ATMD Alban Tay Mahtani de Silva Advocates Solicitors Trademark Patent by legalstuff4


                               Alban Tay Mahtani & de Silva
                               Advocates & Solicitors Trademark & Patent Agents

Future Enterprises Pte Ltd v McDonald’s
Corp [2006] SGHC 175: THE SAGA
                                                                                                                         by Pearleen Loh

T      his was an appeal to the Singapore High Court by
       Future Enterprises Pte Ltd (“Future”) against the
       decision of the Principal Assistant Registrar (“the
PAR”) of the Intellectual Property Office of Singapore.
                                                                              The PAR allowed the opposition on the ground that the
                                                                              MacCoffee mark was similar to the McCAFE mark such
                                                                              that there was a likelihood of confusion on the part of the
                                                                              Singapore public. The PAR was of the view that:-

This was not the first time the parties had crossed swords.                   a) the MacCoffee and McCAFE marks were visually,
Previously, the parties had battled over Future’s application                    aurally and conceptually similar;
for registration of three marks, namely:-
                                                                              b) the goods were similar and
(a) “MacNoodles & device” for “instant noodles”;
                                                                              c) a substantial number of average Singaporeans would
(b) “MacTea & device” for “instant tea mix”;                                     be likely to be confused by the MacCoffee mark.

(c) “MacChocolate & device” for “instant chocolate mix”.
                                                                              Similarity of Marks
In the previous litigation, Future emerged victorious, with                   In the Grounds of Decision issued by the PAR, the PAR
the Singapore Court of Appeal dismissing the oppositions                      said that:-
filed by McDonald’s Corp (“McDonald’s) against the above
                                                                                  “The E in McCAFE has an accent above it (the
In the current proceedings, Future had filed an application                       diacritical mark), but visually this is a difference
to register the mark MacCoffee “the MacCoffee mark”) for                          which likely to be unnoticed by the average consumer.
the following Class 30 goods:-                                                    The marks begin with the letter M which stands for
                                                                                  Mc in the Opponents mark and Mac in the Applicants
                                                                                  mark and end with the words café and coffee. In
Coffee; tea; cocoa; coffee based beverages; artificial coffee;                    both marks, the capital letter C in the centre divides
cappuccino; cereal preparations (including instant cereal                         the first and second parts of the marks such that the
in powder form), ice cream, prepared meals, confectionery,                        impression is not of one word but of two words put
namely candies, sweets, lollipops, liquorice, lozenges,                           together… Considering the total visual impression of
pastilles; cakes, bread, biscuits, jellies (confectionery)                        the marks McCAFE and MacCoffee, I am of the view
and puddings; pastries; snack foods products made from                            that there are sufficient visual similarities to override
processed flour preparations and potato flour; cookies;                           the differences submitted by the Applicants – that
snack food products made from corn; snack bars containing                         the prefixes Mc and Mac and the suffixes Cafe and
dried fruits and nuts (confectionery); cereal-based food                          Coffee are different…Aurally, both marks have three
bars; rice crackers; muesli bars; wafers.                                         syllables. The two prefixes are homonymous and
                                                                                  synonymous… The concept between the two marks
McDonald’s filed an opposition against the mark based                             is similar. Whether they relate to the beverage or the
on its prior registration for McCAFE in Class 30 (“the                            place where such beverage is sold and consumed,
McCAFE mark”) for:-                                                               the idea of coffee is evoked in the minds of the
  edible sandwiches, meat sandwiches, pork sandwiches,
  fish sandwiches, chicken sandwiches, biscuits, bread,                       Future had submitted that a café is understood by English
  cakes, cookies, chocolate, coffee, coffee substitutes,                      speaking Singaporeans as a place where one drinks coffee
  tea, mustard, oatmeal, pastries, sauces, seasonings,                        and coffee is understood as a reference to the drink.
  sugar.                                                                      McDonald’s submitted that café also means coffee in

      Alban Tay Mahtani & de Silva
      39 Robinson Road, #07-01 Robinson Point, Singapore 068911
      Tel: 65 6534 5266 Fax: 65 6223 8762
                                 Alban Tay Mahtani & de Silva
                                 Advocates & Solicitors Trademark & Patent Agents

French. The PAR held that an average person will be slow                    Likelihood of Confusion
to notice the difference between the words café and
coffee in terms of the meaning of the words. This is                        The High Court judge held that both Future’s and
especially so since the mark McCAFE is registered for                       McDonald’s goods (assuming that McDonald’s does make
coffee and may be used on coffee. Additionally, it is not                   use of the McCAFÉ trade mark “in a normal and fair
the conceptual difference between café and coffee that                      manner”) are likely to appear in the same shopping mall,
should be considered but the conceptual difference                          suburban or otherwise. The Court held that the type of
between McCAFE and MacCoffee.                                               customers likely to purchase Future’s goods is also not
                                                                            likely to be vastly different from those of McDonald’s
The High Court judge agreed with the PAR’s basis of                         goods.
comparison of the marks based on the three hallmarks
of similarity, namely the visual, aural and conceptual                      Like the PAR, the High Court judge was satisfied that
aspects.                                                                    there exists a likelihood on the part of the public.

Similarity of Goods                                                         The High Court accordingly upheld the decision of the
                                                                            PAR and dismissed Future’s appeal.
Although Future’s application for registration was originally
for a broader class of goods, at the end of its submissions                 This victory in Singapore is certainly the latest feather to
before the PAR, it indicated that it was willing to restrict                the cap of the American fast food restaurant in its attempts
the specification of goods to “instant coffee mix” only.                    to weed out companies riding on its goodwill.
The PAR therefore decided the opposition before her on
the basis that if the application succeeded, it would be
allowed with such a restriction as to the specification of
goods because, if the broader original specification of                        Author :
goods was considered, the goods of the parties would
be more similar. On that basis, she held that the goods
of both parties were similar if not identical as the
MacCoffee and McCAFE marks included coffee.                                                       Pearleen Loh
                                                                                                  Intellectual Property and
The High Court judge agreed with the PAR’s assessment                                             Technology Group
that the basic product in both cases is coffee. Accordingly,                            
                                                                                                  +65 6428 9889
the goods are similar.

        Alban Tay Mahtani & de Silva
        39 Robinson Road, #07-01 Robinson Point, Singapore 068911
        Tel: 65 6534 5266 Fax: 65 6223 8762

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