MacDonalds v Future Enterprises

In 1994 and 1995, Future Enterprises Pte Ltd applied for four marks which comprised the eagle device together with the words "MacCoffee", "MacTea", "MacChocolate" and "MacNoodles". McDonalds opposed the last three applications, but not the application for "MacCoffee". IPOS found that Future's marks with the eagle devices, were not confusingly similar to those of McDonald's in 2003. This decision was upheld by the High Court in 2004 and the Court of Appeal in 2005.

In 21 April 2004, High Court ruled in Future Enterprises's favour, in particular that both parties' marks are not similar and that there is no likelihood of confusion in Singapore, as there are several differences between the parties' marks and goods.

Summary of key points in the High Court judgement issued in April 2004:

• The judge noted that McDonald's goods consist of food and beverage sold prepared and ready-to-eat form, within its fast food restaurants with its ubiquitous "M" logo.
• The judge said in the issued judgment: The reputation of [McDonaldÂ’s] is that fast food restaurant chain and in the way the fast food is sold. The customer places his order verbally at the counter where the menu of choices is prominently displayed. The packing of the meal is designed for consumption in the restaurant or to take away.
• The judge noted that, in contrast, Future Enterprises' goods are 3-in-1 or 2-in-1 instant beverages and instant noodles that are sold in supermarkets and provision shops. They need hot water before they can be consumed. The packing is designed self-service shopping in the supermarkets and shops with little sales service.

The Court of Appeal in 2007, upholding the decisions of the High Court in September 2006 and of IPOS in November 2005, disallowed registration of Future's trade mark application for the word "MacCoffee" for coffeemix in Class 30. McDonald's had opposed based on the grounds that "MacCoffee" was confusingly similar to their registered mark "McCafe" for coffee in Class 30, under Section 8(2) of the Trade Marks Act. However, Future may continue to use its earlier registered mark "MacCoffee" which appears below an eagle device, on its coffee products.