McDonald’s
(LUXEMBOURG) – The EU Court ruled Monday that the repute of McDonald’s trade marks makes it possible to prevent registration of trade marks which combine the prefix ‘Mac’ or ‘Mc’ with the name of a food or drink.
A Singapore company, Future Enterprises, had applied and been granted registration of the EU trade mark MACCOFFEE for foodstuffs and beverages in 2008 – granted in 2010 by EUIPO, the EU Intellectual Property Office. American food giant McDonald’s subsequently applied 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 it held for fast food restaurant services and which included the word elements ‘Mc’ or ‘Mac’ as prefixes1. In 2013, EUIPO granted the McDonald’s application, in view of McDonald’s trade mark for restaurant services.
Future Enterprises requested the General Court to set aside the decision of EUIPO. However, the General Court dismissed the action, confirming the decision of EUIPO.
The Court validated the assessments of EUIPO according to which, because of the combination of the element ‘mac’ with the name of a drink in the MACCOFFEE trade mark, in particular, the relevant public can 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 Court ended its ruling by confirming EUIPO’s analysis that the use of MACCOFFEE without due cause takes unfair advantage of the repute of McDonald’s trade marks. It suggested it was “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 exploits, “without paying any financial compensation, the marketing effort made by McDonald?s in order to create and maintain its image”.
T-518/13 – Future Enterprises v EUIPO – McDonald’s International Property (MACCOFFEE)
