McDonald’s fails against “arch” enemy

McDonald’s International Property Company Ltd was unsuccessful in its opposition to the registration of the trade mark in classes 16, 25, 29, 30, 32, 35 and 43 in AJ Enterprises (Aust) Pty Ltd v McDonald’s International Property Company Ltd [2009] NZIPOTM 12.

McDonald’s sought to rely on the reputation of its “Golden Arches Logo” and a number of prior registrations consisting of or containing this logo. It argued that the single arch in the opposed mark was a “striking common element” to its Golden Arches.  Further, there was evidence that in Australia, the applicant had adopted the same corporate colouring as McDonald’s.

The Assistant Commissioner found that the McDonald’s name and brand and its   mark were “very well known” in the relevant market in relation to McDonald’s restaurants and fast-food.
However, she held that even if presented in the same colours, the overall marks were visually, aurally and conceptually different.  The Golden Arches Logo would be seen as the letter “M” (and associated with the McDonald’s name and brand), while the applicant’s single arch was clearly part of the letter “A”.  The additional word ANISHA’S in the applicant’s mark reinforced the letter “A’, as well as distancing the applicant’s mark from McDonald’s.

In rejecting McDonald’s claims, the Assistant Commissioner also stated “I consider the Golden Arches mark is so central to the McDonald’s brand that it would only ever be associated with McDonalds”.  In contrast, the applicant’s mark was considered unlikely to be perceived as part of the McDonald’s family of trade marks.  Thus, it was unlikely that any consumer would assume a connection in trade between the marks.