In 2008, a Singaporean Company had applied for registration at the EU trademark office for the word ‘MacCoffee’ for its foods and beverages line. McDonald’s opposed this registration stating that 13 of its registered trademarks already contained the words ‘Mac’ and ‘Mc’. It also opposed the registration by arguing that, the registration of the word ‘MacCoffee’ would lead to consumer confusion and the Singaporean Company would unjustly benefit from the global reputation which McDonald’s possesses. The European trademark office agreed to the contentions put forth by McDonald’s and refused registration. McDonald’s has been involved in a number of lawsuits and other legal cases in the course of the fast food chain’s 70-year history.
The Singaporean Company, Future Enterprises took the matter to the European General Court. The European General Court also refused the registration. The Court stated that the word ‘MacCoffee’ and the trademarks of MC Donald’s are phonetically similar. This would create an impression that the products bearing the word ‘MacCoffee’ are linked to McDonald’s. The judges supporting the decision of the EU trademark office stated the following-“The repute of McDonald’s trademarks makes it possible to prevent the registration, for foods or beverages, of trademarks combining the prefix ‘Mac’ or ‘Mc’ with the name of a foodstuff or beverage.” They further said , “Indeed, 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 marketing effort made by McDonald’s in order to create and maintain its image”. This is not the first win for McDonald’s. We have already discussed in our blog a trademark dispute which McDonald’s had won against Supermac, an Irish fast food Company. The use of the “Mac” in by Future Enterprises in its products would associate that trade mark with the McDonald’s “Mc” family of trademarks and mentally establish a link between the trade marks at issue. 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 made another observation stating that the MACCOFFE name is not just used on simple ingredients but on menu items like ice cream, muffins and toasted sandwiches that may be used and offered in the context of fast-food restaurant services provided by McDonald’s.
The MacCoffee trademark was registered in 2010 by the European Union Intellectual Property Office, but MacDonald’s applied to have the trademark named invalid on the basis of the similarity to its main EU trademark and 12 other trademarks that McDonald’s uses in the jurisdiction. The MacCoffee website explains its history of using the trademark. Starting in the late 1990s, MacCoffee was on sale at numerous kiosks in Russia, as well as at local markets. It expresses that over the years it gained popularity in many countries and customers grew to love its rich aroma, excellent taste and premium quality.
Recently , a European Court ruled in favour of US fast food giant McDonald’s, restraining a Singapore based company from using the word ‘Mac’ as a prefix on its foods and beverages. One of the primary aims of every trademark law is to prevent consumer confusion. Trademark law provides exclusive rights to the proprietors of a particular trademark, thus allowing them to carve out a niche for their product in the existing market.
Keywords: Trademark, Trademark Infringement, McDonald, Mac, Mc, MacCoffee, Future Enterprises.