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

This matter concerned an opposition to the registration of a trade mark by McD Asia Pacific LLC (the Opponent) against Hui Zhang and Holo 55 Pty Ltd (the Applicant). The Opponent, licensor of the McDonald's intellectual property, opposed the Applicant's attempt to register a trade mark for tea, arguing it would leverage the well-known McDonald's brand. The decision was made by a delegate of the Registrar of Trade Marks based on the written record, as the Applicant elected for a decision without a hearing.

The court was required to determine whether the Applicant's proposed trade mark should be refused registration on several grounds, including those related to deceptive similarity, bad faith, and the use of a prefix that might be associated with the Opponent's extensive "Mc" and "Mac" branded trade marks. The Opponent relied on evidence demonstrating the widespread recognition of its marks and prior successful oppositions against similar trade marks. The Applicant, in turn, presented evidence and submissions regarding the distinctiveness of its proposed mark and its existing operations in China.

The delegate found that the Opponent had not established any of the grounds for opposition. Specifically, the delegate concluded that the Applicant's decision to adopt a mark containing the prefix "Mac" for tea was not made in bad faith to exploit the Opponent's reputation. While acknowledging the Opponent's strong brand recognition, the delegate determined that the evidence did not rise above an assertion of prior knowledge by the Applicant, which alone is insufficient to establish bad faith. Consequently, the delegate ordered that the trade mark application could proceed to registration, and awarded costs against the Opponent.