Mr Dogan’s application for ‘MCKebabs’ (having originally applied for the trade mark ‘McKebabs’, the applicant later altered its application to ‘MCKebabs’) covering kebabs was opposed by McDonald’s, which relied on section 60 of the Trade Marks Act.
The opponent led evidence of its reputation in ‘Mc-’ formative trade marks in Australia. Included in the opponent's evidence was details of a plethora of ‘Mc-’ food products offered in Australia as well as promotional items and marketing activities featuring the ‘Mc-’ brand. Collectively, the opponent referred to these as its ‘McXXX’ marks.
The Hearing Officer took the view, consistent with previous Office decisions, that the opponent has a formidable reputation in its ‘McXXX’ marks. Of the opponent's practice to consistently introduce new ‘Mc-’ marks, the Hearing Officer noted, ‘[t]his practice is, in my consideration, so well-known as to be notorious and that most people in Australia must be aware of it’.
Having no doubt as to the reputation enjoyed by the opponent, the Hearing Officer turned to the second requirement under section 60, would confusion be likely.
Despite an argument made by the applicant that the ‘MC’ element of its trade mark was, in fact, a well-known shortening of the term ‘my country’, the Hearing Officer found ‘that confusion would inevitably arise from the Applicant’s use of the Trade Mark. The reputation of the Opponent’s McXXX trade marks is strong and the public has effectively been educated by the Opponent that it (and it alone) coins, registers and uses trade marks according to the formula ‘McFood’ where the variable element ‘Food’ might be anything from burgers to French fries to Chinese or African fare.’
The application was refused.
To view the Office decision, click here.
This article is an extract from Spruson & Ferguson’s monthly summary of Australian Trade Mark Office decisions. You can view the entire month’s summary here.
Principal / Solicitor / Trade Mark Attorney
Litigation Team, Trade Marks Team
Associate / Trade Mark Attorney
Trade Marks Team