McDonald's Corp. v. Coffee Hut Stores Ltd.
T-1205-92
McKeown J.
6/5/94
22 pp.
Appeal and cross appeal from decision of Registrar of Trade-marks Opposition Board denying Coffee Hut Stores application to register trade mark "McBeans" for use in association with coffee and tea but rejecting McDonald's opposition-McDonald opposing registration of trade mark "McBeans" as applicant not person entitled to register trade mark, trade mark not registrable as being primarily surname, not distinctive of applicant -- Non-compliance with Trade-marks Act, s. 30 issue raised herein, not before Registrar -- Court limited to issues raised before Registrar -- No prejudice to appellants if corporate name changed under Trade-marks Act, s. 56(5) -- Change of name to be entered as amendment to register -- Word McBeans found by hearing officer to be surname contrary to Act, s. 12(1)(a) -- Whether "primarily" surname -- Registrar right in finding McBeans can be perceived by average Canadian consumer as coined word as opposed to surname -- Decision of Registrar as to whether two trade marks confusing to be given great weight, not to be lightly set aside-Onus on applicant for trade mark to establish registrability of trade mark, to satisfy Court no reasonable probability of confusion with any previously registered trade mark -- Registrar stating correctly test for confusion, not applying it properly -- Assessment as to whether, on first impression, average casual purchaser would confuse two marks not done in vacuum -- One must examine how trade marks used in course of business -- McBeans, McDonald's operating two very different kinds of businesses -- Registrar wrong in holding no similarity between wares, services and trades of parties, and potential overlap in trades of parties -- Suggestion McDonald's might decide to sell coffee beans in future insufficient to support finding of confusion -- No evidence of actual confusion from consumers or purchasers -- Registrar wrong in finding trade mark "McBeans" confusing with trade mark "McDonald's" for use in association with wares coffee and tea and services of operation of business dealing with sale of said items -- Where word common to trade, one cannot have family of trade marks -- Coffee Hut Stores having shown by affidavit evidence significant use of prefix Mc or Mac in association with food products and restaurants (not fast food restaurants) -- McDonald's business directing advertising and decor towards children -- "McBeans" in the business of gourmet coffee -- Not confusing with any single trade mark of McDonald's-Not part of family of trade marks -- Appeal dismissed, cross appeal allowed -- Trade-marks Act, R.S.C., 1985, c. T-13, ss. 12, 30, 56.