McDonald's Corporation v Steve M. Bowditch

[1999] ATMO 104

TRADE MARKS ACT 1995

DECISION OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by McDonald’s Corporation to the registration of trade mark number 730699(42) - the golden boomerangs (and device) - filed in the name of Steve M. Bowditch.

Trade mark application number 730699 was filed by Steve M. Bowditch (of Sandilands, Casino, New South Wales) on 26 March 1997.  Mr Bowditch sought to register the following trade mark in respect of bush tucker-food and drink, tourist accommodation, motel, fast food restaurant, bush-tucker supply.

The trade mark (which I shall refer to as the golden boomerangs trade mark) was examined, and, in the Official Journal of Trade Marks of 16 October 1997, the Registrar advertised the fact that this trade mark application was accepted for registration for services now amended to read:

The provision of tourist accommodation; fast food and restaurant services.

In the time allowed, and in accordance with the provisions of section 52 of the Trade Marks Act 1995, McDonald’s Corporation (a corporation organised and existing under the laws of the State of Delaware, and located at McDonald’s Plaza, Oak Brook, Illinois, USA) filed a notice opposing the registration of 730699. I shall refer to the opponent as McDonald’s.

The notice of opposition sets out seven grounds of opposition involving sections 41, 42, 43, 44, 58, 59 and 60 of the Act. It emerged, however, in the course of evidence and submissions, that only two grounds had any support. These grounds rely on sections 44 and 60 and are stated as:

1. the opposed trade mark is substantially identical with, or deceptively similar to, one or more trade marks registered by the opponent in respect of similar goods or closely related services;  and

2. the opposed trade mark is substantially identical with, or deceptively similar to, one or more trade marks that, before the priority date of the registration of the opposed trade mark in respect of its particular goods or services had acquired a reputation in Australia, and because of the reputation of that other trade mark the use of the opposed trade mark would be likely to deceive or cause confusion.

McDonald’s provided one declaration in support of its opposition - this by Jodie Boland, an associate legal counsel for McDonald’s Australia Limited (McDonald’s Australia).  This company, located in Thornleigh, New South Wales, is authorised to use the McDonald’s trade marks in Australia. 

Mr Bowditch filed no evidence at all.

The matter of the opposition came to a hearing in Sydney before me, on 15 July 1999.  The opponent, McDonald’s, was represented by Ms Kate Johnston of the Sydney firm of Spruson & Ferguson.  The applicant, Mr Bowditch, was not present and was not represented at the hearing.

The evidence

The opponent, McDonald’s, is the proprietor of a large chain of very well known restaurants which specialise in fast food.  Ms Boland, in her declaration, describes them as self-service restaurants.  McDonald’s specialises in what is generally called take-away food. Its principal products are hamburgers, cheeseburgers, fried potato chips, chicken pieces and beverages.  

McDonald’s opened its first self-service restaurants in the United States of America in 1948.  By October 1998 it claimed to be the largest food service organisation in the world.  In December 1997, it operated over 23,000 restaurants in some 109 countries. Its first Australian restaurant opened in 1971 and by 1997 it had 650 Australian outlets. The 1970 retail value of hamburgers sold by McDonald’s Australia was $67.89m.  By 1997 this had risen to $140.5m.  It owns a portfolio of trade marks and Ms Boland exhibits 35 of them in her ‘Annex A’.  Amongst these are the following three trade marks, and it is in respect of these three trade mark registrations that Ms Johnston’s submissions are directed. 

326539	Class: 42	Restaurant services and take-away food services; the  preparation of take-away food
410941	GOLDEN ARCHES	Class: 42	Services in this class rendered in respect to restaurants and other establishments or facilities engaged in the procuring, preparing for consumption and serving of food and drink.
479709	Class: 42	Restaurant services and take-away food services; the preparation of take-away food

Ms Boland says[1] the Golden Arches logo is the most significant and perhaps best known of the McDonald’s trade marks, that its use commenced in the US in 1953 and that it has been used in Australia since 1971.  By Golden Arches Ms Boland means the “M” device as registered under trade marks 326539 and 479709 (which I shall refer to as the  trade mark). This device appears predominantly on external signage at every McDonald’s restaurant throughout the world[2].  It also appears in a modified version (below) with the words McDonald’s superimposed across the legs of the “M”.

[1] paragraph 6

[2] paragraph  9

Both versions of McDonald’s  trade mark are used constantly in its advertising activities and promotional materials. Advertising is extensive. Annual Australian advertising exceeds $79m and is directed through television and radio commercials, the press, points of sale, outdoor signs, posters, coupons and give-away competitions. In addition, both versions of the  trade mark are used in the promotion of a number of community and national activities, which McDonald’s Australia sponsors.

Ms Boland says, in her paragraph 11:

The GOLDEN ARCHES Logo is referred to as “the Golden Arches” by McDonald’s and McDonald’s Australia to describe The GOLDEN ARCHES Logo and, in my opinion, the phrase The GOLDEN ARCHES is one immediately recognisable by the public as referring to The GOLDEN ARCHES Logo of McDonald’s.  The phrase was adopted in the 1960’s by McDonald’s in the United States first radio advertising jingle – “Look for the Golden Arches” and the word form of the trade mark GOLDEN ARCHES has been used continuously in Australia since 1971.

The section 44 ground

The law

The provisions of section 44 lay down, inter alia, that a ground for rejection exists if an application trade mark is substantially identical with or deceptively similar to an earlier trade mark, and that earlier trade mark comprehends services which are the same as or similar to the services nominated in the subject application. 

Section 10 defines deceptive similarity.  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.

The test for deception and confusion under the Trade Marks Act 1995 has been recently determined by Justice French in Registrar of Trade Marks v Woolworths[3] - the Metro case.  His Honour says, with reference to the Smith Hayden[4] case (at paragraph 45)

[3] [1999] FCA 1020 (29 July 1999)

[4] Re Smith Hayden and Co's Application (1946) 63 RPC 97 at 101.8

The position now is that the Registrar and the Court at first instance would need to be satisfied that there was a reasonable likelihood of deception or confusion before denying acceptance of the application for registration.

The facts

All three of the cited trade marks are earlier than 26 March 1997, the priority date claimed by Mr Bowditch’s the golden boomerangs trade mark application. The respective dates are February 1979 for 326539, June 1984 for 410941 and January 1988 for 479709. 

The services nominated by Mr Bowditch, the provision of tourist accommodation; fast food and restaurant services clearly overlap with restaurant services described variously in the service claims of 326539, 410941 and 479709.

There is no submission from Ms Johnston claiming that the golden boomerangs trade mark is substantially identical either to McDonald’s  trade mark (326539 and 479709) or its golden arches mark (410941).  She does argue, however, that the golden boomerangs trade mark is deceptively similar to these marks.

The McDonald’s submissions

Ms Johnston relies on five cases  — Dial-An-Angel Pty Ltd v Sagitaur Services Systems Pty Ltd[5], Jafferjee v Scarlett[6], Pianotist Co’s Application [7], Australian Woollen Mills Ltd v F.S.Walton & Co Ltd[8] and Southern Cross Refrigerating Co. v Toowoomba Foundry Pty Ltd[9].   Her arguments are as follows.

[5] (1990) 19 IPR 171

[6] (1937) 57 CLR 115

[7] (1906) 23 RPC 774

[8] (1937) 58 CLR 641

[9] (1954) 91 CLR 592

• The device of overlapping boomerangs in the golden boomerangs trade mark is the central feature of that mark and this feature has the same appearance as a pair of arches or a stylised letter “M”.  This central feature therefore engenders the same idea as the idea engendered by registrations 326539 and 479709 - the trade mark  - and by registration 410941 - the trade mark golden arches. As the idea generated by the application is the same as the idea generated by the three cited registrations then, on the principles enunciated in Dial-An-Angel and Jafferjee v Scarlett, the trade mark the golden boomerangs should be held deceptively similar and not qualified for registration in terms of section 44 of the Act.

• As per the principles laid down in the Pianotist and the Australian Woollen Mills cases, the circumstances surrounding the purchase of services from self-service restaurants and fast food outlets must be considered.  The customers who purchase these services comprise all manner of people.  They are often in a hurry.  They generally place their orders by spoken request. Fast food restaurants are frequently located alongside busy roads and highways with signage designed to attract passing trade. Customers, prompted by a glimpse of advertising, are inclined to buy on impulse, and with little or no forethought.  Ms Johnston submits that because of the commonality of ideas exhibited by the golden boomerangs, and by the  and golden arches trade marks, in the circumstances in which fast food services operate, people, particularly those travelling along a road at speed, are likely to be confused by the golden boomerangs trade mark, mistake it for one of the McDonald’s signs, and therefore be confused about the identity of the service provider.

• The principles of fair notional use require me to consider not only the trade mark as it is represented in the application documents, but to take into account the fact that the golden boomerangs trade mark may be represented in any colour, including yellow or gold.  Represented in that manner, Ms Johnston contends, the likelihood of deception and confusion is increased. 

Considerations

Taking the arguments in turn, and first assessing the impression created by the subject mark, I do not agree that the essential idea of the golden boomerangs trade mark —  below —

is the idea either of a letter “M” or of arches.  The trade mark is labelled the golden boomerangs, and in the context of this label the devices will be perceived as boomerangs.  Even without the benefit of the identifying words, however, I do not think that this mark is likely to be read as the letter “M” or be perceived as “arches”. If this trade mark did not contain the identifying word boomerangs, then it may well be that the graphic shapes would not immediately be recognised as boomerangs. However, neither do I think that they would immediately be perceived as “arches” or as a letter “M”.  In my view they are just as likely to be read as hooks, hockey sticks or arrow heads. The fact is, however, that the word boomerangs is a part and a significant element in the application trade mark and it identifies the devices as boomerangs.  On the whole then, I cannot agree that the idea of the application trade mark conveys the notion of a letter “M” or the idea of golden arches.

One feature held in common by the golden boomerangs trade mark and golden arches is the word golden. Golden, however, is both descriptive and laudatory. In respect of restaurant services it aptly describes restaurant services that feature a golden decor or that are a cut above the owners’ standard outlets.  Golden is essentially a word of little trade mark value and I do not think that the fact that it appears in both marks is sufficient to generate confusion between those marks.

Apart from the word golden, when I compare the whole marks, I find that the golden boomerangs trade mark has little commonality either with the trade mark  or with the trade mark golden arches. I find that the golden boomerangs trade mark does not engender the same idea as either one of the cited marks. Moreover, with such scant commonality of idea, it seems to me that, even in circumstances of imperfect recollection, the golden boomerangs trade mark is not sufficiently similar to either the  trade mark, or the golden arches trade mark, to be likely to lead to deception or confusion.

The second limb of Ms Johnston’s argument is that, in the context of fast food services, the similarity between the marks is likely to cause confusion.  With the differences between the marks as they are, however, I am not satisfied that even in the context of fast food services there is any real prospect of deception or confusion. The marks do not look alike, nor do they sound alike. The visual impact of the golden boomerangs trade mark is quite different from the visual impact of the  trade mark or the golden arches trade mark, and I do not think it would be confused with either of them, even in the scenario of travellers driving along a road. Equally, though travellers may have little time to spare and will indeed avail themselves of restaurant or fast food services on nothing more than an impulse, I think it unlikely that they will mistakenly read the golden boomerangs trade mark as the stylised letter , or mistake it for the trade mark golden arches.

The last submission from Ms Johnston in respect of the section 44 ground requires me to consider the circumstance where the golden boomerangs trade mark is represented in gold.  The cited marks are not restricted to any colour, nor do the registrations of 326539 and 479709 establish any right to a monopoly of colour. The evidence from Ms Boland, however, is that the  trade mark is referred to as the golden arches logo and she implies that this trade mark is normally represented in a golden colour. However, assuming that both the golden boomerangs trade mark and the  trade mark are depicted in gold, I do not think that the common use of colour would bring about any significant difference. The whole of the golden boomerangs trade mark is quite different from the whole of the  trade mark and, in my opinion, the use of identical colour would not serve to overcome that difference.  So far as the golden arches trade mark is concerned, again I find that the difference between it and the golden boomerangs trade mark is wide and that presenting the application mark in golden colour would not overcome those differences and render the golden boomerangs trade mark deceptively similar to the trade mark golden arches.

In sum, I find that the application trade mark the golden boomerangs is not deceptively similar to McDonald’s  trade mark, registered numbers 326539 and 479709; and not deceptively similar to its golden arches trade mark, registered number 410941.  I am therefore not satisfied that there is a reasonable likelihood of deception or confusion, and, on that finding, the section 44 ground fails.

The section 60 ground

The law

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

(a)  it is substantially identical with or deceptively similar to a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had acquired a reputation in Australia; and

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

Interpretation

Section 60 comprises two paragraphs. Paragraph 60(a) lays down the necessary preliminary conditions for a section 60 ground. Paragraph 60(b) then prescribes the test which, operating in respect of those conditions, will achieve success for a section 60 ground. In the Metro case[10], Justice Branson considers section 60 and says:

[10] 1999 FCA 1020 (29 July 1999) (as yet unpublished) - paragraph 82

… the ground for opposing registration of a trade mark provided by s 60 requires not only that the trade mark for which registration is sought be substantially identical with, or deceptively similar to, another trade mark, but also that, 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,

There are, in fact, four preliminary conditions.  First, the application trade mark must either be substantially identical with or deceptively similar to the trade mark (or marks) cited by the opponent.  Second, the cited mark or marks must have acquired a reputation.  Third, that reputation has to have been acquired before the priority date of the opposed trade mark.  Fourth, the reputation has to have been acquired in Australia.   However, these conditions do not include a requirement that the cited mark (or marks) are registered for the same or similar goods or services.

Paragraph (b) provides that once these threshold conditions are established, the section 60 ground will succeed if, because of that reputation, I find that use of the application trade mark is likely to deceive or cause confusion.

Substantial identity or deceptive similarity

The requirement that the golden boomerangs trade mark is either substantially identical with or deceptively similar to McDonald’s trade mark or to its golden arches trade mark, is thus a threshold test for its section 60 ground. Substantial identity was never an issue. These marks are not substantially identical with each other, and it was never held out to be otherwise. I have considered the matter of deceptive similarity at length in respect of the section 44 ground and found that the golden boomerangs trade mark is not deceptively similar to the McDonald’s trade marks. This finding unhinges the section 60 ground and consequently I find section 60 fails as a ground of opposition.

It is necessary for me to note at this point, however, that the Registrar’s previous interpretation of section 60 of the Trade Marks Act 1995 has not been totally consistent.  There has been a tendency to view the criterion of deceptive similarity as subject to reputation.  I note my own comments in S.A. Jean Cassegrain v Victoria Racing Club[11].

[11] As yet unpublished - but available on : S.A. Jean Cassegrain v Victoria Racing Club [1999] ATMO 75 (28 July 1999)

In respect of the section 44 ground I have decided (above) that the racing victoria signs are not deceptively similar to either the cassegrain sign or to the longchamp sign. I find that there is nothing in the context of the Australian use of these marks which cause me to find otherwise. Subsection 60(a) requires a finding of substantial identity or deceptive similarity as a threshold test for a section 60 ground. Jean Cassegrain has failed on both counts, and consequently the section 60 ground fails. (my later emphasis)

A careful analysis of the section satisfies me that this approach is wrong.  The identical term deceptive similarity occurs in both section 44 and section 60 — and in both sections is ruled by the definition in section 10. The terms of section 60 require this test be administered as a preliminary step. If those preliminary requirements, specified in paragraph (a), are satisfied, then paragraph (b) comes into operation, and only then is the effect of reputation and use to be taken into account.

In view of comments in a number of the Registrar’s decisions which imply that reputation is a factor in determining deceptive similarity, I intend, as briefly as I can, to consider Ms Johnston’s submissions further, and express my view on how the section 60 ground would have fared had I been prepared to continue with that approach.

The McDonald’s evidence and submissions

Ms Johnston again referred me to the Boland declaration and evidence that McDonald’s refers to its  trade mark as Golden Arches. As per above, Ms Boland says[12]:

[12] paragraph 11

The GOLDEN ARCHES Logo is referred to as “the Golden Arches” by McDonald’s and McDonald’s Australia to describe The GOLDEN ARCHES Logo and, in my opinion, the phrase The GOLDEN ARCHES is one immediately recognisable by the public as referring to The GOLDEN ARCHES Logo of McDonald’s. 

There is, however, no other evidence that the Golden Arches is immediately recognisable by the public as referring to McDonald’s  trade mark, nor any support for Ms Boland’s implied claim that use of the  trade mark is equivalent to use of the term The Golden Arches. The words Golden Arches do not appear in Ms Boland’s exhibits. Normally matters of opinion are given very little weight.  However, I may have regard to my own general knowledge (regulation 21.15(8)) and to the fact that, as a member of the public, I am fully aware that McDonald’s  is widely referred to as Golden Arches. Accordingly I allow Ms Boland’s opinion to bear some weight.

In sum I accept that McDonald’s has a very considerable reputation and acknowledge a significant crossover in the public’s perception of the  trade mark and the trade mark golden arches. I accept that the  trade mark is generally referred to, and widely known as, McDonald’s Golden Arches.

Considerations of the deceptive similarity question

The question, for me then to decide would have been whether, in light of this crossover of ideas and nomenclature, the application trade mark, the golden boomerangs, is deceptively similar to either McDonald’s  or golden arches trade marks. Ms Johnston propounded two scenarios.  First, she returned to the circumstance where the golden boomerangs trade mark is displayed on a roadside advertisement and submitted that travellers are likely to perceive this sign as McDonald’s famous Golden Arches.  Second, she argued that, because the golden boomerangs incorporates the double arches element of the , and the word golden, members of the public are likely to perceive the golden boomerangs trade mark as McDonald’s  trade mark, adapted in order to signify an Australian version of its self-service restaurants.

The criteria for deception and confusion are spelt out by Kitto J in Southern Cross[13] and were considered by French J in the Metro case[14]. Identifying the presumption of registrability as an underlying policy of the Trade Marks Act 1995, his Honour says:

[13] (1954) 91 CLR 592 at 594-5

[14] 1999 FCA 1020 (29 July 1999) (as yet unpublished)

50 … 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) 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)…

(v)…

In respect of these propositions and the scenarios described by Ms Johnston, I would then consider this question of deceptive similarity in the context of use of the golden boomerangs trade mark - coloured gold or yellow - posted on busy roadways, alongside self-service or fast food restaurants.  In this circumstance, would I think there was a real likelihood that some people would wonder, or be left in doubt, about whether the golden boomerangs restaurant services (on the one hand) and the services promoted under the  and golden arches trade marks (on the other) come from the same source - namely McDonald’s? Is it likely that people would misread the golden boomerangs as golden arches?  Is it likely that people would mistake the device elements in the golden boomerangs trade mark for the device of the  trade mark?  Is it likely that people would think the golden boomerangs trade mark is McDonald’s modified trade mark proclaiming an Australian style cafe or restaurant?

An overriding factor in all of these questions, is McDonald’s impressive reputation which strongly links to the term Golden Arches, and is manifest in the  trade mark.  In terms of high profile trade marks the  trade mark must be amongst the most successful. It is seen across the country, highly visible beside many busy roadways. It is parodied in cabaret. It is featured in news items reporting on incidents such as McDonald’s success in alien economies and cultures, or on continuing operation in a war zone.  It is one of the best known trade marks of the day with an exceptionally high level of recognition.  In light of that recognition, it seems to me most unlikely that the applicant’s golden boomerangs trade mark would be mistaken for the familiar  even when it is coloured gold.  Boomerangs are not arches, and are well short of appearing to be the McDonald’s golden . I do not think that it likely that people would misread the golden boomerangs as golden arches. Nor do I think it likely that people would mistake the golden boomerangs device for the letter .  Further, in absence of evidence that McDonald’s has ever modified its classic American image to a local Australian (or other) image, I do not think people would wonder whether Mr Bowditch’s trade mark indicates a McDonald’s restaurant modified to an Australian personification. 

While I acknowledge McDonald’s great reputation, and while I would agree that the application trade mark might well give rise to recollection of the McDonald’s golden arches, I would not think (for the reasons stated above) that persons would wonder whether the two services come from the same source. Ordinary persons, I think, would not entertain any reasonable doubt. Nor do I think that any real tangible danger of deception or confusion would be at all likely to exist. Accordingly, had I been prepared to consider established reputation as a factor in determining deceptive similarity, I would find that the section 60 ground failed.

Decision

I have found that neither of the grounds relied on is made out.  I therefore dismiss the opposition and direct that, in the absence of any appeal, trade mark application number 730699 may proceed to registration.

Costs

The opponent seeks costs. In ordinary circumstances, these follow the cause.  Mr Bowditch however, has taken no part in any of the opposition proceedings.  In the circumstances I think that it is appropriate that I make no award.

Helen R. Hardie
Deputy Registrar

15 October 1999