Supreme Court, 16th December 2014, 4 Ob 190/14s
The Austrian Supreme Court had to decide on McDonald`s opposition against the application of a hotel operating company for the trademarks MCMOUNTAIN, MCTYROL, MC TIROL and MCTIROL, referring to their trademarks RONALD MCDONALD, MCDONALD`S and RONALD MCDONALD PLAYLAND.
Due to the trademarks overall appearance an indirect likelihood of confusion or association based on the core element of the trademark series “Mc” had to be considered.
According to the Austrian Supreme Court the name prefix “Mc” is seen as an independent letter sequence. To ensure that no indirect likelihood of confusion or association exists, it would be generally sufficient if the second part of the trademark essentially differs from McDonald`s series of trademarks. But in this case the use of the prefix “Mc” on its own in connection with food and catering for guests was considered to be sufficient for a potential likelihood of indirect confusion on the part of the relevant public. Therefore the Court granted McDonald`s opposition, finally clarifying that the prefix “Mc” has to be qualified as series of marks whose use for food and catering for guests is exclusively reserved for McDonald`s.
As a result the likelihood for indirect confusion generally has to be assumed, if the distinctive common element of a family of marks - referring to the owner of a well known series of trademarks registered for certain goods or services – is combined with a trademark element that includes no reference to these goods or services, but is only registered for these goods or services.