Future Enterprises Pte Ltd v McDonald's Corporation

• Jurisdiction: Singapore
• Judgment Date: 29 September 2006
• Date: 29 September 2006
• Docket Number: Originating Motion No 49 of 2005
• Court: High Court (Singapore)

Future Enterprises Pte Ltd

Plaintiff

and

McDonald's Corp

Defendant

[2006] SGHC 175

Tay Yong Kwang J

Originating Motion No 49 of 2005

High Court

Trade Marks and Trade Names–Registration–Respondent registered owner of “McCAFÉ” mark–Applicant filing application to register “MacCoffee” mark–Respondent opposing application on ground that registration of “MacCoffee” mark likely to cause confusion to public–Whether visual, aural or conceptual similarity between “McCAFÉ” mark and “MacCoffee” mark existing–Section 8 (2) (b) Trade Marks Act 1998 (Act 46 of 1998)

The appellant filed an application for registration of the mark “MacCoffee” (“the MacCoffee mark”), which was accepted for registration and advertised. The respondent subsequently filed a notice of opposition based on its prior registration of the “McCAFÉ” trade mark, claiming that registration of the MacCoffee mark would be contrary to ss 8 (2) and 8 (3), and the law of passing-off under s 8 (4) (a) of the Trade Marks Act 1998 (Act 46 of 1998) (“TMA”). Although the appellant's application for registration was originally for a broader class of goods, at the end of its submissions before the Principal Assistant Registrar of Trade Marks (“PAR”), it indicated that it was willing to restrict the specification of goods to “instant coffee mix” only. 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 goods was considered, the goods of the parties would be more similar. At the conclusion of the hearing, the PAR allowed the opposition on the basis that the two marks were visually, aurally and conceptually similar, the goods were similar and a substantial number of average Singaporeans would be likely to be confused by the MacCoffee mark. The appellant appealed to the High Court against the PAR's decision.

Held, dismissing the appeal:

(1) When considering trade marks, one considered their visual, aural and conceptual similarities. There were sufficient visual and aural similarities between the marks, which had three syllables and prefixes which were homonymous and synonymous. Although the suffixes did not sound perfectly alike when pronounced carefully by someone such as a teacher of elocution, the court had to make allowance for imperfect recollection and careless pronunciation and speech. Taken as a whole, the two marks sounded remarkably similar and were a far cry from cases where there was similarity in only one part of the word or where the suffixes were obviously distinct from each other. The concept between the two marks was also similar. Whether they related to the beverage or the place where such beverage was sold and consumed, the idea of coffee was evoked in the minds of the public: at [8] to [14].

(2) Looking at the three hallmarks of similarity, the two marks in issue were similar. While courts were wary of allowing companies to monopolise words that were either purely descriptive or used in everyday parlance, the analysis was not about the common words “café” and “coffee” but two words invented by the injection of a prefix to them and which, by themselves, had no known meaning in the English language: at [15].

(3) The respondent had not used “McCAFÉ” in respect of the goods covered in its registration. It had only used it in respect of services, essentially as the name of its restaurants or cafés. In such a situation, where a mark was not used, the court assumed that the proprietor would use it “in a normal and fair manner”: at [20].

(4) The goods of both parties were similar if not identical. The locations and pricing of the parties' goods were also not starkly different. Both were likely to appear in the same shopping mall, suburban or otherwise. The type of customers likely to purchase the appellant's goods was also not likely to be vastly different from those of the respondent's goods. Although the first “McCAFÉ” outlet was opened in Australia in 1993 and the respondent had yet to venture into selling unprepared coffee there, the “McCAFÉ” trade mark was of much more recent vintage in Singapore and it was therefore not a highly speculative eventuality to be ignored: at [16] and [21].

(5) A lesser degree of similarity between the goods and services could be offset by a greater degree of similarity between the marks and vice versa. In the present case, there was a high degree of similarity on both scores and a likelihood of confusion on the part of the public: at [22].

Aristoc, Ld v Rysta Ld (1945) 62 RPC 65 (folld)

Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc [1999] RPC 117 (refd)

Cooper Engineering Company Proprietary Limited v Sigmund Pumps Limited (1952) 86 CLR 536 (distd)

Frank Yu Kwan Yuen v McDonald's Corporation (27 November 2001) (High Court, Chancery Division, UK) (distd)

Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV [2000] FSR 77 (refd)

McDonald's Corp v Future Enterprises Pte Ltd [2005] 1 SLR (R) 177; [2005] 1 SLR 177 (refd)

Pianotist Company Ld for Registration of a Trade Mark, In the Matter of an Application by the (1906) 23 RPC 774 (folld)

Polo/Lauren Co, LP, The v Shop In Department Store Pte Ltd [2006] 2 SLR (R) 690; [2006] 2 SLR 690 (refd)

Richemont International SA v Goldlion Enterprise (Singapore) Pte Ltd [2006] 1 SLR (R) 401; [2006] 1 SLR 401 (folld)

Trade Marks Act 1998 (Act 46 of 1998)s 8 (2) (b) (consd);ss 7 (6),8 (3),8 (4)

Trade Marks Act (Cap 332, 1992 Rev Ed)s 23

Tan Tee Jim SC and Lam Chung Nian (Lee & Lee) for the appellant

Dedar Singh Gill and Penny Leng (Drew & Napier LLC) for the respondent.

Tay Yong Kwang J

1 The appellant's application for registration of the mark “MacCoffee” (“the MacCoffee mark”) was filed on 10 April 2003. It was accepted for registration and was advertised on 17 October 2003. The matter before me involves an appeal from the decision of the Principal Assistant Registrar of Trade Marks (“PAR”) allowing the respondent's opposition and disallowing the appellant's application for registration of the MacCoffee mark.

2 The application relates to class 30 for the following goods:

Coffee; tea; cocoa; coffee based beverages; artificial coffee; cappuccino; cereal preparations (including instant cereal in powder form), ice cream, prepared meals, confectionery, namely candies, sweets, lollipops, liquorice, lozenges, pastilles; cakes, bread, biscuits, jellies (confectionery) and puddings; pastries; snack foods products made from processed flour...