MCDONALD'S CORPORATION v Mark Vincent Glaser [2016] ATMO 22

This recent Trade Marks Office case further reinforces McDonald’s monopoly over the use of the ‘Mc’ prefix for trade marks relating to food products.

In 2014, McDonald’s successfully opposed the trade mark ‘McSlider’ in relation to food preparations consisting of meat products in Class 29. In the current case, McDonald’s has again successfully opposed a ‘Mc-’ trade mark application, where that trade mark related to foods, beverages and a range of services. The applicant, Mark Vincent Glaser, applied to register the trade mark McKosher in relation to food products and non-food products and services in classes 29, 30, 32 and 43.

McDonald’s has a large number of registered and unregistered ‘Mc (Food)’ marks in Australia. These Mc(Food) marks often indicate the nature of McDonald’s goods (such as McFRIES or McBURGER), or the quality or quantity of its goods (such as McDOUBLE or McFEAST), or the ‘ethnic nature’ of the goods (such as McAMORE).

Unsurprisingly, given McDonald’s widespread reputation in its various Mc(Food) trade marks, the Hearing Officer held that consumers would likely be confused about the McKosher trade mark and its association with McDonald’s.

What is interesting is that, similar to the APP STORE case,[i] the Hearing Officer in the current matter refused registration of the McKosher trade mark in relation to the entire application and did not look at the registrability of the McKosher mark in relation to the non-food related goods and services nominated under the opposed application.

It would have been interesting to see whether a divisional application for the non-food related goods or services (eg retirement home accommodation services and tourist agency services) would have avoided challenge from McDonald’s, so that Mr Glaser could have registered McKosher for at least some products and services nominated under his McKosher application.

Certainly, this is an option to be considered by trade mark applicants facing an opposition, in light of the Office’s decision to reject the entirety of an opposed application. On the other hand, this is strategically beneficial to opponents, as an entire application can be rejected even if only some of the goods/services are considered to be problematic.