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Associated Trademarks – Added Protection of Associating a Family of Trademarks

By Dave MacDonell on November 10, 2013
McDonald’s Opposition to Registration of “MACDIMSUM” Shows the Value of Investing in a Family of Trade-marks

The Federal Court has upheld the Trade-marks Opposition Board’s decision to refuse Toronto Business Man Tong G Cheah’s application to register a trade-mark for “MACDIMSUM”. Cheah filed an application to register the word “MACDIMSUM” for a variety of prepared food and drink items. The mark was intended for use in association with Malaysian, Asian and Chinese food products, hence the MAC prefix. McDonald’s opposed the trade-mark, citing potential customer confusion with its family of trade-marks.

McDonald’s has a variety of food related trade-marks with both the “MC” and “MAC” prefix including, “MCNUGGETS”, “MACSUNDAE”, “BIG MAC”, and “MCCHICKEN”. In addition, McDonald’s sells Asian-themed food products such as the Chicken Salad Oriental and Szechwan dipping sauces for MCNUGGETS. The Federal Court accepted that the public does not distinguish between “MC” and “MAC” in relation to McDonald’s family of marks. McDonald’s provided consumer survey evidence that a significant portion of consumers would think that it was the source of “MACDIMSUM”. The most common reason respondents gave for this belief was the use of “MAC” in “MACDIMSUM”. The Federal Court held that the board’s reliance on this survey was appropriate because the survey was not the foundation of the ruling but it did serve as support for the board’s conclusions.

McDonald’s has a long history of actively protecting their family of trade-marks. For example, in the 2008 case of McDonald’s Corporation and McDonald’s Restaurants of Canada Limited v Chung-Kee Noodle Shop Ltd, Chung-Kee Noodle applied to register “MCNOODLE” for noodles, dumplings, stewed meat and sauces, and restaurant services. In that case, the board agreed with McDonald’s submission that its existing family of trade-marks, which included both the “MC” and “MAC” prefix for food products and restaurant services, increased the likelihood of confusion with the proposed mark. Alternately, in the Federal Court decision McDonald’s Corp v Coffee Hut Stores Ltd the court indicated that a family of trademarks in a vacuum was insufficient for confusion. When a rights holder wishes to rely on a family of marks, they must provide evidence of the use of the marks to establish that the consumers are aware of the alleged family. In that decision the court noted that, there may be some value outside of the specific area of the family of marks.

The current application was simply for the word “MACDIMSUM”, so there was nothing that the board could use to determine whether Cheah’s particular use would serve to minimize the potential confusion. The court therefore had to consider any potential use or combination in any environment. The use or intended use can be critical to these decisions. In this case McDonald’s was able to successfully oppose the registration of “MACDIMSUM” due to their family of marks. This family included similar wares and services to the proposed use of “MACDIMSUM” that McDonald’s actually uses. McDonald’s also takes great effort to advertise their brand and family of mark.
Unlike the Coffee Hut case, these marks are actively in use. The board found that McDonald’s continues to “create, use, advertise ad promote marks comprised of the prefix MC followed by the name of a food product.” McDonald’s spends millions of dollars on advertising its wares and services. Most campaigns are designed to reach up to 90% of households in Canada. In addition, the existence of similar food products currently in use by McDonalds weighs in favour of the protection of a broad scope for the trade-mark. The board held that the applicant did not meet the legal onus to show on a balance of probabilities that there was not reasonable likelihood of confusion between the applied for mark “MACDIMSUM” and McDonald’s. The appellant was ordered to pay $6,000 in costs to McDonald’s.

The board may consider the prior existence of a family of marks when an owner opposes a new registration that contains an element similar to their family of marks. An ownership of family of trade-marks can lead to a situation in which greater protection is afforded to the family of marks than may be applied to any individual mark. For this reason it can be extremely valuable to develop your brand around a family of marks. If this family of marks is well known you may be able to prevent others from registering similar marks even if they do not completely overlap with your own wares or services.

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