Sydney man fails in bid to trademark “McKosher”

Posted by AFN Staff Writers on 23rd May 2016

McDonaldsA Sydney lawyer has lost his bid to register the trademark “McKosher”.

Mark Glaser, of Scottish-Jewish descent, intended to use the trademark in conjunction with a restaurant.  Glaser’s application was opposed by McDonald’s Corporation before the Australian Trade Marks Office.

A delegate of the registrar of trademarks heard both parties and ultimately refused to register “McKosher” as a trademark.

Glaser pointed to his heritage, arguing that “McKosher” is a surname of Scottish origin. He claimed that the New South Wales town of Maclean, where the restaurant was intended to operate, was “the Scottish capital of Australia” and uses “Mc” as a prefix for many common terms.

McDonald’s claimed “McKosher” was “substantially identical/ deceptively similar” to its own trademarks, including trademarks that have “acquired a reputation in Australia”.

McDonald’s also argued that “McKosher” was “scandalous or contrary to law” due to its potential to mislead consumers, and that Glaser made the trademark application in bad faith, as he would have been aware of McDonald’s widespread use of “Mc” in its trademarks.

In the decision dated 11 April 2016, the Australian Trade Marks Office ultimately found McDonalds’ arguments persuasive.  After finding that “the McXXX formative trademarks as a collective have very strong reputations in Australia”, the presiding delegate said:

“In the instance before me, the Trade Mark is of the same conceptual genre as the Opponent’s McXXX formative trademarks which have a particularly strong association with both the Opponent’s restaurant services and its marketing activities,” the delegate said.

“The idea of the parties’ trademarks is the same – they are conceptually identical and share the McXXX coinage where the XXX part of the trade mark has a denotation in relation to foodstuffs and related services. The Trade Mark is accordingly likely to be seen as such and as being part of the same ‘family’,” the delegate stated.

“Accordingly, in my consideration there is a reasonable likelihood that people, on seeing the Trade Mark, will be caused to wonder if there is some connection between the food-related goods and services offered under the Trade Mark and those offered by [McDonald’s],” the delegate said.

The meaning of Kosher

Part of Glaser’s argument involved the distinct meaning of “Kosher”, so as to distinguish it from associations with McDonald’s, whose Australian stores serve pork and other foods that are not kosher.

In response, the delegate said “[Glaser’s] evidence shows that it is his view that the word ‘Kosher’ is a family surname; the word is used by those of the Jewish faith in relation to goods other than foods; and that, further, in relation to his proposed business activities in MacLean, the Trade Mark is likely to be seen in the context of that locality as being a play on the ‘Scottishness’ of that locale.

“However, the meaning of the word ‘Kosher’ is dictated here by the commercial context within which it is proposed to be used”

The delegate went on to conclude that in this context, most Australians would not attribute these meanings to “Kosher”.