IN THE MATTER OF AN OPPOSITION
by McDonald's Corporation and
McDonald's Restaurants of Canada
Limited to application No. 539,577
for the trade-mark MCBEANS filed
by Coffee Hut Stores Ltd.
On April 9, 1985, the applicant, Coffee Hut Stores Ltd., filed an application to register the trade-mark MCBEANS based on proposed use in Canada with the following wares:
coffee makers and accessories, namely, coffee
cups, coffee mugs, coffee pots, coffee grinders,
coffee filters, electric coffee makers, souvenir
coffee spoons; coffee and coffee beans; tea
and with the following services:
operation of a business dealing in the sale of
coffee makers and accessories, namely coffee
cups, coffee mugs, coffee pots, coffee grinders,
coffee filters, electric coffee makers, souvenir
coffee spoons; coffee and coffee beans; tea.
The application was advertised for opposition purposes on August 6, 1986.
The opponents, McDonald's Corporation and McDonald's Restaurants of Canada Limited, filed a statement of opposition on January 6, 1987, a copy of which was forwarded to the applicant on January 23, 1987. The opponents subsequently requested leave on two occasions to amend their statement of opposition. The applicant did not object to either request. Those two requests were inadvertently overlooked and I therefore granted the opponents leave at the oral hearing pursuant to Rule 42 of the Trade-marks Regulations to amend their statement of opposition in accordance with their requests dated August 18 and November 5, 1987.
The first ground of opposition is that the applied for trade-mark is not registrable pursuant to Section 12(1)(d) of the Trade-marks Act because it is confusing with the following registered trade-marks of McDonald's Corporation:
Trade-mark Registration No.
MCDONALD'S & Design 174,374
MCDONALD'S & Design 176,783
MCDONALD'S & Design 262,689
MCDONALD'S 141,977
BIG MAC 182,371
RONALD MCDONALD 219,896
MACSUNDAE 221,486
EGG MCMUFFIN 221,457
LITTLE MAC 230,837
MCHAPPY DAY 233,064
DOUBLE MAC 244,774
MCBOO 253,152
MCCHICKEN 254,922
BIG MAC ATTACK 258,246
MCDONALDLAND 259,357
RONALD MCDONALD HOUSE 259,608
ATTACK A BIG MAC 262,644
CHICKEN MCNUGGETS 268,261
MCDOLLAR 269,956
MAYOR MCCHEESE 270,945
MC CHICKEN 275,398
MAC POULET 276,932
MCRIB 279,507
MCBUCK 283,637
MCDONUTS 287,330
MCCONE 287,732
MCMONEY 290,131
POULET MCCROQUETTES 295,104
MCBARBECUE 296,686
MCQ 296,687
MCDO 301,422
MCMILLIONS 316,743
MCNUT 320,301
The second ground of opposition is that the applicant is not the person entitled to registration pursuant to Section 16(3) of the Act because, as of the applicant's filing date, the applied for trade-mark was confusing with the trade-marks SAUSAGE MCMUFFIN and MCSNACK for which McDonald's Corporation had previously filed applications (Nos. 513,146 and 526,017). The third ground is that the applicant is not the person entitled to registration pursuant to Section 16(3) of the Act because, as of the applicant's filing date, the applied for trade-mark was confusing with one or more of the above-noted trade-marks previously used in Canada by the opponents. The fourth ground of opposition is that the applied for trade-mark is not distinctive in view of the use by the opponents of the various trade-marks noted. In support of the first four grounds, the opponents alleged that McDonald's Corporation is the owner of a family of trade-marks "...consisting of the prefix MC followed by the name of a food..." The fifth ground of opposition is that the applied for trade-mark is not registrable pursuant to Section 12(1)(a) of the Act because it is primarily merely the pluralized form of the surname of an individual.
The applicant filed and served a counter statement. As their evidence, the opponents filed the affidavits of Nicholas Gretener, Herbert McPhail, W. Lloyd MacIlquham and Gary Reinblatt. Mr. Reinblatt was cross-examined on his affidavit and the transcript of that cross-examination forms part of the record of this proceeding. As its evidence, the applicant filed the affidavits of Philip B. Kerr, Nicola Marie Hunt and Melody L. Andersson. Both sides filed a written argument and an oral hearing was conducted at which both sides were represented.
Subsequent to the exchange of written arguments, the opponents requested and were granted leave to file additional evidence pursuant to Rule 46(1). That additional evidence was the affidavit of Michael D. Manson. In reply, the applicant filed the affidavit of Randy Marusyk. At the oral hearing, I granted the applicant leave pursuant to Rule 46(1) to file the Marusyk affidavit.
The additional evidence filed (namely, the Manson and Marusyk affidavits) seeks to introduce copies of some of the pleadings in an action between the parties in the Federal Court of Canada. I doubt that such evidence is admissible since neither party filed certified copies of the pleadings sought to be relied on: see the opposition decision in Cheerio Yo-Yo & Bo-Lo Co. Ltd. v. Cheerio Toys & Games Ltd. (1976), 28 C.P.R.(2d) 34 at 35. In any event, it would appear that the additional evidence is unnecessary. The purpose of submitting the Manson affidavit was to establish that McBean is a surname and that fact had already been established by the opponents' earlier evidence.
As a preliminary matter, I dealt with a further Rule 46(1) request made by the opponents in a letter dated February 14, 1992, that date being ten days prior to the oral hearing. In their letter, the opponents sought leave to file a further affidavit of Herbert McPhail listing fifteen additional trade-mark registrations of the opponent McDonald's Corporation of Canada. Both sides were given an opportunity at the oral hearing to speak to the opponents' request.
The opponents' agent submitted that the second McPhail affidavit was relevant in that it evidenced further members of the opponents' family or series of trade-marks comprising the letters MC followed by the name of a food. He also submitted that the lateness of the request was explained by the decision of the Federal Court of Appeal in Park Avenue Furniture v. Wickes/Simmons Bedding Ltd. (1991), 37 C.P.R.(3d) 412 in which the Court held that the material time for considering the circumstances respecting the issue of confusion with a registered trade-mark was not the filing of the opposition but was rather the date of the decision.
After hearing the submissions of both sides, I refused the opponents' request for leave to file the second McPhail affidavit pursuant to the provisions of Rule 46(1) of the Trade-marks Regulations and I returned the second McPhail affidavit to the opponents' agent. As I indicated at that time, I failed to see the relevance of introducing into evidence mere copies of registrations in support of an alleged family or series of marks. In view of the decision in McDonald's Corporation v. Yogi Yogurt Ltd. (1982), 66 C.P.R.(2d) 101 (F.C.T.D.), an opponent relying on a family of marks must evidence use of those marks in the marketplace.
As for the lateness of the request, I did not consider that the Park Avenue decision justified the delay by the opponents. As noted by the applicant's agent, a number of the registrations referred to by Mr. McPhail were registered as long ago as 1986 and 1987. More importantly, the decision in the Park Avenue case was rendered on June 24, 1991, almost eight months prior to the opponents' Rule 46(1) request. Finally, although of less importance, I was concerned about the potential prejudice to the applicant if leave were to be granted since that might entail further cross-examination, evidence and argument and, at the very least, more delay. For all the foregoing reasons, I refused the opponents' request.
As for the merits of the opposition, the opponents submitted, as a preliminary matter, that the applicant's name is incorrect and, in support of that position, relied on the Gretener affidavit. However, the relevant portion of the Gretener affidavit is replete with hearsay and can be given little, if any, weight. The opponents' submission is that Exhibit C to the Gretener affidavit suggests that the applicant may originally have been Coffee Hut Stores Inc. rather than Coffee Hut Stores Ltd. and that the applicant's name was changed to Midwest Coffee Systems Inc. on March 13, 1985. (Melody L. Andersson, in her affidavit, confirms that the applicant's name was changed to Midwest Coffee Systems, Inc. "...in 1985...") If the opponents had been able to submit reliable evidence on point, all of this might have suggested that there had been a misnomer in originally identifying the applicant or that the applicant may have overlooked recording a change of name with the Trade-marks Office. In any event, all of the foregoing is essentially irrelevant to the present opposition since the opponents did not raise a ground of opposition based on non-compliance with Section 30 of the Act.
As for the first ground of opposition, the material time for considering the circumstances respecting the issue of confusion with a registered trade-mark is the date of my decision: see the decision in Conde Nast Publications Inc. v. Canadian Federation of Independent Grocers (1991), 37 C.P.R.(3d) 538 at 541-542 (T.M.O.B.) in which the Park Avenue decision was applied. Furthermore, the onus or legal burden is on the applicant to show no reasonable likelihood of confusion between the marks at issue. Finally, in applying the test for confusion set forth in Section 6(2) of the Act, consideration is to be given to all of the surrounding circumstances including those specifically set forth in Section 6(5) of the Act.
Although the opponents have relied on more than thirty registered trade-marks in their statement of opposition, their evidence is far from satisfactory in establishing use of most of those marks. Mr. Reinblatt, in his affidavit, provides impressive sales figures by the opponents' licensees who have operated MCDONALD'S restaurants throughout Canada for many years. However, apart from some sales figures in relation to the trade-marks MCCHICKEN, EGG MCMUFFIN, MCRIB and CHICKEN MCNUGGETS, Mr. Reinblatt does not provide a breakdown of sales by individual mark. As for those four specific marks, Mr. Reinblatt provides sales figures but he only indicates that the sales were "prior to 1985." Thus, I am left to conclude that those sales could all have been made well prior to 1985 thereby minimizing the current reputation for any of those marks.
Notwithstanding the foregoing, from a review of Mr. Reinblatt's affidavit it is apparent that most of the opponents' sales and advertising activities have been in association with the registered trade-mark MCDONALD'S. Thus, unlike the remaining registered marks, I am able to ascribe a significant reputation to the registered mark MCDONALD'S (registration No. 141,977). It therefore follows that the opponents' strongest case is in relation to that mark and that a consideration of the issue of confusion between that mark and the applicant's mark will effectively decide the outcome of the first ground.
As for Section 6(5)(a) of the Act, the registered trade-mark MCDONALD'S is inherently weak since it is the possessive form of a common surname. However, as discussed above, the Reinblatt affidavit evidences widespread use of this mark in relation to a chain of fast food restaurants and the products sold through those outlets. The applicant submitted that the use of the registered mark MCDONALD'S evidenced by Mr. Reinblatt was by McDonald's Restaurants of Canada Limited and that such use did not accrue to the benefit of McDonald's Corporation in the absence of a registered user recordal in favor of the former company. However, in accordance with the decision in Quaker Oats Co. of Canada Ltd. v. Menu Foods Ltd. (1986), 11 C.P.R.(3d) 410 (T.M.O.B.), I have checked the trade-marks register and confirmed that McDonald's Restaurants of Canada Limited has been recorded as a registered user for registration No. 141,977 since June 6, 1969. I am therefore able to conclude that the trade-mark MCDONALD'S has become extremely well known throughout Canada.
The applicant's mark, too, is inherently weak. When used with coffee-related wares and services, MCBEANS would likely be perceived as a coined word suggestive of coffee beans. Furthermore, the MacIlquham affidavit establishes that McBean is a surname. Consequently, MCBEANS could also be perceived as the plural or possessive form of the surname McBean. Since the filing of the present application, there has been use of the applicant's mark in British Columbia and Alberta. Considering the number of MCBEANS stores in operation and the total sales effected through those stores, I am able to conclude that the applicant's mark has acquired some reputation in British Columbia and Alberta.
The length of time the marks have been in use favors the opponents. For the most part, the wares of the parties are different. However, the registration for the trade-mark MCDONALD'S does include "hot coffee" and the applicant's application includes "coffee." Furthermore, the applicant's statement of services covers the operation of a business dealing in the sale of `inter alia' coffee and the opponents' services include the operation of fast food outlets where food and beverages are sold including coffee. The Reinblatt affidavit establishes that the opponents' sales of coffee in association with the trade-mark MCDONALD'S through its various outlets have been very extensive.
In most respects, the trades of the parties are different. The Andersson affidavit establishes that the applicant's outlets are essentially specialty coffee shops which sell coffee-related items as well as fresh brewed coffee and tea for immediate consumption. The sale of coffee-related wares through a specialty store is entirely different from the sale of food and beverages through a fast food restaurant. However, insofar as the applicant's outlets also operate as coffee shops for the sale of coffee, tea and some snack items (see the Gretener affidavit), there is a similarity in the trades of the parties. The evidence shows that both the applicant's outlets and the opponents' outlets can be located in shopping malls.
As for Section 6(5)(e) of the Act, I consider that there is not a marked degree of resemblance between the marks at issue. However, insofar as both marks commence with the letters MC and insofar as both could be perceived as surnames, there is at least some resemblance between them visually, phonetically and in the ideas suggested.
The opponents submitted that McDonald's Corporation is the owner of a family or series of marks comprising the letters MC followed by the name of a food. It is the opponents' contention that the existence of such a family increases the likelihood of confusion occurring in this case. However, in line with the Yogi Yogurt decision referred to earlier, if an opponent wishes to rely on a series or family of marks, then the opponent must evidence use of the marks to establish that consumers are aware of the alleged family.
In the present case, the opponents have evidenced a number of registrations for trade-marks falling within the alleged family. However, as noted above, they have only evidenced use of four individual family members and that evidence is far from satisfactory. Since Mr. Reinblatt only indicates that the sales for each mark took place "prior to 1985", it is difficult to know when the use of the four family members took place. In the absence of more specific information, I must conclude that the use of these marks took place at least a few years prior to 1985. Thus, although there may have been at least a small family of marks ten years ago, there is insufficient evidence to allow me to conclude that, as of today, consumers would still be aware of that family. I am therefore unable to give much weight to this factor in assessing the issue of confusion.
If the opponents had been able to evidence the ongoing existence of their family of marks, this may well have been a factor of some significance in this case. On the other hand, even if the opponents had established the current existence and public recognition of their family of marks, it does not necessarily follow that the applicant's mark would be perceived as belonging to that family. Mr. Justice Strayer recognized the limitations of such a family in McDonald's Corporation v. Silcorp Ltd. (1989), 24 C.P.R.(3d) 207 at 212-213 and 217 (F.C.T.D.). In the present case, the applicant's mark would either be perceived as a surname or as a coined word comprising the letters MC plus (in the context of coffee-related wares and services) the name of a non-edible product, namely, coffee beans.
The applicant has submitted that an additional surrounding circumstance in the present case is that the evidence shows coextensive use of the two marks without any instances of confusion having arisen. In this regard, Ms. Andersson attests to the coexistence of a MCBEANS outlet and a MCDONALD'S restaurant in the same Calgary shopping mall for over a year without any instances of actual confusion having been brought to her attention. This does not constitute substantial evidence on point. But it is some evidence and I have given it some weight in assessing the issue of confusion.
In applying the test for confusion, I have considered that it is a matter of first impression and imperfect recollection. Insofar as the applicant's wares and services comprise the operation of a specialty store selling wares and equipment for the preparation of coffee and tea by consumers, I consider that there is no similarity between the wares, services and trades of the parties. Given the relatively low degree of resemblance between the marks at issue, I consider that the applicant has satisfied the onus on it to show no reasonable likelihood of confusion between the marks in relation to those wares and services. However, insofar as the applicant's wares and services comprise the operation of a coffee shop selling brewed coffee, tea and food products, I consider that there is a potential overlap in the trades of the parties. Given that there is at least some resemblance between the marks, given that the opponents' mark MCDONALD'S is extremely well known and given that there have been extensive sales of brewed coffee in association with that mark, I find that the applicant has failed to satisfy the onus on it to show that its mark is not confusing with the registered mark MCDONALD'S for the wares "coffee" and "tea" and for the services related to those wares. Thus, the first ground of opposition is successful in relation to those specific wares and services and is otherwise unsuccessful.
As for the second ground of opposition, the two applications were filed prior to the applicant's filing date and were pending as of the applicant's advertisement date. The second ground therefore remains to be decided on the issue of confusion. However, given the absence of any evidence of use of the two marks SAUSAGE MCMUFFIN and MCSNACK, the differences between the wares and services at issue and the limited degree of resemblance between either of those two marks and the applicant's mark, I find that the applicant has satisfied the onus on it to show that its applied for mark is not confusing with either of the two marks. The second ground is therefore successful.
As for the third ground of opposition, the opponents have failed to satisfy their initial evidential burden respecting most of the marks relied on since there is no evidence of use of most of those marks prior to the applicant's filing date. As discussed, however, there is evidence of prior use of the trade-marks MCDONALD'S, MCCHICKEN, EGG MCMUFFIN, MCRIB and CHICKEN MCNUGGETS. The evidence also establishes that McDonald's Corporation had not abandoned its trade-mark MCDONALD'S as of the applicant's advertisement date as required by Section 16(5) of the Act. The evidence is less clear with respect to the additional four marks but it would appear that those marks had not been abandoned as of August 6, 1986.
The third ground therefore remains to be decided on the issue of confusion between each of the opponents' five marks and the applicant's mark. The material time for considering the circumstances is as of the applicant's filing date in accordance with the clear wording of Section 16(3) of the Act. As with the first ground, the opponents' strongest case is with respect to its mark MCDONALD'S. My findings are essentially the same as those made with respect to the first ground except that the effect of the opponents' limited family of marks is, to some extent, measurable in view of the earlier material time. Consequently, I find that the third ground is successful in relation to the wares "coffee" and "tea" and the related services. The third ground is otherwise unsuccessful.
The material time for considering the circumstances respecting the fourth ground is as of the filing of the opposition: see Re Andres Wines Ltd. and E. & J. Gallo Winery (1975), 25 C.P.R.(2d) 126 (F.C.A.). Again, the opponents have only evidenced use of five of the marks relied on. Since the fourth ground essentially turns on the issue of confusion between the marks of the parties, the result is the same as with the first and third grounds.
As for the fifth ground of opposition, the material time for considering the issue arising pursuant to Section 12(1)(a) of the Act is as of the date of my decision in view of the unreported Reasons for Judgment of the Federal Court of Appeal in Lubrication Engineers, Inc. v. The Canadian Council of Professional Engineers (Court No. A-1268-84; February 12, 1992). Furthermore, the onus or legal burden is on the applicant to show that its applied for trade-mark is registrable. Finally, in considering this issue, I am guided by the decision of Mr. Justice Cattanach in Gerhard Horn Investments Ltd. v. Registrar of Trade Marks (1983), 73 C.P.R.(2d) 23 (F.C.T.D.). At page 30 of the reported reasons, Mr. Justice Cattanach states as follows:
The first and foremost consideration is whether
the word or words sought to be registered in the
name is the name or surname of a living individual
or an individual who has recently died.
The opponents' evidence establishes that McBean is a surname of a number of living individuals. The applicant contends that this is insufficient to meet the test of Section 12(1)(a) of the Act because the opponents have not evidenced the existence of an individual with the surname McBeans. I disagree. I consider that the prohibition in Section 12(1)(a) of the Act covers not only a surname but also the plural form or the possessive form of that surname: see the decision in Miller Brewing Co. v. T.G. Bright &
Co., Ltd. (1983), 78 C.P.R.(2d) 55 at 59 (T.M.O.B.). This is in keeping with the intent of that section which is to prevent one trader from monopolizing a particular name or surname. To allow the registration of mere plural or possessive forms of a surname would effectively defeat the purpose of Section 12(1)(a) of the Act.
Given that the applied for trade-mark is the surname of a living individual, the test to apply is whether or not MCBEANS would be perceived by the average consumer as "primarily merely" a surname. This test raises two questions, the first being whether or not MCBEANS is merely a surname. The answer in the context of the present case is no. As discussed above, the average consumer seeing the word MCBEANS used in association with coffee-related wares and services is likely to view the word as being a coined creation comprising the letters MC and the word BEANS referring to coffee beans. Notwithstanding the fact that MCBEANS has no significance other than as a surname and as a coined trade-mark, the trade-mark significance is sufficient to avoid a finding that MCBEANS is merely a surname: see Galanos v. Registrar of Trade Marks (1982), 69 C.P.R.(2d) 144 at 154-155 (F.C.T.D.). Such a conclusion might have been different if the wares and services had no relation to the word "beans."
Given that MCBEANS is not merely a surname, this raises the second question, namely, is it primarily a surname. Again, the answer in the context of the present case is no. Although McBean is not a rare surname, I consider that it is just as likely (if not more likely) that the average consumer viewing the word MCBEANS in association with coffee-related wares and services would consider it to be a coined word suggestive of coffee beans. I therefore consider that the applicant has satisfied the onus on it to show that its trade-mark is registrable. The fifth ground of opposition is therefore unsuccessful.
In view of the above, I refuse the applicant's application in relation to the wares "coffee" and "tea" and in relation to the services of the "operation of a business dealing in the sale of...coffee and...tea" and I otherwise reject the opposition.
DATED AT HULL, QUEBEC, THIS 24th DAY OF MARCH 1992.
David J. Martin,
Member,
Trade Marks Opposition Board.