9
Trade Marks
According to the EU’s General Court,
the answer is yes. In a recent case, the
Court held that McDonald’s’ family of
“Mc-” trade marks creates a scope of
protection which allows the business
to prevent the registration of marks
which employ the prefixes ‘Mac’ and
‘Mc’, together with the generic name of
a food or beverage, in respect of food
and beverages.
Future Enterprises is a Singaporean
food manufacturer, which markets
goods under brands including MacTea,
MacCereal, MacChoco, MacChocolate,
MacFito and MacCoffee.
In 2008, Future Enterprises applied to
register MACCOFFEE as an EU trade
mark for foodstuffs and beverages.
The registration was granted in 2010.
Subsequently, McDonald’s applied to
have the trade mark declared invalid
on the basis that the MACCOFFEE
trade mark takes unfair advantage of
the distinctiveness and reputation of
the McDonald’s trade mark. In making
this argument, McDonald’s relied on
its earlier EU trade mark McDONALD’S,
as well as 12 other marks which
employed ‘Mc’ as prefixes. The
European Union Intellectual Property
Office (EUIPO) found in McDonald’s’
favour, and Future Enterprises
appealed to the EU General Court.
In order to succeed with its case,
McDonald’s would have to show that:
• its earlier marks had a reputation in
the EU;
• its marks were sufficiently similar to
MACCOFFEE so as to create a link in
the mind of the consumer; and
• use without due cause of
MACCOFFEE would cause McDonald’s
to suffer one of the “reputational”
harms of free-riding, tarnishment, or
dilution of distinctive character.
In upholding the EUIPO’s decision, the
Court found that McDonald’s’ trade
mark portfolio did constitute a ‘family’
of ‘Mc-’ trade marks. McDonald’s
evidently had a reputation. The
relevant public would establish a
link between the ‘MAC’ element
in MACCOFFEE, and the use of
MACCOFFEE without due cause would
therefore ride on the coattails of the
reputation of the McDonald’s trade
marks. In its decision, the General
Court provided some valuable
guidance on the relevance and impact
of ‘families’ of trade marks in relative
grounds proceedings.
The Court confirmed that the existence
of a family of marks is a relevant factor
in assessing whether a new trade mark
creates a link in the consumer’s mind
to an existing trade mark. A condition
of this relevance, however, was that
each mark claimed to be in the family
had to be in use (so placing on the
owner of the existing trade marks the
burden of having to provide evidence
of use to the Court). Without use,
the existence of a number of similar
trade mark registrations is irrelevant.
This is because consumers need to
be aware of these marks in order
to draw the necessary conceptual
link. No lower limit was specified by
the Court for the number of marks
required for a family. Whether
marks are a family depends on their
having common characteristics, such
as the reproduction in full of the
same distinctive element with the
addition of a graphic or word element
differentiating each one. This case also
shows that the structure of a trade
mark — in this case “Mc+foodstuff”
— could also constitute a family
characteristic. Lastly, the infringing
mark needed to contain elements
which “connect with characteristics
common to the family”.
It is worth noting that McDonald’s’
monopoly does not extend to “Mc-”
alone in the food and drinks sector.
Rather, the monopoly lies in the
combination of a non-distinctive
foodstuff with “Mc-”.
The judgment confirms the value
of a branding programme which
establishes a common root (e.g. Mc-)
for different product or service lines.
Future Enterprises
v McDonald’s:
A family affair
Can ownership of a family of trade
marks help to prove infringement?
To find out more
contact Tania Clark
