ARTICLE
9 August 2013

Trade-marks: The McDonald’s McAdvantage

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Field Law is a western and northern regional business law firm with offices in Calgary and Edmonton, Alberta and Yellowknife, Northwest Territories. The Firm has been proactively serving clients and providing legal counsel for over 100 years supporting the specific and ever-evolving business needs of regional, national and international clients.
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.
Canada Intellectual Property

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 trade-mark lawyers.

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:

  1. 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.
  2. 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, [2011] 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 apt."

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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