While "famous" marks are handled differently in Canada
than they are in the US, there is nevertheless a great advantage
for marks such as the well-known McDonald's "family"
of marks when it comes to effective trade-mark protection. In the
recent case of CHEAH v MCDONALD'S CORPORATION, the
Federal Court dealt with an application for the mark MACDIMSUM in
association with a number of food items. The application was
opposed by McDonald's restaurants.
Anyone seeking to register a mark using the prefix
"MAC" or "MC" in association with food and
restaurant services should expect some scrutiny by McDonald's
As noted by the Court, McDonald's owns "a large
number of trade-marks referred to as a 'family' of
trade-marks registered and used by McDonald's in Canada in
association with foods and drinks and restaurant services. These
are referred to in argument as the MC plus food item, or MAC plus
food item, marks." By presenting evidence of the dozens
of these MAC / MC marks, coupled with survey evidence of the
public's likely perception of the mark MACDIMSUM as yet another
one of McDonald's marks, McDonald's as the opponent of this
application was able to persuade the Trade-Marks Oposition Board
that this application should not be permitted to proceed. The Court
agreed. A few interesting points to note:
Yes, let's face it, there is an undeniable
advantage to having dozens of marks to present as part of a
billion-dollar chain of restaurants. A 'lesser' opponent
(with less recognition, lower sales, less advertising and a smaller
family of marks) simply would not be in a position to present such
evidence in opposition proceedings.
Survey evidence is expensive to obtain but can be effective, as
it was in this case. However, note Justice Hughes' comments
that: "The Court has been suspect as to the growing use
of and reliance upon surveys in proceedings such as this. The
remarks of Rothstein J, in the Supreme Court of Canada decision in
Masterpiece Inc v Alavida Lifestyles Inc,  2 SCR 387
at paragraphs 78 to 101, stating that survey evidence should be
used with caution and not supplant the role of the judge, are
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about your specific circumstances.
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