FEEL like sipping a MacTea, MacChocolate or slurping MacNoodles?
Sure thing, says Future Enterprises, a Singapore company in the instant beverage and food business.
It uses these names on the instant tea and cocoa mixes and instant noodles that it sells in countries such as Russia and Vietnam.
No way, says McDonald’s Corporation.
The fast food giant is trying to stop Future Enterprises from using MacTea, MacChocolate and MacNoodles as trademarks.
The Principal Assistant Registrar of Trade Marks dismissed McDonald’s objections in April. McDonald’s appeal is now being heard in the High Court.
Future Enterprises, which used to sell computers, jumped into the instant beverage and food business in 1994.
The following year, it applied to register MacTea, MacChocolate and MacNoodles and the eagle device marks.
In court Wednesday, Senior Counsel Davinder Singh said his client, McDonald’s, had acquired tremendous reputation and goodwill in its trademarks, especially in McChicken, McNuggets, McMuffin and other fast-food names prefixed with “Mc”.
From 1988 to 1998, its annual sales here grew from S$77.95mil (RM157.5mil) to S$230.89mil (RM466.4mil) and its advertising expenditure, from S$3.47mil (RM7mil) to S$11.01mil (RM22.24mil).
Because it had used and advertised this family of trademarks extensively, he said, they had become synonymous with fast food from McDonald’s.
Future Enterprises’ managing director, Tan Wang Cheow, said his company used “Mac” to convey a “sophisticated, western, capitalistic American taste.”
That’s just copying, said Davinder Singh, who said many people were likely to be confused and think that MacTea, MacChocolate and MacNoodles were associated with McDonald’s food and beverage products.
He said the Principal Assistant Registrar had placed too much emphasis on Future Enterprises’ “eagle device” popularly used on coffee and tea products as well as noodles, and erred in deciding that “Mc” was not essential to McDonald’s marks.
It was all the more likely that MacTea, MacChocolate and MacNoodles would be remembered by their names rather than the eagle, said the Senior Counsel.
The term “Mc-” or “Mac-” was an essential feature in McDonald’s family of marks comprising the prefix “Mc-” followed by a food item, he said.
Future Enterprises will argue that its marks are visually, orally and conceptually different.
They are used in different types of goods targeted at different customers and sold through distribution channels such as supermarkets and grocery stores, unlike McDonald’s, which sells its food and beverage in its restaurants.
Justice Belinda Ang adjourned the case to another day. –The Straits Times/Asia News Network
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