Pirate Joe’s new fight: McDonald’s
For those who have been following my posts on the legal battle between Pirate Joe’s and Trader Joe’s (links: Part 1 and Part 2) can interpolate that the owner of Pirate Joe’s, Michael Hallatt, is an entrepreneur with a vision. However, while his entrepreneurial spirit combined with a little bit of jurisdictional assistance in trade-mark law assisted him with his legal battle with Trader Joe’s, it may not help him if Hallatt decides to proceed in opening a fast food restaurant with a large black letter M. This could raise a few eyebrows with McDonald’s.
In a CBC news article dated November 9, 2013, Hallatt was quoted as saying that he plans on creating a fast food chain with such a letter displayed, and stated, “McDonald’s doesn’t have a [trademark] on the letter M”. That may be the literal case judging from a glance at the trade-mark register. However, there is more to trade-mark law in Canada than registration and letters.
Despite McDonald’s not having a registered trade-mark for the letter M, it certainly carries on business and sells fast food underneath, in conjunction with, and in some cases, wrapped up in, large golden arches depicting the letter M. It is therefore arguable that McDonald’s has an unregistered trade-mark and common law rights associated with the use of a letter M for fast food and the operation of a fast food restaurant.
Moreover, trade-mark law also encompasses something called “trade dress” or a “distinguishing guise”, which is a way of saying that the whole “get-up” or packaging in which a product is sold can sometimes be held to be a trade-mark in and of itself. Examples include the curved shape of a Coca-Cola bottle or the triangular shape of a Toblerone chocolate bar. It can also be applied to the look, feel, and atmosphere of the customer experience when entering a place of business, such as a large golden M at a McDonald’s. A distinguishing guise is registered like a trade-mark, but can also be unregistered and give the owner common law rights.
Mr. Hallatt would certainly face an uphill battle if he were to take on McDonald’s, not only since trade-mark law seems to support McDonalds’ rights of a letter M, but also because McDonald’s would likely have a very strong interest (and huge resources) in defending its business.
For more information on trade-marks, contact me.