McDonald's Corporation v Mark Vincent Glaser

[2016] ATMO 22

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 application 1590292 (29, 30, 32, 43) - McKosher - in the name of Mark Vincent Glaser.

Delegate:	Iain Campbell Thompson
Representation:	Opponent: Khajaque Kortian, solicitor, of Spruson & Ferguson by teleconference. Applicant: Self represented, did not appear or file written submissions.
Decision:	2016 ATMO 22 Trade Marks Act 1995 section 52 opposition to registration; s60 - reputation of Opponent’s McXXX formative trade marks - strong conceptual similarity of Trade Mark to Opponent’s McXXX formative trade marks - likelihood of contextual confusion - registration refused.

Background

1. In these proceedings under the Trade Marks Act 1955 (‘the Act’) Mark Vincent Glaser, (‘the Applicant’), has applied to register the trade mark which appears below:

Application No:  1590292
Priority Date:  8 November 2013

Goods/Services:  Class 29: Algae prepared for human foods; Banana based snack food products; Edible oils for use in cooking foodstuffs; Egg-based foodstuffs; Extruded potato products for use in food; Flowers and leaves, being dried, cooked or preserved foodstuffs; Food made principally from milk; Food pastes made from fish; Food pastes made from meat; Food pastes made from poultry; Food preparations consisting principally of meat products; Food preparations consisting wholly or substantially wholly of milk; Food preparations having a base of milk; Food preparations having a base of vegetables; Food preparations with a vegetable base; Food preparations with added minerals for use by athletes; Food preparations with added proteins for use by athletes; Food preparations with added vitamins for use by athletes; Food preserves; Food products consisting principally of fish; Food products derived from fish; Food products derived from meat; Food products made from cooked fruits; Food products made from cooked nuts; Food products made from cooked vegetables; Food products made from dried fruits; Food products made from dried nuts; Food products made from dried vegetables; Food products made from eggs; Food products made from fish; Food products made from meat; Food products made from nuts; Food products made from preserved fruits; Food products made from preserved nuts; Food products made from preserved vegetables; Food products made from seaweeds; Food products made of fish; Food protein for human consumption; Food spreads consisting principally of dairy products; Food spreads consisting principally of edible fats; Food spreads consisting principally of edible oils; Food spreads consisting principally of vegetables for sandwiches; Foods made from milk products; Foods prepared from fish; Foods prepared from milk; Foodstuffs consisting of poultry; Foodstuffs consisting of sausage meat; Fruit based snack food; Fruit-based snack foods; Gelling agents for use in foods; Jellies for food; Nut products for food; Olive oil for food; Palm oil for food; Potato based snack food products; Potato snack foods; Prepared foods consisting principally of cheese; Prepared foods consisting principally of fish; Prepared foods consisting principally of fruits; Pulses (for food); Seaweed extracts for food; Smoked food products; Snack food products made wholly or principally of potatoes; Snack foods consisting principally of meat; Snack foods made from dehydrated vegetables; Snack foods made from dried vegetables; Snack foods made from eggs; Snack foods made from extruded vegetables; Snack foods made from meat; Snack foods made from potatoes and wheat (potatoes predominating); Snack foods made from pre-cooked vegetables; Soya beans, preserved, for food; Sunflower oil for food; Vegetable food products; Aerated drinks (predominantly of milk); Carob drinks; Drinks based predominantly on milk; Drinks containing chocolate as flavouring for milk; Drinks containing cocoa as flavouring for milk; Drinks flavoured with chocolate and having a milk base; Drinks flavoured with fruit pastes and having a milk base; Drinks flavoured with herbs and having a base of milk; Drinks flavoured with spices and having a base of milk; Drinks made from dairy products; Drinks made wholly or principally with milk; Flavoured milk powder for making drinks; Milk based drinks (milk predominating); Milk drinks; Yoghurt based drinks; Yoghurt drinks; Yoghurt for drinking; Artificial milk based desserts; Canned milk; Coconut milk for cooking; Dried milk powder; Long life milk; Milk; Rice milk; Soya milk; Baked custard made with eggs and milk

Class 30: Aromatic preparations for food; Cereal based food bars; Cereal based snack food; Cereal breakfast foods; Cereal snack foods flavoured with cheese; Crisp snack food products; Curried food pastes; Dressings for food; Dried pasta foods; Extracts of cocoa for use as flavours in foodstuffs; Extracts of coffee for use as flavours in foodstuffs; Extruded food products made of maize; Extruded food products made of rice; Extruded food products made of wheat; Extruded savoury snack foods; Farinaceous food pastes; Farinaceous foods; Food dressings (sauces); Food mixes for making bakery products; Food pastes (seasonings); Food pastes (spices); Food preparations for making puddings; Food products consisting of cereals; Food products containing cereals; Food products containing flour; Food products for making nachos; Food products for making tacos; Food products having a pastry base; Food products made from potato flour; Foods produced from baked cereals; Foods produced from puffed cereals; Foods with a chocolate base; Foods with a cocoa base; Foodstuffs made from cereals; Foodstuffs made from corn; Foodstuffs made from dough; Foodstuffs made from farinaceous products; Foodstuffs made from maize; Foodstuffs made from oats; Foodstuffs made of rice; Foodstuffs made of sugar for making a dessert; Foodstuffs made of sugar for sweetening desserts; Foodstuffs made with cereals; Foodstuffs made with flour; Gluten prepared as foodstuff; Groats for human food; Malt extract for food; Malted food drinks; Mineral salts for preserving foodstuffs; Mixes for making breakfast foods; Oat-based food; Organic thickening agents for cooking foodstuffs; Potato flour based snack food products; Preparations for preserving foodstuffs (salt); Preparations for use as rising agents in food; Preservatives for food (salt); Processed grains for use in food; Rice based snack foods; Salt for flavouring food; Salt for preserving foodstuffs; Sea salt for preserving foodstuffs; Snack food products consisting of cereal products; Snack food products made from cereal flour; Snack food products made from cereals; Snack food products made from maize flour; Snack food products made from potato flour; Snack food products made from rice; Snack food products made from rice flour; Snack food products made from soya flour; Snack foods consisting principally of bread; Snack foods consisting principally of confectionery; Snack foods consisting principally of extruded cereals; Snack foods consisting principally of grain; Snack foods consisting principally of pasta; Snack foods consisting principally of rice; Snack foods made from cereals; Snack foods made from corn; Snack foods made of wheat; Snack foods made of whole wheat; Snack foods prepared from cereals; Snack foods prepared from grains; Snack foods prepared from maize; Snack foods prepared from potato flour; Starch for food; Synthetic thickeners for foodstuffs; Tapioca flour for food; Thickeners for cooking foodstuffs; Wafers (food); Aerated drinks (with coffee, cocoa or chocolate base); Chocolate drink preparations; Coffee drinks; Drinking chocolate; Drinking cocoa paste; Drinks based on chocolate; Drinks based on cocoa; Drinks prepared from chocolate; Drinks prepared from cocoa; Instant powder for making flavoured drinks; Milk chocolate; Milk chocolate bars

Class 32: Aerated drinks (non-alcoholic); Aerated drinks containing soya based products; Alcohol free drinks; Bottled fruit drinks; Carbonated non-alcoholic drinks; Concentrates for use in the preparation of fruit juice drinks; Concentrates for use in the preparation of soft drinks; De-alcoholised drinks; Drinking water; Energy drinks (not for medical purposes); Frozen concentrated fruit drinks; Fruit based drinks; Fruit drinks; Fruit flavoured non-alcoholic drinks; Isotonic drinks (not for medical purposes); Liquid mixtures for making soft drinks; Low alcohol drinks containing not more than 1.15% (by volume) of alcohol; Mixtures of fruit flavoured drinks; Non-alcoholic carbonated drinks; Non-fermented fruit drinks; Non-medicated mineral drinks; Part frozen slush drinks; Soft drinks; Sports drinks (non-medicated); Vegetable drinks; Vegetable extracts for use in the preparation of non-alcoholic drinks; Water for drinking (other than for medical purposes); Aerated fruit juices; Beverages consisting of a blend of fruit and vegetable juices; Bottled fruit juices; Fresh fruit juices; Fresh vegetable juices; Frozen concentrated fruit juices; Frozen fruit juices; Fruit juice beverages; Fruit juice beverages that contain multi vitamins; Fruit juice concentrates; Fruit juice extracts (beverages or for making beverages); Fruit juice extracts for use as a beverage; Fruit juices; Smoothies; Low alcohol beverages containing not more than 1.15% (by volume) of alcohol; Low alcohol wine containing not more than 1.15% (by volume) of alcohol; Low calorie fruit juices; Coconut milk (beverages); Electrolyte replacement beverages for general and sports purposes; Malt-containing beverages (beers); Mineral water (beverages); Soya based beverages (not being dairy substitutes); Whey beverages; Alcohol free beer; Alcoholic beers; Beer; De-alcoholised beer; Fruit beers; Ginger beer; Ginger beer (alcoholic); Malt beer; Malt-containing beverages (non-alcoholic, except beers); Non-alcoholic beers; Pilsner beer; Root beer; Aerated beverages (non-alcoholic); Alcohol free beverages; Alcohol free cider; Alcohol free wine; Aperitifs, non-alcoholic; Beverages containing not more than 1.15% (by volume) of alcohol; Cider (non-alcoholic); Cocktails, non-alcoholic; De-alcoholised wines; Fruit nectars (non-alcoholic); Grain based non-alcoholic beverages; Kvass (non-alcoholic beverage); Non-alcoholic barley based beverages; Non-alcoholic beverages; Non-alcoholic fruit extracts; Non-alcoholic fruit juice beverages; Non-alcoholic honey-based beverages; Peanut milk (non-alcoholic beverage); Sarsaparilla (non-alcoholic beverage); Squashes (non-alcoholic beverages); Grape juice; Grape must (unfermented); Beverages made from fruit concentrates; Fruit concentrates for making beverages; Vegetable juice concentrates (beverages); Aerated mineral waters; Aerated spring waters; Aerated water; Bottled water (not for medical purposes); Carbonated water; Lemon barley water; Natural mineral water (not for medical purposes); Natural spring waters (not for medical purposes); Natural water (not for medical purposes); Seltzer water; Soda water; Table waters; Milk of almonds (beverage)

Class 43: Arranging for the provision of food; Arranging of wedding receptions (food and drink); Charitable services, namely providing food and drink catering; Club services for the provision of food and drink; Coffee bar and coffee house services (provision of food and drink); Consultancy services relating to food; Consultancy services relating to food preparation; Country club services (provision of food, drink and temporary accommodation); Country clubs (providing food, drink and accommodation); Food and drink catering; Food cooking services; Food hygiene services; Food preparation; Hospitality services (food and drink); Internet cafe services (provision of food and drink prepared for consumption); Night club services (provision of food and drink); Old people’s home services (provision of accommodation and food and drink); Preparation of food and drink; Preparation of take-away and fast food; Providing food and drink; Providing information, including online, about services for providing food and drink, and temporary accommodation; Provision of carry out foods and beverages; Provision of information relating to the preparation of food and drink; Rental of food service apparatus; Restaurant services for the provision of fast food; Retirement home services (Provision of accommodation and food); Social clubs (Provision of food); Take away food services; Take out food and beverage services; Takeaway food and drink services; Theatre restaurants (Provision of food and drink); Arranging for the provision of drink; Rental of drink dispensing machines; Rental of drinking water dispensers; Wine club services (the provision of drink); Accommodation bureaux (hotels, boarding houses); Accommodation finding services for tourists; Accommodation finding services for travellers; Accommodation letting agency services (holiday apartments); Accommodation letting agency services (hotel); Accommodation reservation services; Aged care services (accommodation); Agency services for booking hotel accommodation; Agency services for booking temporary accommodation; Agency services for the reservation of accommodation; Appraisal of hotel accommodation; Arrangement of accommodation for holiday makers; Arrangement of accommodation for tourists; Arrangement of accommodation for travellers; Arranging holiday accommodation; Arranging hotel accommodation; Arranging of temporary accommodation; Booking of accommodation for travellers; Booking of hotel accommodation; Booking of temporary accommodation; Booking services for accommodation; Charitable services, namely providing temporary accommodation; Consultancy and advisory services relating to the provision of temporary accommodation; Holiday camp services (temporary accommodation); Holiday home services (accommodation); Holiday information (accommodation); Holiday planning (accommodation); Holiday village services (accommodation); Hospitality services (accommodation); Hotel accommodation reservation services; Hotel accommodation services; Information services relating to the provision of temporary accommodation; Inn keeping (bar, restaurant and accommodation); Letting of holiday accommodation; Letting of tourist accommodation; Providing temporary accommodation; Provision of hotel accommodation; Provision of information relating to the availability of accommodation; Provision of information relating to the booking of accommodation; Provision of self catering holiday accommodation; Provision of temporary accommodation; Provision of temporary office accommodation; Provision of tourist accommodation; Rating holiday accommodation; Rental of holiday accommodation; Rental of temporary accommodation; Reservation of accommodation for travellers; Reservation of accommodation in hotels; Reservation of hotel accommodation; Reservation of temporary accommodation; Reservation of tourist accommodation; Resort accommodation; Respite care (provision of temporary accommodation); Retirement home accommodation services; Social clubs (Provision of accommodation); Temporary accommodation; Temporary accommodation (hotels, motels, resorts) booking and reservation services provided in relation to a customer loyalty or frequent buyer scheme; Temporary accommodation (hotels, motels, resorts) booking and reservation services provided in relation to a frequent flyer scheme; Temporary accommodation reservation services; Tourist agency services (provision of temporary accommodation); Tourist agency services for booking accommodation; Travel agencies for arranging accommodation; Travel agency services for booking accommodation; Travel agency services for reserving accommodation; Travel agency services for reserving hotel accommodation

Trade Mark:  McKosher

(‘the Trade Mark’)

1. The Trade Mark was examined as mandated by section 31 and, on 3 April 2014, it was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks.

2. On 3 June 2014, McDonald’s Corporation (‘the Opponent’) filed Notice of Intention to Oppose the registration of the Trade Mark.  Thereafter the opposition has followed the timetable set out below:

   3 July 2014 – Opponent filed Statement of Grounds and Particulars citing the following grounds:

   Substantially identical/deceptively similar trade marks - Section 44/Reg 4.15A.

   The Opponent relies upon one or more of the following trade marks registered or whose registration is being sought in respect of similar services or closely related goods and upon the priority date of the opposed application not being earlier than the priority date for the registration of those trade marks:

   [The Opponent then cites a number of trade mark registrations material to the ground under section 44 of the Act].

   Trade mark is similar to a trade mark which has acquired a reputation in Australia – Section 60:

   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:

   [The Opponent then details the trade marks appearing at [11] hereunder].

   Trade mark is scandalous or contrary to law – Section 42.

   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.

   Application made in bad faith – Section 62A.

   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 trade marks featuring the “Mc” prefix.

   21 July 2014 – Applicant filed its Notice of Intention to Defend.

   27 October 2014 – Opponent filed its Evidence in Support being the declaration of:

   Khajaque Kortian, a Principal of Spruson & Ferguson, trade mark attorneys, made on 27 October 2014, with Exhibits KK-1 to KK-10.

   18 February 2014 – Applicant filed its Evidence in Answer being the declaration of:

   Mark Vincent Glaser, the Applicant, made on 18 February 2015, with Exhibits MVG-1 to MVG-10.

   13 May 2015 – Opponent filed its Evidence in Answer being the declaration of:

   Khajaque Kortian made on 13 May 20 15, with Exhibits KK- 1 to KK-5

3. Thereafter both parties were informed of their right to be heard or to make written submissions.  The Opponent elected to be heard.  The Applicant neither elected to be heard nor has filed written submissions.

4. As a delegate of the Registrar of Trade Marks, I heard the submissions of the Opponent represented by Mr Khajaque Kortian, a Principal of Spruson & Ferguson, Patent & Trade Mark Attorneys.  The hearing was in Canberra on 10 March 2016 and Mr Kortian attended by teleconference.

Onus

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

   [1] Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156.

2. The relevant date at which the grounds under section 52 of the Act must be considered is the filing date of the opposed application[2].

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

Evidence

1. As my decision is under section 60 of the Act, there is no need to discuss the evidence which goes to section 44 of the Act.

2. In relation to section 60, the Opponent contends the reputation of what I will term the ‘McXXX formative trade marks’.

Evidence in Support

1. At Exhibit KK-6 to Mr Kortian’s first declaration is the statutory declaration of Madelaine Fitzpatrick, Director of Marketing of McDonald’s Australia Limited, made on 22 May 2013, in relation to MCD Asia Pacific LLC v Hoseyin Dogon[3] (‘McKebabs’).

   [3] [2014] ATMO 52.

1. In McKebabs, at [16] I summarized Ms Fitzpatrick’s evidence in the following way:

   By way of brief history and background to the operations of the Opponent, Ms Fitzpatrick says:

   McDonald’s, by itself (and by its predecessor in title), and/or by its parent company (McDonald’s Corporation), their franchisees, divisions, subsidiaries, affiliates and licensees, or any of them (“McDonald’s Affiliates”), in business have conducted a system of self-service restaurants (“McDonald’s Restaurants”) since 1948. Today, McDonald’s Corporation, through its McDonald’s Affiliates, is one of the largest food service organisations in the world and, as at 2012, McDonald’s Affiliates were operating over 34,000 such restaurants in 119 countries and territories. Every day, the McDonald’s Affiliates serve an average of 69 million people around the world. The first McDonald’s Restaurant in Australia was opened in 1971 and there are now in excess of 890 McDonald’s Restaurants operating in Australia (both directly by and under franchise from McDonald’s Australia).

   Ms Fitzpatrick’s declaration asserts a family of both registered and unregistered trade marks which incorporate the prefix ‘Mc-’ owned by the Opponent which are of the ilk, ‘McFood’ where the element ‘Food’ is variable and may refer to, for example, Chicken, Cheese, or ‘BLT’ as ingredients of burgers, sandwiches, takeaway foods, etc. [These trade marks and goods are:]

   Trade Mark   Food Product             Period of Use

   “McFEAST”Burger   1981-1997;

   Aug 2011

   “McBACON DELUXE”                    Burger   Dec 1990;

   Dec 1996 to

   Feb 1997;

   Jan 2000

   “McCHICKEN”  Chicken Burger   1991 to date

   “McRIB”   Pork Burger   1992-1996;

   May 2012

   McBEEFSTEAK”   Burger   Oct-Nov 1993

   “McBREAKFAST

   BURGER”   Muffin Burger              June-July 1996;

   Oct-Nov 1996

   “CHICKEN McDELUXE”                Chicken Burger   Mar 1997

   - Apr 1997

   “McFISH DELUXE”   Fish Burger   1997 - Apr

   1997

   “McAMORE”   Italian style Burger                   June 1997

   - July 1997

   “McMALIBU”   Hawaiian style Burger   Dec 1996

   - Jan 1997

   “McFEAST DELUXE”   Burger   1997 - 1999

   “McCHICK” Chicken Burger   Dec 1998

   - Jan 1999

   “McBLT”   Burger   Dec 1998

   - Jan 1999

   “McOZ”   Burger   Aug 1999

   to date

   “McCHICKEN DELUXE”               Chicken Burger   Mar 2000

   - Apr 2000

   “MASSIVE McMUFFIN”               Muffin Burger              Apr 2001

   “McDOUBLE”   Burger   Oct 2009 to

   date

   “McDONALDLAND COOKIES”  Biscuit   1978 to date

   “CHICKEN

   McNUGGETS”   Chicken Nuggets   1986 to date

   “SHANGHAI

   McNUGGETS”   Chinese style Chicken   Jul 1987

   “BACON & EGG   Bacon & Egg Muffin                1987 to date

   McMUFFIN”

   “SAUSAGE McMUFFIN”               Sausage Muffin   1987 to date

   “SAUSAGE AND EGG                   Sausage and Egg Muffin           1987 to date

   McMUFFIN”

   “McSALAD ROLL”   Salad   1991-1994

   “McPAVLOVA”   Dessert Dec   1997 - Jan 1998

   “McSHAKER FRIES”   Seasoned French Fries            May-June 1999

   “McFLURRY”   Dessert   1999 to date

   “McDELICIOUS”   Dessert   June 2000

   “McWRAP”   Food Wrap   Aug 2000

   - Mar 2001

   “McFLOAT”   Drink/Dessert   Nov 2012 to

   date

   “CHICKEN McBITES”                  Chicken Snack Pieces Apr 2011 to

   date

   “McDIPPERS”   Chicken Strips             Dec 2007

   “McGRIDDLES”         Mini Flavoured Pancakes         Mar - Apr 2011

   “McWINGS”   Chicken Wings   June 2011

   McVALUE Meals  Meals   1992 to date

   “McSPICY”    Chicken Burger   Apr 2013

   “McCHAMP”  Chicken Burger   Apr 2013

   “McGRILLED”  Chicken Burger   Apr 2013

2. Ms Fitzpatrick further stated:

   “McCAFÉ” Outlets are generally built within standard McDonald’s restaurants and are designed to provide customers with a cosmopolitan, neighbourhood cafe-style experience where customers have been able to obtain cafe-style food and beverages including cakes, cookies, macarons [sic], muffins, pastries, biscuits, savoury foods and prepared meals such as panini and foccacia-style [sic] sandwiches, as well as coffee (including Italian-style coffees such as cappuccino and latte, and Vienna coffee), decaffeinated coffee, hot chocolate and tea (including gourmet tea).

3. There are now 890 McDonald’s restaurants in Australia, 700 of which (as at May 2013) contained McCAFÉ outlets.

4. Ms Fitzpatrick provides confidential sales figures for both the McDONALD’S restaurants and McCAFÉ outlets in Australia.  These figures are, by any standards, high.

5. The Opponent’s pattern of coinages of its McXXX formative trade marks has become sufficiently well-known for it to influence headlines in the general news press – particularly in articles about the Opponent. Some examples given at Exhibit MF-8 of Ms Fitzpatrick’s declaration include, Italians Stage McProtest,[4] McScanning – What Does It All Mean?[5]^[  McDispute,[6] McNappers,[7] - McBreakfast?[8] - and, The Making of the McBosses[9].

   [4] The Sun, Monday 21 April 1986.

   [5] CB Action, May/June 1990.

   [6] Marketing Week, 27 November, further details not stated.

   [7] Telegraph, Monday 23 June 1986.

   [8]Choice, November 1987.

   [9] Good Weekend, further details not stated.

6. Ms Fitzpatrick’s evidence shows that the Opponent advertises and promotes its McXXX formative trade marks extensively and a range of 59 media files was attached to her declaration.

7. In McKebabs I concluded my discussion of Ms Fitzpatrick’s evidence at [25]:

   Also included with Ms Fitzpatrick’s declaration are some 59 media files (both audio and video files) which feature advertising in Australia of the McXXX products and services already mentioned as well as those sold or provided under the trade marks CHICKEN & McCHEESE, McAFRICA, McAMERICA, McASIA, McCHILI, McHAPPY DAY and McONE.

8. Mr Kortian’s declaration exhibits ATMO decisions which involve the Opponent’s McXXX trade marks: McDonald’s Corporation v Macri Fruit Distributors Pty Ltd [2000] ATMO 37 (McSalad and McFresh); McDonalds Corporation v Sheli Lubowski [2004] ATMO 56 (McChina); and McDonald’s Inc v Future Enterprises Pte Ltd [2007] ATMO 22 (MacCoffee). For the sake of completeness, I note that other decisions which involve similar trade marks include McDonalds Corporation v David Bellamy [2004] ATMO 26 (MacBaby) and McDonald’s Corporation v McBratney Services Pty Ltd [2006] ATMO 71 (McBrat).

9. Mr Kortian observes in his first declaration that the Opponent operates 131 restaurants in Israel and that many of these are ‘kosher’ restaurants.  At Exhibit 8 of Mr Kortian’s first declaration are a number of news articles which refer to these as being ‘McKosher’ restaurants:

   Reuters:

   McKosher, now with a new logo […] McDonalds posts new blue-and-white logo on its kosher restaurants to clearly distinguish them from fast food chain’s non kosher branches

   Shoshana Chen

   Only once in McDonalds’ history has the franchise redesigned its logo: To comply with French law, which requires all signs on Paris’ fashionable Champs-Elysees boulevard to be in gold, the chain printed its sign with a golden background.

   Now, McDonalds is offering a second redesign, this time for its Israeli restaurants, Israel’s leading newspaper Yedioth Ahronoth reported Monday.

   Video: Reuters

   Moscow Times:

   Burgers Go McKosher

   May 17 1995

   JERUSALEM -- Hold the cheese on that Big Mac. McDonald’s is opening its first kosher restaurant, in Israel.

   McDonald’s Israel announced Tuesday that its restaurant opening in July in Rehovot, south of Tel Aviv, would be the first to adhere to Jewish dietary laws. It will be closed on the Jewish Sabbath and holidays.

   Burger King, McDonald’s main rival, already has a kosher branch in Jerusalem.

   Arutz Sheva 7

   McKosher?

   (lsraelNN.com) Rabbinical leaders are in negotiations with the international fast food chain, McDonald’s, over the issue of the name of the chain in the capital. The Jerusalem Rabbinate refuses to certify any of the chain outlets in the capital as kosher so long as there are any non-kosher branches in the city. The certifying rabbis fear that a kosher certificate in one branch will mislead the public into assuming that all of the local McDonald’s outlets are kosher. The solution suggested by the Rabbinate is a renaming of the kosher McDonald’s branches to “McKosher.” Corporate representatives in Israel have told the rabbis that such a drastic change would require the approval of the international headquarters. The negotiations began as a result of a court decision allowing a McDonald’s branch to open in the Jerusalem central bus station mall, despite its lacking a kosher certification.

10. Exhibit 11 of Mr Kortian’s first declaration shows that 11% (20,000 people) of Australians who travel overseas visit Israel.

Evidence in Answer

1. The Applicant states that he is of Scottish Jewish descent and his ancestors’ surnames include McKosher, MacAdoo, Beadle, Zimmerman, Rosenthal and Glaser.

2. The Applicant further states:

   I intend to open a restaurant in Maclean New South Wales Australia selling and serving kosher meals and products using Scottish and Jewish recipes and registered the business name ‘McKosher’ to trade under. Now shown to me and marked Exhibit MVG - 1 is a copy of Record of Registration for Business Name dated 14 September 2013.

   1 am a member of the Lower Clarence Scottish Association. Now shown to me and marked Exhibit MVG - 2 is a collection of information produced by the Lower Clarence Scottish Association.

   The surname McKosher is of Scottish origin. Now shown to me and marked Exhibit MVG-3 is a collection of copy public records relating to persons with the surname McKosher.

3. I note that all of these ‘copy public records’ relate to some 13 individuals who are, or were, resident in the United States of America and that most them are deceased.

4. The Applicant then discusses the term ‘kosher’:

   The term kosher does not exclusively refer to food.

   Kosher broadly means ‘Fit and proper’. Now shown to me and marked Exhibit MVG - 4 is a collection of on line dictionary website pages providing definitions for the term kosher.

   Candles, footwear, bags, wallets, men’s and women’s suits, belts, hats, clothing in general, trees and cooking utensils may all be considered kosher or not kosher. Now shown to me and marked Exhibit MVG - 5 is a collection of website pages print-outs with examples of non-food kosher products.

   Pork is expressly not kosher. Now shown to me and marked Exhibit MVG-6 is a printout from Cha bad Org website discussing pork’s non-kosher status.

   The opponent sells pork. Now shown to me and marked Exhibit MVG-7 is a print-out from the Opponent’s website and a Google search of the Opponent’s menu.

5. The Applicant observes that a business other than the Opponent uses the business name ‘Mc Kosher Direct’ in the USA.  However, the extract provided by the Applicant within Exhibit MGV-8 to his declaration does not show that the words ‘Mc Kosher Direct’ are used or registered as a trade mark in the USA (as distinct from being a business name) or that the Opponent was aware of this use.

6. The Applicant also exhibits to his declaration various materials about MacLean, NSW, and states:

   Maclean is a small town situated in the Northern Rivers region of far north coast New South Wales Australia.

   Maclean is reported to be, and the town’s people pride themselves in the fact that Maclean is, the Scottish capital of Australia.

   For many years, the people of Maclean township have publicly used the ‘Mc’ and ‘Mac’ prefix to describe and market many activities as McMarkets, MacMarkets, MacBowlo, MacConsultants, MiniMacMarkets and other ‘Mc’ and ‘Mac’ prefixed coinages. Now shown to me and marked Exhibit MVG-9 is a collection of local newspaper articles relating to Maclean.

Evidence in Reply

1. In this evidence Mr Kortian states:

   I refer to Exhibit MVG-1 to the Glaser Declaration regarding the Business Name for “McKosher”. The stated principal place of business of that purported “restaurant” is 207 River Street, Mclean, New South Wales, 2463.

   Searches conducted of the Electronic White Pages and Yellow Pages Telephone Directory database fail to reveal as listing for any business in Mclean or otherwise under the name of “McKosher”.

   Now shown to me and marked Exhibit KK-1 are the results of searches conducted for the surname “McKosher” on the National White Pages Telephone Directory database.

   Now shown to me and marked Exhibit KK-2 are the results of the search conducted for the surname “McKosher” on the Australian Government, IP Australia Search for Australian Surnames [‘SFAS’] database based on the Australian Electoral Commission records, showing no results for the name “McKosher”.

   I refer to paragraph 3 of the Glaser Declaration. Now shown to me and marked Exhibit KK-3 are printouts from the websites of Kashrut Authority of New South Wales which provides certification for Kosher eateries and products. I note that the Glaser Declaration is void of any reference to having the proposed “McKosher” restaurant being certified (or AH13b(10040668_ 1):GAT applied to be certified) as a Kosher eatery or any of the products that the Applicant purports to make or sell under or by reference to the “McKosher” trade mark being so certified.

   Now shown to me and marked Exhibit KK-4 are the search results of the Kosher Product Directory of the website of the Kashrut Authority situated at org for the keyword “McKosher” which revealed a “O” result.

   Now shown to me and marked Exhibit KK-5 are printouts from the website of the Applicant’s law firm (of which the Applicant appears to be a Principal) which is located at the same address as the principal place of business of the “McKosher’’ “Restaurant”, namely 207 River Street, Mclean, New South Wales, 2463.

2. The Electronic White Pages and SFAS printouts exhibited to Mr Kortian’s declaration do not record entries for the surname ‘McKosher’.

Section 60

1. Section 60 relevantly provides:

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

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

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

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

   Note:For priority date see section 12.

Trade Marks

1. Here the Opponent relies on the reputation of its McXXX formative trade marks both individually and collectively.

Reputation

1. What is the reputation of a trade mark?  In McCormick & Co Inc v McCormick [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192 (‘McCormick’) Kenny J said at [81]:

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

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

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

2. Additionally, Heerey J in Le Cordon Bleu B.V. v Cordon Bleu International Ltee[10] (albeit in relation to paragraph 28(a) of the Trade Marks Act 1955) said that the reputation required to be demonstrated was:

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

   [10] [2000] FCA 1587; (2000) 50 IPR1.

3. Here the considerations are of the reputation of trade marks used in relation to the restaurant services of the Opponent.  In the circumstances of this matter, and the mass-market nature of the services, one would look to the reputation of the trade marks amongst the Australian population generally.

4. Concerning the assessment of a contended reputation, in McCormick, Kenny J said at [86]:

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

5. However, Kenny J also said in McCormick at [85]:

   As Hearing Officer Thompson observed in Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG (1999) 47 IPR 423 (“Hugo Boss”) at 436:

   [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 the 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.

6. It is appropriate therefore to look at the scale and nature of the Opponent’s promotions and the type of the audience towards who those promotions are ‘pitched’.

7. A number of materials in Ms Fitzpatrick’s declaration indicate that the promotion of the restaurant services offered under, or associated with, the McXXX formative trade marks by the Opponent is to children as much as it is to their parents.  These are:

   Sponsorship of Little Athletics – Exhibit MF-2;

   ‘Ronald McDonald’ – both as an in-store clown character and charity for seriously ill children – Exhibit MF-2;

   The ‘Hamburglar’ – Exhibit MF-14;

   The association of the Opponent’s trade marks and services with children’s television and cinema characters such as Donald Duck®, the Tasmanian Devil[11], Buzz Lightyear, Winnie the Pooh®, Barbie®, HotWheels® – Exhibits MF-2, MF-15, MF-16;

   The give-away as ‘prizes’ or sale of children’s toys such as ‘McTreats’ containers, balloons, stationery, toy figurines, plush toys, children’s eating utensils – Exhibits MF-3, MF-16;

   The provision of children’s play-areas – Exhibit MF-3;

   Children’s menu items such as babycinos -– Exhibit MF-3;

   Arranging children’s parties and games – Exhibits MF-12 and MF-17; and,

   Sale of children’s clothing items and souvenirs – Exhibits MF-13 and MF-14.

   [11] The composite image and words ‘Tasmanian Devil’ are a registered trade mark – 371395.

1. A target for the Opponent’s advertising and promotion is therefore children.  While children may not pay for the Opponent’s services their perceptions often determine where a family dines.  As such children’s opinions are more unsophisticated and less discerning than are those of adults.

2. As I observed above, the scale of the Opponent’s sales, marketing, and promotion of its services offered under its McXXX formative trade marks in Australia is high by any standards.  Most Australians, including those who do not avail themselves of the Opponent’s services, would be aware of the scale of the Opponent’s operations under its McXXX formative trade marks and of the Opponent’s coinages of further McXXX formative trade marks.  I therefore conclude that the McXXX formative trade marks as a collective have very strong reputations in Australia.  In addition the Australian public have an awareness of the Opponent’s practice of coining further ‘McFood’ trade marks from the stem ‘Mc-’ in relation to its offerings.  These are used by the Opponent to indicate their nature and include examples such as ‘McFRIES’ or McBURGER, or their quality or quantity such as McDOUBLE or McFEAST, or their ethnic nature, such as McAMORE, or the service nature of the offering, such as ‘McCafé’.

Deception or Confusion

1. The terms ‘deception’ and ‘confusion’ refer to two different types of mistake.  The different concepts ‘deceive’ and ‘cause confusion’ were explained in Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd[12]:

   ‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public .... Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant’s mark come from some other source and confused to being caused to wonder whether that might not be the case.

   [12] (1979) RPC 410 at 423.

2. Additionally, as Rich J said in Radio Corporation Pty Ltd v Disney[13] (‘Mickey Mouse case’):

   In matters such as this we are dealing with the vague and indefinite impressions of the great mass of the public who neither are required nor desire to refine upon distinctions of this sort. To them it is shown that the name “Walt Disney” summons up a picture of “Mickey Mouse” and the picture of Mickey Mouse reminds them of “Walt Disney.” The foundation of this is authorship no doubt. But somehow or other, how, it is fruitless to inquire, they connect the appearance on an article of the name or form of “Mickey Mouse” with “Walt Disney.” This being so, it is, I think, impossible for the appellant to negative all likelihood of confusion.[14] It is no part of our duty to state in definite terms precisely how the public will be misled or what kind of connection they will impute. Confusion involves indefiniteness of ideas.

   [13] [1937] HCA 38; (1937) 57 CLR 448.

   [14] I note that the onus is now on the Opponent to establish the likelihood of deception or confusion.

3. ‘Confusion’ may be held to exist even if it does not persist to the point of sale.  In Tivo Inc v Vivo International Corporation Pty Ltd[15] (‘Tivo’) Dodds-Streeton J observed at [105]:

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

   [15] [2012] FCA 252.

4. The assessment of the likelihood of deception or confusion is informed by the factors discussed by French J in Registrar of Trade Marks v Woolworths[16] at [50] [17]:

   [16] [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499.

   [17] I omit references to ‘deceptive similarity’ from this passage since these words do not occur in section 60.

   In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

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

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

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

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

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

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

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

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

5. In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi [2012] ATMO 124 at [40] the Registrar’s 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.

6. The source of the confusion alleged by the Opponent here stems not from the reputation of any single one of its McXXX formative trade marks but from confusion of the type referred to in John Fitton & Company Limited’s Application[18] where the Court referred to the likelihood of contextual confusion:

   Now, under Sec. 12 (1) of the present Act the Registrar is required to postulate a simultaneous use of the two marks under consideration, whether or not one is already in use, and to assess to the best of his ability the likelihood of ensuing confusion or deception, and no limitation is, to my mind, placed upon the nature of the confusion or deception so envisaged, whether it be visual or phonetic confusion of the marks themselves, or what is termed contextual confusion, or confusion or deception as to the trade provenance of the goods. The Australian Wine Importers is a typical case in which identical or closely resembling marks were to be used on closely related goods, but a similar position would arise where what I may term complementary marks are intended to be used on the same goods, e.g., the Registrar would under Sec. 12 (1) refuse an application to register the words “Ursa Minor” as a new mark in respect of, say, motor vehicles in favour of one proprietor if the mark “Ursa Major” were already on the Register in respect of those goods in the name of another proprietor. In all such instances, it seems to me, the confusion or deception mainly to be feared is that the public would attribute a common trade origin to both sets of goods. In the present proceedings the Opponents’ declarants have given evidence that they know the mark “Jests” and that if they should encounter similar goods sold under the mark “Easyjest”, they would assume that such goods were another product of the proprietors of the mark “Jests”. Such evidence, in my opinion, is directly relevant under the provisions of Sec. 11 but inasmuch as the inference to be drawn therefrom is that other persons, who have as yet no knowledge of either mark, would be similarly deceived if they were at some future date to encounter both marks in simultaneous use (i.e., the notional use under Sec. 12 (1)), the evidence is in my view relevant under Sec. 12 (l) also. My conclusion is therefore that, if and in so far as there is any conflict between the judgment given in Enoch’s case (ubi supra) and those given in the Court of Appeal in the Australian Wine Importers’ case, I am bound by the latter which, so far as I am aware, have never been overruled upon this particular issue.

   [18] (1949) 66 RPC 110 at 113-114.

7. The Applicant’s evidence shows that it is his view that the word ‘Kosher’ is a family surname; the word is used by those of the Jewish faith in relation to goods other than foods; and that, further, in relation to his proposed business activities in MacLean, the Trade Mark is likely to be seen in the context of that locality as being a play on the ‘Scottishness’ of that locale.

8. However, the meaning of the word ‘Kosher’ is dictated here by the commercial context within which it is proposed to be used.  Dixon J observed in Howard Auto-Cultivators Limited v Webb Industries Proprietary Limited[19]:

   But the meaning of all words is governed by their context and how words are understood depends upon the universe of discourse. Here the scope of the use of the word is settled by the application for registration ...

   [19] [1946] HCA 15; (1946) 72 CLR 175 at 184.

9. In the context of this application for registration and the Applicant’s proposed restaurant, it is quite unlikely that people seeing the Trade Mark will think of the surname ‘Kosher’ which is, anyway, as shown by Mr Kortian’s second declaration, presumably unknown to most Australians.  It is also unlikely that most Australians would, in the context of the Applicant’s goods and services (and proposed restaurant), think of the use of the word ‘Kosher’ in relation to goods other than foodstuffs and the food service industry.  Additionally, while the Applicant intends to use the Trade Mark within MacLean in Northern New South Wales, the Trade Mark is proposed for registration throughout Australia and the assessment of the likelihood of deception or confusion must be on that basis.

10. To the extent that the Applicant’s evidence suggests the argument that the Trade Mark will be viewed as a parody of the Opponent’s McXXX formative trade marks, I make the following observations.

11. Parody, if it be such, must be of a nature that it is immediately and principally recognizable as both parody and as being distinct from the original and not confuse or deceive by implying some endorsement by the its owner, or a connection with the original or its owner such that the goods or services are likely to be initially misapprehended by the public as originating from the owner of the original[20].

    [20]  Pacific Dunlop Ltd v Hogan [1989] FCA 185; (1989) 14 IPR 398; 87 ALR 14.

12. In Coca-Cola Company v All-Fect Distributors Ltd[21] Merkel J observed:

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

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

    [21] (1998) 43 IPR 47

13. Merkel J continued with the caution that:

    However, as was said by Lehane J in McIlhenny[22] (citing authority at 195–6) many cases are illustrative of circumstances:

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

    [22] McIlhenny Co v Blue Yonder Holdings Pty Ltd [1997] FCA 962; 149 ALR 496; 39 IPR 187; [1997] ATPR 41-587

14. Here, if the Applicant were to assert ‘parody’, the parody is not immediately apparent.

15. As well as being used in printed form, the trade marks of the parties may be used aurally[23].  In Tivo Inc v Vivo International Corporation Pty Ltd[24] Dodds-Streeton J observed at [102]:

    It is necessary to compare the trade marks both visually and aurally. The test is not whether customers might think that the marks are the same, but rather whether there is a real risk that the respondents’ use of the Vivo trade mark will cause a significant number of ordinary persons to wonder or to entertain a reasonable doubt (see Crazy Ron’s at [76]; Southern Cross at 595; Woolworths at 382) as to whether the respondents’ products come from the same source as those of the applicants. It is sufficient to “cause confusion” if the minds of the purchasing public are merely “perplexed” or “mixed up” (see Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1979] RPC 410 at 423, as cited by Black CJ in Coca-Cola Company v All-Fect Distributors Ltd [1999] FCA 1721; (1999) 96 FCR 107 at [39]).

    When assessing the visual impression created by the mark, one must consider “the idea which the mark will naturally suggest to the mind of one who sees it” (Jaferjee v Scarlett [1937] HCA 36; (1937) 57 CLR 115 at 121, per Latham CJ (McTiernan J agreeing)). Unlike the court, consumers will be influenced by “a general recollection or impression of the mark which they have seen” (per Latham CJ at 122).

    Aural similarities may also be important. In Australian Woollen Mills[25], the majority stated at 658:

    In deciding this question, the marks ought not, of course, to be compared side by side. 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 impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, then similarities both of sound and of meaning may play an important part. 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 observation of men considered in the mass affords the standard. Evidence of actual cases of deception, if forthcoming, is of great weight.

    [23] Subsection 7(2) applies.

    [24] [2012] FCA 252.

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

16. In the instance before me, the Trade Mark is of the same conceptual genre as the Opponent’s McXXX formative trade marks which have a particularly strong association with both the Opponent’s restaurant services and its marketing activities.  The idea of the parties’ trade marks is the same – they are conceptually identical and share the McXXX coinage where the XXX part of the trade mark has a denotation in relation to foodstuffs and related services.  The Trade Mark is accordingly likely to be seen as such and as being part of the same ‘family’.  That is not to conclude that the Opponent is likely to author the Trade Mark for use in Australia, although I note that the rabbinate has suggested that the Opponent does so in relation to its restaurant services in Israel.  It is to observe that when seeing or hearing the Trade Mark the public is likely to be caused to wonder whether the Opponent had created it in relation to its services and that there is, or might be, some connection between the Trade Mark and the Opponent’s services.

17. Accordingly, in my consideration there is a reasonable likelihood that people, on seeing the Trade Mark, will be caused to wonder if there is some connection between the food-related goods and services offered under the Trade Mark and those offered by the Opponent. This confusion is possibly unlikely to persist unto the point of sale but, as noted above, such lasting confusion is not a requirement for section 60 to be established.

18. The Opponent has established its opposition under section 60 of the Act.

19. I have no submissions from the Applicant concerning the fate of the Trade Mark for those services within the specification other than the food-related goods and services in relation to which the opposition has been established.  I note the words of Yates J in Apple Inc v Registrar of Trade Marks[26]:

    My finding that the application for registration of APP STORE for the designated services in Class 35 must be rejected determines the fate of the application as a whole. This is because there are no separate applications for registration of the mark for the designated services Classes 38 and 42. There is but one application covering registration of the mark for all the services that have been specified. If the application fails in one respect, it fails as a whole. In these circumstances, is not necessary for me to proceed to determine the registrability of APP STORE for the designated services in Class 38 or Class 42.

    [26] [2014] FCA 1304 at [232].

Decision

1. Section 55 of the Act relevantly provides:

   55Decision

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

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

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

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

   Note:For limitations see section 6.

2. I refuse to register the Trade Mark.

Costs

1. The Opponent has requested its costs and I accordingly award costs against the Applicant at the scale set out in Schedule 8 to the Trade Mark Regulations 1995.

Iain Campbell Thompson
Hearing Officer
Trade Marks Hearings
11 April 2016