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Susanna H.S. LEONG is an Associate Professor at the NUS Business School , National University of Singapore and is an Advocate & Solicitor of the Supreme Court of Singapore. Susanna received her LL.B (Hons) from National University of Singapore and her LL.M (with Merit) from University College London, University of London . She teaches business-related law courses such as contract, sale of goods and intellectual property to undergraduate and graduate business students. Her research interests are in intellectual property and technology-related laws. She has published widely in several international and local academic journals. Susanna is the Vice-Dean, Graduate Studies Office, NUS Business School and the former Academic Director of the NUS-PKU International MBA programme. She is a Senior Fellow at the Intellectual Property Academy of Singapore. She is also a member of The World Intellectual Property Organization (WIPO) Arbitration and Mediation Centre's Domain Name Panel and a member of The Regional Centre for Arbitration, Kuala Lumpur (RCAKL) Panel. She can be contacted here.

 

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Brands and trade marks are valuable symbols that reflect an organization's image and benefits. Companies have fought tooth and nail over the rights to symbols that represent them. Although imitation is a form of flattery, confusion in the marketplace may tarnish the image and dilute the revenue of the brand whose symbol was copied.

Professor Leong from the NUS Business School - together with David Llewelyn, Director of IP Academy and Visiting Professor at King's College London, and May O. Lwin from Nanyang Technological University - studied the case of McDonald's, which had its fair share of trade mark infringements.

Over the years, McDonald's has vigilantly sought protection worldwide for its “McLanguage” brand naming system - “McChicken”, “McDonuts”, “Mac Fries”, “Chicken McNuggets”, and “McCafe”. In the U.S. , the rival marks of “McBagel” and “McPretzel” were held to infringe McDonald's trade mark rights.

With globalization, however, McDonald's attempt to protect its trade symbol has not always been successful, for instance in jurisdictions such as the U.K., Canada , Australia and Singapore . Yet, recently in Singapore and Malaysia, McDonald's has successfully opposed a trade mark application incorporating the “Mc/Mac” prefix in “MacCoffee” and stopped the use of “McCurry” in the name of a Malaysian eatery. Why is this so? Some of the considerations in the judgments include:

  Visual Similarities. “MacCoffee” and “McCafé” both appear similar. The “McCurry” trade mark was in a similar McDonald's red and gold signage.

  Aural Similarities. Both “MacCoffee” and “McCafe” have three syllables. The two prefixes are homonymous and synonymous. Taken as a whole, the two marks sound remarkably similar.

  Conceptual Similarities. Both “MacCoffee” and “McCafe” evoke the idea of coffee. Even when the marks are from different industries, McDonald's international reputation may suggest that another company using “Mc” is riding on its goodwill. This is the case for “McCurry”; it sells spicy Malaysian-Indian cuisines, which is vastly different from McDonald's food offerings.

What Does this Mean to Businesses?

  Businesses that face naming decisions for new products, sub-brands and brand extensions should carefully consider the wisdom of using prefixes commonly found across diverse types of businesses and in different countries.

  Although the family brand naming system allows for the transfer of goodwill from one product to another, it can also act as an Achilles' heel: it is open to imitators. The irony is that the better known a mark is, the less the difference needed to avoid association or confusion.

  Businesses that have followed the family branding system should guard the brand and its family of products, at least in the brand's core business area. For example, Apple should work towards protecting the brand name and image built around its core products - iMac, iTune and iPhone.