McDonald's makes moves in the metaverse 2 min read
Over the past few months, the Federal Court and Federal Circuit and Family Court have handed down some important and interesting trade mark decisions concluding:
- the trade mark 'a2 Milk' is registerable as a trade mark for milk;
- the Trade Marks Office Manual of Practice Procedure carries little weight in certain contexts;
- hashtags infringe trade mark registrations but phone words do not; and
- that a device mark incorporating a word will probably infringe a trade mark registration for that word.
In a further interesting development, McDonald's has made moves to enter the metaverse.
Key takeaways
- Allusive terms describing the quality of a product may be capable of distinguishing traders' goods and services.
- The Trade Marks Office Manual of Practice Procedure carries little weight when arguing goods or services are closely related.
- Using a social media hashtag can infringe trade mark registrations, but use of a phone word will not.
- A device mark may infringe a word mark if the word mark is fully incorporated within the device and the device mark does little effectively to distinguish itself from the word mark.
- Trade mark applications covering the metaverse are here.
Who in your organisation needs to know about this?
In-house legal counsel; marketing and advertising teams.
Case updates
Merely allusive or not capable of distinguishing?
In The a2 Milk Company Limited v LD&D Australia Pty Ltd [2021] FCA 1515, the Federal Court considered whether use of 'A2' in the trade mark applications for 'a2 Milk' and 'TRUE A2' had the inherent capability to distinguish the A2 beta-casein protein as compared to the (presence of an) inherent capability of 'A2' to distinguish milk and milk products.
Whilst the Court found the term 'A2' to be descriptive in relation to the A2 beta-casein protein, it was held that 'A2' was inherently capable of distinguishing different traders' milk or milk products which contained A2 protein because neither 'a2' nor 'A2' were directly descriptive of milk or milk products – they were just merely allusive to the quality of milk products having only A2 protein.
Trade Marks Office Manual is of limited assistance
In Enagic Co Ltd v Horizons (Asia) Pty Ltd (No 3) [2021] FCA 1512, the Federal Court considered whether Class 35 services were closely related to Class 11 goods in respect of s 44(2) of the Trade Marks Act 1995 (Cth) (the TMA). In finding that the two were closely related due to the broad specifications contained in the Class 35 application, Charlesworth J considered that the Trade Marks Office Manual of Practice Procedure (which contains a list of goods or services the Trade Marks Office considers are most likely to be similar or closely related – which does not link Classes 11 and 35) was of limited assistance in respect of decisions made regarding s 44(2) of the TMA, and indeed her Honour in this instance ignored the manual.
Are hashtags or phone words used as trade marks?
In Henley Arch Pty Ltd v Henley Constructions Pty Ltd [2021] FCA 1369, the Federal Court considered whether use of the phone number 1300 HENLEY and hashtags on social media including '#henleyconstructions', '#henleygallery', and '#henley' were infringing the registered trade mark 'HENLEY'.
The Court held that use of phone words do not project a brand or badge of origin and, therefore, do not constitute use of a mark in the course of trade. However, a social media hashtag was used as a trade mark because hashtags are an increasingly modern way of distinguishing a particular brand on social media platforms.
Does a device mark infringe a word mark?
In Quantum Group Holding Pty Ltd v Thomson [2021] FedCFamC2G 339, the Federal Circuit and Family Court considered whether Quantum Group's device mark infringed the prior registered word mark 'QUANTUM'. In concluding that the marks were deceptively similar so that the device mark infringed, the court found that the chevron device did not alter the overall resemblance of the mark – its visual, decorative and aural contribution did little to distinguish itself from the word QUANTUM which is more likely to leave a considerable impression on the mind of an ordinary consumer.
Interesting developments
The world of virtual fast food?
This year McDonald's has made a big step into the virtual world. With apparent plans to move into the virtual food and beverage sector, the fast food chain has filed trade mark applications with the US Patent and Trademark Office which cover virtual services and events in addition to non-fungible tokens.