Intellectual Property Law

Published date01 December 2004
Date01 December 2004
Citation(2004) 5 SAL Ann Rev 374
AuthorTAN Tee Jim SC LLB (Hons) (University of Singapore), LLM (London); Advocate and Solicitor (Singapore). NG-LOY Wee Loon LLB (Hons) (National University of Singapore), LLM (London); Advocate and Solicitor (Singapore); Associate Professor, Faculty of Law, National University of Singapore.
Trade marks

16.1 The big ‘Mac/Mc’ battle has finally reached the shores of Singapore. In McDonald”s Corp v Future Enterprises Pte Ltd[2004] 2 SLR 652 (HC); [2005] 1 SLR 177 (CA), the McDonald”s fast food chain (‘McDonald”s’) tried to stop a local company, Future Enterprises, from registering the trade marks ‘MacTea’, ‘MacChocolate’ and ‘MacNoodles’, each accompanied by an eagle device in respect of instant tea mix, instant chocolate mix and instant noodles respectively (in this chapter, the marks will be collectively referred to as the ‘MacTea/MacChocolate/MacNoodles and eagle device marks’). The defendant”s ‘MacNoodles’ mark is shown below.

16.2 McDonald”s had already acquired some experience in similar actions outside of Singapore such as Australia (‘McSalad’ and ‘McFresh’ for fruits and vegetables; ‘McMint’ for confectionery; ‘McVeg’ for vegetable hamburgers), Canada (‘McBeans’ for gourmet coffee), the UK (‘McChina’ for a Chinese restaurant and Chinese food; ‘McIndians’ for restaurant, café and cafeteria services), and the US (‘McBagel’ bagel bakery selling bagels, salads, sandwiches, soft drinks, breakfast items, etc; ‘McPretzel’ pretzels sold at wholesale level). McDonald”s won in some of these cases and lost in the others.

16.3 In Singapore, McDonald”s had obtained registrations of, inter alia, the following marks: ‘BIG MAC’, ‘MAC FRIES’, ‘SUPERMAC’, ‘EGG McMUFFIN’, ‘McCHICKEN’, ‘McNUGGETS’ in Classes 29 and/or 30, and a design of the word ‘Mc’, shown below, for restaurant and catering services in Class 42.

16.4 McDonald”s did not have any registration for the word ‘Mc’simpliciter. But it believed that it had a monopoly in trade mark law over the ‘Mac’ or ‘Mc’ prefix — both of which were phonetic equivalents — used in relation to a fast food product. Belinda Ang Saw Ean J, the High Court judge who heard the dispute, summarised the essence of McDonald”s complaint as follows: Future Enterprises had ‘copied the so-called “McLanguage” of naming products with the prefix “Mc” followed by a fast food descriptive’ and ‘taken the idea or business marketing practice of naming the various types of fast food products’: [2004] 2 SLR 652 at [6] and [24] respectively. The judge was not impressed with McDonald”s argument, noting at [31] that ‘the weight of authority is against the recognition at common law of any right of property in ideas per se’, a point subsequently endorsed by the Court of Appeal ([2005] 1 SLR 177 at [79]). Indeed, trade mark law is not about marketing ideas and concepts; it protects, rather, the goodwill of a trader.

16.5 It was hence necessary for McDonald”s to fit its complaint within the framework of damage to their goodwill or reputation. It claimed as follows: firstly, its reputation in the fast food restaurant business was such that the use of the MacTea/MacChocolate/MacNoodles and eagle device marks by Future Enterprises on instant food products was likely to mislead the public into thinking that McDonald”s was in some way connected to or behind Future Enterprises” products, and, secondly, Future Enterprises had in bad faith misappropriated McDonald”s trade marks. McDonald”s first objection is enshrined in ss 15 and 23 of the Trade Marks Act (Cap 332, 1992 Rev Ed) (‘the Act’). (Note that the Act has been repealed and replaced by the Trade Marks Act 1998 (Cap 332, 1999 Rev Ed) (‘the 1998 Act’).)

16.6 McDonald”s failed on all these grounds in the Registry of Trade Marks, the High Court and the Court of Appeal.

Sections 15 and 23: Prohibition on registration of mark which is likely to deceive or cause confusion, etc

16.7 Generally speaking, ss 15 and 23 both prohibited registration of what were often called ‘deceptively or confusingly similar trade marks’. However, there was a significant difference between the scope of each provision: s 23 applied only in cases where the opponent”s mark was an earlier registered trade mark and his goods or services were the same, of the same description or ‘associated with’ the goods or services of the trade mark applicant; whereas s 15 could be invoked even if the opponent”s mark was unregistered and even where the goods or services in question were dissimilar. (In the current 1998 Act, these objections under ss 15 and 23 are collapsed into one provision, namely, s 8: see para 16.17 below.)

16.8 McDonald”s concentrated its energies on making out a case under the broader ground of objection in s 15, namely, that the MacTea/ MacChocolate/MacNoodles and eagle device marks were not lawfully registered as their use ‘would, by reason of [their] being likely to deceive or cause confusion, be disentitled to protection in a court of justice’. Ang J, applying the established test first enunciated by the House of Lords in Bali TM[1969] RPC 472 (and adopted by our Court of Appeal in Tiffany & Co v Fabriques de Tabac Reunies SA[1999] 3 SLR 147), rephrased the question as follows: would there be a real tangible danger of confusion in the sense that a substantial number of prospective or potential purchasers of instant tea or cocoa mix and instant noodles would infer or have ‘cause to wonder’ whether it might not be the case that the products come from the same source (McDonald”s)?

16.9 Both McDonald”s and Future Enterprises cited the various ‘Mc’ decisions from around the world referred to in para 16.2 above to support their respective cases for or against a likelihood of confusion in this case. The value of these ‘Mc’ decisions as authorities in the Singapore case was marginal because whether the two marks in each case were likely to deceive or cause confusion is a question of fact: per Ang J at [40], and Chao Hick Hin JA delivering the judgment of the Court of Appeal in [2005] 1 SLR 177 at [66]. This depends very much on the business practices and perceptions of the purchasing public, which can vary from jurisdiction to jurisdiction. For example, in a multiracial and multilingual country like Singapore, our courts have in appropriate cases taken into account the reaction of the illiterate or non-English speaking consumer to trade marks comprising English words: see, for example, White Hudson & Co Ltd v Asian Organization Ltd[1965] 1 MLJ 186, where it was held by the Privy Council, reversing the decision of

the Court of Appeal and upholding that of the High Court, that the non-English speaking members of the public in the 1960s would be misled into thinking that ‘PECTO’ cough sweets wrapped in orange-coloured cellophane paper were ‘HACKS’ cough sweets as they had a similar packaging: cfTong Guan Food Products Pte Ltd v Hoe Huat Hng Foodstuff Pte Ltd[1991] SLR 133 at 367, [30], where Yong Pung How CJ cautioned that illiteracy must be ‘an evaporating consideration in the Singapore of today’.)

16.10 In deciding this question of fact, evidence of actual incidents of confusion would come in useful. So would the results of survey gauging the public”s impression. Neither was tendered in this case. Ultimately, however, it is left to the personal perception of the trial judge, and the appellate court will only disturb the finding of the trial judge if there is good reason to do so. This was not the case here. For this reason, this review will focus more on Ang J”s reasoning and her finding on s 15.

16.11 Ang J came to the conclusion that, as at the date on which the question of fact had to be assessed which was 8 July 1995 (the date of Future Enterprises” trade mark applications), there was no real tangible danger that a substantial number of shoppers in the course of a normal shopping trip would be caused to wonder if there could be a commercial association between the MacTea/MacChocolate/MacNoodles and eagle device marks used on instant tea and cocoa mixes and instant noodles and, on the other hand, fast food and beverages from McDonald”s. In coming to this conclusion, she applied many well-established guidelines used to answer this question of fact under s 15. Many of these guidelines have earlier been endorsed by our Court of Appeal, in particular in Kellogg Co v Pacific Food Products Sdn Bhd[1999] 2 SLR 651. Below is a summary of the guidelines the judge referred to and how she applied them to the facts before her:

(a) All surrounding circumstances must be considered, including but not limited to the...

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