McDonald's Corporation v McBratney Services Pty Ltd

[2006] ATMO 71

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 992932(25) - MCBRAT - filed in the name of McBratney Services Pty Ltd.

Delegate:

Alison Windsor

Representation:

Opponent:  Simon Williams of Spruson and Ferguson, Patent and Trade Mark Attorneys

Applicant:  Dr Amanda McBratney, Consultant for McCullough Robertson Lawyers

Decision:

S52 opposition: no grounds  of opposition established -.  Costs awarded against the opponent. 

Background

1. McBratney Services Pty Ltd (“the applicant”) filed an application to register a trade mark, particulars of which are detailed below:

Application number:  992932

Trade Mark:  MCBRAT

Filing date:  11 March 2004

Acceptance advertised: 15 July 2004

Goods claimed:                Class 25:  Clothing; footwear; headgear

1. McDonald’s Corporation (“the opponent”) filed a notice of opposition on 15 October 2004.  The notice cites all possible grounds available under the Trade Marks Act 1995 (“the Act”).  The usual process of serving and filing evidence on behalf of both parties followed, and in due course the matter was set down for a hearing. 

2. The hearing was held before me as delegate of the registrar in Canberra on 19 April 2006.  Simon Williams of Spruson and Ferguson Patent and Trade Mark Attorneys represented the opponent, while Dr Amanda McBratney, a consultant to McCullough Robertson Lawyers appeared by telephone for the applicant.

Evidence

1. The evidentiary process for this opposition was somewhat complicated by several requests by both parties to submit further evidence, resulting in more than one delay in having the matter heard. In addition, the opponent requested the Registrar issue a notice pursuant to s202(c) of the Act (“Notice to Produce”) to the applicant, specifying particular documents be provided. The evidence received, including that received in response to the Notice to Produce, is set out in the following table. Because there are several declarations from Malcolm McBratney, I have numbered these for ease of reference.

Declarant	Position	Date Made	Exhibits
Evidence in support
Philip Charles Maloney	Senior legal counsel of McDonalds Australia Ltd	13 January 2005	PCM-1 to PCM-23
Evidence in Answer
Malcolm John McBratney	Owner and director of applicant	13 April 2005 McBratney 1	A to Q
Evidence in Reply
Veronique Helene Maurey	Principal of Spruson & Ferguson	8 August 2005	VHM-1
Further evidence – applicant
Malcolm John McBratney	Owner and director of applicant	31 October 2005 McBratney 2	1 to 69
Malcolm John McBratney	Owner and director of applicant	30 March 2006 McBratney 3	A to Q
Malcolm John McBratney	Owner and director of applicant	30 March 2006 McBratney 4	1 to 69
Robert Gordon Donaghue	President of Brisbane Irish Rugby Football Club Incorporated	31 March 2006	RGD-01 to RGD-03
Brenden Philip Yantsch	Treasurer of Brisbane Irish Rubgy Football Club Inc	31 March 2006	BPY-01 to BPY-12
Amanda Jane McBratney	Consultant	3 April 2006
Malcolm John McBratney	Director of applicant	3 April 2006 McBratney 5
Further evidence – opponent
Kevin Springall	Private investigator	5 December 2005	KS-1 to KS-2
Rhona Lea Lawson	General counsel of McDonald’s Corporation	7 December 2005	RLL-1 to RLL-9
Simon Dudley Williams	Principal of Spruson & Ferguson	21 March 2006	SDW-1 to SDW-2
Notice to Produce
Malcolm John McBratney	Sole director and secretary of applicant	10 February 2006 McBratney 6	A to D

1. On 18 April 2006, 24 hours before the hearing was due to take place, Mr Williams on behalf of the opponent served notice that he wished to seek leave to bring in further evidence.  This evidence consisted of a Statutory Declaration made by Mr McBratney and filed in support of his company’s opposition to registration of the opponent’s application 1025439 in class 25, for the trade mark McKIDS.  After hearing submissions from both parties, I declined to allow the proposed evidence into proceedings.  I advised the parties it was my opinion the evidence was irrelevant to the matter at hand, and I did not intend to consider it in making my decision. 

Evidence in support

1. The evidence in support consists of a declaration made by Phillip Charles Maloney, senior legal counsel of McDonald’s Australia Limited, a subsidiary of the opponent company.  The declaration states that the opponent’s first self-service restaurant opened in 1948, and it is now the largest food service organization in the world, with over 30,000 restaurants in 119 countries.  The first restaurant in Australia opened in 1971, and there are now over 720 McDonald’s restaurants operating in Australia. 

2. The declaration gives details of what it describes as a “family of ‘Mc’ and ‘MAC’ prefixed trade marks” owned by the opponent and registered in Australia.[1]  Particular reference is made to a number of trade marks registered in respect of goods in class 25 with priority dates ranging from early 1979 to mid 2003. 

   [1] Exhibit PCM-1, and see Annex A to this decision.

3. A list of unregistered trade marks incorporating ‘Mc’ or ‘MAC’ used by the company in its restaurants in relation to food and drink products and associated restaurant services is also provided..  Examples of use of many of these signs are provided in the exhibits to the declaration.[2] 

   [2] Refer to Annex B to this decision for examples of these marks.

4. The declaration also makes reference to the opponent’s involvement in charitable pursuits; and its involvement with community programs such as Little Athletics, junior basketball, operatic aria and ballet scholarships; and the gorilla forest at Taronga Zoo.  Reference is also made to involvement of franchisees in their local community projects, events and activities which may include provision of branded clothing and sports gear to participants in local sporting teams.

5. The declaration provides figures for total sales of food and beverages within Australia, without specific reference to any particular trade marks.  The company claims sales of over $1.8 billion on food and beverages alone for the year 2003.  In addition to these sales, it mentions it has sold “or otherwise provided in the course of their business” numbers of non-food products under the ‘Mc’ or ‘MAC’ trade marks, including clothing, caps, stationery, keyrings, sporting goods, playing cards, homewares, toys, bags and accessories.[3]  Sales of these non-food items are noted as being in excess of $2 million per year, with sales of between $700,000 and $800,000 per year being in relation to children’s clothing alone.  The declaration refers to approximate advertising expenditure in 2003 of $80 million.

   [3] Exhibits PCM-7 to PCM-12

6. There is considerable comment within the declaration about trade marks other than the ‘Mc’ or ‘MAC’ family of marks, in the context of giving a picture of the whole McDonald’s business in Australia.  Mr Maloney also gives his opinion that the applicant’s McBRAT trade mark will be likely to cause deception or confusion within the Australian market because of the extent of his company’s use of the family of trade marks referred to earlier.  He opines that because the word “brat” “is commonly used in Australia to refer to a ‘child’, ‘kid’ or ‘baby’, its use with the prefix ‘Mc’ will result in deception and confusion, and a belief that the goods provided under the McBRAT trade mark are provided by or on behalf of the opponent company or manufactured and sold with their license, sponsorship or approval.

Evidence in Answer

1. The applicant’s evidence in answer consists of a Statutory declaration made by Malcolm John McBratney (McBratney 1), owner and director of the applicant company.  The declaration is brief and gives the following information:

   • The applicant is a sponsor of the Brisbane Irish Rugby Football Club (“the football club”)
   • The trade mark was developed on or around March 2004 and is an abbreviation of Mr McBratney’s surname.
   • The mark is at this time solely used to promote the applicant’s sponsorship of the football club by appearing on its rugby team uniform
   • First use in this respect was about March 2004
   • Approximately 75 pairs of shorts bearing the mark have been produced
   • The mark has been used continuously since that time and will be used in the future
   • There are plans to display the mark on hats, socks, scarves and other forms of clothing and accessories with a view to selling the merchandise
   • Mr McBratney is not aware of any instances of confusion between his trade mark and any of those owned by the opponent company
   • The applicant has spent $2000 on advertising and promoting the mark through its sponsorship of the club
   • Mr McBratney believes his mark has gained national recognition as a trade mark because of recent nationwide media coverage, and believes it has an extensive reputation throughout Brisbane’s rugby community.

2. Attached to the declaration are exhibits A to Q.  Twelve of the seventeen exhibits consist of copies of news articles on the topic of the trade mark dispute between the applicant and the opponent.  One example is given of the claimed trade mark on a pair of football shorts, and one of the photographs in exhibit O also shows the McBRAT mark on a player’s shorts.  Other photographs are too blurred to determine whether or not the word appears.

Evidence in reply 

1. The opponent’s evidence in reply consists of a declaration made by Veronique Helene Maury, a solicitor employed by Spruson & Ferguson Patent and Trade Mark Attorneys.  The declaration appears to be provided solely to support a number of news articles on the subject of the trade mark dispute between the two parties, additional to those already provided in McBratney 1.

Further evidence

1. Both parties, over a period of some months, requested permission to bring in further evidence.  All the requests, except that made just before this hearing and mentioned in paragraph 5 of this decision, were allowed.  The information is summarized below.  

Applicant’s further evidence

1. McBratney 2:  list of 69 entries on the trade mark register for trade marks incorporating Mc or MAC prefixes, and not owned by the opponent.

Amanda McBratney:  covering declaration for further evidence

McBratney 3 and McBratney 4:  Resworn versions of McBratney 1 and 2

McBratney 5:  This declaration provides greater detail on the matters referred to in McBratney 1, and also responds to comments made and issues raised in the opponent’s evidence in support, reply and further evidence.

Robert Gordon Donaghue:Mr Donaghue is an official of the Brisbane Irish Rugby Football Club Inc.  He deposes to his discussions with Mr McBratney about the latter’s sponsorship of the club, and their discussions surrounding the production of football shorts bearing the McBRAT trade mark.Exhibits to the declaration consist of copies of the football club website, printed out in March 2006.

Brenden Philip Yantsch:Mr Yantsch is likewise an official of the football club, as well as a founding member and life member.  His declaration and exhibits provide information about the sponsorship packages available through the club, and his discussions with Mr McBratney in 2004 in respect of potential sponsorship.  The declaration provides details about production of the shorts bearing the trade mark and provides figures detailing relevant sales for the period 2004 to 2006.  Much of the information and comment is current, rather than referring to the situation at the application filing date.

Notice to produce

1. It is appropriate here to refer to the Notice to Produce served upon the applicant at the request of the opponent. The notice was served on the applicant on 24 January 2006 and required it to produce all documents in its possession or under its control concerning the following matters:

   • sponsorship of the Brisbane Irish Rugby Football Club;
   • the adoption, any decision to adopt and any decision to apply for registration of the trade mark McBRAT;
   • any intention to use the trade mark in Australia, including the intention to use the trade mark in the future, and plans to display the trade mark on clothing goods other than football shorts, for the purpose of selling the merchandise;
   • any promotion of the trade mark on the class 25 goods.

2. A declaration (McBratney 6) was submitted in response to this notice.  The documents included with the declaration were as follows: 

   • information sheet from the club detailing sponsorship opportunities;
   • three invoices from the club for payment of sponsorship fees of various kinds for the years 2004 and 2005.

3. Mr McBratney stated in the declaration that as he was the sole director and controller of the applicant company, the adoption, decision to adopt and decision to apply for registration of the trade mark were made by him, but were not documented.

Opponent’s further evidence

1. Kevin Springall:  Mr Springall describes himself as Operations Manager of International Detection Services, from which I infer he is a private investigator.  He describes various enquiries he made on behalf of the opponent company, including a search of the Australian Securities and Investment Commission and a search with the Queensland Office of Fair Trading. He also describes a conversation with Mr McBratney in October 2004, the content of which was later disputed in McBratney 5.

2. Rhona Lea Lawson is general counsel of McDonald’s Australia.  Her declaration goes to the opponent’s use of its McKIDS trade marks, and supports these with a number of print outs from McDonald’ own websites, from a GOOGLE® search, the AMAZON.COM® website and from an E-BAY® website.  Under a heading “Applicant’s lack of use of “MCBRAT” she refers to searches of the trade mark register, the electronic White Pages® and the IP Australia database, Search for Australian Surnames.  She notes that these searches did not reveal any other trade mark applications filed by the applicant, nor any listings for MCBRAT as a surname.  This she says, points to the word MCBRAT as being a coined word.

3. Simon Williams:  The Williams declaration was made to correct factual errors in the Springwall and Lawson declarations, and to include a further list of trade marks from the trade marks register.

Submissions

1. The submissions from both parties, and especially those provided by the applicant, were very detailed.  Rather than list the submissions at this stage, I will refer to them as required during my discussions. 

Onus

1. Both parties submitted significant detail on the question of onus during an opposition, with the applicant also giving detailed submissions on the standard of proof required.  It was accepted by both parties that the onus is on the opponent to establish at least one ground of opposition, else the opposition fails in total.  It was also accepted that the standard of proof is that applicable to administrative law, that is, the registrar should “be persuaded of the matter according to the balance of probabilities”.[4] 

   [4] Blount Inc v Registrar of Trade Marks (1998) 40 IPR 498, at 504

Grounds of opposition

1. All possible grounds of opposition available under the Trade Marks Act 1995 (“the Act”) were nominated in the notice of opposition. The opponent did not address grounds under section 58 and 62 and, for completeness, I find these grounds have not been established.

2. As much of the weight of the opponent’s submissions and their evidence goes to the claimed reputation of the opponent company in what is described as its “family of ‘Mc’ and ‘Mac’ marks”, it seems appropriate to deal firstly with those grounds of opposition which directly refer to comparison of trade marks (section 44) and reputation (section 60). 

Section 44 – identical etc trade marks

1. In respect of section 44, the opponent advised it was relying on each of its registrations having earlier priority dates than the application under consideration. This involves over one hundred trade marks, listed as Exhibit PCM-1 to the Maloney declaration. The reason it wished to rely on all of these trade marks, it said, is the claim that each mark is structured around the same theme, being the use of the prefix ‘MAC’ or ‘Mc’ plus other words, for goods in class 25 or those which it claimed to be closely related goods or services in other classes. In particular, the opponent advised, it was relying on each of the following trade mark registrations:

Number & priority date	Trade Mark	Goods/services
471603 26/08/1987	McKIDS	Class 25:  Children's clothing including headgear and footwear
541192 30/08/1990	Class 3:  Personal hygiene products; shampoos, hair conditioners, soap, deodorants for personal use, sanitary preparations being toiletries for children; all the foregoing goods being goods included in this Class
576438 13/04/1992	M.C. KIDS	Class 28:  Games, toys, playthings
655200 08/03/1995	McKID'S	Class 28:  Games, toys, playthings
675154 13/10/1995	Class 25:  Clothing, headwear and footwear
955140 23/05/2003	Class 16:  Magazines, books and other printed material for use by, or intended for children; colouring books, stickers and sticker books, activity books, reading books, pens, crayons and markers, paper, cardboard and goods made from these materials, not included in other classes; printed matter; stationery; paint brushes Class 25:  Clothing, footwear and headgear Class 28:  Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees; playing cards
961418 11/07/2003	McKIDS	Class 16:  Magazines, books and other printed material including those for use by, or intended for children; colouring books, stickers and sticker books, activity books, reading books, pens, crayons and markers, paper, cardboard and goods made from these materials, not included in other classes; printed matter; stationery; paint brushes

1. The opponent submitted that each of the above trade mark registrations was deceptively similar to the applicant’s trade mark, McBRAT.  Part of the reason for this similarity, they said, was that the word ‘brat’ is another word for ‘child’, ‘kid’ or ‘baby’, all of which are words forming part of the opponent’s family of trade marks.  In support of this contention, Exhibit PCM-19 to the Maloney declaration is a copy of the relevant page from the Macquarie Dictionary, 3^rd edition, giving the following meaning for the word ‘brat’:  “noun:  a child (used usually in contempt or irritation).” 

2. The opponent submitted that, according to the accepted rules of comparison which they had set out earlier in their submissions, the McBRAT trade mark was deceptively similar to each of the above listed registered trade marks.  In particular, they relied on a quotation from the 3^rd edition of Shanahan[5] at paragraph 7.90 as follows: 

   Of a similar nature to the “common idea” cases are those in which it is objected that the later trade mark incorporates an essential distinguishing or memorable feature of the earlier trade mark.  If “the mark comes to be remembered by some feature in it which strikes the eye and fixes itself in the recollection”, then the confusion is likely to result if that feature is adopted in the trade mark of another.

Relevant legislation

[5] Shanahan’s Australian Law of Trade Marks & Passing Off, Davison, Johnston and Kennedy; Lawbook Co, 2003

1. Section 44 is that part of the legislation dealing with comparisons of the applicant’s trade mark with those trade marks already present on the Register. Section 44 provides for an impediment to the acceptance for registration of a trade mark application if three factors are met. These factors occur where another trade mark:

   • is either substantially identical or deceptively similar to the application trade mark
   • is registered or applied for in respect of similar goods or closely related services and
   • has a claim to an earlier priority date.

1. It is obvious from the table above that all the registered trade marks on which the opponent particularly wishes to rely have priority dates earlier than that of the applicant. 

2. Similar goods are defined by Section 14 of the Act as follows:

   1) For the purposes of this Act, goods are similar to other goods:

   (a) if they are the same as the other goods; or

   (b) if they are of the same description as that of the other goods.

1. When this definition is applied to the trade marks in the above table, only three of them involve the same or similar goods.[6]  These three are as follows:

   [6] For the purposes of section 44, these are the only three registrations I intend considering. Other trade marks the opponent has made reference to will be brought into consideration when grounds of opposition under section 60 are dealt with later in this decision. For completeness, I note that none of the services involved in the applicant’s various trade marks are closely related to the class 25 goods.

471603 26/08/1987	McKIDS	Class 25:  Children's clothing including headgear and footwear
675154 13/10/1995	Class 25:  Clothing, headwear and footwear
955140 23/05/2003	Class 16:  Magazines, books and other printed material for use by, or intended for children; colouring books, stickers and sticker books, activity books, reading books, pens, crayons and markers, paper, cardboard and goods made from these materials, not included in other classes; printed matter; stationery; paint brushes Class 25:  Clothing, footwear and headgear Class 28:  Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees; playing cards

1. These three trade mark registrations include, if not the whole claim, at least a subset of the goods claimed by the applicant. 

2. The initial test of whether the goods are similar goods relies on the range of goods as claimed in the application or registration, not the range of goods which might be for sale in the marketplace.  The applicant’s submissions about the differences between the two sets of goods – one being for children and one for adult footballers are therefore not on point.  The applicant has claimed the full range of clothing, footwear and headgear available in class 25.  This claim, of necessity, includes children’s clothing as specified in registration 471603, and covers the same goods for the other two registrations shown above.  The goods specifications therefore cover the same goods, and the second of the three factors noted earlier has been met.

3. Given that these three trade mark registrations have earlier priority dates than that of the application, and are for the same goods, the remaining matter to be considered is whether they are substantially identical or deceptively similar to the applicant’s trade mark, McBRAT.

4. The opponent did not claim the relevant trade marks were substantially identical, but made submissions in respect of deceptive similarity.  The applicant denied that its trade mark was either deceptively similar or substantially identical.  I am satisfied substantial identity is not an issue here, but I shall deal with the question of deceptive similarity..

5. The accepted tests for deceptive similarity are well known.  In the Woolworths Metro case[7] at paragraph 50, French J, with Tamberlin J agreeing, made the following propositions:

   (i) To show that a trade mark is deceptively similar to another 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 of deceptive similarity 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 Co Inc (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."

   [7] Registrar of Trade Marks v Woolworths [1999] FCA 1020

1. As far as the comparison of the trade marks is concerned, Dixon and McTiernan JJ in the Australian Woollen Mill[8]s case at page 658 said:

   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, their 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.

   [8] Australian Woollen Mills Ltd v F.S.Walton & Co Ltd, (1937) 58 CLR 641

2. The comparison is to occur in the context of the goods in terms of Parker J’s statement in Pianotist[9], , where he said:

   You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion -- that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods -- then you may refuse the registration, or, rather, you must refuse the registration in that case.

   [9] Pianotist Co Ltd (1906) 1A IPR 379 at 380; 23 RPC 774 at 777

3. The opponent has made much of the reputation it has in its “family of ‘Mc’ and ‘MAC’ trade marks. However, for the purposes of section 44 and in respect of this trade mark, McBRAT, I am not satisfied there is a real tangible chance of the relevant buying public being confused into believing the applicant’s goods, wherever or however they are sold or otherwise distributed, are part of the opponent company’s family of ‘Mc’ trade marks. My reasons for this decision follow.

4. There is a significant difference between McBRAT and either McBABY or McKID.  The difference between the marks is embodied in the word BRAT, which the opponent submits is an equivalent word to ‘baby’, ‘child’ or ‘kid’.  I am unable to agree with this submission, largely because of the explanation given with the meaning of the word ‘brat’ as it appears in the Macquarie Dictionary definition, as well as my own understanding of the word.  The explanation from the Macquarie is the following:  “used usually in contempt or irritation”.  ‘Brat’ is thus defined as a pejorative word, rather than a direct equivalent to ‘baby’ or ‘kid’ or ‘child’.

5. In general, the opponent’s family of trade marks involve words which are not pejorative.  ‘Kid’ or ‘baby’ are normal enough words in the language as used by Australians, with no connotation of bad behaviour embodied in them.  ‘Brat’, on the other hand, is used, as often as not, to describe a child who is acting in a fashion that does not meet preferred standards of behaviour.  While there is the possibility it could be used affectionately, and I have used it thus myself, this is not its general mode of use. 

6. Despite the opponent’s family of marks being accepted as very well known, I am satisfied the buying public is not likely to see this trade mark, McBRAT, as a member of the McDonald “family” of ‘Mc” trade marks.  I consider this to be especially relevant when considering the idea of the mark, as referred to in the quotation from Shanahan, in paragraph 29 above.  There is sufficient usage in the market of words using the prefix ‘Mc’ which do not have any direct relevance to McDonald’s itself and are not likely to be connected in the minds of the public with the McDonald’s business.  The words I am alluding to are those such as “McJob” or “McMansion” which have appeared in newspaper and internet articles over the years.  “McJob”[10], which the applicant mentioned in its submissions, resulting in an objection at the time from Mr Williams, appears in more than one dictionary and is thus open to the general public view.  In particular, it now appears in the Oxford English Dictionary (the OED”) available on-line, as does “McMansion”[11].

   [10] Definition from the OED: McJob n. An unstimulating, low-paid job with few prospects, esp. one created by the expansion of the service sector.

   [11] McMansion n. U.S. colloq., a modern house built on a large and imposing scale, but regarded as ostentatious and lacking architectural integrity.

7. Both the opponent and the applicant provided copies of news articles referring to the ongoing conflict between them.  These articles often incorporate examples of words coined in this way using the ‘Mc’ prefix, as follows: 

   • Exhibit C to McBratney 1:  Fight over “McBrat” in Australia leading to “McRow” - … “it will be interesting to see if McDonald’s will back down after the “McBoycott”.
   • Exhibit G to McBratney 1:  “In terms of McImage, however, …”
   • Exhibit VHM-1a to Maury:  “This is shaping up to be a real McBunfight …”
   • Exhibit VHM-1e to Maury:  “Brisbane lawyer in McBattle”.

1. I am satisfied that, in the eyes of the general public, these words are accepted as what they are – a sly reference[12] at most to the ubiquitous presence in the market of a very large organization who just happens to construct and use a lot of words beginning with the prefix “Mc”.  I consider the applicant’s trade mark, McBRAT, if any connection with the opponent was to be seen at all, would most likely be seen as one of these words.

   [12] Or, to quote Hearing Officer Williams in the McMint decision, (1997)ATMO 63 – “somebody is taking the mickey out of the opponent.”

2. I do not believe my opinion here is at odds with previous opposition decisions quoted by the opponent in its submissions.  In particular, reference was made to the successful oppositions mounted in respect of the trade marks ‘McSalad’ and ‘McFresh’[13], ‘McBaby’[14] and ‘McChina’[15].  In all these cases, the words used with the ‘Mc’ prefix are the expected kind of words the opponent company uses in its constructions.  They are ordinary words with some reference to the goods or services intended for use with the trade mark.  The added words are not pejorative, they are not words with any negative connotations.  I am satisfied the applicant’s trade mark does not fall into the normal kind of words the opponent uses in its constructions, and is most unlikely to be seen as a member of the McDonalds family of trade marks.  

   [13] (2000) AIPC 91-583

   [14] [2004] ATMO 26

   [15] [2004] ATMO 56

3. I am therefore satisfied the applicant’s trade mark is not deceptively similar to those of the opponent, according to the definition of the term as set out in section 10[16] of the Act. The ground of opposition based on section 44 of the Act is thus not established.

   [16] Section 10 reads as follows:  For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

Section 60 – trade mark similar to one with a reputation in Australia

1. To satisfy section 60, the opponent has the burden of establishing the following elements:

   • a pre-existing trade mark;
   • substantial identity or deceptive similarity between the applied-for trade mark and the pre-existing trade mark;
   • the acquisition of a reputation in Australia by the pre-existing trade mark; and
   • a likelihood that, because of that reputation, use of the applied for trade mark would be likely to deceive or cause confusion.[17]

   [17] I note here that a claim for reputation under section 60 is not restricted as to goods and services. The reputation may be embodied in any goods and/or services, whether similar or not.

2. The opponent is claiming a considerable reputation in respect of its “family” of ‘Mc’ and ‘Mac’ trade marks as a result of their use on food and non-food items over more than 20 years in Australia.  This reputation is not restricted to registered trade marks, but may draw on the reputation of those trade marks it has used which have not been registered.  I have no argument with this claim, as McDonald’s restaurants are ubiquitous in the Australian landscape.  From the basis of my own knowledge, without even considering the evidence supplied by the opponent, I would be satisfied that it has a considerable reputation in its “Mc” and “Mac” trade marks, registered and unregistered.

3. This ubiquitous presence in the marketplace is not sufficient, on its own, to establish a ground of opposition under the provisions of section 60. It is necessary that at least one of the trade marks on which the reputation is based is substantially identical or deceptively similar to the applicant’s trade mark. It is also necessary to show that use of the applicant’s trade mark would, because of the reputation the opponent enjoys in its own marks, result in deception and confusion. The goods and/or services involved are not restricted in any way – the opponent may rely on any goods or services when

making its claim to a reputation.

1. In my consideration of section 44, I found none of the three trade marks I considered to be relevant to the question were deceptively similar to the applicant’s trade mark. Those three aside, there are almost one hundred registered trade marks and an unknown number of unregistered trade marks involved in the family of trade marks. As I said above, the opponent’s presence in the market is ubiquitous, and its reputation in its trade marks substantial.

2. Relying on my previous analysis of the meaning and implications of the applicant’s trade mark and my comments in respect of the construction of those belonging to the opponent, I am unable to find one trade mark amongst all those trade marks which is deceptively similar to McBRAT.  I am satisfied it is unlikely the ordinary person will be confused between the applicant’s McBRAT trade mark and any or all of those used by the opponent company.  I am satisfied the applicant’s trade mark, when used in a normal and fair manner, is unlikely to deceive the ordinary person into believing the goods sold under the label either originate with McDonald’s, or are licensed by it.  I find this ground of opposition is not established.

Section 41 – trade marks capable of distinguishing.

1. Section 41 of the Trade Marks Act 1995 (“the Act”) considers whether signs proposed as trade marks are capable of distinguishing the applicant’s goods from those of others.  The tests are well known, and I do not intend to quote them here. 

2. The opponent’s submissions in respect of this ground were, in total, as follows: 

   “This ground is put on the basis of the McDonald’s overwhelming reputation in its “Mc” and “MAC” prefixed “family of marks” (the subject of Mr Maloney’s Declaration) and a finding that McDonald’s opposition pursuant to any one of the Section 42, Section 43, Section 44 or Section 60 grounds of opposition has been made out. If so, then “McBRAT” is not capable of becoming distinctive of the applicant or its goods on the basis that deception is incompatible with distinctiveness.”

3. These submissions are simply not on point as far as section 41 is concerned. Section 41 involves a consideration of the sign firstly in respect of the amount of inherent adaptation to distinguish embodied in it. Should the level of inherent adaptation be found lacking, a second consideration involves investigating whether use of the trade mark is sufficient to make up for that lack. It does not involve comparison with other trade marks at all. It does not involve questioning whether deception exists, is contemplated or is already a fact.

4. During the examination process, the examiner found the trade mark to be inherently adapted to distinguish.  I agree with this finding.  The opponent has not provided anything here that persuades me to think otherwise.  They have not, therefore, established this ground of opposition.

Section 42(b) – trade marks contrary to law

1. The opponents submissions on this matter were also brief, and are copied below:

   In view of McDonald’s overwhelming reputation in its “Mc” and “MAC” prefixed “family of marks” which have been used in respect of a wide variety of both food and non-food goods and services including (importantly) relevant goods in Class 25 (which overlap with the goods the subject of the opposed Application), the Registrar must conclude that a not insubstantial number of consumers (including children) confronted with the use of McBRAT: in respect of “clothing”, “footwear” or “headgear” (goods the subject of the opposed Application in Class 25) would identify the origin of those goods to be McDonald’s, McDonald’s Australia or their franchisees/licensees or would be likely to be mislead or deceived into thinking that there was an association or affiliation between those goods and McDonald’s.  That being so, relevant use of “McBRAT” contemplated by the opposed Application would be contrary to Section 52 and 53 of the Trade Practices Act, 1974 and would amount to common law passing off.”

2. The relevant portions of the Trade Practices Act, 1974 (“TPA”) are as follows:

52Misleading or deceptive conduct

(1)A corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.

(2)Nothing in the succeeding provisions of this Division shall be taken as limiting by implication the generality of subsection (1).

53False or misleading representations

A corporation shall not, in trade or commerce, in connexion with the supply or possible supply of goods or services or in connexion with the promotion by any means of the supply or use of goods or services:

(a)falsely represent that goods are of a particular standard, quality, value, grade, composition, style or model or have had a particular history or particular previous use;

…

(c)represent that goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits they do not have;

(d)represent that the corporation has a sponsorship, approval or affiliation it does not have;

…

1. Both parties referred to the Advantage Rent-A-Car decision[18] in the course of their submissions.  It is well accepted that the registrar will be required to make decisions based on laws other than trade marks law.  The most common laws to date which have required these decisions have been copyright law, and trade practices law as noted above.  However, whichever law is to be considered, the decision the registrar must make is whether the proposed use of the trade mark under consideration would, not could, be contrary to the tenets of that law.

   [18]Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683

2. The applicant has declared that the word McBRAT is a contraction of his surname, and a nickname applied to him when he was young.  I am prepared to take this at face value, just as I am prepared to take at face value the comment that the shortened name was the only one which would fit onto the football shorts in the applicant’s chosen position.  Despite the Mr McBratney’s less than tactful and perhaps even slightly threatening letters to the opponent company following receipt of the notice of opposition[19], I have nothing before me to confirm that the applicant entered into this trade mark matter with the intent of breaching the legislation quoted above.  Similarly I have nothing before me that satisfies me its use of the trade mark on the seat of football shorts, or indeed on any other piece of clothing, would be contrary to the TPA. I find the ground of opposition under section 42 has not been established.

   [19] Exhibits PCM-22 and PCM-23 to the Maloney declaration

Section 43 – Trade marks likely to deceive or confuse

1. Here the legislation reads as follows:

Trade mark likely to deceive or cause confusion

43. An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

1. For the opponent to establish this ground of opposition, they must be able to point to a connotation within the applicant’s trade mark such that people would be deceived or confused into believing it means something it does not.  Again, the opponent relies on its family of ‘Mc’ trade marks, submitting that there is a strong likelihood of people being “caused to wonder” whether the goods provided under the trade mark are in some way connected with the McDonald’s organisation.

2. My analysis of the applicant’s trade mark earlier in this decision is again relevant.  While it is accepted the opponent has a huge reputation in trade marks beginning with ‘Mc’ or ‘Mac’, there is also a group of words out in the marketplace beginning in the same way, having been constructed because of the opponent’s presence in that marketplace but which neither belong to the opponent, nor will be assumed to belong to the opponent.  I am satisfied the applicant’s trade mark falls into this group of words.  If there is a connotation within the applicant’s trade mark, and I do not consider there is, it is at most a sly reference to the company – someone “taking the mickey”.  I consider the general public has had sufficient exposure to the “McJob” type words in the marketplace that it is most unlikely any significant portion of the relevant buying public will be “caused to wonder” whether there is a connection between the applicant’s trade mark and the opponent company.  I am satisfied this ground of opposition has not been established.

Section 59 – intention to use the trade mark

1. Section 59 reads as follows:

Applicant not intending to use trade mark

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.

1. There are two dates at issue here.  The opponent submitted the relevant date to consider for the purposes of intent to use is the date the application was filed with the Trade Marks Office, that is, 11 March 2004.  The applicant, however, submitted the relevant date was that of the hearing in the matter, namely, 19 April 2006.  I consider the actual relevant date is somewhere between those two extremes.   

2. It is accepted that the making of a trade mark application is prima facie indication of an intention to use.[20] According to section 27 of the Act[21], the requirements for a

person to apply for a trade mark are that the person claims to be the owner of the trade mark, and there is either use already taking place, or an intent to use in the future, by the person himself or by another person under authorization. For the purposes of considerations in respect of, for instance, sections 44(3), 44(4), 58 and 60, the filing date is indeed the relevant date.

[20] Aston v Harlee Manufacturing Co (1960) 103 CLR 391

1.     [21] The relevant portions of s27.(1) read as follows: A person may apply for the registration of a trade mark in respect of goods and/or services if:

1. Section 59, however, is written in the present tense.  The effect of this difference in tense has been considered in a number of recent decisions.  Hearing Officer Williams, for example, in Sapient[22] said the following:

   This ground is also one where an applicant's intention to use is relevant. However, it is a ground written in the present tense and looks at the present state of the intention of the applicant. The introduction of such a ground is consistent with the creation of s 108, which had no counterpart under the 1955 legislation. Under s 108, a party defending an application may well be a different entity from the one who initially filed the application. Thus, section 59 deals with current defects in intention to use, interlocking with s 58, under which the intention and facts at the time of filing are the relevant elements.

   [22] Sapient Australia Pty Ltd and Sapient Corporation v SAP Aktiengesellschaft [2002] ATMO 31

2. The operation of this section, therefore, is a continuing one.  Since the section is written as an allowable ground of opposition, the relevant date would appear to be the date on which the opposition was mounted.  It is appropriate for me to consider the applicant’s intent to use its trade mark as at the date the notice of opposition was filed, namely 15 October 2004. 

3. In order for this ground of opposition to be established, the onus lies with the opponent to show there was no intent to use the trade mark at the relevant date.  The opponent accepted this onus, but tied it firmly to the application date.  While this insistence on what is arguably the incorrect date may weaken its case, it by no means negates it.

4. The opponent argued strongly that placement of the word McBRAT on the seat of football shorts was most likely to be seen as a personal sponsorship of the football club by Mr McBratney, or a sponsorship by the applicant company, rather than trade mark use.  They provided an analogy with the other trade mark appearing on the football shorts, in the following wording: 

   Such use cannot properly be described as use of “MCBRAT” as a trade mark and in relation to the class 25 goods specified in the opposed Application any more than, for example, would the use by the proprietor of the mark “XXXX” (presumably the beer manufacturer) be characterized as use of that mark in respect of football shorts.  The latter amounts only to a sponsorship use in order to promote the sale of “XXXX” brand beer – it is use in respect of beer not sports clothing. 

1. I do not believe there is any reason to doubt that the XXXX trade mark appearing on the shorts is meant to promote beer.  Those are the goods for which the trade mark is registered and used.  However, that is beside the point.  If the XXXX trade mark was registered in class 25 and known in the trade for clothing, appearance on the rear of football shorts would arguably be use in respect of the relevant goods.  I do not regard this particular argument as valid and I do not give it any significant weight.

2. The opponent also questioned the applicant’s mention in various of its declarations of its having licensed the trade mark to the football club for use on clothing. In particular, the opponent said, the Notice to Produce served on the applicant should have elicited relevant documentation in this regard, in particular, a copy of a licensing agreement. McBratney 6, made in response to the notice to produce included as exhibits all the documents claimed to exist in this respect. They consist of tax invoices to the applicant company for sponsorships for several years, and a document put out by the club explaining how the sponsorship system works, along with a list showing which of the sponsorships offered had been sold.

3. I do not consider the lack of documentation attesting to how and why the decision was made to adopt the word and to put it into use to be crucial.  Mr McBratney has given an explanation about his use of the word as a nickname – the fact that he did not create official documents to support this at the time he decided to enter the promotional agreement with the football club does not, to me, suggest anything sinister.

4. In respect of the existence of a formal licensing agreement with the football club, I am unaware of any requirement for there to be official paperwork before a licensed party may start using a trade mark.   If the applicant is prepared to rely on a “gentleman’s agreement” in respect of the use of the word, that risk is his choice.  I do not consider the lack of an official licensing agreement means the word is not in use.

5. In any event, as I noted above, section 59 is considering whether, at the relevant date (the date the opposition was mounted) the applicant had an intention to use or authorize use of the trade mark in Australia.  In McBratney 1, dated 13 April 2005, the applicant states two things:  that at the time the declaration was signed the trade mark was used solely to promote the applicant’s sponsorship of the football club; but also that there were plans to display the mark on hats, socks, scarves and other forms of clothing and accessories with a view to selling the merchandise.  For the purposes of section 59, these comments are sufficient to show an intent to use the trade mark in the future, if not in the present.

6. I note that the applicant has shown the trade mark word in use on articles of clothing, specifically men’s football shorts and pink shorts designed for women, both of which appear to be available for purchase by the general public through the football club and/or via its website.  These goods are a subset of the application claim of “clothing; footwear; headgear”.  For the purposes of section 59, there is no requirement that use be shown on the full range of goods claimed in the application.  It is sufficient that an intent to use has been shown in respect of some of the goods.  I am satisfied that, at the date the opposition was mounted, the applicant had demonstrated its intent to use the word McBRAT in respect of goods relevant to the application.  The onus was on the opponent to provide me with information which would unseat this intent.  This they have not done, and I find the opponent has not made out the ground under section 59.

Decision

1. The opponent has not established any of the grounds of opposition on which it relied.  The opposition therefore fails. 

2. The trade mark application may proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued. Costs

3. Both parties requested their costs.  It is usual for costs to follow the decision.  Therefore I award costs against the opponent according to the official scale (Schedule 8 of the Trade Mark Regulations 1995).

Alison Windsor

Hearings Officer

Trade Marks Hearings

IP Australia

2 August 2006

Annex A

Examples of McDonald’s Corporation registered trade marks with ‘MAC’ or ‘MC’ prefix

Trade mark	Class	Trade mark	Class
BIG MAC	16, 21, 28, 29, 30, 32, 41, 42	EGG MCMUFFIN	30
MCFEAST	30	MAC FRIES	29
MCCHICKEN	30	MCRIB	30
BIG MAC ATTACK	16, 41	CHICKEN MCNUGGETS	29
MCPIZZA	30	MCDONALD’S CHICKEN L.T.	30
SHANGHAI MCNUGGETS	29	SAUSAGE MCMUFFIN	30
MAC TONIGHT	42	MCKIDS	25
MCCOLA	32	MCD.L.T.	30
MCBURGER	30, 42,	MACKERS	42
MCSTOP	42	MCMUFFIN	30
MCEXPRESS	42	MCKIDS	3
MCHAPPY DAY	42	MCNUGGET BUDDIES	42
MAC TIME	16, 42, 30, 29, 28, 25	M.C.KIDS	28
THE MCBIG ONE	30	MCCAFE	42
MCDRIVE	42	MACCA’S	42
MCKIDS	28	MCVALUE MEAL	42
EL MACO	29, 30	MCBABY	25
MCMEMORIES	21	MCMARKER	16
MCWORLD	42	MCVEGETABLE	29, 30
MCSHAKER FRIES	29	MCFLURRY	29
MCWRAPS	29, 30	MCCHILLER	30
MCCRISPY	29	MCHAPPY	36
MCOZ	30	MAC YOUR DAY	35
MCSALAD SHAKER	29, 30	MCDONALD’S EXPRESS	42

Annex B

Examples of McDonald’s Corporation unregistered trade marks with ‘MAC’ or ‘Mc’ prefix.

MACAMORE

MCBACON DELUXE

MCBACON DELUXE MEAL

MCBREAKFAST BURGER

MCBEEFSTEAK

MCSALAD ROLL

MCDELICIOUS

MCMALIBU

MCFISH DELUXE

SON OF MAC

MCCHICK

MINIMAC

MEGMAC

MASSIVE MCMUFFIN

MCPAVLOVA

(a) the person claims to be the owner of the trade mark; and
(b) one of the following applies:

(i) the person is using or intends to use the trade mark in relation to the goods and/or services;
(ii) the person has authorised or intends to authorise another person to use the trade mark in relation to the goods and/or services;

(iii) the person intends to assign the trade mark to a body corporate that is about to be

constituted with a view to the use by the body corporate of the trade mark in relation

to the goods and/or services.   …