The Singaporean company Future Enterprises had brought a trademark application in 2008 to register MACCOFFEE for foodstuffs and beverages. This was registered, but in 2012, the EU Intellectual Property Office (“EUIPO”) upheld McDonald’s application to have the trade mark declared invalid on the basis of its previous EU trademarks in these classes, including “McDonald’s”, “McFish”, “McToast”, “McRib”, “McFeast”, “Big Mac” and seven others. The First Board of Appeal of the EUIPO maintained this decision, and in the judgment issued on Tuesday 5 July, the General Court of the EU again confirmed the original decision.

The General Court confirmed that the test was not that the relative public were likely to confuse the marks, but that they were likely to establish a link between them. The Court took into consideration the conceptual and phonetic similarities between MACCOFFEE and McDonald’s registered marks resulting from their respective “Mac” and “Mc” prefixes, and found that there was such a risk, especially as English speakers familiar with the Gaelic origin of the prefix would use them interchangeably. 

In deciding to uphold the decision of the EUIPO that MACCOFFEE was invalid as a trademark, the General Court approved the EUIPO’s analysis that to permit the registration of MACCOFFEE without due cause would be to allow the applicant to take “unfair advantage of the repute of McDonald’s trade marks”, meaning the company could ride on the coat-tails of McDonald’s marks and benefit from McDonald’s reputation and prestige.

Future Enterprises has the ability to appeal to the European Court of Justice on a point of law only, so there may be a further ruling, but for the moment this judgment gives McDonald’s the ability to prevent other traders using or registering “Mc” or “Mac” trademarks for food and drink related goods and services throughout the EU, unless they have due cause for doing so. This decision confirms the importance of checking previous brands in the market before launching a new product. It also notes the width of protection available to existing registered brand owners, who may be able to prevent others from using similar names on the basis of relevant consumers being likely to associate the two products.

 

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