A European court has upheld an earlier 2013 ruling, agreeing with McDonald’s claim to have exclusive rights to the use of ‘Mc’ or ‘Mac’ in trademark names for food items and beverages.
The ruling comes after Future Enterprises’ challenged the European Union Intellectual Office’s rejection of its trademark application to register ‘MACCOFFEE’ as an EU trademark for foodstuffs and beverages. McDonalds initiated proceedings to have the contentious trademark declared invalid and argued that it was too similar to their EU registered trademark ‘McDonald’s’ and to 12 other trademarks that McDonald’s uses in the same jurisdiction (e.g. McFish, McToast and McRib to name a few).
Future Enterprises had argued that it sells very little MacCoffee products in the EU. Mr Tan Wang Cheow- the executive chairman commented “definitely the potential is there, but we are not relying solely on this mark as our biggest sales in the EU is frozen food. He added “MacCoffee instant beverages are sold in retail markets and our packaging design is unique. Consumers of MacCoffee have to purchase and prepare the beverages themselves so there is no confusion with McDonald’s restaurants, where consumers are served with ready to consume food”. The group sells its flagship MacCoffee- a three-in –one instant coffee brand in its core markets, namely Russia, Ukraine, and Kazakhstan. Its products are also sold in Central Asia, china, the Middle East and the United States.
The Luxembourg- based General court has now ruled that the MacCoffee and Mcdonald’s trademarks have a “certain degree of phonetical and conceptual similarity” and that ‘MacCoffee’ unfairly benefited from McDonalds’ branding and further agreed that MacCoffee’s branding would be wrongly linked to that of Mcdonald’s’. Future Enterprises use of ‘Mac’ would “associate that trademark with Mcdonald’s ‘MC’ family of trademarks and mentally establish a link between the trademarks at issue”. The judgement further stated 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 judges said “the repute of McDonald’s trademarks makes it possible to prevent registration, for foods or beverages, or trademarks combining the prefix ‘Mac’ or ‘Mc’ with the name of a foodstuff or beverage”.
The ruling also stated that despite the fact that Future Enterprises was selling different foods from McDonald’s under the ‘MacCoffee name, “there is nevertheless a certain similarity”. A further observation was made by the judges in that the MacCoffee name is not just used on simple ingredients but on menu items such as ice cream, muffins, and toasted sandwiches that may be used and offered in the context of fast-food restaurant services provided by McDonald’s.
Future Enterprises have stated that they are “disappointed” with the latest decision and they plan to appeal.