Over a succession of recent cases fast-food giant McDonald's has established that is has the right to block others from registering prefixes such as 'Mac' or 'Mc' in the context of registering a trade mark in the EU.
On 11 July 2016, we reported on the decision in Case T-518/13, Future Enterprises Pte Ltd v EUIPO.which confirmed that a Singapore based rival of McDonalds could not register "MacCoffee" in Europe in respect of foodstuffs and beverages. In effect, the court backed McDonalds assertion that it has exclusive rights to the use of 'Mc' or 'Mac' in trade mark names for foodstuffs and beverages.
In another similar recent decision by the EUIPO, McDonald's was successful in its application to block the registration of 'SUPERMAC'S' as a trade mark in certain classes. The decision effectively put an end to the Irish based fast-food company's ability to use the mark to sell meat, fish, poultry, chicken nuggets, chips, onion rings, hamburgers or milk shakes. According to reports, Supermac appealed the decision on the 11 March 2016 and has four months in which they must file their grounds of appeal.
The cases above underline the battle between brand names and so-called "free-riders" who want to benefit from the marketing spent on brands without having to bear the same costs themselves.
However, in reality, the practical result for McDonald's is a scope of protection that extends beyond the basic registration. Unless the decisions are successfully appealed McDonald's is well placed to prevent the use of 'Mc' and 'Mac' prefixes being registered in classes relating to food and drink related goods and services within the EU. The only qualification to this being unless the trade mark in question predates McDonald's right.
This is highly beneficial for McDonald's and any other businesses which may benefit from similar rulings as it allows the business to monopolise the use of prefixes in relation to the relevant goods/services.
Other Jurisdictions and Trade Mark Registries
It is not always the case that McDonald's wins' similar cases in other countries and territories. In 2009, the company lost an eight-year legal battle to prevent its 'Mc' prefix being used by a Malaysian curry restaurant – McCurry – potentially opening the way for other food retailers to use the celebrated prefix in that region.
However, it does largely hold true. Other failed attempts by brands hoping to use or benefit from such prefixes in relation to food and/or drinks include one in Canada in which an application for the registration of 'McBeans' for the sale of coffee was not registered and another in the UK seeking to bar the use of the trade mark McChina Wok Away. In the 90's McDonald's also stopped a coffee shop from using the name 'McCoffee', under which it had operated as a business for almost 17 years.
There is an important limitation on the ability to block such applications using the argument used by McDonald's. McDonald's is a huge global company operating around the globe and therefore the prefixes are widely recognised and therefore there is a strong likelihood of confusion and an association with it. Smaller companies seeking to block registration on similar ground would likely face an uphill task trying to prove this to a satisfactory extent.Posted by: in: Case Law, News, Trade Marks