The Power of the McTrademark!

Giant global fast-food conglomerate McDonalds has successfully opposed the registration of “McKosher” in Australia.

Although McDonalds do not have a registered trade mark in Australia for “McKosher”, McDonalds argued that many of their registered and unregistered trade marks incorporate the prefix “Mc”, which are of the ilk, ‘McFood’ where the element ‘Food’ is variable and may refer to, for example, Chicken or Beef as ingredients of burgers and other take away foods.

The applicant, Mark Vincent Glaser (‘Glaser’), applied to trade mark “McKosher” in classes 29 (natural food products including meat), 30 (other food products including those containing flour), class 32 (beverages) and class 43 (Services for providing food and drink) for his proposed restaurant business located in Mclean, New South Wales.

Glaser claimed he was of Scottish Jewish descent and one of his ancestors’ surnames included McKosher, hence why he desired to use the name for his business selling and serving kosher meals and products. Glaser also argued that for many years people of the township of Mclean have publicly used the “Mc” and “Mac” prefix to describe and market many activities. On this basis Glaser argued that his trade mark would be seen in the context of that locality as well as being a play on the ‘Scottishness’ of that locale.

Under section 60 of the Trade Marks Act, the registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

• Another trade mark had, before the priority date for the registration of the first mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
• Because of the reputation of that other trade mark, the use of the first mentioned trade mark would be likely to deceive or cause confusion.

In this case it was found that “McDonalds operations under its McXXX formative trade marks and coinages of further McXXX formative trade marks as a collective have a very strong reputation in Australia”.

It was held that “Glaser’s trade mark and McDonald’s McXXX formative trade marks are conceptually identical and share the McXXX coinage where the XXX part of the trade mark has a denotation in relation to foodstuffs and related services”. Accordingly it was held that “Glaser’s trade mark is likely to be seen as being part of the same ‘family’” and therefore there is a reasonable likelihood that people, on seeing the trade mark, will wonder if there is some connection between the food-related goods and services offered by Glaser and those offered by McDonalds.

As McDonalds has successfully established its opposition under section 60 of the Trade Marks Act, the Registrar must now decide to either refuse to register the trade mark or register the trade mark with conditions or limitations having regard to the extent to which any ground on which the application was opposed has been established.

The Trade Marks Hearings Officer also awarded, at McDonalds’ request, that Glaser pay McDonalds costs in accordance with schedule 8 of the Trade Mark Regulations 1995.

A big Mcwin for McDonalds!