In the recent decision of McD Asia Pacific LLC v Sheikhtaba Pty Ltd [2015] ATMO 112, McDonald’s found its famed “MAC” prefix was too popular for its own good, the Delegate of the Registrar of Trade Marks rejecting its opposition to registration of the logo mark MAK FOODS on grounds of deceptive similarity and established reputation.
(Image from Australian Trade Mark Online Search System)
The applicant was a local importer of Middle Eastern food products, seeking to register the logo mark MAK FOODS for use in relation to various foodstuffs in classes 29 and 30, including preserved fruits and vegetables, oils, cereals, bread, confectionery, and condiments. McDonald’s opposed the applicant’s registration on grounds that it was deceptively similar to, and would therefore infringe, its existing registrations for a range of “MAC“ marks. In addition, McDonald’s opposed the registration on grounds that the applied for mark was similar to its own marks which had gained a reputation in Australia, that use of the mark would be likely to mislead or deceive consumers in breach of the Australian Consumer Law, and that the application had been submitted in bad faith.
Deceptively similar?
In support of its first ground of opposition, McDonald’s specified a number of their existing registrations for “MAC” marks (from the notorious “MAC FRIES” and “BIGMAC” to this IP Whiteboard author’s personal favourites, “SON OF MAC” and “EL MACO”). However, the Delegate rejected this ground of opposition and found that, while a common first element may be significant, in this instance the inclusion of the renowned aural prefix “MAC” did not render the applied for MAK FOODS deceptively similar. Further, while the suffix FOODS was descriptive of the applied for goods, it did not describe any particular good to the point where its presence could be discounted in assessing deceptive similarity. This element, together with the crescent moon shaped device in the applicant’s mark, meant that there would be no tangible danger of confusion in the marketplace.
The relevance of reputation
McDonald’s second ground of opposition was that applicant’s mark should not be registered as it would be hitch hiking (so to speak) on the reputation acquired by McDonald’s registered marks in Australia, and would therefore be likely to cause the public confusion.
Few would dispute that brand recognition is an area where McDonald’s has things covered. There are now more than 890 McDonald’s restaurants operating in Australia. Globally, the restaurant chain serves more people than there are residents in Australia two times over. However, in this instance, it could be said that this reputation worked against the international Mc-mega retailer, the Delegate finding that its “overwhelming reputation” only served to emphasise the differences between the respective marks, and to further preclude potential confusion in the marketplace. It followed that the applicant’s mark could not be considered likely to deceive or cause confusion in breach of the Australian Consumer Law. This ground of opposition was therefore not established.
Bad faith
McDonald’s final ground of opposition was that the applicant’s mark was applied for in bad faith (perhaps attempting to “hamburglar” the food giant’s reputation?). This was dealt with swiftly, he Delegate noting that the applicant’s mark was a shortening of the business owner’s name “MAKHOUL”. On that basis it couldn’t be said that the applicant had fallen short of acceptable commercial behaviour, and this was enough to convince the Delegate that this ground of opposition should be rejected.
Our key takeaway from the decision? It’s possible to be too famous for your own good!