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The Malaysian Court of Appeal allowed the appeal by McCURRY RESTAURANT (KL) SDN BHD against a passing off action by McDONALD CORPORATION. The judgment was delivered by Justice Gopal Sri Ram on 27.4.2009.
McCURRY offers Indian and other Malaysian cuisine while McDONALD is a well known fast food chain.
The learned judge held that one must look at a mark or get-up or logo as a whole and not merely one element in it.
In the course of his judgment the learned judge made the following observations:
- The plaintiff’s get-up consists of a distinctive golden arched “M” with the word “McDonalds” against a red background. The defendant’s signboard carries the words “Restoran McCurry” with the lettering in white and grey on a red background with a picture of a chicken giving a double thumbs up and with the wording “Malaysian Chicken Curry”. Thus, the defendant’s presentation of its business is in a style and get up which is distinctively different from that of the plaintiff;
- the items of food available at the plaintiff’s outlets all carry the prefix “Mc”. However, the defendant’s menu card none of the food items served carries the prefix Mc;
- the type of food available at the plaintiff’s outlets is very different from that served at the defendant ’s sole outlet. The latter caters only typically Indian food whereas the former serves fast food; and
- the type of customers who patronise the defendant’s outlet is very different from those who patronise the plaintiff’s several outlets. The former are in the main adults and senior citizens while the latter are mainly children.
The learned judge also distinguished the decision of the Hearing Officer in the United Kingdom Trade Mark Registry, in the Matter of Application no. 1412458 by Sabbir Mehta, Osman Mehta, Imtiaz Ahmed Mulla and Hanif Patel to Register the mark Mclndian. There, the Hearing Officer found for McDonald’s on the ground that Mclndian could be confusingly similar to the McDonald’s family of marks all employing the prefix “Mc”.
"What the learned trial judge in the present instance appears to have overlooked is the fact that Mclndian not only sold Indian food, but also Southern fried chicken, cheeseburgers, French fries and shakes which are the very items that McDonalds also sell.".
His Lordship quoted with approval the decision of the Singapore Court of Appeal in McDonald’s Corp v. Future Enterprises Pte Ltd  1 SLR 177 which distinguished the Mclndian case from Yuen Yu Kwan Frank v. McDonald’s Corporation  WL 1422899 where the court disregarded the objection of McDonald’s and al lowed the registration of the mark “McChina”.
Thus, the Court of Appeal concluded that there was no proof of the tort of passing off in this case and the trial judge has failed to appreciate the most important pieces of the evidence presented at trial.
In our opinion, the Court of Appeal decision is correct. The distribution channel and audience of the respective parties are clearly different. Thus, an action for passing off must fail for lack of misrepresentation.