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5 July 2016Trademarks

EU court says McDonald’s can prevent ‘Mac’ and ‘Mc’ registrations

McDonald’s has been told its trademarks 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 today, July 5, the EU General Court backed the multinational in its dispute with a Singapore-based company that tried to trademark ‘MacCoffee’.

The dispute began in 2008 when Singapore-based Future Enterprises applied for a European Union trademark (EUTM) for the term—in relation to foodstuffs and beverages—at the European Union Intellectual Property Office (EUIPO).

The office initially granted the mark in 2010 but the US-based fast food company opposed the decision and said the mark should be invalidated.

McDonald’s cited its earlier EUTM for the term ‘McDonald’s’ as well as 12 other marks it owns for fast food restaurant services that all include the prefixes ‘Mc’ or ‘Mac’.

In 2013, the EUIPO granted an opposition by McDonald’s, prompting Future Enterprises to appeal against the decision to the General Court.

In its judgment, the General Court said 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 trademark with the McDonald’s family of trademarks.

It added that despite the difference between the goods and services covered, there is 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, the court said.

It added: “It is highly probable 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.”

Robert Smith, partner at IP law firm EIP, said McDonald’s had been granted a scope of protection that extends beyond the basic registrations it owns.

“Unless the decision is successfully appealed against, which could only be on a point of law, through its family of ‘Mc’ marks McDonald’s is well placed to prevent the use of ‘Mc’ or ‘Mac’ for food and drink related goods and services within the EU, unless it predates McDonalds’ rights,” Smith added.

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