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McDonald’s succeeds in Canadian Federal Court appeal of opposition decision against MACDIMSUM trademark application

Multiple trademark registrations that each contain a common element and are all owned by a single party may constitute what is known in Canadian law as a “family” of trademarks. Ownership of a family of trademarks can in certain circumstances lead to a broader scope of protection than might otherwise be applied to individual trademarks. For example, a pre-existing family of trademarks can be a significant consideration weighed against a third-party applicant who applies for a trademark containing the element common to the family.

The July 10, 2013, Federal Court decision in Tong G Cheah v McDonald’s Corporation et al, 2013 FC 774, is an example of the potential benefit of owning a family of trademarks. In this case, the applicant applied for the trademark MACDIMSUM based on proposed use in association with numerous food and beverage items. The mark applied for was comprised of the prefix “Mac” and the generic food term “dim sum.”

McDonald’s opposed the application with one of the primary grounds being a likelihood of confusion with its family of trademarks that include the term MC, and the phonetic equivalent MAC, in association with food products and restaurant services.

In support of its opposition, McDonald’s filed extensive evidence of the use of its family of marks in Canada. In addition, McDonald’s filed evidence from a consumer survey expert. The results of the survey demonstrated that a statistically significant proportion of consumers would identify McDonald’s as the source of food products bearing the trademark MACDIMSUM. The most common reason given for identifying McDonald's was the presence of the element "MAC" in the applied-for trademark.

The Trademarks Opposition Board (the “Board”) allowed McDonald’s opposition and refused the application. In finding that the applicant had not met its burden of demonstrating no likelihood of confusion, the Board in part relied on the McDonald’s family of trademarks, noting:

[…] the parties' marks are prefixed by the phonetic equivalents MC and MAC and the opponents have established a family of trademarks which include the prefixes MC and MAC for food products, […] the opponents' evidence shows that they continuously create, use, advertise and promote marks comprised of the prefix MC followed by the name of a food product.

The applicant appealed the decision of the Board to the Federal Court. On appeal, the Federal Court framed the primary issue as follows:

Was the Member correct in determining that MACDIMSUM was likely to be confusing with the McDonald’s “family” of trademarks, including the prefix MC or MAC together with a food product?

The Federal Court held that the Board’s finding of a likelihood of confusion was reasonable and thus dismissed the applicant’s appeal. In addition, the Federal Court noted that the Board’s reliance on the consumer survey evidence was also appropriate. In particular, while the survey was not the principal reason behind the Board’s conclusion as to confusion, the survey nevertheless supported the Board’s conclusions and there was no reason to doubt its reliability.

Ultimately, the McDonald’s decision illustrates the scope of protection that can be afforded to a brand holder when it secures registrations for multiple trademarks having a common element. In addition, the decision demonstrates that consumer surveys still remain relevant in certain circumstances when seeking to demonstrate a likelihood of confusion.

If you have any questions regarding the above, please do not hesitate to contact a member of Smart & Biggar’s Litigation group.

McDonald’s was successfully represented in this matter by Steven B. Garland and Timothy O. Stevenson of Smart & Biggar’s Ottawa office.

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