Scintilla – a flash, a spark, an iota. Shorthand for creativity and an indicator of inventiveness under Australian law.






Monday, May 9, 2016

Trade Marks Office says McNo to McKosher

By Natasha Dixon, Law Graduate

It was not a happy meal for Mark Glaser when he sat across the table from fast food kingpin McDonald's in a recent Trade Marks Office case.

Mr Glaser had applied to register 'McKosher' as a trade mark (the McKosher Mark) in a variety of classes, including food related goods and services. The application was opposed by McDonald's on a number of grounds, including section 60 of the Trade Marks Act, alleging that the McKosher Mark was similar to a trade mark which had acquired a reputation in Australia, being the family of registered and unregistered marks owned by McDonald's such as 'McChicken,' 'McOz' and 'McChamp' (the McMarks).

In deciding whether the section 60 grounds applied, the Hearing Officer considered the reputation of McDonald's as well as the likelihood of consumers being confused or deceived between the McKosher Mark and the McMarks. Unsurprisingly, the Hearing Officer found that the scale of sales, marketing and promotion of McDonald's services was supersized and that most Australians would be aware of the scale of its operations under the McMarks. As such, he concluded that the McMarks had very strong reputations in Australia, and that the Australian public had an awareness of McDonald's practice of coining further trade marks from the stem 'Mc-' in relation to its offerings.


Eat in


The Hearing Officer then went on to consider whether consumers were likely to be confused or deceived by the McKosher mark in light of the McMark's reputation. Noting that confusion may be held to exist even if it does not persist to the point of sale and 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 marks, the Registrar found that the public was likely to be confused between the McKosher Mark and the McMarks.

On this point, Mr Glaser had put forward evidence attempting to demonstrate that the word 'Kosher' had other meanings in Australia, being a family surname and used by those of Jewish faith in relation to goods other than foods. This point did not succeed however, and it was held that the meaning of the word 'Kosher' in this case was dictated by the commercial context within which it was to be used. It was thus quite unlikely that people seeing the McKosher Mark would think of the surname 'Kosher' or goods other than foodstuffs.

The applicant also argued that the McKosher Mark would be viewed as a parody of the McMarks, and so would not confuse or deceive. Yet Hearing Officer Thompson was not lovin' it, dismissing the argument as the parody was not 'immediately apparent.'

Finally, the Hearing Officer concluded by finding that the idea of the parties' trade marks was the same and that they were '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.' Accordingly, he found that the McKosher Mark was likely to be seen as being part of the same family as the McMarks.

He went on to say that there was a reasonable likelihood that people, on seeing the McKosher Mark, would be caused to wonder if there was some connection between the food-related goods and the services offered under the McKosher Mark and those offered by McDonald's.

Of potentially significant note, the Hearing Officer then declined to consider the fate of the McKosher Mark in relation to any other non-food related class, citing Justice Yate's statement from Apple Inc. v Registrar of Trade Marks [2014] FCA 1304: 'if the application fails in one respect, it fails as a whole.' This perhaps foreshadows a concerning shift in the Office's practice in respect of its decisions regarding the registration and opposition of trade marks.

As a result of this reasoning, the Hearing Officer refused to register the McKosher Mark in any class, serving up costs against Mr Glaser instead of a side of fries.

Takeaway


Although this case was relatively straightforward, it is a reminder of the importance that reputation plays in trade mark law in Australia. When registering new marks that are (even vaguely) reminiscent of other marks in the same industry, the likely impression of target consumers should be considered.


2 comments:

  1. Interestingly, the EU General Court has recently ruled in McDonald's favour in a similar trade mark dispute to the Australian McKosher case. The ruling came about after the European Union Intellectual Property Office rejected Singaporean company Future Enterprise's application to register 'MACCOFFEE' as an EU trade mark in respect of foodstuffs and beverages. Future Enterprises appealed the decision, yet it was upheld by the EU court, stating that:
    'The repute of McDonald's trade marks makes it possible to prevent the registration, for foods or beverages, of trade marks combining the prefix 'Mac' or 'Mc' with the name of a foodstuff or beverage.'

    The court also noted the fact that it was 'highly probable' that the MACCOFFEE mark was an attempt to:
    'ride on the coat tails of McDonald's in order to benefit from its power of attraction, its reputation and prestige, and exploits, without paying any financial compensation, the marketing effort made by McDonald's in order to create and maintain its image.'

    It is worth noting that the EU has an 'unfair advantage' doctrine when dealing with trade mark applications which grants far broader protection than we have in Australia.

    The verdict can be appealed to the EU Court of Justice, the highest court in Europe. We will keep you posted on the outcome of any appeal.

    Read the EU decision here: http://curia.europa.eu/juris/document/document.jsf?text=&docid=181288&pageIndex=0&doclang=en&mode=lst&dir=&occ=first&part=1&cid=464654

    ReplyDelete