McDonald's Corp v Future Enterprises Pte Ltd

CourtHigh Court (Singapore)
JudgeBelinda Ang Saw Ean J
Judgment Date26 April 2004
Neutral Citation[2004] SGHC 81
Citation[2004] SGHC 81
Defendant CounselTan Tee Jim SC and Low Pei Lin (Allen and Gledhill)
Plaintiff CounselDavinder Singh SC, Dedar Singh Gill and Penny Leng (Drew and Napier)
Published date27 May 2004
Docket NumberOriginating Motions Nos 11, 12 and 13 of 2003
Date26 April 2004
Subject MatterRegistration,Trade Marks and Trade Names,Whether applicants proprietors of proposed trade marks,Opposition to registration of trade marks,Sections 12, 15, 23 Trade Marks Act (Cap 332, 1992 Rev Ed),Whether proposed trade marks calculated to deceive or to cause confusion,Whether proposed trade marks in respect of goods or description of goods identical with or nearly resembling trade mark belonging to opponents

26 April 2004

Judgment reserved

Belinda Ang Saw Ean J:

1 These three originating motions, heard together, are brought by McDonald’s Corporation (“the opponents”) who are appealing against the decision of the Principal Assistant Registrar of Trade Marks given on 23 April 2003 dismissing their opposition to and allowing registration of the following trade marks in class 30:

(a) “MacNoodles & device” (TM No 6229/95) in respect of “instant noodles”;

(b) “MacTea & device” (TM No 6230/95) in respect of “instant tea mix”;

(c) “MacChocolate & device” (TM No 6231/95) in respect of “instant chocolate mix”.

The application trade marks are depicted below:

TM No 6229/95

TM No 6230/95

TM No 6231/95

2 The applicants are Future Enterprises Pte Ltd. Their applications for registration of “MacNoodles & device” and “MacTea & device” in class 30 were filed on 8 July 1995 and advertised in the Government Gazette on 24 July 1998. Their application for “MacChocolate & device” in class 30 was filed on 8 July 1995 and advertised in the Government Gazette on 18 June 1999. The applications were all made before the new Trade Marks Act 1998 (Cap 332, 1999 Rev Ed) came into force on 15 January 1999. As provided for in the transitional provision of the Trade Marks Act 1998, the provisions of the Trade Marks Act (Cap 332, 1992 Rev Ed) (“the Act”) continue to govern these oppositions.

3 Mr Davinder Singh SC appeared with Mr Dedar Singh Gill for the opponents. Mr Tan Tee Jim SC is for the applicants.

4 The applications for registration were opposed on a number of grounds. Three grounds were argued before the Principal Assistant Registrar, as appears from her decision. The first and main ground was the argument that the proposed trade marks were calculated to deceive or to cause confusion. This is the s 15 issue. The second ground was based on s 23 of the Act. Section 12 was also raised in opposition.

5 At the first session of the hearing of the originating motions, Mr Davinder Singh applied to admit additional evidence as well as for leave to cross-examine Tan Wang Cheow (“TWC”) who had filed statutory declarations on behalf of the applicants. The application to cross-examine related to the issue of good faith in s 12 of the Act. I allowed the application to cross-examine TWC. As for the other application to admit additional evidence that is related to the issue in s 15 of the Act, I made no order on the application.

Section 12(1) of the Act

6 I propose to consider first the arguments under s 12(1) of the Act. The opponents’ case is that the applicants cannot claim to be the proprietors of the application marks as they had copied the opponents’ “Mac” mark and the so-called “McLanguage” of naming products with the prefix “Mc” followed by a fast food descriptive. Accordingly, the applicants’ claim to proprietorship is made in bad faith. Section 12(1) of the Act provides:

Any person claiming to be the proprietor of a trade mark used or proposed to be used by him who is desirous of registering it shall apply in writing to the Registrar in the prescribed manner for registration in Part A or B of the register.

7 The opponents have numerous registered marks in Singapore. Prior to 1995, the opponents had used the following registered trade marks containing the prefix “Mc” in class 30: “McNuggets”, “McChicken”, “Egg McMuffin” and “Sausage McMuffin”. Since 1995, the following additional marks were used in relation to their food products: “Chicken McSpaghetti”, “McPepper Burger” and “McSalmon Burger”. Significantly, the word component of the application mark is “MacTea” for instant tea mix (and “MacChocolate” for instant cocoa mix and “MacNoodles” for instant noodles). All three application marks use the prefix “Mac” which is phonetically equivalent to “Mc”.

8 The opponents assert proprietorship in the family of marks (ie “Mc” prefix plus fast food descriptive) in relation to fast food and beverage not only by registering them but through extensive use and advertising. In McDonald’s, the names of meals have the word “Mc” or “Mac” contained somewhere. So, the word “Mc” and “Mac”, either as a prefix or as a word by itself in their fast food products, is well known to the fast food trade and public who have come to associate products which contain the prefix “Mc” and “Mac” with those of the opponents.

9 On the subject of reputation, the opponents tendered as evidence of their international reputation, the history of McDonald’s and the many advertisements placed throughout the world. The assistant general counsel of McDonald’s, James Elgass, stated in his statutory declaration dated 30 November 1999 that the company operated more than 24,800 restaurants in more than 100 countries. In 1999, the company had 108 outlets in Singapore. Annual turnover for 1988 amounting to $77.95m increased to $230.89m in 1998. The McDonald’s franchise has, over the years, become a recognised icon of the USA and epitomises something distinctly American.

10 There is evidence that large sums of money were spent on advertisements to advertise the opponents’ products and special promotions whilst keeping the brand name “McDonald’s” and the two golden arches set on red background logo within the public eye. Advertising expenditure in Singapore alone in 1988 was $3.47m. This increased annually to $11.01m by 1998.

11 The applicants claim to be the proprietors at common law of each of the application marks. The application marks were conceived and created by them and have been used by them for many years in a number of countries including Singapore before filing the applications for registration. In his statutory declaration, TWC explained that the applicants were incorporated on 16 September 1982. Between 1982 and 1994, the applicants were in the computer and computer-related business. But later in 1994, they changed business and concentrated on the “instant” beverages and foods business after noting the successful introduction of various brands of 3-in-1 and 2-in-1 type of beverages into the market. They then explored avenues to develop a product range that would appeal to consumers in emerging markets. After studying the trends and taste preference of the initial markets, namely Russia and Vietnam, the applicants adopted a product image that would convey a sophisticated and Western taste. The applicants chose the logo of the stylised American eagle to portray a Western and capitalistic image.

12 The applicants commenced manufacture of the instant tea mix and instant cocoa mix in October and November 1994 respectively. They started to export instant tea mix bearing the application trade mark in December 1994 to countries such as Russia, Kazakhstan, Ukraine, Uzbekistan, Hungary, Thailand, Vietnam, Pakistan, Middle East, Malaysia, Myanmar and Sri Lanka. There have been domestic sales of instant tea mix since December 1994. Export sales of instant cocoa mix started in December 1994. The applicants have been using the application mark “MacNoodles” in Singapore in since December 1994. Export sales of instant noodles started in January 1995.

13 TWC stated in his statutory declaration that the applicants have spent time, effort and expense in promoting their products bearing the eagle device by participating in exhibitions and overseas food fairs; advertising in local and foreign trade magazines, in yellow pages listings and on television. It is to be noted that the applicants first used the eagle device in conjunction with the word “MacCoffee” for 3-in-1 and 2-in-1 instant coffee mix. In 1994, the applicants spent $94,000 on advertising and promotions. Advertising expenditure increased to $1.36m in 1997.

14 TWC explained that in the computer trade, the Macintosh (a computer manufactured by Apple Computer, Inc), was well known and was always referred to as “Mac” or “the Mac”. Macintosh users are called “Mac users”. The applicants were inspired, according to TWC, to use the word “Mac” for their new line of products. Many of the applicants’ previous purchasers of computer-related goods imported their instant food and beverage products. After final approval of the artwork, packaging for the instant mix was printed. The different package designs for the four different types of instant tea mix, cocoa mix and instant noodles were modified from the package design for the instant coffee mix.

15 TWC’s explanation on how the applicants adopted the word “Mac” for their products on the face of it differs from their position in Future Enterprises Pte Ltd v Tong Seng Produce Pte Ltd [1998] 1 SLR 1012. TWC had testified, at the earlier proceedings, that the applicants used the prefix “Mac” in their marks for instant 3-in-1 coffee mix (MacCoffee), tea mix (MacTea) and chocolate mix (MacChocolate) as it was in Western English-speaking countries an informal term for addressing persons whose names were not immediately known.

16 Mr Davinder Singh submits that TWC had not in cross-examination satisfactorily explained how the applicants came to use the word “Mac”. Not only was TWC evasive in his testimony, his contradictory answers have shown him up as an untruthful witness. Since the applicants wanted to convey the impression of a sophisticated, Western, capitalistic “American” taste, it follows, so the argument runs, that the use of McDonald’s well known “Mac” or “Mc” mark would be a perfect fit, given McDonald’s worldwide reputation for being a Western capitalist fast food company and its international status as an American icon. The applicants, in adopting the word “Mac” plus a food product, are seeking to or are taking advantage of the opponents’ reputation. The application marks were thus not chosen in good faith.

17 Mr Tan’s position in argument is that both explanations are not inconsistent as they each convey the same Western and capitalistic image for the goods that the applicants are promoting and selling in communist countries. There was no copying or...

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1 books & journal articles
  • Intellectual Property Law
    • Singapore
    • Singapore Academy of Law Annual Review No. 2004, December 2004
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