McDonald's v Future Enterprises: Trade Mark Registration & Likelihood of Confusion
McDonald's Corporation appealed the decision of the Principal Assistant Registrar of Trade Marks, opposing Future Enterprises Pte Ltd's registration of the trade marks 'MacNoodles & device', 'MacTea & device', and 'MacChocolate & device' in class 30. The High Court of Singapore, presided over by Belinda Ang Saw Ean J, dismissed the originating motions, finding no likelihood of deception or confusion under the Trade Marks Act.
1. Case Overview
1.1 Court
High Court1.2 Outcome
Originating motions dismissed with costs to the applicants.
1.3 Case Type
Intellectual Property
1.4 Judgment Type
Grounds of Decision
1.5 Jurisdiction
Singapore
1.6 Description
McDonald's Corp opposes Future Enterprises' trade mark registration for 'MacNoodles', 'MacTea', 'MacChocolate', arguing deception/confusion. The court dismissed the opposition.
1.7 Decision Date
2. Parties and Outcomes
| Party Name | Role | Type | Outcome | Outcome Type | Counsels |
|---|---|---|---|---|---|
| Future Enterprises Pte Ltd | Applicant, Respondent | Corporation | Registration Allowed | Won | |
| McDonald's Corp | Opponent, Appellant | Corporation | Appeal Dismissed | Lost |
3. Judges
| Judge Name | Title | Delivered Judgment |
|---|---|---|
| Belinda Ang Saw Ean | Judge | Yes |
4. Counsels
4. Facts
- McDonald's opposed the registration of 'MacNoodles', 'MacTea', and 'MacChocolate' by Future Enterprises.
- McDonald's argued the marks were deceptively similar to their 'Mc' prefixed marks.
- Future Enterprises claimed they were inspired by 'Macintosh' computers.
- Future Enterprises sold 'MacCoffee' before expanding to tea, chocolate, and noodles.
- McDonald's operates fast-food restaurants, while Future Enterprises sells instant mixes in supermarkets.
- McDonald's sells third-party beverages like Lipton tea and Milo in their restaurants.
- Future Enterprises disclaimed exclusivity over the words 'Mac', 'Tea', 'Chocolate', and 'Noodles'.
5. Formal Citations
- McDonald's Corp v Future Enterprises Pte Ltd, OM 11/2003/C, 12/2003/G, 13/2003/L, [2004] SGHC 81
6. Timeline
| Date | Event |
|---|---|
| Future Enterprises filed applications for registration of 'MacNoodles & device' and 'MacTea & device'. | |
| Future Enterprises filed application for 'MacChocolate & device'. | |
| Applications for registration of 'MacNoodles & device' and 'MacTea & device' were advertised in the Government Gazette. | |
| Application for 'MacChocolate & device' was advertised in the Government Gazette. | |
| The new Trade Marks Act 1998 (Cap 332, 1999 Rev Ed) came into force. | |
| Principal Assistant Registrar of Trade Marks dismissed McDonald's opposition and allowed registration of Future Enterprises' trade marks. | |
| Judgment reserved. | |
| Future Enterprises Pte Ltd incorporated. |
7. Legal Issues
- Likelihood of Deception or Confusion
- Outcome: The court found no likelihood of deception or confusion.
- Category: Substantive
- Sub-Issues:
- Similarity of marks
- Similarity of goods
- Reputation of earlier mark
- Proprietorship of Trade Mark
- Outcome: The court found that the applicants had a claim to proprietorship.
- Category: Substantive
- Sub-Issues:
- Good faith
- Copying of mark
- Whether proposed trade marks in respect of goods or description of goods identical with or nearly resembling trade mark belonging to opponents
- Outcome: The court found that the goods covered by the applicants’ and opponents’ trade marks are not the same nor of the same description.
- Category: Substantive
8. Remedies Sought
- Prevention of Trade Mark Registration
9. Cause of Actions
- Opposition to Trade Mark Registration
10. Practice Areas
- Trade Mark Registration
- Intellectual Property Litigation
11. Industries
- Food and Beverage
- Restaurant
12. Cited Cases
| Case Name | Court | Affirmed | Citation | Jurisdiction | Significance |
|---|---|---|---|---|---|
| Future Enterprises Pte Ltd v Tong Seng Produce Pte Ltd | High Court | Yes | [1998] 1 SLR 1012 | Singapore | Cited to show TWC's previous testimony regarding the use of the prefix 'Mac'. |
| Tiffany & Co v Fabriques de Tabac Reunies SA | Court of Appeal | Yes | [1999] 3 SLR 147 | Singapore | Cited for the principle that the concept of 'proprietor' in s 12(1) of the Act does not extend to a person who copies another’s mark. |
| In the Matter of Vitamins Ld’s Application | N/A | Yes | [1956] RPC 1 | N/A | Cited as a proprietorship case where the dispute was over the same mark or virtually identical marks. |
| Application by Brown Shoe Company Inc | N/A | Yes | [1959] RPC 29 | N/A | Cited as a proprietorship case where the dispute was over the same mark or virtually identical marks. |
| Auvi Pte Ltd v Seah Siew Tee | N/A | Yes | [1992] 1 SLR 639 | Singapore | Cited as a proprietorship case where the dispute was over the same mark or virtually identical marks. |
| “Genette” Trade Mark | N/A | Yes | [1968] RPC 148 | N/A | Cited as a case where the court found that the applicants had not copied someone else’s mark. |
| Carnival Cruise Lines Inc v Sitmar Cruises Ltd | N/A | Yes | (1994) 120 ALR 495 | Australia | Cited for the principle that opposition under s 12 of the Act can only be made when the mark applied for and an opponent’s mark is either identical or substantially identical. |
| Karu Pty Ltd v Jose | N/A | Yes | (1994) 30 IPR 407 | Australia | Cited for the principle that opposition under s 12 of the Act can only be made when the mark applied for and an opponent’s mark is either identical or substantially identical. |
| The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited | N/A | Yes | (1963) 109 CLR 407 | Australia | Cited for the test to determine whether or not the marks are substantially identical for the purpose of s 12. |
| PB Foods Ltd v Malanda Dairyfoods Ltd | N/A | Yes | (1999) 47 IPR 47 | N/A | Cited to show how the court should compare the marks. |
| Lifestyle 1.99 Pte Ltd v S$1.99 Pte Ltd | N/A | Yes | [2000] 2 SLR 766 | Singapore | Cited for the principle that the concept of selling goods at a fixed price is something that the respondent cannot claim a monopoly on. |
| Lever Brothers, Ld v Bedingfield | N/A | Yes | (1899) 16 RPC 3 | N/A | Cited for the principle that it is not unlawful to adopt the attractive features of a rival’s labelling. |
| Compatibility Research Ltd v Computer Psyche Company Ltd | N/A | Yes | [1967] FSR 63 | N/A | Cited for the principle that it is not unlawful to adopt a method of doing business. |
| Kellogg Co v Pacific Food Products Sdn Bhd | N/A | Yes | [1999] 2 SLR 651 | Singapore | Cited for the applicable principles for determining whether an applicants’ use of the mark would be likely to deceive or cause confusion under s 15 of the Act. |
| In the Matter of an Application by Smith, Hayden & Coy, Ld | N/A | Yes | (1946) 63 RPC 97 | N/A | Cited for the test of likelihood of confusion and deception. |
| “Bali” Trade Mark | N/A | Yes | [1969] RPC 472 | N/A | Cited for the test of likelihood of confusion and deception. |
| In the Matter of an Application by Pianotist Company Ld | N/A | Yes | (1906) RPC 774 | N/A | Cited for guidance as to how the court should go about the comparison between the two marks where the issue of likely confusion has to be determined. |
| Australian Woollen Mills Limited v F S Walton and Company Limited | N/A | Yes | (1937) 58 CLR 641 | Australia | Cited for the principle that the impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. |
| Super Coffeemix Manufacturing Ltd v Unico Trading Pte Ltd | N/A | Yes | [2000] 3 SLR 145 | Singapore | Cited for the educational background of the ordinary person. |
| Sports Cafe Ltd v Registrar of Trade Marks | N/A | Yes | (1998) 42 IPR 552 | N/A | Cited for the principle that the fact that two marks convey a common idea becomes relevant only if the marks themselves look or sound alike. |
| UNIMAX Trade Mark | N/A | Yes | [1979] RPC 469 | N/A | Cited as an illustration of the existence of a “series” of marks and the degree of recognition evoked therefrom. |
| In the matter of an Application by Beck Koller & Company (England) Limited | N/A | Yes | (1947) 64 RPC 76 | N/A | Cited as an illustration of the existence of a “series” of marks and the degree of recognition evoked therefrom. |
| SEMIGRES Trade Mark | N/A | Yes | [1979] RPC 330 | N/A | Cited as an illustration of the existence of a “series” of marks and the degree of recognition evoked therefrom. |
| Wagamama Ltd v City Centre Restaurants plc | N/A | Yes | [1995] FSR 713 | N/A | Cited to show that the “caused to wonder test” is not as wide as a mere non-commercial association. |
| Yuen Yu Kwan Frank v McDonald’s Corporation | Chancery Division | Yes | [2001] WL 1422899 | United Kingdom | Cited as a case where the court did not consider that there was any real prospect of confusion or deception. |
| Harrods Limited v Harrodian School Limited | N/A | Yes | [1996] RPC 697 | N/A | Cited for the reasoning that the further removed the applicants are from the other in the respective line of business or field of activities, the less likely it is that any member of the public could reasonably be confused into thinking that the applicants’ business is connected with the opponents. |
| Pioneer Hi-Bred Corn Company v Hy-Line Chicks Pty Ltd | N/A | Yes | [1979] RPC 410 | N/A | Cited for the principle that for a case of this sort, a judge should be able to form his or her own view of the matter, especially where the goods or services in question are familiar and inexpensive. |
13. Applicable Rules
| Rule Name |
|---|
| No applicable rules |
14. Applicable Statutes
| Statute Name | Jurisdiction |
|---|---|
| Trade Marks Act (Cap 332, 1992 Rev Ed) | Singapore |
| Trade Marks Act 1998 (Cap 332, 1999 Rev Ed) | Singapore |
| Section 12 Trade Marks Act (Cap 332, 1992 Rev Ed) | Singapore |
| Section 15 Trade Marks Act (Cap 332, 1992 Rev Ed) | Singapore |
| Section 23 Trade Marks Act (Cap 332, 1992 Rev Ed) | Singapore |
| Section 2(3) Trade Marks Act | Singapore |
15. Key Terms and Keywords
15.1 Key Terms
- Trade mark
- Registration
- Opposition
- Deception
- Confusion
- Proprietorship
- MacNoodles
- MacTea
- MacChocolate
- McLanguage
- Likelihood of association
15.2 Keywords
- Trade mark registration
- Trade mark opposition
- Likelihood of confusion
- Proprietorship
- MacNoodles
- MacTea
- MacChocolate
- McDonald's
- Future Enterprises
17. Areas of Law
| Area Name | Relevance Score |
|---|---|
| Trademarks | 95 |
| Commercial Law | 5 |
| Corporate Law | 5 |
16. Subjects
- Trade Marks
- Intellectual Property