McDonald's Corp v Future Enterprises Pte Ltd

• Jurisdiction: Singapore
• Judge: Chao Hick Tin JA
• Judgment Date: 03 November 2004
• Neutral Citation: [2004] SGCA 50
• Date: 03 November 2004
• Subject Matter: Whether respondent's claim to proprietorship of application marks made in good faith,Section 15 Trade Marks Act (Cap 332, 1992 Rev Ed),Whether substantial identity between rival marks necessary for inference of bad faith or misappropriation,Registration,Whether visual or aural similarity between rival marks existing,Whether respondent misappropriating common distinctive prefix of appellant's family of marks,Whether decisive factor in assessment of likelihood of deception or confusion,Section 12(1) Trade Marks Act (Cap 332, 1992 Rev Ed),Trade Marks and Trade Names,Whether registration of application marks likely to deceive or cause confusion to public,Well-known trade mark,Respondent's use of essential feature in appellant's series of marks,Opposition to registration of trade marks
• Docket Number: Civil Appeal No 32 of 2004
• Published date: 05 November 2004
• Defendant Counsel: Tan Tee Jim SC and Elaine Tan (Allen and Gledhill)
• Court: Court of Appeal (Singapore)
• Plaintiff Counsel: Davinder Singh SC, Dedar Singh Gill and Penny Leng (Drew and Napier LLC)

3 November 2004

Chao Hick Tin JA (delivering the judgment of the court):

1 This appeal related to the appellant’s, McDonald’s Corporation (“McDonald’s”), opposition to the application for registration of three trade marks under class 30 by the respondent, Future Enterprises Pte Ltd (“FE”). The three application marks are set out in the annex to this judgment. The appellant’s application failed before the Principal Assistant Registrar of Trade Marks (“the principal assistant registrar”), as well as before the High Court (see [2004] 2 SLR 652). The appellant pursued the matter before this court. We heard the appeal on 20 September 2004 and dismissed it as we were not satisfied that it had shown that the decision of the High Court to allow the registration of the application marks was erroneous. We now give our reasons.

The facts

2 The appellant, McDonald’s, needs no introduction. It is a world-renowned fast-food chain. It has had a presence here since the mid-seventies. In 1999, in Singapore alone, there were 108 McDonald’s restaurants. These restaurants were and are operated on a franchised basis. The appellant has advertised its products extensively in Singapore as well as in other parts of the world. The appellant has, inter alia, the following marks registered here:

(a) BIG MAC – in class 29 and class 30

(b) MAC FRIES – in class 29

(c) SUPERMAC – in class 29

(d) EGG McMuffin – in classes 29 and 30

(e) McChicken – in class 30

(f) McNuggets – in classes 29 and 30

including, of course, the main mark “McDonald’s”.

3 The respondent, FE, was incorporated in 1982. For its first ten years, FE was in the computer business. In 1994, FE switched its business to that of manufacturing “instant” beverages and noodles. The man behind FE was, and still is, its marketing director, Mr Tan Wang Cheow (“TWC”). He studied the market conditions and felt that he should target his products for consumers in emerging markets such as Russia and Vietnam, and that such products should project the image of a “sophisticated and western taste”. He adopted the prefix “Mac” from the well-known Macintosh computer produced by Apple Computers to identify his products, thinking that it would help FE’s products in attaining such a “sophisticated and western” image. He also chose a stylised American eagle to form the pictorial part of the application marks for much the same reason. FE sold its products to its previous computer vendors who were familiar with Macintosh computers and the prefix “Mac”.

4 The first beverage product which FE turned out was the instant coffee mix which it labelled “MacCoffee”. That was in June 1994. Demand for it from the overseas markets was good, thus confirming that the choice of the prefix “Mac” was correct. In October 1994, FE produced instant tea mix and labelled it “MacTea” together with the use of the eagle device. This was followed in quick succession by “MacChocolate”, an instant cocoa mix, as well as “MacNoodles”, a quick-cooking noodle. It was only in December 1994 that FE started to sell its products locally.

5 In 1995, FE applied to register the three application marks, “MacTea”, “MacChocolate” and “MacNoodles” in class 30 and, in each case, with the eagle device. These applications were opposed by the appellant, leading to the proceedings before the principle assistant registrar and the appeal to the High Court.

6 We should add that as FE’s applications for registration were effected in 1995, before the current Trade Marks Act (Cap 332, 1999 Rev Ed) came into effect in 1999, the provisions of the previous Trade Marks Act (Cap 332, 1992 Rev Ed) governed the present action. We will hereafter refer to the previous Act as “the Act”.

7 In the proceedings below, the appellant opposed the three trade mark applications on three grounds:

(a) under s 12(1) of the Act – that the respondent’s claim to proprietorship of the three marks was not made in good faith as it had copied the common distinctive prefix of the appellant’s family of marks, namely, “Mc”;

(b) under s 15 of the Act – that the registration of the three marks would likely deceive or cause confusion to the public; and

(c) under s 23(1) of the Act – that the application marks were identical with or nearly resembled the trade marks belonging to the appellant.

8 In the High Court, while the trial judge accepted that FE had adopted the appellant’s naming system of using “Mac” (or “Mc”) as a prefix, followed by a fast‑food descriptive, she found that the application marks were not “substantially identical” with the family of marks of the appellant. She did not think that “MacTea”, “MacNoodles” and “MacChocolate” were substantially the same as the appellant’s marks such as “McChicken”, “McNuggets” and “McMuffin”. The differences were rendered all the more distinct by the presence of the eagle device in the application marks. The judge, therefore, held that there was no infringement of s 12.

9 As for the objection under s 15, the trial judge did not think that the subject marks were confusingly similar, either visually or orally, with the appellant’s marks. Moreover, the goods covered by the application marks were different from those to which the appellant’s family of marks applied.

10 Before us, the appellant abandoned their third ground of objection. With regard to the other two grounds, it placed particular emphasis on the s 15 ground of deception and confusion.

Section 15: deception and confusion

11 We will first examine the objection under s 15 of the Act, which provides:

It shall not be lawful to register as a trade mark or part of a trade mark any matter the use of which would, by reason of its being likely to deceive or cause confusion or otherwise, be disentitled to protection in a court of justice, or would be contrary to law or morality, or any scandalous design.

12 While s 15 covers a number of things, for the purposes of the present action, the appellant raised only that aspect of s 15 relating to “being likely to deceive or cause confusion”.

Arguments of appellant

13 The crux of the appellant’s case was that, in all their marks, the common distinctive syllable was the prefix “Mc” which was the essential feature which links all their marks. Because of that, the adoption by the respondent of the prefix “Mac” in the application marks could give the impression that the respondent’s products came from the same source as that of the appellant’s. This would lead to confusion: see Ravenhead Brick Co, Ld v Ruabon Brick & Terra Cotta Co, Ld (1937) 54 RPC 341 and In the matter of John Fitton & Company Limited’s Application (1949) 66 RPC 110.

14 In this regard, the appellant relied, in particular, upon two passages from Kerly’s Law of Trade Marks and Trade Names (12th Ed, 1986) (“Kerly’s”) at paras 17‑13 and 17‑14:

Importance of first syllable

It has been accepted in several reported cases that the first syllable of a word mark is generally the most important. It has been observed in many cases that there is a “tendency of persons using the English language to slur the terminations of words.”

Series of marks

Where there are a “series” of marks, registered or unregistered, but in use, having a common feature or a common syllable and where all the marks in such a series belong to an opponent, these are generally circumstances adverse to an applicant for a mark containing the common feature, since the public might think that such a mark indicated goods coming from the same source; the strength of this “series” objection depending on how distinctive the common feature is. [emphasis added].

15 Moreover, what the respondent had added to each of the application marks was the non-distinctive element, a descriptive of the product. The fact that the appellant’s marks such as “McChicken” and “McNuggets” appeared only in the menu of the appellant’s restaurants should be immaterial. Otherwise, it would mean that a third party who used the mark “McNuggets” on frozen chicken nuggets without the golden arches would be in order. Moreover, evidence was adduced to show that business enterprises like the appellant also sell their products in supermarkets, eg, Häagen-Dazs ice-cream, Mövenpick ice-cream and Starbucks coffee.

16 An example of a series of marks having a common feature cited by the appellant was UNIMAX Trade Mark [1979] RPC 469 where the opponent had used and registered a series of marks containing the prefix “UNI” on their marks, eg, “UNISERVO”, “UNISCOPE” and “UNISET”. There, the registrar, in construing the English equivalent of our s 15, held at 477:

Having regard to the evidence that the opponents are the only persons having a reputation in a series of UNI marks in the computer field, and looking at the marks UNIVAC and UNIMAX as wholes while bearing the foregoing in mind, I am of the opinion that … there is a likelihood [of] confusion or deception …

We would, however, point out that in UNIMAX the marks of the parties were to be used on very similar goods, namely electrical apparatus and electronic goods. There was also evidence from independent witnesses that people would think that “UNIMAX” was related to the opponent.

17 Another case quoted is SEMIGRES Trade Mark [1979] RPC 330 where an application to register the word mark “SEMIGRES” was successfully opposed by the opponent who had registered a series of marks in relation to tiles with the prefix “Sem”. The applicant also intended to use the proposed mark in relation to tiles. Thus, in applying this case it must be borne in mind that the proposed mark was to be used for similar goods.

18. The appellant submitted that the trial judge was in error in her treatment of a case involving a “series” of marks when she said (see [1] supra at [46]):

I agree with Mr Tan’s [counsel for FE] analysis that the existence of a “series” of marks and the degree of recognition evoked therefrom is but one factor, which along with others, the court would have to take into account in the overall assessment of...