Future Enterprises v McDonald's: Likelihood of Confusion Between 'MacCoffee' and 'McCAFÉ' Trademarks
Future Enterprises Pte Ltd applied to register the 'MacCoffee' trademark, which McDonald's Corp opposed. The High Court of Singapore, presided over by Justice Tay Yong Kwang, dismissed Future Enterprises' appeal on September 29, 2006, agreeing with the Principal Assistant Registrar that the 'MacCoffee' mark was too similar to McDonald's' registered 'McCAFÉ' trademark, creating a likelihood of confusion among the public. The case involved a trademark dispute.
1. Case Overview
1.1 Court
High Court1.2 Outcome
Appeal dismissed
1.3 Case Type
Intellectual Property
1.4 Judgment Type
Grounds of Decision
1.5 Jurisdiction
Singapore
1.6 Description
Future Enterprises' 'MacCoffee' trademark application was opposed by McDonald's, owner of the 'McCAFÉ' mark, due to potential public confusion. The court dismissed the appeal, finding visual, aural, and conceptual similarities.
1.7 Decision Date
2. Parties and Outcomes
| Party Name | Role | Type | Outcome | Outcome Type | Counsels |
|---|---|---|---|---|---|
| Future Enterprises Pte Ltd | Appellant | Corporation | Appeal dismissed | Lost | |
| McDonald's Corp | Respondent | Corporation | Opposition allowed | Won |
3. Judges
| Judge Name | Title | Delivered Judgment |
|---|---|---|
| Tay Yong Kwang | Judge | Yes |
4. Counsels
4. Facts
- Future Enterprises applied to register the 'MacCoffee' mark.
- McDonald's opposed the application based on its registered 'McCAFÉ' mark.
- The Principal Assistant Registrar allowed McDonald's' opposition.
- The 'MacCoffee' mark was intended for goods including coffee and coffee-based beverages.
- The 'McCAFÉ' mark was registered for goods including coffee.
- The court considered visual, aural, and conceptual similarities between the marks.
- The court found the goods specified for both marks to be similar.
5. Formal Citations
- Future Enterprises Pte Ltd v McDonald's Corp, OM 49/2005, [2006] SGHC 175
6. Timeline
| Date | Event |
|---|---|
| Application for registration of the mark “MacCoffee” was filed | |
| MacCoffee mark accepted for registration and advertised | |
| McDonald's filed a notice of opposition | |
| Appeal dismissed |
7. Legal Issues
- Likelihood of Confusion
- Outcome: The court found a likelihood of confusion between the 'MacCoffee' and 'McCAFÉ' marks.
- Category: Substantive
- Sub-Issues:
- Visual similarity
- Aural similarity
- Conceptual similarity
- Similarity of goods
- Related Cases:
- [2005] 1 SLR 177
8. Remedies Sought
- Registration of Trade Mark
- Opposition to Trade Mark Registration
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
12. Cited Cases
| Case Name | Court | Affirmed | Citation | Jurisdiction | Significance |
|---|---|---|---|---|---|
| McDonald’s Corp v Future Enterprises Pte Ltd | Court of Appeal | Yes | [2005] 1 SLR 177 | Singapore | Cited as a previous case between the parties involving similar trademarks and goods, although the legal basis for the decision differed. |
| Richemont International SA v Goldlion Enterprise (Singapore) Pte Ltd | N/A | Yes | [2006] 1 SLR 401 | Singapore | Cited for the principle of considering visual, aural and conceptual similarities when comparing trade marks. |
| In the Matter of an Application by the Pianotist Company Ld for the Registration of a Trade Mark | N/A | Yes | (1906) 23 RPC 774 | N/A | Cited for the principle of judging trademarks by their look and sound. |
| Aristoc, Ld v Rysta Ld | N/A | Yes | (1945) 62 RPC 65 | N/A | Cited for the principle of making allowance for imperfect recollection and careless pronunciation and speech when assessing aural similarity. |
| Cooper Engineering Company Proprietary Limited v Sigmund Pumps Limited | N/A | Yes | (1952) 86 CLR 536 | N/A | Cited as an example of a case where there was similarity in only one part of the word. |
| Frank Yu Kwan Yuen v McDonald’s Corporation | High Court, Chancery Division | Yes | (27 November 2001) (High Court, Chancery Division, UK) | UK | Cited as an example of a case where the suffixes are obviously distinct from each other. |
| The Polo/Lauren Co, LP v Shop-In Department Store Pte Ltd | N/A | Yes | [2006] 2 SLR 690 | Singapore | Cited for the principle that courts are wary of allowing companies to monopolise words that are either purely descriptive or used in everyday parlance. |
| Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc | European Court of Justice | Yes | [1999] RPC 117 | N/A | Cited for the principle that a lesser degree of similarity between the goods or services in question may be offset by a greater degree of similarity between the marks and vice versa. |
13. Applicable Rules
| Rule Name |
|---|
| No applicable rules |
14. Applicable Statutes
| Statute Name | Jurisdiction |
|---|---|
| Section 8(2)(b) Trade Marks Act (Act 46 of 1998) | Singapore |
15. Key Terms and Keywords
15.1 Key Terms
- Trade mark
- Likelihood of confusion
- Visual similarity
- Aural similarity
- Conceptual similarity
- Trade mark registration
- Opposition
- McCAFÉ
- MacCoffee
15.2 Keywords
- Trade mark
- Trade mark registration
- Opposition
- McCafe
- MacCoffee
- Singapore
- Intellectual property
- Likelihood of confusion
17. Areas of Law
| Area Name | Relevance Score |
|---|---|
| Trademarks | 95 |
| Commercial Law | 30 |
| Contract Law | 20 |
16. Subjects
- Trade Mark Law
- Intellectual Property