Taking the ‘Mc’

An application for trade mark over ‘MacCoffee’ brought by a Singapore based company has been prevented by McDonald’s on the basis of the name’s similarity to its family of ‘Mc’ trade marks.

When assessing the similarity of trade marks the European Union Intellectual Property Office will assess the mark based on 3 possible similarities (visual, phonetic and conceptual).

Whilst visual similarities are usually more important when considering trade marks which incorporate designs and/or logos, they are still relevant to word marks as well.  In this case the Board of Appeal confirmed that the two marks should not be considered as visually similar as the court should take into account the overall similarity of the two marks.

Phonetically the two different trade marks were held to have some similarity as the Board of Appeal paid particular attention to the initial ‘Mc’ or ‘Mac’ parts of the mark. Particular attention was paid to the initial elements of the trade mark as these have the greatest effect on the consumer. Furthermore, here the dominant effect of the ‘Mc’ or Mac’ elements was enhanced due to the descriptive nature of the remainder of the mark. Therefore the marks were found to have some phonetic similarity.

The final comparison that needed to be made was the conceptual comparison of the two marks. Here is was held that the use of ‘Mc’ or ‘Mac’ by the parties was designed to evoke the same idea, a reference to the prefix of a Gaelic surname. Therefore the two marks were also conceptually similar.

Unsurprisingly given the above, the application for ‘MacCoffee’ wasn’t accepted. McDonald’s have used the family of ‘Mc’ marks for a significant time and widely across the food, drink and restaurant sectors and the similarities in the signs meant that the ‘MacCoffee’ mark was always likely to benefit from an association with McDonald’s.

Whilst this would appear to give McDonald’s a monopoly of the ‘Mc’ or ‘Mac’ phrase, each case depends on their own facts. The result of the case may well be different especially when considered outside of McDonald’s core service areas.

McDonald’s has won a case that could stop another company using the “Mc” or “Mac” prefix on its food and drink.

A European court upheld a 2013 ruling that said the MacCoffee trademark of a Singaporean company, Future Enterprises was invalid.

http://www.bbc.co.uk/news/business-36712690