McDonalds Corporation v David Bellamy

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by McDonalds Corporation to registration of trade mark application 859586(20)(29)(30) McBaby filed in the name of David Bellamy.

Delegate:

Ian Thompson

Representation:

Opponent

Simon Williams of Spruson & Ferguson.

Applicant

James Maxwell of Peter Maxwell & Associates.

Decision:

1. Section 52 Opposition; s60; opposition established.

2. Costs awarded against applicant.

Background

1. David Bellamy ('the applicant') of Tasmania, has filed application to register a trade mark, current details of which are:

App No:  859586

Priority Date:  29 November 2000

Services:Class: 28  Games and play things; toys including build-it-yourself toys and toys made from kits

Class: 29Meals for children sold as packs containing various items including fruits, vegetables and juices; beverages in this class; sauces

Class: 30  Confectionery; bread, bread rolls and buns; cakes; condiments; ice-cream; pies

Trade Mark:  McBaby

1. After examination, the application was advertised accepted for registration in the Australian Official Journal of Trade Marks, on 29 November 2000. On 14 December 2001, McDonalds Corporation ('the opponent') filed Notice of Opposition to registration of the trade mark. Five of the available grounds of opposition were cited on the Notice, these being under sections 41, 42, 43, 44 and 60 of the Trade Marks Act 1995.

2. Evidence in support was served and filed; there is no evidence in answer.  A hearing was held before me, as a delegate of the Registrar of Trade Marks, in Sydney, on 17 March 2004.  Mr Simon Williams of Spruson & Ferguson, Patent and Trade Mark Attorneys, Sydney, represented the opponent; James Maxwell of Peter Maxwell & Associates, of Sydney, represented the applicant.

Evidence

1. Evidence served and filed in this matter comprises a statutory declaration by Rhona Lea Lawson with exhibits RLL-1 to RLL-17.

2. Before discussing what the opponent’s evidence shows, I will mention that in submissions for the applicant, Mr Maxwell made various statements about the applicant’s coinage or derivation of the opposed trade mark and the nature of the applicant’s intended trade and also sought to rely on the state of the Register, as regards registration of various trade mark incorporating the element ‘Mc’ or ‘Mac’.  At the hearing, I advised Mr Maxwell that as the applicant’s use or intended use of the trade marks and the state of the Register had not been served and filed as evidence, I would have to give these factors very low weight as evidence.

3. My reasons for this are that, while it may be appropriate for a delegate of the Registrar to refer to the state of the Register if this evidence is straightforward and of ready interpretation, such is not the case here. There are a great many trade marks registered, lapsed or pending that contain the elements ‘Mc’ or ‘Mac’ (2181); some of these are registered in respect of the goods of interest – some are not; some form part of a surname; some are traditional Scots or Irish surnames; some incorporate the ‘Mac’…