Frank Yuen v McDonald's Corporation and McDonald's Restaurants Ltd

Date

27 November 2001

Legislation

Trade Marks Act 1938 ss. 11 and 12

Keywords

trade mark opposition; famous marks; scope of appeal; survey evidence; burden of proof

Counsel

Henry Carr QC, Christopher Morcom QC

Solicitors

Blair & Co

Judge

Neuberger J.

Court

High Court (Chancery Division)

Reported

Daily Telegraph, 6 December 2001 (CH/2001/183)

Summary

The Applicant, Mr Yeun, applied for the mark McCHINA in respect of food stuffs and restaurant services in 1992. This application was opposed by the McDonald's Restaurants, under sections 11 and 12 of the Trade Marks Act 1938 (the application for the mark being prior to the Trade Marks Act 1994 coming into force). The opponents were one of the largest retailers of fast food in the UK in 1992, the relevant date with regards to the application and traded under marks such as McDONALD'S, MACDONALD'S and MAC.

The Hearing officer, Mr Mike Foley, upheld the opposition under section 11 grounds but rejected it under section 12. However, it was apparent from the Hearing Officer's ruling that he had relied on survey evidence, filed in relation to the McINDIAN application, which was also before the Registry but which had not been produced as evidence in respect of the present application and had not been available to the Applicant. The Applicant appealed and the Opponent cross-appealed.

As a preliminary matter the Judge considered that the appeal should be dealt with by way of a rehearing, at least with respect to the section 11 grounds, as the impact of the McIndian survey was difficult to discern. However, it was accepted that it should never have been considered in relation to the present case.

When considering the application of sections 11 and 12 of the 1938 Act the Judge, following the ruling in BALI [1969] RPC 495, proceeded on the basis that section 12(1) is concerned with a comparison between two rival marks (one of which is already on the register) and is therefore a "weapon in the hands of the registered proprietor", whilst section 11 is wider in scope and requires only an investigation into whether the mark in question is likely to deceive or confuse the public. In both cases the burden of proof in on the opponent.

The Judge found survey evidence provided by the Opponent was not helpful to the court, and might in fact have been regarded as evidence that there was little chance of confusion between the McCHINA mark and the Opponent's marks.

Decision

The Judge concluded that the hearing officer had been right to reject the opposition under s.12 but had been wrong to in relation to s.11, and that the registration should therefore be allowed to proceed.

On the scope of the appeal court's discretion to review the findings of Hearing Officers at first instance see also REEF trade mark ([2003] RPC 5, CA) and Budweiser ([2003] RPC 25, CA).