McDonald's Corp v Future Enterprises: Trade Mark Registration Dispute
McDonald's Corporation appealed the High Court's decision to allow Future Enterprises Pte Ltd to register the trade marks 'MacTea,' 'MacChocolate,' and 'MacNoodles.' McDonald's argued that these marks would likely deceive or cause confusion due to the similarity to their 'Mc' prefixed marks and that Future Enterprises acted in bad faith. The Court of Appeal dismissed the appeal, finding no likelihood of deception or confusion and insufficient evidence of bad faith.
1. Case Overview
1.1 Court
Court of Appeal1.2 Outcome
Appeal Dismissed
1.3 Case Type
Intellectual Property
1.4 Judgment Type
Grounds of Decision
1.5 Jurisdiction
Singapore
1.6 Description
McDonald's opposes Future Enterprises' trade mark registration for 'MacTea,' 'MacChocolate,' and 'MacNoodles,' alleging deception and bad faith. The appeal was dismissed.
1.7 Decision Date
2. Parties and Outcomes
| Party Name | Role | Type | Outcome | Outcome Type | Counsels |
|---|---|---|---|---|---|
| Future Enterprises Pte Ltd | Respondent | Corporation | Registration Allowed | Won | |
| McDonald's Corp | Appellant | Corporation | Appeal Dismissed | Lost |
3. Judges
| Judge Name | Title | Delivered Judgment |
|---|---|---|
| Chao Hick Tin | Justice of the Court of Appeal | Yes |
| Tan Lee Meng | Judge | No |
| Yong Pung How | Chief Justice | No |
4. Counsels
4. Facts
- McDonald's opposed Future Enterprises' application to register 'MacTea', 'MacChocolate', and 'MacNoodles'.
- McDonald's claimed the 'Mac' prefix in Future Enterprises' marks would cause confusion with its own 'Mc' prefixed marks.
- Future Enterprises argued it adopted the 'Mac' prefix to project a 'sophisticated and western taste'.
- Future Enterprises' products are instant beverages and noodles sold in supermarkets.
- McDonald's products are primarily sold in its restaurants for immediate consumption.
- McDonald's has a series of registered marks with the 'Mc' prefix.
- Future Enterprises' marks include an eagle device along with the 'Mac' prefix and product name.
5. Formal Citations
- McDonald's Corp v Future Enterprises Pte Ltd, CA 32/2004, [2004] SGCA 50
6. Timeline
| Date | Event |
|---|---|
| Future Enterprises Pte Ltd incorporated. | |
| Future Enterprises produced 'MacCoffee'. | |
| Future Enterprises produced 'MacTea'. | |
| Future Enterprises started selling products locally. | |
| Future Enterprises applied to register 'MacTea', 'MacChocolate' and 'MacNoodles' trade marks. | |
| Appeal heard by the Court of Appeal. | |
| Court of Appeal dismissed the appeal. |
7. Legal Issues
- Likelihood of Deception or Confusion
- Outcome: The court held that the registration of the application marks was not likely to deceive or cause confusion to the public.
- Category: Substantive
- Sub-Issues:
- Visual similarity
- Aural similarity
- Conceptual similarity
- Good Faith in Trade Mark Application
- Outcome: The court found insufficient evidence to support the claim that Future Enterprises' claim to proprietorship of the application marks was not made in good faith.
- Category: Substantive
- Sub-Issues:
- Misappropriation of common distinctive prefix
- Copying of naming system
8. Remedies Sought
- Prevention of Trade Mark Registration
- Injunction
9. Cause of Actions
- Trade Mark Infringement
- Opposition to Trade Mark Registration
10. Practice Areas
- Trade Mark Registration
- Intellectual Property Litigation
11. Industries
- Food and Beverage
- Fast Food
12. Cited Cases
| Case Name | Court | Affirmed | Citation | Jurisdiction | Significance |
|---|---|---|---|---|---|
| Ravenhead Brick Co, Ld v Ruabon Brick & Terra Cotta Co, Ld | N/A | Yes | (1937) 54 RPC 341 | N/A | Cited regarding the potential for confusion arising from similar marks. |
| In the matter of John Fitton & Company Limited’s Application | N/A | Yes | (1949) 66 RPC 110 | N/A | Cited regarding the potential for confusion arising from similar marks. |
| UNIMAX Trade Mark | N/A | Yes | [1979] RPC 469 | N/A | Cited as an example of a series of marks having a common feature. |
| SEMIGRES Trade Mark | N/A | Yes | [1979] RPC 330 | N/A | Cited as an example of a series of marks having a common feature. |
| Re Application by Hardings Manufactures Pty Ltd (“Hardings Manufactures”) | N/A | Yes | (1987) 8 IPR 147 | N/A | Cited regarding the consideration of disclaimed elements in determining deceptive similarity. |
| In the Matter of an Application by Harrods Ld | N/A | Yes | (1935) 52 RPC 65 | N/A | Cited regarding the attention given to uncommon elements in marks with a common denominator. |
| In the Matter of an Application by Smith Hayden & Coy, Ld | N/A | Yes | (1946) 63 RPC 97 | N/A | Cited for the test to determine confusion under Section 15. |
| “Bali” Trade Mark | N/A | Yes | [1969] RPC 472 | N/A | Cited for the test to determine confusion under Section 15. |
| Kellogg Co v Pacific Food Products Sdn Bhd | Court of Appeal | Yes | [1999] 2 SLR 651 | Singapore | Cited for the approach to be taken in determining deception or confusion under Section 15. |
| McDonald’s Corporation v McBagel’s Inc | N/A | Yes | 85 Civ 7868, 10 Dec 1986 | United States | Cited as a case where McDonald's successfully opposed the use of 'McBagel'. |
| J&J Snack Foods Corporation v McDonald’s Corporation | United States Court of Appeals | Yes | United States Court of Appeals, Fed Cit, 17 May 1991 | United States | Cited as a case where McDonald's successfully opposed the use of 'McPretzel'. |
| In the Matter of an Application to Register the Mark McIndians | UK Patent Office | Yes | UK Patent Office, 16 August 1996 | United Kingdom | Cited as a case where an application to register 'McIndians' was refused. |
| Opposition by McDonald’s Corporation to the Registration of the Trade Mark McMint | Australian Trade Mark Office | Yes | Australian Trade Mark Office, 7 November 1997 | Australia | Cited as a case where McDonald's failed to oppose the registration of 'McMint'. |
| Opposition by McDonald’s Corporation to the Registration of the Trade Mark McVeg | Australian Trade Mark Office | Yes | Australian Trade Mark Office, 10 November 1997 | Australia | Cited as a case where McDonald's failed to oppose the registration of 'McVeg'. |
| McDonald’s Corporation v Macri Fruit Distributors Pty Ltd | N/A | Yes | [2000] ATMO 37 | Australia | Cited as a case where McDonald's successfully opposed the registration of 'McSalad' and 'McFresh'. |
| Yuen Yu Kwan Frank v McDonald’s Corporation | N/A | Yes | (2001) WL 1422899 | N/A | Cited as a case where the court allowed the registration of 'McChina'. |
| Harrods Limited v Harrodian School Limited | N/A | Yes | [1996] RPC 697 | N/A | Cited regarding the concept of misappropriation in trade mark law. |
| Tiffany & Co v Fabriques de Tabac Reunies SA | Court of Appeal | Yes | [1999] 3 SLR 147 | Singapore | Cited regarding the likelihood of confusion in trade mark cases. |
| Super Coffeemix Manufacturing Ltd v Unico Trading Pte Ltd | Court of Appeal | Yes | [2000] 3 SLR 145 | Singapore | Cited regarding the sense of an ordinary purchaser in trade mark cases. |
| In the Matter of an Application by the Pianotist Company Ltd | N/A | Yes | (1906) 23 RPC 774 | N/A | Cited regarding the factors to consider in determining likelihood of confusion. |
| In the Matter of Vitamins Ld’s Application | N/A | Yes | [1956] RPC 1 | N/A | Cited regarding the rejection of trade mark applications due to copying. |
| Application by Brown Shoe Co Inc | N/A | Yes | [1959] RPC 29 | N/A | Cited regarding the rejection of trade mark applications due to copying. |
| “GENETTE” Trade Mark | N/A | Yes | [1968] RPC 148 | N/A | Cited regarding the circumstances where a mark based on a previously asserted mark can be allowed. |
| “Royal Enfield” Trade Marks | N/A | Yes | [2002] RPC 24 | N/A | Cited regarding the standard of proof for allegations of bad faith in trade mark applications. |
| McDonald’s Corp v Silcorp Ltd | N/A | Yes | (1989) 24 CPR (3d) 207 | N/A | Cited regarding the inability to claim a monopoly over the use of 'Mc' or 'Mac'. |
| McDonald’s Corp v Coffee Hut Stores Ltd | N/A | Yes | (1994) 55 CPR (3d) 463 | N/A | Cited regarding the lack of inherent distinctiveness of McDonald's marks outside the fast-food business. |
| Future Enterprises Pte Ltd v Tong Seng Produce Pte Ltd | N/A | Yes | [1998] 1 SLR 1012 | Singapore | Cited regarding conflicting explanations for adopting the 'Mac' prefix. |
13. Applicable Rules
| Rule Name |
|---|
| No applicable rules |
14. Applicable Statutes
| Statute Name | Jurisdiction |
|---|---|
| Trade Marks Act (Cap 332, 1992 Rev Ed) | Singapore |
15. Key Terms and Keywords
15.1 Key Terms
- Trade Mark
- Trade Mark Registration
- Deception
- Confusion
- Good Faith
- Proprietorship
- Prefix
- Series of Marks
- Likelihood of Confusion
- Misappropriation
15.2 Keywords
- Trade Mark
- Registration
- Opposition
- McDonald's
- Future Enterprises
- MacTea
- MacChocolate
- MacNoodles
- Confusion
- Deception
- Singapore
17. Areas of Law
| Area Name | Relevance Score |
|---|---|
| Trademarks | 95 |
| Trademark Infringement | 80 |
| Contract Law | 10 |
16. Subjects
- Trade Marks
- Intellectual Property
- Trade Names