Future Enterprises v McDonald's: Trade Mark Dispute over 'MacCoffee' and 'McCAFÉ'
Future Enterprises Pte Ltd appealed against the decision to allow McDonald's Corporation's opposition to the registration of the trade mark “MacCoffee”. The Court of Appeal of Singapore, on 28 March 2007, dismissed the appeal, agreeing with the lower court's findings that the “MacCoffee” mark was similar to the “McCAFÉ” mark and that there was a likelihood of confusion among the public. The court also rejected Future Enterprises' argument that its prior unregistered right to the “MacCoffee” mark should restrict McDonald's rights.
1. Case Overview
1.1 Court
Court of Appeal of the Republic of Singapore1.2 Outcome
Appeal dismissed with costs.
1.3 Case Type
Intellectual Property
1.4 Judgment Type
Grounds of Decision
1.5 Jurisdiction
Singapore
1.6 Description
Future Enterprises' 'MacCoffee' trade mark application opposed by McDonald's, owner of 'McCAFÉ'. Court dismisses appeal, finding similarity and likelihood of confusion.
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 Upheld | Won |
3. Judges
| Judge Name | Title | Delivered Judgment |
|---|---|---|
| Chan Sek Keong | Chief Justice | Yes |
| Andrew Phang Boon Leong | Justice of the Court of Appeal | No |
| Tan Lee Meng | Judge | No |
4. Counsels
4. Facts
- Future Enterprises applied to register “MacCoffee” as a trade mark in Class 30.
- McDonald's opposed the application based on its prior registration of “McCAFÉ” in Class 30.
- Future Enterprises restricted the class of goods to “instant coffee mix”.
- McDonald's had not used the “McCAFÉ” mark in relation to Class 30 goods.
- Future Enterprises was already the registered proprietor of the “MacCoffee and eagle device” for goods in Class 30.
- Future Enterprises had used the composite mark to market its instant coffee mix, principally abroad.
- Future Enterprises argued it had prior unregistered rights to the “MacCoffee” mark.
5. Formal Citations
- Future Enterprises Pte Ltd v McDonald's Corp, CA 73/2006, [2007] SGCA 18
6. Timeline
| Date | Event |
|---|---|
| Future Enterprises Pte Ltd applied to register the trade mark “MacCoffee” in Class 30. | |
| The word mark was accepted for registration and advertised. | |
| McDonald’s Corporation filed an opposition to the application based on its prior registration of the trade mark “McCAFÉ”. | |
| The Principal Assistant Registrar of Trade Marks upheld the opposition. | |
| Tay Yong Kwang J dismissed Future Enterprises Pte Ltd’s appeal. | |
| Court of Appeal dismissed the appeal. |
7. Legal Issues
- Trade Mark Similarity
- Outcome: The court found sufficient visual, aural, and conceptual similarities between the “MacCoffee” and “McCAFÉ” marks.
- Category: Substantive
- Sub-Issues:
- Visual Similarity
- Aural Similarity
- Conceptual Similarity
- Likelihood of Confusion
- Outcome: The court agreed with the lower court's finding that there was a likelihood of confusion on the part of the public.
- Category: Substantive
- Prior Unregistered Rights
- Outcome: The court rejected the argument that Future Enterprises' prior unregistered right to the “MacCoffee” mark should restrict McDonald's rights.
- Category: Substantive
8. Remedies Sought
- Registration of Trade Mark
9. Cause of Actions
- Trade Mark Opposition
10. Practice Areas
- Trade Mark Registration
- Trade Mark Opposition
11. Industries
- Food and Beverage
12. Cited Cases
| Case Name | Court | Affirmed | Citation | Jurisdiction | Significance |
|---|---|---|---|---|---|
| Reef Trade Mark | UK Trade Mark Registry | Yes | [2003] RPC 5 | United Kingdom | Cited for the principle that an appellate court should show reluctance to interfere with findings of fact in trade mark applications absent a material error of principle. |
| SC Prodal 94 SRL v Spirits International NV | High Court of Justice | Yes | [2003] EWHC 2756 (Ch) | England and Wales | Cited for the principle that an appellate court should not overturn a decision of the Trade Mark Registry simply because it might have decided the case differently. |
| Sunrider Corporation v Vitasoy International Holdings Ltd | High Court of Justice | Yes | [2007] EWHC 37 (Ch) | England and Wales | Cited for endorsing the approach that an appellate court should not disturb the findings of fact of a trade mark tribunal unless there is a material error of principle. |
| Wagamama Ltd v City Centre Restaurants plc | Unspecified | No | [1995] FSR 713 | Unspecified | Cited to support the idea that trade mark infringement is more a matter of feel than science. |
| The Polo/Lauren Co, LP v Shop-In Department Store Pte Ltd | Unspecified | No | [2006] 2 SLR 690 | Singapore | Cited to support the idea that trade mark infringement is a matter of perception. |
| Sprints Ltd v Comptroller of Customs (Mauritius) | Privy Council | No | [2000] FSR 814 | Mauritius | Cited regarding the establishment of trade mark proprietorship through use in other countries and international reputation. |
| Future Enterprises Pte Ltd v McDonald’s Corporation | Intellectual Property Office of Singapore | Yes | [2005] SGIPOS 21 | Singapore | The decision of the Principal Assistant Registrar of Trade Marks (PAR) who allowed the opposition of McDonald’s Corporation (“the respondent”) to the registration of the trade mark “MacCoffee” |
| Future Enterprises Pte Ltd v McDonald’s Corporation | Unspecified | Yes | [2006] 4 SLR 629 | Singapore | The trial judge affirmed the findings of the PAR that, (a) there were sufficient visual, aural and conceptual similarities between the marks; (b) the goods of the parties were similar if not identical; and (c) there was a corresponding likelihood of confusion on the part of the public |
13. Applicable Rules
| Rule Name |
|---|
| No applicable rules |
14. Applicable Statutes
| Statute Name | Jurisdiction |
|---|---|
| Trade Marks Act (Cap 332, 2005 Rev Ed) | Singapore |
| Trade Marks Act (Cap 332, 2005 Rev Ed) s 4(2) | Singapore |
| Trade Marks Act (Cap 332, 2005 Rev Ed) s 8(7)(a) | Singapore |
| Trade Marks Act (Cap 332, 2005 Rev Ed) s 23(3)(b) | Singapore |
| Trade Marks Act (Cap 332, 2005 Rev Ed) s 28(2) | Singapore |
15. Key Terms and Keywords
15.1 Key Terms
- Trade Mark
- Registration
- Opposition
- Likelihood of Confusion
- Prior Unregistered Rights
- Instant Coffee Mix
- McCAFÉ
- MacCoffee
- Composite Mark
15.2 Keywords
- trade mark
- mccafe
- maccoffee
- singapore
- intellectual property
- trade mark law
17. Areas of Law
| Area Name | Relevance Score |
|---|---|
| Trademarks | 95 |
| Trademark Infringement | 90 |
| Trademark Law | 85 |
| Administrative Law | 20 |
16. Subjects
- Trade Marks and Trade Names
- Intellectual Property