounds of opposition under ss 42(b), 44, 60 and 62A.  To successfully oppose the application the Opponent needs to establish one of the nominated grounds.

   13.     The onus of proof in an opposition rests upon the Opponent.[1]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2]  The date at which the rights of the parties are to be determined is the filing date 24 August 2020 (‘relevant date’), which is also the priority date for the purposes of ss 44 and 60.[3]

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [2] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26] (Gyles J), and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

   [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J), see also s 29(1) Trade Marks Act 1995 (Cth).

   Discussion

   Section 44

6. The relevant provisions are reproduced below:

   Section 44 - Identical etc. trade marks

   (1)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:

   (a)it is substantially identical with, or deceptively similar to:

   (i)              a trade mark registered by another person in respect of similar goods or closely related services; or

   (ii)             a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

   (b)the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

   Note 1: For deceptively similar see section 10.

   Note 2: For similar goods see subsection 14(1).

   (2)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of services (applicant's services) must be rejected if:

   (a)it is substantially identical with, or deceptively similar to:

   (i)              a trade mark registered by another person in respect of similar services or closely related goods; or

   (ii)             a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

   (b)the priority date for the registration of the applicant's trade mark in respect of the applicant's services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

   Note 1: For deceptively similar see section 10.

   Note 2: For similar services see subsection 14(2).

   Note 3: For priority date see section 12.

   Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A. …

   (3)If the Registrar in either case is satisfied:

   (a)that there has been honest concurrent use of the 2 trade marks; or

   (b)that, because of other circumstances, it is proper to do so;

   the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area. 

   Note:  For limitations see section 6.

   (4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:

   (a)beginning before the priority date for the registration of the other trade mark in respect of:

   (i)              the similar goods or closely related services; or

   (ii)             the similar services or closely related goods; and

   (b)ending on the priority date for the registration of the applicant's trade mark;

   the Registrar may not reject the application because of the existence of the other trade mark.

   Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

   Note 2: For predecessor in title see section 6.

   Note 3: For priority date see section 12.

   Section 10 - Definition of deceptively similar

   For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

   15.     To successfully oppose the application pursuant to s 44 the Opponent must establish the requirements of s 44(1), i.e. that at least one of the trade marks upon which it relies, being a trade mark registered by a person other than the Applicant:

   ·     has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);

   ·     is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and

   ·     is in respect of similar goods, and/or services which are closely related to, the Applicant’s Goods (‘the third requirement’).

7. In the event that each of these requirements is satisfied by the Opponent it may still be possible for the Registrar to accept the application (or allow it to proceed to registration) if the Registrar is satisfied, pursuant to ss 44(3) and 44(4), that there has been honest concurrent use of the Trade Mark, other circumstances which would make registration of the Trade Mark proper, or that the Applicant has continuously used the Trade Mark beginning before the priority date of the Opponent’s relied upon mark.

8. The Opponent has particularised the ground of opposition in the SGP by reference to the Opponent’s Trade Marks.  Each of the Opponent’s Trade Marks has a priority date that is earlier than the priority date of the Trade Mark. 

   Substantially identical and/or deceptively similar

9. I will now consider whether the Trade Mark is substantially identical to any of the Opponent’s Trade Marks.  When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd Windeyer J said:

   In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[4]

   [4] (1963) 109 CLR 407, 414.

   19.     In the present case the Trade Mark consists of the coined word MacDoo in distinctive formatting.  The Opponent’s Trade Marks consist of a range of marks, none of which contain the ‘Doo’ element or distinctive formatting.  On a side-by-side comparison there are clear differences between the Trade Mark and each of the Opponent’s Trade Marks which mean that a total impression of dissimilarity emerges from a comparison of each of the Opponent’s Trade Marks and the Trade Mark.  I move then to consider whether the Trade Mark and Opponent’s Trade Marks are deceptively similar.

   20.     The principal authority for guidance in determining whether trade marks are deceptively similar also comes from the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:

   On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].[5]

   [5] Ibid [13].

   21.     Jacobson J in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd summarised the principles of deceptive similarity with reference to the authorities as follows:

   Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.

   First, the judgment of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers: Woolworths[6] at [49]; Australian Woollen Mills[7] at 658.

   Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark: Crazy Ron’s[8] at [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 415 per Windeyer J.

   Third, allowance must be made for imperfect recollection: Crazy Ron’s at [74].

   Fourth, the effect of the spoken description must be considered: Woolworths at [49]; Crazy Ron’s at [75]; Australian Woollen Mills at 658.

   Fifth, it is necessary to show a real tangible danger of deception or confusion: Woolworths at [43] and [50]; Crazy Ron’s at [76]; Southern Cross Refrigerating[9] at 594 – 595.

   Sixth, 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 the two products come from the same source: Woolworths at [50]; Southern Cross Refrigerating Co at 595. This test sets a lower threshold than that which is required to establish that conduct is likely to mislead or deceive under s 18 of Schedule 2 of the Competition and Consumer Act 2010 (Cth): see McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd [1980] FCA 159; (1980) 33 ALR 394 at 398 per Smithers J.

   Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services: Woolworths at [50]; Crazy Ron’s at [86] – [89]; Southern Cross Refrigerating at 595.

   Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained: Woolworths at [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362 per Mason J.

   Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words: Crazy Ron’s at [79]. However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different: Crazy Ron’s at [100].[10]

   [6] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020.

   [7] Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641.

   [8] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1.

   [9] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

   [10] [2012] FCA 1022, [37]-[46].

10. While noting the Trade Mark and Opponent’s Trade Marks share the element ‘MAC/MC’ (and in some cases (McDONALDS) a second element that begins with the letter ‘d’) that alone is insufficient to render the marks deceptively similar.  The Trade Mark is visually distinct from each of the Opponent’s Trade Marks, consisting of the coined word MacDoo in a stylized format not replicated in the Opponent’s Trade Marks.  While noting that in many cases, the Trade Mark and Opponent’s Trade Mark share the same first element, the presence of the second element ‘Doo’ in the Trade Mark is unlikely to be omitted or slurred in the pronunciation of the Trade Mark, hence making it quite aurally distinct from each of the Opponent’s Trade Marks.  Finally the Trade Mark, being a coined word with no ordinary meaning, is conceptually different from each of the Opponent’s Trade Marks, which have a variety of conceptual meanings including as a possessive surname (McDonald’s), or containing an commonly used adjective or noun (e.g. Big Mac or McChicken).  I am not satisfied that merely because the Opponent has a range of trade marks that contain the ‘mc’ or ‘mac’ element that confusion will arise.  In summary the marks are sufficiently visually, aurally and conceptually different that use of the Trade Mark will not cause a number of persons to be ‘caused to wonder’ whether the Applicant’s Goods and the goods and services for which the Opponent’s Trade Marks are registered come from the same source.

11. It is not necessary to consider whether any of the Opponent’s Trade Marks are registered in respect of similar goods and/or services closely related to the Applicant’s Goods; even if I conclude that the respective marks were registered for similar goods and/or closely related services I would not find the marks to be substantially identical or deceptively similar for the reasons set out above. 

12. I find that the Opponent has failed to establish the ground of opposition under s 44.

    Section 60

13. Section 60 is reproduced below:

    Section 60 - Trade 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.

14. To establish a ground of opposition under s 60 an opponent must demonstrate that as at the relevant date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market such that use of the trade mark would be likely to deceive or cause confusion.[11]

    [11] The present paragraph and the following paragraphs summarizing the requirements under s 60 of the Act are paraphrased from the decision of the Registrar’s Delegate in Australian Boutique Markets Pty Ltd v Rachael Zelensky and Jeffrey Zelensky [2013] ATMO 97.

1. In McCormick & Co Inc v McCormick,[12] Kenny J considered what is intended by the word ‘reputation’ as used in s 60. Her Honour consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’.[13]  Her Honour quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

   [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …[14]

   [12] [2000] FCA 1335.

   [13] Ibid, [81].

   [14] (1992) 33 FCR 302, 343.

2. On the subject of reputation Kenny J also referred to the Hugo Boss decision, where the Registrar’s delegate observed:

   [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

   As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.

   It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[15]

   [15] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 426.

3. As stated above, in assessing reputation under s 60, what constitutes a significant or substantial number of persons in the relevant market must be considered. The case of Le Cordon Bleu BV v Cordon Bleu International Ltee[16] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955.  That provision did not refer to ‘reputation’ at all, only that use of the impugned trade mark would be ‘likely to deceive or cause confusion’.  Nevertheless the words of Heerey J provide some guidance:

   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 … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[17]

   [16] (2000) 50 IPR 1.

   [17] Ibid 20. Heerey J’s decision was overturned on appeal to the Full Federal Court, although not on the point quoted. Indeed the court specifically noted that his approach contained no error; see Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

4. The Opponent has particularised the ground of opposition in the SGP in the manner set out below: 

   The opponent relies upon one or more of the following trade marks which had, before the priority date of the opposed application and being in respect of relevant goods or services, acquired a reputation in Australia and because of that reputation, the use of the trade mark the subject of the opposed application would be likely to deceive or cause confusion:

   [See Trade Marks listed in Annexure B] (‘s60 Marks’)

5. It is not necessary to review the Opponent’s evidence in any great detail. The Opponent is a ubiquitous presence across the Australian culinary landscape and has a highly significant reputation in a number of the s60 Marks, including BIG MAC, MCDONALDS and numerous other marks featuring the Mc or Mac elements. It is not necessary to reach a conclusion about whether reputation is established with respect of each of the s60 Marks (noting that the evidence is substantially weaker for marks such as THE McBIG ONE and McSTOP). In the event that if I find that the use of the Trade Mark would not be likely to deceive and cause confusion in respect of the Opponent’s well known marks such as BIG MAC and MCDONALDS, I would by necessity reach the same conclusion with respect of the remainder of the s60 Marks since each of them shares the same similarity with the Trade Mark, namely the shared presence of a ‘mc’ or ‘mac’ element and in some cases a second element beginning with the letter ‘d’.

6. It is not sufficient that the Opponent merely establishes that its trade marks have a reputation; the Registrar must also be satisfied that because of that reputation the use of the Trade Mark would be likely to deceive or cause confusion. Discussions and decisions on the subjects of deception and confusion are legion and a good number provide relevant comments in relation to a consideration of deception and confusion for the purposes of s 60. In a case concerning infringement and passing off, Australian Woollen Mills Limited v F S Walton and Company Limited, Dixon and McTiernan JJ said the following:

   An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.  Potential buyers of goods are not to be credited with any high perception or habitual caution.  On the other hand, exceptional carelessness or stupidity may be disregarded.  The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observations of men considered in the mass affords the standard.[18]

   [18] (1937) 58 CLR 641, 658.

7. In Registrar of Trade Marks vWoolworths Ltd French J highlighted the following further matters concerning confusion:

   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.

   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.[19]

   [19] (1999) 45 IPR 411, 428. These considerations by French J are based on principles set out by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-5.

8. In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi the delegate observed that:

   The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.[20]

   [20] [2012] ATMO 124, [40] (Hearing Officer Thompson).

9. While it is not necessary to show that the marks are deceptively similar for the purposes of an opposition under s 60, as stated in Qantas Airways Limited v Edwards, ‘the degree of similarity between the allegedly conflicting marks will be a relevant consideration to be taken into account when considering the likelihood of confusion resulting from use of the opposed mark.’[21]

   [21] [2016] FCA 729, [142] (Yates J).

10. In the present case the reputation acquired by the s60 Marks is inextricably linked to the Opponent’s ubiquitous McDonalds/McCafe restaurants. The reputation is in respect of fast foods, including hamburgers and related products, and in restaurant services. The Trade Mark is sought to be registered in respect of tea products including packaged tea products, which is a very different product, sold through different channels than the goods and services for which the s60 Marks have a reputation.

11. I refer to the statements made in paragraph 22 about the differences between the Trade Mark and Opponent’s Trade Marks. These statements are equally applicable in respect of the s 60 ground of opposition. I do not accept the implied proposition from the Opponent expressed in its evidence that a number of persons, when seeing the MC/MAC element appended to an otherwise distinctive mark in respect of foodstuffs, will be caused to wonder whether it might not be the case that the products sold under mark will come from the same source as the Opponent’s goods and servicesI . The marks are not deceptively similar and the goods and services sufficiently different that it is simply unlikely that a consumer would see the aurally, visually and conceptually distinct Trade Mark applied to tea products and think it was a product connected in any way to the Opponent or its related entities.

12. I note that the Opponent, in its evidence, has referred to a number of cases where the Opponent was able to establish an opposition under s 60 of the Act in respect of trade marks containing Mc/Mac element and sought to be registered for foodstuffs or restaurant services. They can be easily distinguished from the present case. Those cases involved word marks combining the distinctive Mc/Mac element and a descriptive term (China/Coffee/Kebabs/Slider/Kosher) unlike the present case where the Trade Mark consists of two distinctive elements (MAC and DOO) in a highly stylised format. In addition those cases involved marks that were sought to be registered for goods or services that were much closer to the goods/services for which the Opponent has a significant reputation (Restaurant services/snack foods/meat products) unlike the present case where the trade mark is sought to be registered for tea, which notwithstanding that it is offered in some of its McCafe stores, is not a product that the Opponent has any significant reputation in.

13. I find that the Opponent has failed to establish the ground of opposition pursuant to s 60.

    Section 42

14. Section 42 is reproduced below:

    42 - Trade mark scandalous or its use contrary to law

    An application for the registration of a trade mark must be rejected if:
    (a) the trade mark contains or consists of scandalous matter; or
    (b) its use would be contrary to law.

15. The Opponent pressed this ground of opposition solely on the basis that the use of the Trade Mark would be contrary to law (s 42(b)).  The onus is on the Opponent to establish that use of the Trade Mark by the Applicant would be, rather than could be, contrary to law on the balance of probabilities.[22]  The relevant time for assessing whether an application is contrary to law is at the relevant date but ‘looking forward to prospective conduct after registration’.[23]

    [22] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683.

    [23] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2004] 59 IPR 343, 353 (Wilcox J).

16. The Opponent has particularised the ground of opposition in the SGP as follows: 

    The opponent relies upon the use of and reputation in one or more of the trade marks particulars of which are provided by the opponent under the ground of opposition pursuant to Section 60 and the use by or on behalf of the applicant of the trade mark the subject of the opposition thereby constituting common law passing of and/or conduct in breach of Section 18 and/or Section 29 of the Australian Consumer Law.

17. As previously stated the Opponent has failed to establish a ground of opposition under s 60. The test for misleading or deceptive conduct under s 18 of the Australian Consumer Law (‘ACL’) is a more stringent one than that for deception or confusion under s 60,[24] and consequently I find that the Opponent has also failed to establish that the Applicant’s use of the Trade Mark would be contrary to s 18 of the ACL.

    [24] See, e.g.: Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36] (Hearing Officer Williams); Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ).

18. Paraphrasing the statement of the Registrar’s Delegate in A G Professional Hair Care Products Ltd v Geagroup Invest SRL[25], where a trade mark does not run afoul of s 18 of the ACL, neither will it run afoul of s 29 of the ACL. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Beaumont J considered—in connection with the superseded Trade Practices Act1974 (‘TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’.[26] Sections 52 and 53 of the TPA were, respectively, the equivalent provisions to ss 18 and 29 of the ACL. Hill J in Re Equity Access Pty Ltd v Westpac Banking Corporation also addressed the relationship between s 52 of the TPA and passing off. His Honour considered that:

    The scope for the operation of s 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s 52 or s 53 will invariably mean that proceedings for passing off would likewise fail.[27]

    [25] [2014] ATMO 65, [50] (Hearing Officer Wilson).

    [26] [2003] FCA 104, [107] (Beaumont J).

    [27] [1989] FCA 506, [40] (citations omitted).

19. For these reasons I am not satisfied that use of the Trade Mark by the Applicant would be contrary to law.  Therefore, the Opponent has failed to establish the ground of opposition under s 42(b).

    Section 62A

20. Section 62A is reproduced below:

    62A Application made in bad faith

    The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

21. The Explanatory Memorandum to the Trade Marks Amendment Bill 2006 provided some non-exhaustive examples of applications made in bad faith:

    ·persons who monitor new property developments, register the names of new developments as trade marks for a number of services and then threaten the property developers with trade mark infringement proceedings unless the developers licence or buy the trade marks;

    ·persons who have a history of applying for trade marks that are deliberate misspellings of other registered trade marks;

    ·persons who identify trade marks used overseas but with no Australian use as yet who then apply to register the trade marks in Australia for the express purpose of selling them to the overseas owners.

22. The case of Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) is a current leading Australian authority on s 62A.  In that case, Dodds-Streeton J made the following comments, quoting from Harrison’s Trade Mark Application[28]:

    Clearly the court, when considering bad faith, cannot apply a purely subjective test, called by Lord Hutton ‘the Robin Hood test’. The dishonest person or one with low standards cannot be permitted to obtain trade mark registrations in circumstances where a person abiding by a reasonable standard would not. The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading. Registration is not provided to help those with low moral standards.

    … The words ‘bad faith’ suggest a mental state. Clearly when considering the question of whether an application to register is made in bad faith all the circumstances will be relevant. However the court must decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[29]

    [28] [2004] EWCA Civ 1028; [2005] FSR 10.

    [29] [2012] FCA 81, [147].

23. Her Honour continued later in the same decision:

    The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in Harrison.

    Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character.[30]

    [30] Ibid [165]-[166].

24. The Opponent has particularised this ground of opposition in the SGP as follows:

    The Applicant would have been aware, at the time of filing the proposed application of the opponent’s prior rights in Australia and around the world in its family of “Mc” prefix and MAC formative trade marks.

25. The onus is on the Opponent to establish bad faith and it will not be found easily given the serious nature of the allegation.[31]  Based on the evidence before me I cannot conclude that the decision of the Applicant to adopt and seek to register a mark containing the prefix ‘Mac’ in respect of tea, was a decision made to take advantage of the reputation of the Opponent’s Trade Marks.  While I have already found the marks are not deceptively similar, it also bears repeating here that mere knowledge before the relevant date of another person’s trade marks, without more, does not in itself constitute the basis for a finding of bad faith.  The Opponent’s allegation of bad faith here does not rise above an assertion of prior knowledge of its marks by the Applicant. This ground of opposition is not established.

    [31] Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty Ltd [2009] ATMO 26, [12] (Hearing Officer Nancarrow).

    Decision and Costs

26. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  Trade mark application no. 2114095 may proceed to registration not less than one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued.  Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

27. The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.

    Nicholas Smith

    Hearing Officer

    Delegate of the Registrar of Trade Marks

    1 November 2022

    Annexure A

TM No.	Trade Mark	Class
271329 271330 591033 666930 1167995 1539657 1656305 3059570 305961 354158 371540 385379 520881 535417 504132 567794 567796 1323922 1380672 774968 732382 326540 373687 468145 479211 520881 535417 558353 558354 567794 595066 635623 648686 663394 912584 1278865 1586404	BIG MAC BIG MAC MCCAFE EL MACO SON OF MAC MEGA MAC ANGUS MAC McDONALD’S McFEAST McCHICKEN McRIB CHICKEN McNUGGETS McSTOP McEXPRESS McMUFFIN MAC TIME MAC TIME McDOUBLE CHICKEN McBITES McWRAPS McSHAKER FRIES McDONALD’S BIG MAC MAC TONIGHT McBURGER McSTOP McEXPRESS McNUGGET BUDDIES McDONALDLAND MAC TIME McDRIVE MACCA’S McDONALD’S EXPRESS McVALUE MEAL MAC YOUR DAY MAC ALL NIGHT McDELIVERY	29 30 42 29,30 30 30 30 30 30 30 30 29 42 42 30 42 30 30 29 30 29 42 42 42 42 42 42 42 42 42 42 42 42 42 43 43 39,43

Annexure B

Trade Mark	Goods / Services	Period
BIG MAC	Meat, poultry and game, including hamburger patties, meat extracts; preserved, dried and cooked fruits and vegetables, eggs, milk and other dairy products; edible oils and fats; preserves, pickles	Since    14 August 1973
BIG MAC	Hamburgers;  coffee,  tea,  cocoa,  rice,  coffee substitutes; flour and preparations made from cereals; bread, biscuits; yeast, baking powder; salt, mustard, pepper, vinegar, sauces, spices	Since    14 August 1973

MCCAFE	Restaurant services	24 November 1992
EL MACO	Foods prepared from meat, pork, fish and poultry products, preserved and cooked fruits and vegetables, eggs, cheese, milk, milk preparations, pickles,    desserts    in    this    class 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	Since    17 July 1995
SON OF MAC	Hamburger sandwiches	21    March 2007
MEGA MAC	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	Since      7 February 2013
ANGUS MAC	Hamburger sandwiches	Since 4 November 2014
McDONALD’S	Hamburgers, cheeseburgers, apple pie and coffee	Since    31 March 1977
McFEAST	All goods included in this class (Class 30)	Since    31 March 1977
McCHICKEN	Biscuits, bread, cakes, cookies, chocolate, coffee substitutes, tea, edible sandwiches, chicken sandwiches, mustard, oatmeal, pastries, sauces, seasonings, sugar and sweetmeats	Since 4 December 1980
McRIB	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	Since    12 February 1982

CHICKEN McNUGGETS	Pieces of chicken, battered and deep fried	Since 20 December 1982
McSTOP	Restaurant services and take away food services; the preparation of take away food services	Since    10 October 1989
McEXPRESS	Services in this class rendered or associated with restaurants and other establishments or facilities engaged in procuring food and drink prepared for consumption and also in the sale and promotion of food combination specialities; design, establishment and operation of restaurants; preparation of carry out foods	Since    31 May 1990
McMUFFIN	All goods in this class (Class 30)	Since      3 February 1989
THE McBIG ONE	Hamburgers, biscuits, bread, cakes, cookies, chocolate, coffee, coffee substitues, tea, mustard, oatmeal, pastries, sauces, seasonings and sugar	Since    13 Octiber 1982
MAC TIME	Services in this class (class 30) rendered in respect of or associated with restaurants and other establishments or facilities engaged in the procuring, and preparing for consumption and serving of food and drinks including take-away food and fast food outlets	Since 20 November 1991
MAC TIME	Edible sandwiches, meat sandwiches, fish sandwiches, chicken sandwiches, biscuits, bread, cakes, cookies, chocolate, coffee, coffee substitutes, tea, mustard, oatmeal, pastries, sauces, seasonings, sugar, sweet meats, hamburgers and all other goods included in this class (Class 30)	Since 20 November 1991
McDOUBLE	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	Since      1 October 2009
CHICKEN McBITES	Foods prepared from meat, pork, fish and poultry products, meat sandwiches, fish sandwiches, pork sandwiches, chicken sandwiches, preserved and cooked fruits and vegetables	Since    27 August 2010

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 (Class 29) and Edible sandwiches, meat sandwiches, pork sandwiches, fish sandwiches, chicken sandwiches, biscuits, bread cakes, cookies, chocolate, coffee, coffee substitutes, tea, mustard, oatmeal, pastries, sauces, seasonings (Class 30)	Since      6 October 1988
McSHAKER FRIES	Foods prepared from meat, pork, fish and poultry products, meat sandwiches, fish sandwiches, chicken sandwiches, preserved and cooked fruits and vegetables, eggs, cheese, milk, milk preparations, pickles, desserts	Since    15 April 1997
McDONALD’S	Restaurant services and take-away food services; the preparation of take-away food	Since      1 February 1979
BIG MAC	Services rendered to or associated with restaurants, take away food stores and all other retail food outlets which sell and promote prepared food and drink for consumption; the preparation of carry out food	Since    31 March 1982
MAC TONIGHT	Services in this class (Class 42) rendered in respect to restaurants and other establishments or facilities engaged in the procuring, preparing for consumption and serving of food and drinks, including take-away food and fast food outlets	Since      2 July 1987
McBURGER	Services in this class (Class 42) 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	Since      5 January 1988
McSTOP	Restaurant services and take away food services; the preparation of take away food	Since    10 October 1989
McEXPRESS	Restaurant services and take away food services; the preparation of take away food	Since    31 May 1990
McNUGGET BUDDIES	Services rendered or associated with restaurant and other establishments or facilities engaged in procuring food and drink prepared for consumption and also in the sale and promotion of food combination specialties; managerial services in the establishment and operation of restaurants; preparation of carry-out foods; and design establishment and operation of restaurants; but excluding services associated with the preparation and sale of chocolate and confectionery	Since    24 June 1991

McDONALDLAND	Services rendered or associated with restaurants and other establishments or facilities engaged in procuring food and drink prepared for consumption and also in the sale and promotion of food combination specialties; managerial services in the establishment and operation of restaurants; preparation of carry-out foods; and services in this class in designing, constructing, equipping and operating such restaurants, establishments and facilities	Since    24 June 1991
MAC TIME	Services in this class rendered in respect of or associated with restaurants and other establishments or facilities engaged in the procuring, and preparing for consumption and serving of food and drinks including take-away food and fast food outlets	Since 20 November 1991
McCAFE	Restaurant services	Since 24 November 1992
McDRIVE	Services rendered or associated with restaurants and other establishments or facilities engaged in procuring food and drink prepared for consumption and also in the sale and promotion of food combination specialties; preparation of carry-out foods; services in designing such restaurants, establishments and facilities	Since      1 February 1993
MACCA’S	Services in this class (Class 42) rendered by restaurants and other establishments or facilities primarily engaged in procuring food and drink prepared for consumption; services in this class rendered in the sale of food combination specialties; services in this class rendered in the preparation of carry-out foods	Since    21 July 1994
McDONALD’S EXPRESS	Services in this class (Class 42) 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	Since 15 December 1994
McVALUE MEAL	Services in this class (Class 42) 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	Since      7 June 1995
MAC YOUR DAY	Services in this class rendered by restaurants and other establishments or facilities primarily engaged in procuring food and drink prepared for consumption; restaurant services rendered in the sale of food combination specialties; services rendered in the preparation of carry-out foods	Since    13 May 2002
MAC ALL NIGHT	Restaurant services	Since 22 December 2008
McDELIVERY	Restaurant services	Since    17 October 2013