Jul 11, 2016

McDonald's Not Clowning Around in Trade Mark Dispute, in Fact, They're 'Lovin' It'!

Fast food chain McDonald's has been told its trade marks are well-known enough to prevent other applications that use the prefix 'Mac' or 'Mc' in relation to food and drink from being registered in Europe.

In a decision handed down by the EU General Court (EUGC) backed the multinational in its dispute with a Singapore-based company which attempted to register a trade mark for 'MACCOFFEE'.


The dispute began in 2008 when Future Enterprises Pte Ltd, a subsidiary of the Singapore listed Food Empire Holdings, applied for a European Union trade mark (EUTM) for the term in relation to foodstuffs and beverages at the European Union Intellectual Property Office (EUIPO).

The EUIPO initially granted the mark in 2010 however the fast food giant fiercely opposed the decision claiming that the mark should be invalidated. McDonald's cited its earlier EUTM for 'MCDONALD'S' as well as twelve other marks it owns for fast food restaurant services which all contain the prefixes 'Mc' or 'Mac'.

In 2013, the EUIPO granted an opposition to the mark filed by McDonald's, prompting Future Enterprises to appeal the decision to the EUGC.

Decision of the EUGC

The Court held that the 'MacCoffee' mark and the marks owned by McDonald's have a "certain degree of phonetic and conceptual similarity," and that because of the combination of the element 'Mac' with the name of a drink, the relevant public can associate that trade mark with the McDonald's family of trade marks.

It added that, despite the difference between the goods and services covered, there was still a certain similarity. The foodstuffs covered by MacCoffee may be used and offered in the context of the fast food restaurant services provided by McDonald's.  It confirmed that:

"It is highly probably that 'MacCoffee' rides on the coat-tails of McDonald's in order to benefit from its power of attraction, its reputation and its prestige, and exploits."

The ruling can be regarded as a very positive one for McDonald's.

Commenting on the case, Chris McLeod, director at The Institute of Trade Mark Attorneys said:

"The court's judgement is very favourable to McDonald's as it's saying that the Singapore company is gaining from its reflected glory."

The MacCoffee trade mark, has therefore now been ruled invalid under Article 8(5) of the EU Trade Mark Regulation (207/20009/EC). The only cause of action left for Future Enterprises is to appeal the decision to the highest court, the European Court of Justice.  It is not yet known whether or not they plan to do so.

A copy of the ruling in Case T-518/13, Future Enterprises Pte Ltd v EUIPO can be read here.

in: Case Law, News, Trade Marks

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