September 2004
MacDonalds are MacMiffed over rogue trade mark decision
In a surprise decision MacDonalds have lost their trademark opposition against a food manufacturer in Singapore.
Future Enterprises Pte Limited filed three trade mark applications in Singapore consisting of an eagle logo accompanied by the words "MacTea", "MacNoodles" and MacChocolate" respectively.
MacDonalds believed that the marks were confusingly similar with its globally renowned brand and duly issued an opposition notice.
Although the Singapore registry agreed that MacDonalds does have goodwill and reputation in the prefix "Mac" they did not agree that such a reputation applied to goods and services beyond the restaurant business i.e. instant beverages. All three of the marks opposed were used for instant beverages.
BRIFFA Comment:
This decision is surprising considering that were we to be looking at such an opposition from a UK law perspective a mark would not be registrable if it was confusingly similar for similar goods. We would suggest that any food or drink product with the prefix Mac could reasonably be viewed as causing confusion as to its origin i.e. many consumers may believe the goods to originate form MacDonalds. In addition MacDonald's argument is amplified as it enjoys the additional protection of being seen as a "famous mark" which makes it even harder for applicants to secure a similar registration. It is therefore extremely unlikely that such a mark would be permitted in the UK or as a Community Trade Mark.