11th August 2016

No MacCoffee-break in Trade Mark Dispute

An EU registered trade mark for MACCOFFEE (registered in relation to coffee and coffee packaging) has been declared invalid and cancelled based on MCDONALD’S and related trade marks. McDonald’s significant reputation for using the pre-fix ‘Mc’ in its trade marks formed the basis of the ruling the MACCOFFEE marking invalid.

To invalidate the MACCOFEE registration, McDonalds relied on its earlier EU registered trade mark McDONALD’S along with 12 other ‘Mc’ or ‘Mac’ prefixed marks (e.g. McMUFFIN, McFLURRY, CHICKEN McNUGGET), all for fast food restaurant services, to show, cumulatively:

1. MACCOFFEE was similar to McDonald’s earlier marks and registered for similar goods and services and reproduced the structure common to the ‘Mc’ family of trademarks. Despite the marks differing visually and having conceptual and phonetic differences as a result of their different final part, they nonetheless have a certain degree of overall similarity, due to the conceptual and phonetic similarity of their respective initial elements ‘mc’ and ‘mac’.

2. The services and goods covered by MACCOFFEE and McDonald’s earlier marks had a certain degree of similarity owing to the close links existing between the goods and services as coffee can be offered as part of fast food restaurant services.

3. Those McDonald’s marks had a reputation in the EU which also extended to the combination of the prefix ‘mc’ with the name of a menu item or foodstuff.

4. Consequently the general public established a link and associated MACCOFFEE with McDonald’s’ ‘Mc’ family of trade marks and therefore it was highly probable MACCOFFEE took unfair advantage of the McDONALD’S trade mark’s reputation as the use of MACCOFFEE was without due cause.

This case is very unusual and heavily relies upon to the market dominance of the pre-fix ‘Mc’ for fast food, beverages and related services; without it, the case would not have succeeded. Only a few other companies are likely to be in a similarly strong position. For example, Apple using the pre-fix ‘I’ for electronics (iPad, iPhone, iPod), although this was not strong enough to overcome ITV’s objection to Apple’s attempted use and registration of iTV.

For further information, please contact the Intellectual Property Team at Hamlins.

No MacCoffee-break in Trade Mark Dispute

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