3 October 2016TrademarksAzlina Aisyah Khalid

Happy outcomes for McDonald’s

Future Enterprises, a Singapore company, had in 2008 filed an application to register the mark ‘MacCoffee’ in classes 29, 30 and 32 at the EUIPO. It was approved and registered, but in 2010 McDonald’s filed an application to invalidate it.

The invalidation proceeding was premised on article 53(1) (a) and article 8(5) of Regulation (EC) No. 207/2009. Under the former article, McDonald’s asserted that it had registered no less than a dozen of ‘Mc’ related marks as EU trademarks. They include ‘McDonald’s’, ‘McFish’, ‘McChicken’, ‘McMuffin’ and ‘McFlurry’.

As for the latter article, there were conditions that had to be fulfilled in order to enjoy its broader protection. The conditions were as follows:

The earlier marks must be registered;

The mark to be invalidated must be identical or similar to the earlier marks;

The earlier marks must have a reputation in the EU; and

Use of the mark to be invalidated must lead to a risk of unfair advantage being taken of the earlier marks’ distinctive character and repute.

Failure to satisfy one of the conditions was sufficient to render the particular article inapplicable. McDonald’s succeeded on all grounds. After several rounds of appealing against the initial decision to invalidate the ‘MacCoffee’ mark, Future Enterprises appealed to the EU General Court. It was held that McDonald’s not only had considerable reputation across the EU in respect of fast food services and its food products, but it is also the proprietor of a family of trademarks which had acquired a distinctive significance in character.

Given the degree of similarity in trade and the fact that McDonald’s already has several trademarks beginning with the prefix ‘Mc’, it was further held that the registration of the mark ‘MacCoffee’ raises a serious likelihood that Future Enterprises would derive unfair advantage from the reputation of McDonald’s and use of its ‘Mc’ trademarks.

Previous cases

In 2005 Future Enterprises won against McDonald’s in its own backyard with the case of McDonald’s v Future Enterprises, in which the Singapore Court of Appeal affirmed the Singapore High Court’s decision to dismiss opposition proceedings brought by McDonald’s against the marks ‘MacChocolate’, ‘MacNoodles’, ‘MacCoffee’ and ‘MacTea’ filed by Future Enterprises. It must be noted however that Future Enterprises’ registrations had disclaimers imposed on the descriptive elements of the respective marks and there was a device attached to them.

One may also recall the case McCurry Restaurant v McDonald’s from 2009. McDonald’s sued for passing off against the owner of the mark ‘McCurry’ who ran an Indian cuisine restaurant. Ultimately, McDonald’s lost the legal battle. Due to the facts and circumstances surrounding the case, the Malaysian Court of Appeal decided that both parties served different types of food and, in multicultural Malaysia, it was held that this did not translate into a scenario of possible confusion and/or deception ensuing among the public.

Already registered?

Login to your account

To request a FREE 2-week trial subscription, please signup.
NOTE - this can take up to 48hrs to be approved.

Two Weeks Free Trial

For multi-user price options, or to check if your company has an existing subscription that we can add you to for FREE, please email Adrian Tapping at atapping@newtonmedia.co.uk