Mcdonald’s Corp V Future Enterprises Pte Ltd [2005] 1 Slr 177 - Case Presentation

McDonald’s Corp V Future Enterprises Pte Ltd [2005] 1 SLR 177

Fact of the case: The respondent’s co., [FE] was in the computer business for ten years before switching to manufacture ‘instant’ beverages and noodles. The products are targeted for Russia and Vietnam markets. To project a ‘Western taste’, FE adopted the prefix ‘Mac’, claiming it came from the word Macintosh. Apart from the prefix ‘Mac’, FE added a stylised American eagle as part of the pictorial part of the application marks.

June 1994  1st [beverage] product = MacCoffee October 1994  2nd [beverage] product = MacTea Not long after  3rd [beverage] product = MacChocolate and 4th product = MacNoodles December 1994  Sells locally 1995  Applied to register MacTea, MacChocolate & MacNoodles in class 30 including the eagle device  Applications opposed by the appellant  went to PAR app. failed  appealed to High Court  FE won  appealed to COA [present case]

Grounds of appeal: S. 12(1) of the Trade Mark Acts [Singapore]  The respondent’s claim was not made in good faith S. 15 of the Trade Mark Acts [Singapore]  The registration of the three marks would likely deceive or cause confusion to the public S.23(1) of the Trade Mark Acts [Singapore]  That the application marks were identical with or nearly resembled the trademarks belonging to the appellant [this ground was dismissed by the appellant in this appeal]

Note: Section 15 covers many things but in this case, the focus is on ‘being likely to deceive or cause confusion’.

Arguments [on S.15]: ‘Mc’ is an essential feature of their marks. Adoption of ‘Mac’ by respondent may indicates that the respondent’s product came from the same source Respondent’s mark application was a descriptive of the product Some companies sell their products at supermarkets [such as Haagen Dazs and Movenpick Ice Cream]

Analysis between Respondent’s application and appellant’s mark:

Application mark = intergrated design comprising an eagle device and a smaller word component Appellant’s mark = the McDonald’s word on a red background coupled with the Golden Arches – recognised. Every product sold with package that bears the golden archers. Different in term of colours, font, and typeface

However, one of the other point argued by the appellant is that in a composite word & device mark, purchaser may get confused with the similarities between the word portions of the two marks.

Argument [on S.12(1)]: Respondent applied the marks in bad faith as FE copied the appellant’s mark.

Judgment: Appeal dismissed

Reasons for judgment: The appellant want to monopolise the prefix ‘Mc’ and ‘Mac’ [which in court’s view is similar] in all food and beverages segments albeit the fact that its mark is only registered in class 42 – restaurant and catering service 9 years after the application for the three marks, McDonald’s still sell its products at its outlets and not at supermarkets

While respondent’s product is ‘instant’ in a way that it is not readily consumable, the appellant products are immediately consumable and so, their products are different in nature Even if a person get confused, the law assumes that every customer will use ordinary care and intelligence.

As the appeal under Section 15 failed, automatically the appellant’s appeal under Section 12 failed. [If there was no problem for the respondent to use the prefix ‘Mac’ for ‘MacTea, MacChocolate’ etc, why would the use be bad faith to the appellant then?]

Significance of the case: S. 14 (1)(a) – shall not register if it is likely to deceive or cause confusion to the public = the appellant’s ground of appeal S. 14(1)(d) – shall not register if identical to well-known mark in Malaysia for same goods of another proprietor S. 14(1)(e) – not the same good – but the use can caused damage to the proprietor S. 24 – Registration of series of marks

S. 25(1) – Registration of marks [ground referred to by the appellant for their 2nd ground of appeal] S. 37(b) – Registration not conclusive for offends against Section 14 S. 38 – Infringement = If a person not a proprietor and used a trademark similar or identical to the registered trademark and caused confusion