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, European judges have ruled.
A three judge chamber of the General Court, in the Court of Justice of the European Union, upheld a decision of the European Union Intellectual Property Office (EUIPO) to declare invalid the previously registered European trade mark "MACCOFFEE" for foodstuffs and beverages, previously granted to Singapore company Future Enterprises, on an application by McDonald's.
The court agreed with EUIPO's concluusion that, because of the combination of the element "mac" with the name of a drink in the MACCOFFEE trade mark, in particular, the relevant public could 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 two prefixes were perceived as identical or equivalent; furthermore, the structure of the MACCOFFEE trade mark was very similar to that of the Mc family of trade marks, which combines the prefix "Mc" with the name of a foodstuff, for example McToast, McMuffin and McFlurry.
Despite the difference of the goods and services covered by the respective trade marks, there was a certain similarity owing to the close links existing between them: thus, the foodstuffs covered by MACCOFFEE might be used and offered in the context of the fast food restaurant services provided by McDonald’s. Some of the foodstuffs designated by MACCOFFEE, such as ice cream, muffins, filled sandwiches and toasted sandwiches, were not simple ingredients serving as the basis for dishes served in fast-food restaurants, but corresponded to the goods offered, as such, in McDonald's menus.
Furthermore, the foodstuffs and restaurant services at issue were directed at the same consumers.
The court also agreed that the MACCOFFEE mark was seeking to take unfair advantage of McDonaald's repute, and with EUIPO's assessment that "it is 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."