The Real McCoy

July 29, 2016, By

In 2013, McDonald’s won a case in the EU Intellectual Property Office (then the Office for Harmonization in the Internal Market) challenging the “MacCoffee” trade mark used by Future Enterprises (a company based in Singapore) for food and beverages.

In July 2016, McDonald’s won again in the EU General Court (the EU’s second highest court) giving the US fast food giant the option to prevent third parties from using trade marks with the prefix “Mac” or “Mc” for food and beverages. The General Court gave similar reasons to those given by the Intellectual Property Office in 2013.

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The General Court held that due to phonetic similarities the combination of “Mac” or “Mc” with the name of a drink (“MacCoffee”) could lead the public to “associate that trade mark with the McDonald’s “Mc” family of trade marks and mentally establish a link between the trade marks at issue”.

The General Court also held that “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 concluded therefore that the use of the “MacCoffee” trade mark “takes unfair advantage of the repute of McDonald’s trade marks”.

The decision of the General Court may be appealed to the European Court of Justice, the EU’s highest court.

Briffa comment

There are a few points to take away from the “MacCoffee” saga :-

First, clearance searches are essential. If you are intending to make a trade mark application, it is always advisable to carry out clearance searches before filing to determine whether there are any existing identical or similar trade marks on the register in the jurisdiction where you are seeking protection. This will help to assess the likelihood of refusal by the trade mark office, an opposition by a third party during the application process, or an action for invalidity or infringement at a later date.

Second, riding coat-tails is risky. If you file a trade mark that is similar to an existing trade mark, beware of the risks associated with this strategy (particularly if the existing trade mark that you are emulating is part of a distinctive and well-known brand). The existing trade mark owner may well claim that you are unfairly ‘riding on its coat-tails’ (i.e. unfairly benefiting from the goodwill and reputation it has built up under its brand) and seek to have your later trade mark cancelled. For example, it will be interesting to see if, following this decision, Apple takes a more aggressive approach in future to other brands using the “i” prefix.

Third, cancellation is only half the battle. McDonald’s has succeeded in cancelling the “MacCoffee” trade mark (i.e. having it removed from the EU trade mark register). However, this General Court judgement does not prevent the “MacCoffee” product from being sold in the EU. If McDonald’s wishes to actually prevent the sale of products under the “MacCoffee” brand, it must pursue a separate action for trade mark infringement. If you wish to protect the integrity of your brand, you must be aware of identical / similar trade marks on the trade mark register, but you must also be aware of the products and services being sold in the marketplace under identical /similar trade marks. A trade mark watching service and regular internet and social media searches are helpful in this regard.

Briffa advises on contentious and non-contentious trade mark matters and assists its clients with trade mark applications, opposition proceedings, cancellation proceedings and infringement disputes in various jurisdictions around the world through its network of international agents. If you have any queries or concerns regarding your trade mark portfolio or brand management generally, or if you would just like some general advice, please do not hesitate to contact us.

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