A European court has upheld an earlier 2013 ruling, agreeing with McDonaldÂs claim to have exclusive rights to the use of ÂMcÂ or ÂMacÂ in trademark names for food items and beverages.
The ruling comes after Future EnterprisesÂ challenged the European Union Intellectual OfficeÂs rejection of its trademark application to register ÂMACCOFFEEÂ 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 ÂMcDonaldÂsÂ and to 12 other trademarks that McDonaldÂs 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 Âdefinitely 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 ÂMacCoffee 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 McDonaldÂs restaurants, where consumers are served with ready to consume foodÂ. The group sells its flagship MacCoffee- a three-in Âone 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 McdonaldÂs trademarks have a Âcertain degree of phonetical and conceptual similarityÂ and that ÂMacCoffeeÂ unfairly benefited from McDonaldsÂ branding and further agreed that MacCoffeeÂs branding would be wrongly linked to that of McdonaldÂsÂ. Future Enterprises use of ÂMacÂ would Âassociate that trademark with McdonaldÂs ÂMCÂ family of trademarks and mentally establish a link between the trademarks at issueÂ. The judgement further stated that ÂIt is highly probable that MacCoffee rides on the coat-tails of McdonaldÂs in order to benefit from its power of attraction, its reputation and its prestige, and exploits, without paying any financial compensationÂ. The judges said Âthe repute of McDonaldÂs trademarks makes it possible to prevent registration, for foods or beverages, or trademarks combining the prefix ÂMacÂ or ÂMcÂ with the name of a foodstuff or beverageÂ.
The ruling also stated that despite the fact that Future Enterprises was selling different foods from McDonaldÂs under the ÂMacCoffee name, Âthere is nevertheless a certain similarityÂ. 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 McDonaldÂs.
Future Enterprises have stated that they are ÂdisappointedÂ with the latest decision and they plan to appeal.