Trade mark decision

BL Number

O/049/01

Decision date

1 February 2001

Hearing officer

Mr M Foley

Mark

McCHINA

Classes

29, 30, 31, 42

Applicant

Frank Yu Kwan Yuen

Opponent

McDonald’s Corporation & McDonald’s Restaurants Limited

Opposition

Sections 11 & 12 of the Trade Marks Act 1938

Result

Section 11: - Opposition successful.

Section 12: - Opposition failed.

Points Of Interest

• The applicant appealed this decision to the High Court. The Hearing Officer’s decision was overturned and registration allowed.

Summary

The opponent’s opposition was based on a large number of Mc/MAC pre-fixed marks such as McDONALD’S, BIG MAC, BACON & EGG McMUFFIN, McCHICKEN SANDWICH etc in respect of restaurant services and foodstuffs generally. The opponents also filed evidence of extensive use and advertising over a considerable period together with survey evidence which appeared to show that a number of the public would associate the mark McCHINA with the opponents.

The applicant disputed that the opponents had any monopoly per se in the term Mc/MAC and said that in his mark it was meant to indicate “son of” to signify a new generation of Chinese foodstuffs. A restaurant under the mark in suit was trading close to McDonald’s restaurants and there had been no confusion.

Under Section 12 the Hearing Officer quickly concluded that the only common element in the respective marks was Mc/MAC and he had no difficulty in deciding overall that the respective marks were not similar. Opposition failed on this ground.

Under Section 11 the Hearing Officer accepted that the opponents had a reputation in Mc/MAC but was somewhat unhappy as regards the nature of the evidence filed. However, he took account of other evidence and the decision reached in earlier proceedings when these opponents successfully opposed an application to register the mark McINDIANS and decided that overall there was the likelihood of deception and confusion if the applicant used their McCHINA mark. Opposition succeeded on this ground.