Mc & Mac ONLY for McDonald’s?

The EU court has ruled the prefix ‘Mc’ or ‘Mac’ cannot be used with the name of a foodstuff or beverage other than McDonald’s.

This story began in 2008 when the company Future Enterprises, of Singapore, applied for registration of the EU trademark ‘MACCOFFEE’ for foodstuffs and beverages. This application was received two years later by the European Union Intellectual Property Office (formerly OHIM, today EUIPO). Then McDonald’s applied for a declaration of invalidity, on the basis of its earlier EU trademark McDONALD’S and 12 other marks, using the ‘Mc’ or ‘Mac’ prefixes (for example: McFISH, McTOAST or BIG MAC).

A brief history of the case

In 2013, EUIPO took into account McDonald’s request and annulled the challenged trademark. The Office concluded that due to the established reputation of the McDonald’s trademark and the existing relationship in the minds of the public between these marks, the use of the contested trademark would enable Future Enterprises to take unfair advantage of the reputation of the McDonald’s mark.

Future Enetrprises did not agree with this decision and applied to the EU Court for annulment. According to the applicant, the marks MACCOFFEE and MCDONALD’S are not similar to each other, as well as their pronunciation differs.

The decision of the EU Court

The EU Court’s judgement of July 5th, 2016 (in Case T-518/13) dismissed Future Enterprises’ complaint and upheld EUIPO’s decision, granting the rights to McDonald’s.

First, the Court noted in the present case, the marks at issue differ visually, but have a certain degree of phonetic and conceptual similarity, which stems from their respective initial part, namely the ‘mac’ and ‘mc’ elements.

According to the Court, the ‘Mac’ element in the challenged mark is perceived as identical or equivalent to the initial element which is characteristic for the McDonald’s marks. Also, the structure of the contested trademark is very similar to the structure of the McDonald’s family of marks, which combine the ‘Mc’ prefix with the names of their products.

Furthermore, the Court held the goods for which the disputed mark was registered and which included both foodstuffs and beverages were closely related to the services for which McDONALD’S mark enjoyed a reputation, namely in the field of fast food services, as part of which foodstuffs and beverages were offered to customers.

In addition, the extent to which the applicant indicated using the contested trademark only for the sale of beverages, it should be noted that, according to the judicature, the goods for which the trademark is registered must be taken into account, rather than the goods for which the present trademark is actually used on the market. The court also stressed that foodstuffs and restaurant services at issue are directed to the same consumers. There is complementarity between those goods and services.

Taking unfair advantage of the reputation

Finally, the Court established that the use without due cause of the contested mark took unfair advantage of the repute of the McDONALD’S trade mark. According to the Court, it was highly likely that the contested mark rode on the coat-tails of the McDONALD’S trade mark, in order to benefit from its power of attraction, its reputation and its prestige, and exploited, without paying any financial compensation, the marketing effort made by the intervener in order to create and maintain the image of the McDONALD’S trade mark. All the factors of the case made it possible to conclude that the relevant public or a substantial part of it, could establish a mental link between the marks at issue, in so far as, upon seeing the contested mark affixed to the goods closely linked to those of the intervener, it could be attracted by the fact that that mark had practically the same prefix and reproduced the same structure as the McDONALD’S trade mark and could associate that mark with the ‘Mc’ family of marks, of which the McDONALD’S trade mark was the original trade mark.

Future Enterprises may still appeal the decision to the Court of Justice of the European Union. The further fate of the dispute will be posted on our blog.

There is a judgement. What’s next?

The July ruling, even though this case concerned Future Enterprises from Singapore, it is important for every entity planning to introduce to the European market foodsuffs or beverages whose names sound like the names of McDonald’s products. In addition, the ruling will create difficulties for other companies planning to use the disputed prefix for the introduction of competing products on the market.

The judgement was received favourably among the owners of trademarks – especially those who have a reputation in the European market. The judgement set a value that comes from consistently building a strong brand and a warning for those who want to use an existing brand’s reputation.

In conclusion, we should point out that using prefixes by individual entrepreneurs carries the risk of a far-reaching monopoly. This may not end with prefixes. It may also apply to other issues, such as colours. Will that be the case? Time will tell. We will persistently keep track of trends in the field of trademarks.