On 5 July 2015, the General Court of the European Union rendered its judgment in Case T-518/13, ruling that the repute of McDonald’s trade marks makes it possible to prevent the registration, for foods or beverages, of trade marks combining the prefix ‘Mac’ or ‘Mc’ with the name of a foodstuff or beverage.

Background of the dispute

In 2008, a Singaporean company applied for registration of the EU trade mark “MACCOFFEE” for foodstuffs and beverages. In 2010, the European Union Intellectual Property Office (EUIPO, formerly OHIM), granted that trademark.

On 13 August 2010, the McDonald’s Corporation started proceedings to have the trade mark declared invalid on the basis of its earlier EU trade mark “McDONALD’S” as well as 12 other trade marks which included the word elements ‘Mc’ or ‘Mac’ as prefixes, such as BIG MAC, McFlurry, Mc Muffin, etc.

In April 2012, the Cancellation Division of EUIPO ruled in favour of the McDonald’s Corporation, declaring that the MACCOFFEE trade mark was taking unfair advantage of the reputation of the McDONALD’S trade mark. The Singaporean company filed an appeal against the decision of the Cancellation Division. However, the Board of Appeal of EUIPO dismissed that appeal in its entirety, concurring, in essence, with the Cancellation Division’s argument that the MACCOFFEE trademark was taking unfair advantage of the repute of McDonald’s. As a consequence, the MACCOFFEE trademark was declared invalid.

Dissatisfied with that decision, the Singaporean company ultimately filed an application for annulation with the General Court of the European Union (hereinafter, the General Court) which rendered its final judgment on 5 July 2016.

Findings of the GENERAL COURT

Regarding the degree of similarity between the marks at issue, the General Court ruled that the trade marks MACCOFFEE and McDonald’s do have a certain degree of phonetic and conceptual similarity, resulting namely from the ‘mac’ or ‘mc’ prefix.

The Singaporean Company argued that the visual difference between the two trade marks would prevent the public from confusing them. However, the General Court concluded that, taking both phonetic and conceptual aspects into account, and “even if the marks at issue differ visually (…), they nonetheless have a certain degree of overall similarity, due to the conceptual and phonetic similarity of their respective initial part, namely the elements ‘mc’ and ‘mac’.” (para. 34.)

Regarding the question whether the relevant public will establish a link between the marks at issue, the General Court mainly pointed that :

  • the prefix ‘mc’ used by McDonalds, combined with another word, had acquired its own distinctive character for fast-food services and goods on the menu of fast-food establishments (para. 61);
  • the marks McMUFFIN, McRIB, McFLURRY, CHICKEN McNUGGETS, McCHICKEN and EGG McMUFFIN, derived from the McDONALD’S trade mark, fulfil all the conditions to form a ‘family’ of trade marks (para. 64);
  • contrary to the allegations of the Singaporean company, the existence of the ‘Mc’ family of marks was a relevant factor to be taken into account in assessing the establishment, on the part of the relevant public, of a link between the marks at issue (para 73);
  • even if the MACCOFFEE trade mark was mainly registered for foodstuffs and beverages while the McDonalds trade marks mainly cover fast food restaurant services, the public could still make a link between both trade marks, since the goods and services covered by them are similar and are intended for the same consumers (para. 82).

All in all, the combination of the element ‘mac’ and ‘coffee’ in the MACCOFFEE trade mark could therefore cause the relevant public to associate that trade mark with the McDonald’s family of trade marks by mentally establishing a link between the trade marks at issue.

Regarding the risk of unfair advantage being taken from the reputation of the McDONALD’S trade mark, the General Court referred to the Board of Appeal’s conclusions that the use of the MACCOFFEE mark could entail “a transfer of the image of the McDONALD’S trade mark, or of the characteristics which it projects, to the goods covered by the contested mark.”

The relevant factors for its assessment were:

  1. the considerable reputation of the McDONALD’S trade mark;
  2. the distinctive character acquired by the prefix ‘mc’, combined with the name of a menu item or foodstuff, for fast-food restaurant services and goods on the menu of fast-food establishments;
  3. the fact that the contested mark reproduced the same structure as ‘Mc’ family of marks ; and
  4. the fact that the goods and services in question had a certain degree of similarity, because of the close links between them.

The General Court recalled that the existence of an advantage being unfairly taken of the repute of an earlier trade mark does not require that there is a likelihood of confusion or a likelihood of detriment to the repute of that mark. In other words, it is not relevant to assess whether consumers believe that MacCoffee products are actually from McDonald’s (likelihood of confusion) or whether the use of name “MacCoffee” will adversely affect McDonald’s reputation (likelihood of detriment). What is important to assess is whether a third party, by using a trade mark similar to an earlier renowned trade mark, attempts to ride on the coat-tails of the latter, thereby unfairly taking advantages of its repute without paying any financial compensation (para. 94).

In the case at hand, the General Court confirmed EUIPO’s analysis that “it was highly likely that the [MACCOFFEE] 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 McDonald’s Corporation] in order to create and maintain the image of the McDONALD’S trade mark”.

Since none of the complaints raised by the Singaporean company were upheld, the General Court dismissed the action in its entirety.

Concluding note

The McDonald’s Corporation has always kept a close watch on any trade mark containing the prefix “Mc” or “Mac” in it, in particular in the US where the company has filed motions to stop registration of the following trade marks, among others: McVeggie, MacFlowers, McDreamy, McSteamy or McSalty’s.

As far as the EU is concerned, the McDonald’s Corporation has been successful in obtaining a decision recognizing that the prefix ‘Mc’ used by McDonalds, combined with another word, had acquired its own distinctive character and is likely to prevent competitors from using the same prefix attached to another word for products or services relating to food and beverages.

It is important to note that the reasoning of the General Court was partly based on the similarity between the categories of products and services covered by the trade marks at stake, i.e. food and beverages. By contrast, if the category of products or services would have been different, the General Court might have not reached the same decision.

As an illustration, “McFIT” is the name of the largest fitness chain in Germany. No less than 20 trade marks containing the word “McFit” have been registered by the company McFIT GmbH.

Despite the use of the prefix “Mc” in the McFIT trade marks, it is less likely that the McDonald’s Corporation would be successful in having all these McFIT trade marks invalidated in the EU since the goods and services covered by them do not relate to food and beverages¹.

A note to those interested: the name “McLawyer” is still available.

¹In that regard, it is interesting to note that McDonalds filed a notice of opposition in October 2013 when McFit GmbH applied for the registration of the trade mark “McFit” in the US for advertising and business services relating to its fitness. In 2016, the proceedings were suspended and the parties reached a settlement; McFIT GmbH abandoned its application to register McFit as a trade mark in the US and McDonald’s Corporation withdrew its opposition.