Law Times

Page 10 September 23, 2013 Law Times • FOCUS Does McDonald's trademark extend to use of word Mac? BY CHARLOTTE SANTRY Cheah had tried to register the trademark for "a vast number of food and ans of the Eddie drink items," all "of the sort Murphy movie that one might find in a Coming to America Chinese or other oriental will remember an restaurant," according to investigation of McDowell's Hughes' written decision restaurant by burger chain released on July 10, 2013. McDonald's for trademark The application was infringement. "simply for a word, "They use a sesame seed MacDimSum, and not for bun. My buns have no that word in any particuseeds," explains the owner lar type style; nor for that of McDowell's in an attempt word in combination with to prove he isn't exploiting any other word or design," his industry competitor. 'Most of the time when people come this wrote Hughes. "They got the golden arches, close to a trademark, it's intentional,' says McDonald's successfully mine the golden arcs," he Scot Patriquin. argued there would be conadds. fusion between MacDimIn reality, it's unlikely this line of argument Sum and its own "family" of trademarks and would have been successful as a long-fought that the public didn't distinguish between Mc case involving McDonald's demonstrates. and Mac. In Cheah v. McDonald's Corp., Justice "The case underscores the importance of Roger Hughes dismissed a Federal Court a brand owner like McDonald's policing its challenge launched by Tong Cheah, who had trademark rights," says lawyer John Simpson spent six years fighting to trademark the word of Shift Law. MacDimSum. With the company having established its Law Times F Common list of authorities in patent and trademark law The Federal Court of Appeal has published a common list of authorities in patent and trademark law. According to a notice to the profession on Sept. 10, 2013, cases in the list will be deemed to be included in the book of authorities prepared by a party pursuant to Rule 70 of the federal courts rules. They cover the following areas: Patent law Trademark law • Subject matter that may be patented •Confusing • Filing of prior art • Clearly descriptive or deceptively • Specification for an application for misdescriptive patents • Claims of passing off •Novelty •Use • Inventive step • Person skilled in the art or science •Utility • Adequacy of disclosure or disclosure requirements own family of trademarks and aggressively pursuing individuals threatening to dilute its brand, "it's at a point where you can't use Mac or Mc for any food services," says Simpson. There are examples of McDonald's failing to prevent convenience store owners and coffee shops from using the prefix Mac. But in Cheah, the court found the appellant had failed to provide any evidence of the use of the disputed prefix in any food-related goods or services in Canada. Hughes stressed in his decision that "the evidence as to use or intended use is critical to any decision such as this." If the appellant had provided examples of businesses with Mc or Mac in their titles that served food, even if it was only candy or condiments, the court may have offered some analysis of whether dim sum is distinct from the type of products served by McDonald's, says Simpson. To a large degree, the outcome of the case rested on the failure of Cheah to provide "any meaningful evidence," agrees Scot Patriquin, a partner at Brauti Thorning Zibarras LLP. The case also "underlines the fact that the more famous or distinctive a trademark is, the more likely it is protected," he adds. "It's important, when starting up a brand strategy, to ensure that you're staying away from the scope of a famous mark in an industry. . . . You really should be trying to come up with distinctive names." Any business serving coffee would do well to avoid the words "star" or "bucks" and using the Starbucks name or logo could even be problematic in an unrelated industry such as clothing, he says. In contrast, using a less distinctive name such as "Bell" is less likely to lead to a trademark dispute. A number of Canadian companies have made claims for a family of marks. For example, Molson has fought several applications for trademarks that include the word "golden" in relation to beer. Loblaw Co. Ltd. has also asserted its trademark rights for "President's Choice." PEEL BACK THE LAYERS WITH WESTLAW® CANADA CASELOGISTIX One of the fastest document-review tools available, Westlaw CaseLogistix will assist your discovery teams in quickly and intuitively organizing, reviewing, analyzing, and producing anything from paper to Electronically Stored Information (ESI) – significantly reducing the cost, time, and risk associated with e-discovery. For more information, visit www.westlawcanada.com CaseLogistix Litigator Case Notebook Case Timeline AUTHORITATIVE. INNOVATIVE. TRUSTED. www.lawtimesnews.com But McDonald is a common name; a 411.ca search pulls up nearly 10,000 results in Canada and there are a further 22,000 MacDonalds. Does the ruling suggest that if one of these McDonalds or MacDonalds wished to open a restaurant, they would be unable to trade under their family name? No, says Simpson, explaining that a registered trademark doesn't prevent people from making a bona fide use of their name as a trade name under s. 20(1)(a) of the Trade-marks Act. More generally, a person can't register a surname unless it has already acquired a secondary meaning or become distinctive as a trade source under s. 12 of the act. In Cheah, McDonald's also used survey evidence to show that "a statistically significant proportion of consumers would identify McDonald's as the source of certain listed food products with the name MacDimSum," wrote Hughes in his decision. He continued: "The court has been suspect as to the growing use of and reliance upon surveys in proceedings such as this." However, the way MacDonald's used this evidence "cannot be faulted," Hughes wrote. The decision refers to the 2011 case, Masterpiece Inc. v. Alavida Lifestyle Inc. A survey used by Masterpiece was "unhelpful," the Supreme Court of Canada said, because it "attempted to simulate consumers with an imperfect recollection when none was available." It added: "Courts must fulfil their gatekeeper role to ensure that unnecessary, irrelevant, and potentially distracting expert and survey evidence is not allowed to extend and complicate court proceedings." This was particularly true for trademark cases, it said. Patriquin says the general concern among judges that surveys can be too "anecdotal" doesn't mean people should avoid them as long as lawyers have "sufficient evidence in relation to the reliability and accuracy of the questions." In weighing whether McDonald's was bullying Cheah, the judge also took into account a letter sent from the appellant to the restaurant chain on March 17, 2008. The letter stated, "we can together perhaps explore the possibilities of a global MacDimSum partnership." This provides a "hint of the appellant's true motivations in seeking to register MacDimSum," noted Hughes, adding McDonald's hadn't bullied Cheah but "behaved extremely properly and courteously." The finding seems to have dealt a final, fatal blow to Cheah's appeal. "Most of the time when people come this close to a trademark, it's intentional," says Patriquin. "In this case, it wasn't just possibly intentional, it was explicitly intentional." LT

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