McDonald's Corporation v Macri Fruit Distributors Pty Ltd
[2000] ATMO 37
•1 May 2000
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by McDonald's Corporation to registration of trade mark applications numbered 718466(29,31) and 718467(29,31) - McSALAD and McFRESH - in the name of Macri Fruit Distributors Pty Limited.
Background
Macri Fruit Distributors Pty Limited (the applicant) filed the above numbered applications on 30 September 1996, for the word trade marks McSALAD and McFRESH, respectively, in class 31. The specification of goods for both applications claimed 'processed and prepacked fresh fruit and vegetables'. During the course of examination this specification was amended to two classes. Both trade marks were accepted with specifications that read:
Class 29 - 'Processed and prepacked fruit and vegetables'; Class 31 - 'Fresh fruit and vegetables'.
The acceptances of both applications were advertised in the Australian Official Journal of Trade Marks of 12 June 1997. McDonald's Corporation (the opponent) filed notices of opposition on 11 September 1997. The notices of opposition were drafted in the language of the Trade Marks Act 1955. Such an occurrence is not unknown and rarely proves a difficulty because the provisions of the 1955 Act and of the 1995 Act are, to a great degree, parallel. This matter is taken up in detail in the section below, A Preliminary Matter - the Notice of Opposition, where the grounds for opposition, under the Act, are set out.
The opponent filed and served its evidence in support for both oppositions by 11 July 1998. The applicant then served and filed a declaration out of time. No explanation of the status of the declaration was attached, either in relation to whether the declaration was for the purpose of evidence in answer, or if it was to be the only material that would be filed and served. Despite persistent attempts by this Office to establish the facts of the matter the applicant provided no response.
The opponent requested to be heard in both opposition matters and they came before me in Sydney, as a delegate of the Registrar, on 15 October 1999. The opponent was represented by Mr Gerard Skelly of Spruson & Ferguson, Patent and Trade Mark Attorneys, whilst the applicant chose not to be represented at the hearing. The applicant did, however, choose to be present as an observer to the proceedings and requested that I consider a nine page document of written submissions that was handed to me at that time. The applicant also informed me that a copy of the document had already been provided to the opponent. During a short recess in the hearing the parties both approached me to request a period of time to investigate the possibility of a negotiated settlement. On the basis of their comments and immediately following the hearing I instructed both parties that I would delay a further consideration of the material for six weeks. At the end of that time, if neither party had indicated a satisfactory conclusion of the matter I would proceed to decide it and issue a decision with reasons. Mr Skelly later informed me that a negotiated settlement agreeable to both parties had not been achieved.
A Preliminary Matter - the Notice of Opposition
I have reproduced the major part of the notice of opposition for the McSALAD trade mark (718466) below. This shows the grounds claimed by the opponent. It should also be noted that the grounds of opposition for the McFRESH trade mark (718467) are all of those for 718466 with the exception of ground (3).
We lodge Notice of Opposition to registration of the above trade mark.
Person Opposing: McDonald's Corporation
Address:One McDonald's Plaza, Oak Brook, Illinois 60521, United States of America
Grounds:(1) The applicant is not the proprietor of the opposed trade mark.
(2) The opposed trade mark is not distinctive of the applicant's goods.
(3) The applicant did not at the date of the application have an intention to use the opposed trade mark in respect of all the goods the subject of the opposed trade mark application.
(4) The registration or use of the opposed trade mark is likely to deceive or cause confusion by reason of -
(a) its close resemblance to one or more trade marks of the opponent used in relation to goods that are closely related to the goods the subject of the opposed trade mark application;
(b) its close resemblance to one or more trade marks of the opponent used in relation to services that are closely related to the goods the subject of the opposed trade mark application.
(5) Use or registration of the opposed trade mark by the applicant
would be contrary to law.
(6) The opposed trade mark would be disentitled to protection in a
Court of Justice.
(7) Registration of the opposed trade mark would be contrary to Section 33(l) of the Trade Marks Act 1955 by reason of the opponent's prior trade mark registrations.
(8) By reason of the matters set forth in any one or more of the foregoing paragraphs the Registrar in the exercise of his discretion ought to refuse registration of the opposed trade mark registration.
The grounds in the notice of opposition, as mentioned, are expressed in terms of the 1955 Act. They correspond, per Part 5 of the Trade Marks Act 1995, to s.58 - that the applicant is not the owner of the trade mark, s.41 - that the trade marks are not capable of distinguishing applicant's goods, s.59 - that the applicant does not intend to use the trade marks, s.60 - that by virtue of close resemblance to one or more trade marks of the opponent, the application trade marks are likely to deceive or cause confusion, s.42 - that use of the application trade marks would be contrary to law, s.44 - that the application trade marks are in conflict with the opponent's prior trade mark registrations. I will deal with the grounds accordingly.
With the exception of s.58, which is only relied on in the McFRESH opposition, all grounds are held in common.
Mr Skelly, the attorney for the opponent, was not involved in filing the notices of opposition and had, in his submissions, argued s.58 for McSALAD and s.59, s.60, s.44 and s.43 for both oppositions. I do not intend to consider the submissions under s.43 because I do not consider that the notices of opposition comprehend that ground. Mr Skelly did not present submissions concerning s.41, s.42 or, in respect of the McFRESH trade mark, s.58. The only grounds to assess for my decision are, therefore, s.58, s.59, s.60 and s.44 for the McSALAD trade mark and s.60 and s.44 only for the McFRESH trade mark.
The Evidence
The evidence in support of the notices of opposition consisted of a single Statutory Declaration from Ms Jodie Boland, Associate Legal Counsel for McDonald's Australia Limited, (the Boland declaration). The opponent is the parent company of McDonald's Australia. The Boland declaration has annexures A1, A to N inclusive and exhibit JB-1 attached.
As I mentioned earlier, the applicant's declaration (apparently intended as evidence in answer) was filed and served out of time. I cannot admit this item as evidence. However, I will allow the declaration to assume the same status as the supporting written submissions handed to me, and copied to Mr Skelly, immediately prior to the hearing.
Submissions
Mr Skelly firstly directed my attention to the ground of opposition in terms of s.58 for the McSALAD mark. Using relevant case law[1], he developed the argument that the opponent had used an identical mark on goods that, he said, were 'the same kind of thing', between 1989 and 1994. He supported this argument with evidence from the Boland declaration. This established first use of the mark by the opponent, he said. Although s.58 had also been a ground claimed in relation to the McFRESH trade mark, no submissions were presented to support the claim at the hearing.
Mr Skelly next addressed the ground claimed in the notice of opposition that the applicant did not intend to use the mark. This ground of opposition falls under s.59. He said that the applicant's declaration at paragraph three stated that it did not intend to use the marks for all of the goods specified in class 29 of both applications. This showed that, at the time of application, there was no intention to use the marks in relation to the goods specified on the application forms and thus, the applications ought to be refused, he submitted. I also note, as mentioned earlier, that the ground involving s.59 was only claimed in the notice of opposition in connection with 718466 (the McSALAD opposition) but not in connection with 718467.
In relation to s.60, Mr Skelly submitted that the opponent owned a family of trade marks structured around the theme of the prefix 'Mc-' for both goods and services in the food industry. He said that the applicant's two trade marks, McSALAD and McFRESH, are deceptively similar to this family of the opponent's marks. Mr Skelly made reference to several cases where the concept of deceptively similar[2] marks is discussed. Given the opponent's evidence of reputation in the Australian market, for the family of marks, as at the application date, he said, that use of McSALAD or McFRESH by the applicant would cause deception or confusion in terms of s.60.
For opposition in terms of s.44 Mr Skelly took me through the opponent's registered trade marks, with particular reference to the family of marks with the prefix 'Mc-'. He also directed me to cases[3] where the similarity of the respective marks was based on the opponent owning a family of similar marks. In relation to the goods of the applicant having similarity to the goods and services offered by the opponent, Mr Skelly referred to three[4] decided cases, two of which make a comparison of 'food related services' with 'foods'. He concluded his remarks on this ground of opposition with the comment that the opponent had a strong family of marks consisting of the prefix 'Mc-' followed by a suffix that either described a food product or consisted of a characteristic or quality of the food. The applicant's two marks, he said, were deceptively similar to this group of the opponent's prior registrations for goods that were either similar to the opponent's goods or were closely related to the opponent's services. On this basis Mr Skelly claimed that registration ought to be refused.
The applicant provided written submissions to support its case. These submissions supplied support for a defence against an opposition action based primarily on s.41 with some comments concerning the grounds of opposition under s.58, s.44 and s.60. The opponent has no support for its s.41 ground and it is therefore not necessary for me to look into those submissions. In relation to the submissions under s.58, the applicant asserted that the opponent has not provided evidence of its ownership of the McSALAD mark. In terms of s.44, s.58 and s.60 the applicant claimed that:
the opponent failed to submit any evidence of actual confusion between the respective marks,
the markets of the applicant and the opponent are totally different,
use of the McSALAD mark by the opponent was as a trial only in a very different market from the applicant,
the applicant is not interested in the fast food or take-away food market,
the mode of use of the marks by the applicant does not resemble any style or get-up similar to the opponent's trade marks,
the opponent has not sought to register either McSALAD or McFRESH as trade marks,
any material from the American market submitted as evidence by the opponent is irrelevant.
The opponent attacked these written submissions by claiming that much of the material was merely uncorroborated assertions made without any attempt to provide verification or supporting proof in some way.
Discussion
From the above material, I have already indicated that the opponent did not lead any argument or evidence concerning s.41 or s.42, in relation to both applications, or in relation to s.58 for 718467 only. Thus, in relation to 718466 (McSALAD) I find that the opposition is not successful in terms of s.41 or s.42, whereas in relation to 718467 (McFRESH) I find that the opposition is not successful in relation to s.41, s.42 and s.58. I will now turn to the grounds for which submissions were made.
(a) Section 58 - Applicant is not owner of trade mark
The opponent pursued this ground in relation to 718466 (McSALAD) only. The opponent would need to show use of an identical trade mark, or virtually identical trade mark, prior to the present application date, in order to succeed in its opposition under s.58. The opponent's uncontroverted evidence shows use, in Australia, of McSALAD ROLL in advertising from December 1991 to some time in 1994 for salad rolls. I note that, immediately following the word McSALAD in this advertising, the letters TM appear in extremely small font. Clearly, the opponent is claiming the word McSALAD as an unregistered trade mark for these goods. Thus, I find that the opponent has used an identical trade mark prior to the date of the present application.
Further to this discussion, however, as established in Re Hicks' Trade Mark supra, the opponent would also need to show that it had used its trade mark on 'the same kind of thing' prior to the applicant filing its application.
The goods involved, for the opponent's prior use of the trade mark, are salad rolls. The evidentiary material for these rolls indicates that they contain lettuce, tomato, carrot, cucumber and capsicum. The present application claims goods in both class 29 (processed and pre-packed fruit and vegetables) and class 31 (fresh fruit and vegetables). Clearly, the vegetables in which the applicant trades are the same goods as those that are sliced or grated to form part of the opponent's salad rolls. The test involved, from Hicks' Trade Mark, supra, for the degree of similarity of the respective goods involves them to be deemed the 'same kind of thing'. The definition for this expression has never been directly tested in the courts. Some decisions[5] issued from this Office have indicated that, in relation to goods, the expression 'the same kind of thing' necessarily encompasses a narrower field than for goods being 'of the same description' (s.33 of the Trade Marks Act 1955) or for goods being 'similar' (s.44 of the Trade Marks Act 1995).
In the present circumstances, a number of factors in respect of both the applicant's goods and the opponent's goods are parallel. Although the applicant argued that the markets of the applicant and the opponent are totally different and that the applicant is not interested in the fast food or take-away food market, these factors do not address the relevant issues. The test must be, to take the respective goods of both the opponent and the applicant, and to consider the question - are these items 'the same kind of thing?' Such a test must consider the nature of the goods - the essential or inherent characteristics of the goods. The respective goods that I intend to compare are 'processed and prepacked vegetables' and 'fresh vegetables' found within the claim for the present application and 'salad rolls' being the goods for which the opponent claims prior use of the McSALAD trade mark.
Being common foods, the respective goods of the applicant and of the opponent share a number of characteristics. Salad rolls may be either pre-prepared or made to order, whilst processed or pre-packed vegetables may be either pre-packed whole items or presented in a pre-packed container with some measure of processing. Such pre-packed goods encompass vegetable salads. These goods may be identical to the goods being used as the salad ingredients of the opponent's rolls. Salad rolls and salad ingredients, either pre-packed or prepared in some way, are often available from the same physical location. Some persons will purchase the salad ingredients and combine them with their own choice of roll. I conclude from this that the applicant's and the opponent's goods, coming under the banner of salad related foods, should be held to be 'the same kind of thing'. Although the applicant has submitted that it has not, at this stage, processed fruit or vegetables into other forms such as fruit juices or fast food, that fact is not directly relevant to the matter at hand. The applicant has made an application for goods that include processed and pre-packed vegetables. I must consider all of these goods, in a notional sense, for comparison with the opponent's goods.
Thus, I find that for application number 718466, the McSALAD trade mark, that the opponent had use of an identical trade mark on goods that I consider to be 'the same kind of thing' from a date prior to the present application date. This being the case, I find that the opponent is successful under this ground of opposition in respect of 718466.
(b) Section 59 - Applicant not intending to use trade mark
The section of the Act relevant to this ground of opposition reads:
59. The registration of a trade mark may be opposed on the ground that the applicant does not intend:
(a) to use, or authorise the use of, the trade mark in Australia; or
(b) to assign the trade mark to a body corporate for use by the body corporate in Australia;
in relation to the goods and/or services specified in the application.
Note: For applicant see section 6.
As set out earlier, this ground of opposition only applies to trade mark number 718466, the McSALAD trade mark.
Generally, such a ground of opposition is difficult for the opponent to establish. It may, succeed however, if the opponent has an admission from the applicant. In the present matter, the opponent has claimed that the document tendered, in declaratory form by George Macri, as part of the supporting submissions provides such an admission.
At paragraph three of his declaration Mr Macri states:
This company deals exclusively with fresh fruit and vegetables. It does not process fruit and vegetables into other forms such as fruit juices or any form of fast food. The process does not involve any form of cooking. However food products may be cut up and put in pre-packed containers in their fresh state.
Mr Skelly submitted that this indicated that the applicant did not intend to use the trade mark for all of the goods specified in the applications in class 29. The class 29 specification reads: 'Processed and prepacked fruit and vegetables'.
From this material I must disagree with Mr Skelly on two points. Firstly, whatever the admission made by Mr Macri in relation to the goods in which the applicant trades, his comment describes the current operation of the business. It makes no comment concerning the intention at the time of application or the intention at the time of making the declaration. I do not see any inconsistency with his comment describing the present circumstances and an intention of the applicant to trade in other goods. The second point on which I differ lies in the interpretation of the description of goods made by Mr Macri. Mr Macri describes how the applicant presently prepares its goods for sale. He states that the fruit and vegetables may be cut up and put in pre-packed containers. Cutting up the fruit and vegetables, in my opinion, qualifies as 'processing'. It may be at a very basic level but such an action is processing nonetheless. Thus, although Mr Macri says that the applicant does not process fruit and vegetables into juices or any form of fast food and does not cook the food, his statement falls well short of a declaration that his company does not process and pre-pack fruit and vegetables and has no intention to do so.
I find Mr Skelly's contention that the applicant lacks an intention to use the trade mark in relation to all of the goods does not hold up. Thus, I find that the ground of opposition taken under s.59 is not successful.
(c) Section 44 - Identical etc. trade marks
The relevant legislation for this section reads:
Identical etc. trade marks
44.(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) the applicant's trade mark 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).
Note 3: For priority date see section 12.(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.
Section 44 provides a block to the acceptance of a trade mark application if three factors are met. These factors occur where another trade mark: (1) is either substantially identical or deceptively similar to the mark of the application, (2) has a specification of goods and/or services considered similar to the application and (3) has a claim to a prior date of registration.
The relevant tests for substantially identical trade marks and deceptively similar trade marks are outlined in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407 at 414-5 where Windeyer J states:
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.
…
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 television exhibitions.
Mr Skelly argued that the opponent's family of trade marks with the 'Mc-' prefix should be a barrier to the application in terms of s.44. He claimed that the marks in the present applications would be seen as being deceptively similar to the opponent's family of marks. He also said that as the goods of the applications are either similar to the opponent's goods or are goods closely related to the opponent's services, the present applications should be prevented from proceeding in terms of s.44.
The registered marks of the opponent to which Mr Skelly referred are as follows.
McDONALD'S GOLDEN ARCHES (five registrations in classes 29, 30 and 32); McDONALD'S M WE'VE GOT IT ALL and device (three registrations in classes 29, 30 and 32); McDONALD'S M and devices (fifteen registrations in classes 14, 16, 25, 28, 29, 30, 31, 32, 35, 41 and 42); McDONALD'S (six registrations in classes 29, 30, 32, 35, 41 and 42); McDONALDLAND COOKIES (class 30); EGG McMUFFIN (class 30); McFEAST (class 30); MAYOR McCHEESE M and device (class28); M RONALD McDONALD and device (five registrations in classes 14, 16, 21, 28 and 41); RONALD McDONALD (class 42); McCHICKEN (class 30); McRIB (class 30); RONALD McDONALD HOUSE (class 42); CHICKEN McNUGGETS (class 29); McPIZZA (class 30); McDONALD'S CHICKEN L. T. (class 30); RONALD McDONALD CHILDREN'S CHARITIES M and devices (five registrations in classes 16, 35, 36, 41 and 42); SHANGHAI McNUGGETS (class 29); SAUSAGE McMUFFIN (class 30); McKIDS (three registrations in classes 3, 25 and 28); McCOLA (class 32); McD. L. T. (class 30); McBURGER (two registrations in classes 30 and 42); McMUFFIN (class 30); McSTOP (class 42); McEXPRESS (class 42); McRECYCLE (class 40); McHAPPY DAY and device (class 42); McNUGGET BUDDIES and device (class 42); McDONALDLAND (class 42); THE McBIG ONE (class 30); McCAFE (class 42); M McDONALD'S RACING TEAM and device(three registrations in classes 16, 25 and 28); McDONALD'S EXPRESS (class 42); McVALUE MEAL (class 42); McBABY (class 25); McMEMORIES (class 21); McMARKER (class 16); McWORLD M and device (class 42); McVEGETABLE (one registration in classes 29 and 30). This list totals 78 registrations.
No single trade mark from this list bears a sufficient resemblance to either McSALAD or McFRESH, by means of either phonetic or visual comparison, to find that the applicant's marks are deceptively similar to one of the opponent's registered marks on that basis. However, this does not totally rule out a finding of deceptive similarity between the applicant's marks and the opponent's marks. This is illustrated in the statement in John Fitton & Co. Ltd's Application 66 RPC 110 at 113 by the Assistant-Comptroller, Mr S. E. Chisholm:
With reference to the nature of the confusion alleged the evidence furnished on behalf of the Opponents by their trade declarants is directed not so much towards showing that the two marks 'Jests' and 'Easyjests' might themselves be confused either visually or orally, as towards establishing that confusion would result, owing to the presence of the common element 'Jest' in each mark, in traders and the public being induced to believe that the two sets of goods sold under the marks emanated from one and the same trade source.
The type of confusion outlined here is founded on a perception that, within the context of the circumstances of the market-place, the applicant's marks are seen as being an extension of the opponent's registered trade marks due to a common element in the marks that leads to a conclusion that they identify the same trader. In the present circumstances the opponent has a family of 78 registered trade marks containing a word which has a prefix of Mc-. Of these 78 registered marks, 17 also have another common element. The second common element is that they consist of, or contain, words in which the prefix Mc- has been conjoined with a word which is either the name of the goods or services being sold, or a description of a quality or characteristic of the goods.
The 17 trade marks to which I refer are EGG McMUFFIN, McFEAST, MAYOR McCHEESE, McCHICKEN, McRIB, CHICKEN McNUGGETS, McPIZZA, SHANGHAI McNUGGETS, SAUSAGE McMUFFIN, McCOLA, McBURGER, McMUFFIN, McNUGGET BUDDIES, THE McBIG ONE, McCAFE, McVALUE MEAL and McVEGETABLE.
Taken together, I believe that the family of 17 marks above, with one important proviso, supplies a sufficient expectation that any trade mark prefixed by Mc- which is conjoined to a word, which 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.
The important proviso here is that the goods or services referred to, in the part word conjoined to the prefix Mc- in the trade mark, would also need to be seen to form a normal or usual part of the opponent's business. Any food, or quality or characteristic of that food, which would be expected to form part of the opponent's fast food operation would, therefore, qualify. In the present circumstances, McSALAD and McFRESH both meet these requirements. The opponent does use 'salad' ingredients and the word 'fresh' describes a laudatory characteristic or quality that would also be expected to be in use in relation to the opponent's goods. Forming an extremely close parallel to the present applications I note that, among others, the opponent has registrations for McVEGETABLE and McVALUE. Several other registrations of the opponent could also be used to demonstrate this parallel. Thus, I find that these two trade marks, McSALAD and McFRESH, are deceptively similar, in a contextual sense, to each of the 17 trade marks listed above, owned by the opponent.
Finding that the applied for marks are deceptively similar to the opponent's family of registered marks is, however, only one of the three requirements to trigger s.44.
A second test is that the opponent's marks must have an earlier priority date. All of the opponent's 78 registrations, containing a word with the prefix Mc-, listed earlier in these reasons above, pre-date the present two applications.
The remaining test to trigger s.44 is a determination that the goods of the applications are 'similar' to the goods within the opponent's registrations, or that they are 'closely related' to the opponent's services.
The test for similar goods is outlined in the words of the British Assistant Comptroller.[6] At 372 he sets out the factors he considered:
[6] John Crowther and Sons (Milnsbridge) Ltd's Application 65 RPC 369 at 372
In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade. In the case of Jellinek's Application (63 R.P.C. 59), Romer J. classified these various factors under three heads, viz., the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold. No single consideration is conclusive in itself.
The present two applications for McSALAD and McFRESH cover identical goods. These are:- 'Processed and prepacked fruit and vegetables' in class 29, and 'Fresh fruit and vegetables' in class 31.
The opponent has a range of goods and services involved with its marks. The set of 17 marks closely considered above, selected from the overall set of 78 marks with a prefix of Mc-, have the specifications listed in brackets.
EGG McMUFFIN (all goods included in this class containing eggs [class 30]);
McFEAST (all goods included in this class [class 30]);
MAYOR McCHEESE M (playthings, games, dolls, sporting articles included in this class [class 28]);
McCHICKEN (biscuits, bread, cakes, cookies, chocolate, coffee, coffee substitutes, tea, edible sandwiches, chicken sandwiches, mustard, oatmeal, pastries, sauces, seasonings, sugar and sweetmeats [class 30]);
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 [class 30]);
CHICKEN McNUGGETS (pieces of chicken, battered and deep fried [class 29]);
McPIZZA (pizza and pizza type products including those containing bread dough, meat and cheese together with tomato flavoured sauce [class 30]);
SHANGHAI McNUGGETS (prepared foods in this class inclusive of cooked food served with sauces [class 29]);
SAUSAGE McMUFFIN (all goods included in this class containing sausage meat [class 30]);
McCOLA (non-alcoholic cola-based beverages; syrups and other preparations for making cola-based beverages [class 32]);
McBURGER (all goods in this class including edible sandwiches, meat sandwiches, pork sandwiches, fish sandwiches, chicken sandwiches, biscuits, bread, cakes, cookies, chocolate, coffee, coffee substitutes, tea, mustard, oatmeal, pastries, sauces, seasonings, sugar and sweetmeats; all the foregoing being goods included in class 30, AND services in this class rendered by restaurants and other establishments or facilities primarily engaged in procuring food and drink prepared for consumption; services rendered in the sale of food combination specialities; services rendered in the preparation of carry-out foods [class 42]);
McMUFFIN (all goods in this class [class 30]);
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 [class 42]);
THE McBIG ONE (hamburgers, biscuits, bread, cakes, cookies, chocolate, coffee, coffee substitutes, tea, mustard, oatmeal, pastries, sauces, seasonings and sugar [class 30]);
McCAFE (restaurant services [class 42]);
McVALUE MEAL (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 [class 42]);
McVEGETABLE (foods prepared from vegetable products, preserved and cooked fruits and vegetables, eggs, cheese, milk preparations, pickles, desserts [class 29] and vegetable patty sandwiches, biscuits, bread, cakes, cookies, chocolate, coffee substitutes, tea, mustard, oatmeal, pastries, sauces, seasonings, sugar [class 30]).
Three of the 17 registrations above fall into class 29. The specified goods within two of those registrations, for SHANGHAI McNUGGETS (prepared foods in this class) and McVEGETABLE, (foods prepared from vegetable products, prepared and cooked fruits and vegetables) are identical to those within the applicant's claim for registration.
In addition, nine of the other registrations fall into class 30. Applying the tests from John Crowther, supra, I find that there are conflicts of similar goods between the applicant's claims and six of the opponent's registered marks. Where a conflict of similar goods exists I have tabulated these registrations with a listing of the trade mark, followed by some goods within the registration and some goods from the specification of each application that I believe are in conflict.
EGG McMUFFIN, salad and egg sandwiches and rolls as against processed and pre-packed vegetables [class 29].
McFEAST, custard and fruit mixtures as against cooked fruit [class 29], vegetable pies as against cooked vegetables [class 29], salad sandwiches as against processed and pre-packed vegetables [class 29].
McCHICKEN, salad sandwiches as against processed and pre-packed vegetables [class 29].
McRIB, salad sandwiches as against processed and pre-packed vegetables [class 29].
McBURGER, custard and fruit mixtures as against cooked fruit [class 29], vegetable pies as against cooked vegetables [class 29], salad sandwiches as against processed and pre-packed vegetables [class 29].
McMUFFIN, custard and fruit mixtures as against cooked fruit [class 29], vegetable pies as against cooked vegetables [class 29], salad sandwiches as against processed and pre-packed vegetables [class 29].
Pertinent to the finding that 'salad sandwiches', in the specifications above, is a food item similar to the applicant's 'processed and pre-packed vegetables' is a finding outlined in these reasons under the s.58 ground above. Under that ground I have already found that the opponent's 'salad rolls' are 'the same kind of thing' (arguably a more stringent test than simply 'similar' goods) as the applicant's 'pre-packed vegetables' - being an item that could describe 'vegetable salads'.
In addition, four of the 17 marks considered in detail above, have at least part of their specification listed in class 42 services. In relation to the goods claimed for one trade mark being closely related to services of another mark, one decision[7] of Hearing Officer Hardie, as she then was, and a court judgement[8] of Justice Needham have a direct impact on my findings. Justice Needham found that 'services rendered 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' (for application 422357(42)) are closely associated with 'confectionery including toffee, chocolate and chewing gum' (for registration 72360(30)). Ms Hardie found that 'restaurants, services relating to preparation and provision of food or drink, reception centres, none of the foregoing providing take-away food or drink services' (for application 403687(42)) are not closely associated with 'coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitutes; flour, and preparations made from cereals; bread, biscuits, cakes, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; pepper, vinegar, sauces, spices; ice' (for registration 239948(30)).
[7] Sizzler, supra.
[8] Rowntree, supra.
My conclusion from these two cases is that although restaurant services may not be closely associated with the goods by means of which the services are delivered, the same is not true for take-away food services. Applying this conclusion, I find that three of the opponent's registrations from the 17 closely considered, contain services that are closely related to the applicant's goods. These are:
McBURGER, services rendered in the preparation of carry-out foods [class 42] as against processed and pre-packed fruits and vegetables [class 29].
McNUGGET BUDDIES, services rendered in the preparation of carry-out foods [class 42] as against processed and pre-packed fruits and vegetables [class 29].
McVALUE MEAL, services rendered in the preparation of carry-out foods [class 42] as against processed and pre-packed fruits and vegetables [class 29].
In total, I find that the opponent has ten registered trade marks for which all legs of s.44 have been satisfied to successfully oppose the applications. These are EGG McMUFFIN, McFEAST, McCHICKEN, McRIB, SHANGHAI McNUGGETS, McBURGER, McMUFFIN, McNUGGET BUDDIES, McVALUE MEAL and McVEGETABLE.
On the basis of these registrations I find that the opposition is successful in terms of s.44 of the Act.
(d) Section 60 - Trade mark similar to trade mark that has acquired a reputation in Australia
The relevant section of the Act reads:
60. The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in those goods or services, had 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.
As for s.44, one necessary component to trigger this ground of opposition lies in a finding of either substantial identity or deceptive similarity of the respective marks of applicant and opponent. I do not intend to repeat the information above, under s.44, because the reasons for finding deceptive similarity apply with equal force. In my reasons under s.44 above I found that 17 registered marks of the opponent are deceptively similar to the applicant's McSALAD and McFRESH marks. Under s.44, I went on to find that ten of these also met the criteria of either similar goods or closely related services. Under s.60, however, such a test is not required. This being the case, all 17 registered marks have negotiated the first hurdle of s.60(a). These trade marks are: EGG McMUFFIN, McFEAST, MAYOR McCHEESE, McCHICKEN, McRIB, CHICKEN McNUGGETS, McPIZZA, SHANGHAI McNUGGETS, SAUSAGE McMUFFIN, McCOLA, McBURGER, McMUFFIN, McNUGGET BUDDIES, THE McBIG ONE, McCAFE, McVALUE MEAL and McVEGETABLE.
In addition, a broader range of trade marks may be involved under the provisions of s.60 - because unregistered marks may also provide a barrier to registration. In this regard the opponent also claimed that it had used McBEEFSTEAK, McBACON DELUXE, McBREAKFAST BURGER, CHICKEN McDELUXE and MacAMORE.
Using the same standard as that used under s.44 for deceptive similarity of the trade marks with a prefix of Mc-, I find that the applicant's marks are also deceptively similar in a contextual sense to each of McBEEFSTEAK, McBACON DELUXE and McBREAKFAST BURGER. The standard used above, derived in my reasons under the s.44 ground, looked at words with two elements of similarity, one being the prefix Mc- and the other being a suffix consisting of a word which described either the goods, or a characteristic or quality of those goods. In addition, the goods described in the trade mark must be goods that form part of the opponent's usual or normal business activ ities.
These further three trade marks take the total number to be considered under the other requirements of s.60 to 20.
Section 60 directs me to assess the likelihood of deception or confusion resulting from the reputation that these 20 trade marks had acquired, as at the date of application for the McSALAD and McFRESH marks. That date is 30 September 1996.
The Boland declaration states that the opponent's record system does not allow the breakdown of sales and advertising figures in respect of an individual trade mark. However, the total advertising figures show an increase from $51 000 in 1971 to $79 000 000 in 1997. Further information is also found in the Boland declaration concerning the use of the 20 marks listed above that I have found to be deceptively similar.
Use of the McFEAST trade mark began in September 1981, particularly in relation to hamburgers. Use has been continuous since that time and the McFEAST burger has become a permanent item on the menu at McDonald's outlets. The CHICKEN McNUGGETS trade mark has enjoyed a similar role from August 1981. Use of SHANGHAI McNUGGETS, the Boland declaration claims, began in July 1987. I note, however, that the advertising material uses the words CHICKEN McNUGGETS SHANGHAI, with the word SHANGHAI in a style that uses brushstrokes suggestive of Chinese characters. First use of other trade marks began in 1987 (McMUFFIN and SAUSAGE McMUFFIN), June 1991 (McCHICKEN), December 1991 until some time in 1994 (McSALAD), August 1992 (McRIB) and December 1995 (McBACON DELUXE). Of these last six trade marks, continuous use is claimed for McMUFFIN, SAUSAGE McMUFFIN and McCHICKEN - the record is silent concerning the length of use of McRIB and McBACON DELUXE.
The evidence also shows that the opponent has traded in goods that include vegetable salads in Australia from 1989 until some time in 1991. The advertising material for these goods claims 'Tossed Fresh All Day', providing a clear indication that 'fresh' is a word used in connection with a quality or characteristic of the goods.
In addition, the opponent also has one registration in class 31 that pre-dates the present applications, for McDONALD'S M and device in respect of agricultural products, fresh fruits and vegetables.
Despite the inability of the opponent to provide specific figures for the amount of use, in dollar terms for sales for each trade mark, the overall figures - now in the hundreds of millions of dollars in Australia annually - are impressive. This figure in the hundreds of millions of dollars does, of course, contain figures for ALL of the opponent's trade marks. Currently, the opponent owns 184 registrations - 17 of which I found to be deceptively similar to the present applications. I also found three unregistered trade marks to be deceptively similar. Many of the 184 registered marks are not, in my opinion, directly in conflict with McSALAD and McFRESH. However, even for the 20 marks that I have found in conflict, given the total reputation of the opponent, as shown in the evidence, and the length of use of these marks prior to the present applications, there is a sufficient justification, in my opinion, to find a likelihood of deception or confusion if the applicant were to use its marks in a fair and reasonable manner.
This being the case, I find that the opposition also succeeds in terms of the s.60 ground of opposition.
Conclusion
From the foregoing, I have found that the opposition has succeeded on grounds under s.58, s.44 and s.60 for trade mark number 718466, the McSALAD application, and on grounds under s.44 and s.60 for trade mark number 718467, the McFRESH application. Therefore, as a delegate of the Registrar, I refuse registration of these applications.
Costs
The opponent having been successful in this opposition action is entitled to its costs. Thus, I order that the applicant pay the opponent's costs in the matter, in accordance with the Official scale.
Don Nancarrow
Acting Hearing Officer
1 May 2000.
Karu Pty Ltd v Jose (1994) AIPC ¶91-101;
Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) AIPC ¶91-049;
Buying Systems (Australia) Pty Ltd v Studio srl (1995) AIPC ¶91-119.
ANA Laboratories Ltd's Application 69 RPC 146 at 151; and
Nuts Chocoladefabriek BV v Cadbury Ltd 5 IPR 77 at 80.
Beck, Koller & Co (England) Ltd's Application 64 RPC 76 at 83.
Caterpillar Loader Hire (Holdings) Pty Ltd v Caterpillar Tractor Co 1 IPR 265 and
Sizzler Restaurants Intenational Inc v Sabra International Pty Ltd 20 IPR 331.
Silverstone Tire and Rubber Co Sdn Bhd v Bob Jane Corp. Pty Ltd (unpublished) 5/6/98,
George Weston Foods Ltd v Peerless Holdings Pty Ltd (as yet unpublished) 8/10/99.
Key Legal Topics
Areas of Law
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Commercial Law
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Intellectual Property
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