General court ruling secure McDonalds trade mark power
A ruling from the Court of Justice for the European Union has suggested that McDonalds may have created a monopoly of the prefix ‘Mc’ or ‘Mac’ and could prevent its use by others.
A company based in Singapore, Future Enterprises, applied to register a trade mark in the EU for ‘Maccoffee’ for use for goods mostly based around coffee and coffee packaging.
This application was accepted and no objections were lodged therefore the trade mark was registered.
However, the fast food giant later made an application that the mark should be deemed invalid as it infringed a number of their registered trade marks which included the prefixes ‘Mc’ and ‘Mac’.
In 2012, the ‘Maccoffee’ mark was deemed invalid and its registration was cancelled.
Future Enterprises appealed this decision. The first board of appeal upheld the decision to invalidate the mark and it was appealed again to the General Court.
The General Court had to determine if the two marks were sufficiently similar to allow the cancellation to be justified.
The General Court upheld the Board’s decision that the two marks were similar enough to warrant the invalidation.
However, it did state that the two marks were not sufficiently visually similar as the Board had suggested but they were phonetically and conceptually similar which was enough to satisfy the requirements of trade mark invalidation.
Therefore, it seems that McDonalds and any other brand of its size and popularity, has the ability to prevent any other brand from using the key parts of their trade marks, such as the ‘Mc’ of McDonalds and the ‘i’ of Apple’s iPod and iPhone.
Watch this space for further protection given to well-known brands.
For more information on trade marks, contact Jane at The Trademarkroom.
By Ellis Sweetenham