On 8 November 2013, Mark Vincent Glaser (the Applicant) filed an Australian trade mark registration for the word “McKosher”.

The application covering a very broad range of food and food-related goods under Classes 29, 30, 32, and 43. The application was subsequently opposed by fastfood giant McDonald’s Corporation (the Opponent) under several grounds, but mainly on s 60 of the Australian Trade Marks Act. McDonald’s alleged unsurprisingly that the “McKosher” trade mark is similar to its family of registered trade marks that use the “Mc” prefix, all of which are said to have already acquired a substantial reputation in Australia.

In order to establish a ground of opposition under section 60 of the Trade Marks Act, the opponent is required to demonstrate the following:

  1. there was another trade mark;
  2. which had acquired a reputation in Australia;
  3. amongst a significant section of the public;
  4. such that use of the opposed trade mark would be likely to deceive or cause confusion.

In Reece Pty Ltd v Rogers Seller & Myhill Pty Ltd the hearing officer noted:

“Confusion cannot arise solely from the reputation of one trade mark. There must always remain a level of similarity between the marks, whether we call it deceptive similarity or something less, and no matter how small it might be. The likelihood of confusion must depend on the reputation of the opponent’s trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller… “

This was applied in Merial v Virbac [2012] ATMO 83 (25 September 2012):

“The wording of section 60 makes it clear that the likelihood of deception or confusion must arise because of the reputation of another trade mark (or trade marks). While it is true that the delegate in the above decision found GUSSACI to be a portmanteau word made up of the trade marks GUCCI and VERSACE, he only did so on the basis that the opponent had provided material to establish that both were well-known trade marks with a significant reputation.”

McDonald’s have a long history of opposing trade mark applications which contain the word “Mc” in Australia:

  • Mark Euvrard v McDonald’s Corporation [1997] ATMO 63 (7 November 1997) (opposing “McMINT”, unsuccessfully)
  • McDonald’s Corporation v Macri Fruit Distributors Pty Ltd [2000] ATMO 37 (1 May 2000) (opposing “McSALAD” and “McFRESH”, successfully);
  • McDonalds Corporation v David Bellamy [2004] ATMO 26 (28 May 2004) (opposing “MCBABY”, successfully);
  • McDonalds Corporation v Sheli Lubowski [2004] ATMO 56 (27 October 2004) (opposing “MCCHINA”, successfully);
  • McDonald’s Corporation v McBratney Services Pty Ltd [2006] ATMO 71 (2 August 2006) (opposing “MCBRAT”, unsuccessfully);
  • McDonald’s Inc v Future Enterprises Pte Ltd [2007] ATMO 22 (24 April 2007) (opposing “MacCoffee” and an eagle logo, successfully)

With all of that in mind, the result of this hearing is hardly surprising. The hearing officer was satisfied that the Opponent’s s60 ground had merit, on account of the McDonald’s brand having a significant presence in Australia through heavy sales, marketing, and promotion of the goods associated with their Mc” family of brands.

The Applicant’s defence consisted of

  1. proving that the word “Kosher” had other meanings outside of foodstuffs in Australia and that
  2. the “McKosher” name could be seen as a parody of the Opponent’s brands.

Both arguments failed. Ultimately, the hearing officer was of the belief that both parties’ respective trade marks were “conceptually identical and share the McXXX coinage where the XXX part of the trade mark has a denotation in relation to foodstuffs and related services,” and that given the weight of the Opponent’s established reputation in Australia, mean that there is possibility that consumers will mistake the Applicant’s goods a being part of the Opponent’s family of McXXX products.

With the s60 ground established, the hearing officer refused to register the Trade Mark.