Future Enterprises Pte Ltd v McDonald's Corp

• Jurisdiction: Singapore
• Judge: Chan Sek Keong CJ
• Judgment Date: 28 March 2007
• Neutral Citation: [2007] SGCA 18
• Docket Number: Civil Appeal No 73 of 2006
• Date: 28 March 2007
• Year: 2007
• Published date: 02 April 2007
• Plaintiff Counsel: Stanley Lai Tze Chang and Vignesh Vaerhn (Allen & Gledhill)
• Citation: [2007] SGCA 18
• Defendant Counsel: Dedar Singh Gill and Yvonne Tang (Drew & Napier LLC)
• Court: Court of Appeal (Singapore)
• Subject Matter: Trade Marks and Trade Names,Registered owner of "McCAFE" mark opposing application to register "MacCoffee" mark,Whether "MacCoffee" mark similar to "McCAFE" mark,Whether rights conferred by registration of "McCAFE" mark statutorily restricted and rendered inoperative under opposition, invalidation and infringement provisions of Trade Marks Act by reason of prior unregistered right to proprietorship of "MacCoffee" mark,Registration,Whether goods specified for "MacCoffee" mark similar to that for which "McCAFE" mark registered such that likelihood of confusion existing on the part of public,Sections 4(2), 8(7)(a), 23(3)(b), 28(2) Trade Marks Act (Cap 332, 2005 Rev Ed)

28 March 2007 Judgment reserved.

Chan Sek Keong CJ (delivering the judgment of the court):

1 This is an appeal by Future Enterprises Pte Ltd (“the appellant”) against the decision of Tay Yong Kwang J (“the trial judge”) dismissing its appeal against the decision of the Principal Assistant Registrar of Trade Marks (“PAR”) who allowed the opposition of McDonald’s Corporation (“the respondent”) to the registration of the trade mark “MacCoffee” as a word mark in Class 30 for instant coffee mix by the appellant (see Future Enterprises Pte Ltd v McDonald’s Corporation [2005] SGIPOS 21).

2 Originally, the appellant’s application was to register the trade mark “MacCoffee” in Class 30 for, among other things, coffee, tea, cocoa, coffee-based beverages, artificial coffee, and cappuccino. The word mark was accepted for registration and advertised. The respondent filed an opposition to the application based on its prior registration of the trade mark “McCAFÉ”, also a word mark, in Class 30 for, among other things, coffee, and coffee substitutes. It was not disputed that the respondent had not, since its registration, used the trade mark “McCAFÉ” in relation to the Class 30 goods listed in its specification. At the opposition proceedings before the PAR, the appellant indicated that it was prepared to restrict the class of goods to “instant coffee mix”. The PAR upheld the opposition.

3 The trial judge affirmed the findings of the PAR that, (a) there were sufficient visual, aural and conceptual similarities between the marks; (b) the goods of the parties were similar if not identical; and (c) there was a corresponding likelihood of confusion on the part of the public (see [2006] 4 SLR 629).

Issues on appeal

4 In this appeal, the issues to be determined are:

(a) whether the “MacCoffee” mark was similar to the “McCAFÉ” mark;

(b) whether the goods specified for the “MacCoffee” mark were similar to that for which the “McCAFÉ” mark was registered such that a likelihood of confusion would exist on the part of the public; and

(c) whether the rights conferred by the registration of the “McCAFÉ” mark were statutorily restricted and rendered inoperative under the opposition provision (s 8(7)(a)), the invalidation provision (s 23(3)(b)) and the infringement provisions (ss 4(2) and 28(2)) of the Trade Marks Act (Cap 332, 2005 Rev Ed) (“the Act”) (s 8(7)(a) was formerly s 8(4)(a) of the Trade Marks Act (Cap 332, 1999 Rev Ed)) by reason of the appellant’s prior unregistered right to proprietorship of the “MacCoffee” mark for instant coffee mix.

Our decision

5 On issues (a) and (b), having regard to the general principles applicable to appeals against findings of fact in trade mark applications, we see no reason why we should disturb the dual findings of fact by the PAR and the trial judge of similarity and likelihood of confusion between the two word marks “MacCoffee” and “McCAFÉ”. In Reef Trade Mark [2003] RPC 5, Robert Walker LJ considered the function of an appellate tribunal in relation to appeals from the UK Trade Mark Registry, and concluded (at [28]) that “an appellate court should … show a real reluctance, but not the very highest degree of reluctance, to interfere in the absence of a distinct and material error of principle”. In SC Prodal 94 SRL v Spirits International NV [2003] EWHC 2756 (Ch), Laddie J expressed the same sentiments (at [19]) as follows:

It is not the duty of this court to overturn a decision of the Trade Mark Registry simply because it comes to the conclusion that it might have decided the case differently had it, that is to say the High Court, been the court of first instance. It has to be demonstrated that the decision at first instance was wrong in a material way; that is to say there must be some significant departure from a proper assessment of the law or the facts.

6 This prudent approach has been unequivocally endorsed in the recent case of Sunrider Corporation v Vitasoy International Holdings Ltd [2007] EWHC 37 (Ch) (at [10]). Such an approach is consistent with established principles relating to appeals from tribunals that are not in the nature of a rehearing, such as an appeal from a decision of the PAR.

7 The smorgasbord of trade mark cases which has reached the appellate courts demonstrates the innumerable (and subjectively perceived) similarities and differences that can be conjured up and persuasively articulated by an imaginative and inventive legal mind. Expert and experienced judges, such as Laddie J, have described trade mark infringement as “more a matter of feel than science” (in Wagamama Ltd v City Centre Restaurants plc [1995] FSR 713 at 732), and Chao Hick Tin JA (as he then was) similarly alluded to it as a matter of “perception” (in The Polo/Lauren Co, LP v Shop-In Department Store Pte Ltd [2006] 2 SLR 690 at [35]). In the light of the highly subjective nature of assessing similarity and the likelihood of confusion, we agree with the approach that an appellate court should not disturb the findings of fact of a trade mark tribunal unless there is a material error of principle.

8 In affirming the decision of the trial judge on grounds (a) and (b) for the reasons given by him (see [3] above), we have taken into account the fact that the appellant was already the registered proprietor of the “MacCoffee and eagle device” (“the composite mark”) for goods in Class 30 which included coffee and coffee-related products and that it had used the composite mark to market its instant coffee mix for the last decade, principally abroad, and recently in Singapore. In contrast, the present application involved the registration of “MacCoffee” as a word mark without any other distinguishing or distinctive feature. There was no evidence that the appellant had used the word mark in marketing its instant coffee mix in Singapore.

Prior unregistered rights of trade mark proprietors

9 Counsel for the appellant has contended that issue (c) raises a novel point of trade mark law in Singapore which was not canvassed before the trial judge. Given that the issue engaged points of law arising from the effect of a number of provisions in the Act and as counsel for the respondent was prepared to argue the point, we allowed counsel for the appellant to argue it.

Statutory restriction of the respondent’s rights

10 The argument is founded on the appellant’s common law right to the “MacCoffee” mark for instant coffee mix, alleged to have been acquired through its use in Singapore. Such rights if any, are statutorily protected under the Act. Counsel also argued that the appellant had acquired a similar right in Singapore to the “MacCoffee” mark for instant coffee mix by virtue of its international reputation for such products, primarily as a result of sales in Russia and in several other East European countries. It was then argued that the effect of such an acquired right is that the respondent is statutorily restricted from asserting its registered “McCAFÉ” mark in opposition proceedings by reason of the appellant’s earlier unregistered right to proprietorship of the “MacCoffee” mark. It was contended that such restriction should be taken into account for the purpose of rendering the “McCAFÉ” mark inoperative...