McDonald’s is one of the most famous actors on the fast food market. The company’s level of recognition has now resulted in the situation that other actors are at high risk of legal consequences if they use the prefix “Mc” or “Mac” for food or beverages on the EU market.
As we have reported previously, to determine the likelihood of confusion between trademarks, the General Court in the EU has focused on the beginning of the words at issue. In a new decision of July this year, the General Court takes this even further. The new decision states that for a well-known mark, a prefix can be enough to prevent others from registering trademarks, including that prefix for goods similar to those of the well-known mark.
In 2010 a company registered the trademark MACCOFFEE in classes 29, 30 and 32 for various foods and beverages in the EU. Shortly thereafter, McDonald’s International Property Co. Ltd brought an application for a declaration of invalidity against the registration for all the goods registered. The basis of the invalidity action was the prior EU-registered word marks McDONALD’S, McFISH, McTOAST, McMUFFIN, McRIB, McFLURRY, CHICKEN McNUGGETS, McCHICKEN, EGG McMUFFIN, McFEAST, BIG MAC and PITAMAC, mostly for prepared food in classes 29 and 30.
The court started out by stating that the prefixes “Mc” and “Mac” were to be considered as identical as they were pronounced the same way and had a conceptual similarity. Due to these prefixes, the court thereafter stated that there was an overall similarity between the marks, although the marks as a whole differed visually, conceptually and phonetically.
When the court thereafter was to determine if the relevant public would establish a link between the marks at issue, the court took into consideration the family of McDonald’s trademarks to assess whether the public would think that MACCOFFEE was part of that family. The first question was whether the McDonald’s trademarks could be determined as a family of trademarks. In this regard it was found that the use of McDonald’s trademarks combining “Mc” with a food (that is, the trademarks McDONALD’S, McMUFFIN, McRIB, McFLURRY, CHICKEN McNUGGETS, McCHICKEN, EGG McMUFFIN) was sufficient to ensure that the prefix “Mc” combined with the name of a menu item for foodstuff had required its own distinctiveness. As MACCOFFEE was found to be based on the same principle, with a prefix identical to “mc” and a foodstuff, the court found that there was a risk that the public would think that there was a link between MACCOFFEE and the McDonald’s trademarks.
The goods in the registrations were not identical. For example, in the case at issue the parties agreed that McDonald’s trademarks enjoyed a considerable reputation for fast food in the EU. MACCOFFE was, as stated above, registered for food and beverages. The court found, however, that as the foodstuffs registered by the contested mark were i.a. used and offered in the context of fast food restaurants, there was similarity between the goods in question.
Taking all this into consideration the court found that, as there was a risk that the public would a) find a link between the McDonald’s family of trademarks and as there was similarity between the goods, there was b) a serious risk that the contested trademark took unfair advantage from the reputation of the McDonald’s trademarks. The trademark MACCOFFEE was therefore found invalid.
There are, of course, many aspects that make the circumstances of the case at issue special. Firstly, McDonald’s trademarks are of the most well-known ones in the EU and beyond. Further, members of the family of trademarks are for its majority built on the same structure, which structure also is well-known in i.a. the EU. However, a prefix is one of the building blocks of a language, and trademark legislation is based on that protection should not be invoked for words that many actors will have to use. Therefore this judgement is of great interest and should be considered by trademark strategists. For example, although the McDONALD’S trademark is widely known, this registration and use alone would probably not have been enough to invalidate the trademark at issue. The trademark family in this case broadens the protection and gives the company this strategic position on the food market. However, it must be assumed that the General Court is very restrictive in providing such broad protection for a prefix or other short syllables, and this type of protection should not be something a trademark holder should take for granted but rather be aware of in planning its own marketing strategies in relation to the competition.