We’ve all had one. A Happy Meal that is. Some of us might have continued to buy them in circumstances that might not be considered “age appropriate”, but there’s no shame in that. I’ll admit to having had some pretty good sandwiches in my day too. Quiches … not so much.
The question as to how far McDonald’s rights in HAPPY MEAL extend was recently considered in McDonald’s v Noble Foods Limited (Case O-181-14; the decision can be seen here). The facts are relatively straightforward. McDonald’s opposed registration of the marks HAPPY SANDWICHES and HAPPY QUICHE in the UK, based on earlier registrations for its HAPPY MEAL mark.
The Hearing Officer had upheld the opposition. But then it went up on appeal to the Appointed Person Mr Iain Purvis QC. The AP took apart the decision as follows.
Proof of use
McDonald’s earlier HAPPY MEAL registrations were over 5 years old, and so it had to prove use of those marks during the relevant period. The AP accepted that McDonald’s had used the mark in respect of services (the preparation of carry-out foods, in class 43), but overturned the Hearing Officer’s decision that the HAPPY MEAL mark had been used on goods. The Hearing Officer had held that Happy Meal was not used on fizzy drinks, but that it was used in respect of burgers and chicken pieces, because those goods were produced under the control of McDonald’s, the owner of the HAPPY MEAL mark. The AP took into account that the goods were otherwise marked (eg. Coca-Cola for the fizzy drink, and the food in wrappers or boxes bore other indicia such as the Golden Arches logo), and that the mark HAPPY MEAL does not appear on the box itself. The distinction between fizzy drinks on the one hand and chicken and burgers on the other was held to be a false one by the AP. The AP tested this by reference to whether the nature of the use would not change even if McDonald’s purchased the Coca-Cola business, and considered that it would not.
The evidence (aka “oops”)
The Applicant filed evidence from 3 witnesses, including the evidence of Mr Horton (MD of the Applicant), relating to the use of the Applicant’s HAPPY EGG brand (enjoying retail sales of £67 million per year since 2009).
It was curious then that this evidence received little or no comment in the decision of the Hearing Officer, and the AP concluded that this evidence and the argument based on it simply slipped the Hearing Officer’s mind. The AP considered that this evidence was material (it established the existence of another prominent brand that combined HAPPY with a foodstuff), and so should have been factored in to the likelihood of confusion analysis. This opened the door for the AP to consider that issue afresh.
Reasonable, moderate, good and high degrees of similarity
The Hearing Officer had categorised the degree of similarity between the respective goods and services in a number of ways. However, the AP took this to task, mentioning that it was not clear whether a “moderate” degree of similarity was greater than a “reasonable” degree. Given his findings on proof of use, the decision from the Hearing Officer was left in a state of limbo because it was not clear whether the Hearing Officer would have come to the same conclusion as regards HAPPY QUICHE if she had only considered McDonald’s earlier services (and not the goods). In respect of HAPPY SANDWICHES, there was no ambiguity.
The overall assessment of the likelihood of confusion
McDonald’s contended that there was a likelihood of indirect confusion, on the basis that the average consumer would believe that HAPPY SANDWICHES (for sandwiches) and HAPPY QUICHE (for quiches) represented brand extensions of HAPPY MEAL. The AP disagreed:
- HAPPY is a common word, “which the public would not be surprised to see being used by unrelated enterprises in the field of food or catering as part of a trade mark”.
- This conclusion was supported by the evidence, which showed adjectival use of HAPPY in the trade names of a number of food and catering businesses, including HAPPY SHOPPER, HAPPY EATER, HAPPY COW, THE HAPPY PLAICE and (most convincingly in the AP’s view) HAPPY EGG. The totality of this showed that the average consumer is likely to have come across other brands using the word HAPPY as an adjective in relation to food or catering.
- There is “no particularly striking link between the words SANDWICHES or QUICHE and the word MEAL” which might cause the public to think of these as a brand extension of HAPPY MEAL.
Needless to say, the AP concluded that the decision of the Hearing Officer was wrong, and directed that the HAPPY SANDWICHES and HAPPY QUICHE applications proceed to grant.
The “take aways” (ha ha ha … sorry)
Mr Purvis QC, in his role as AP, has on a number of occasions now overturned assessments made at first instance as to the overall assessment of the likelihood of confusion (see for example his demolition job of the first instance decision in the Kurt Geiger case, here). This decision is one to add to that list.
Simply put, this is an example of how the totality of the respective marks must be considered when assessing the likelihood of confusion, regardless of whether the case is run in the UK or Australia or New Zealand.