MACCOFFEE VS. MCDONALD’S AND THE ‘MC FAMILY’

Judgement of the Union European Court, July 5th, 2016, Case T-518/13

A European Union trademark MACCOFFEE has been registered in January 2010 for products in classes 29, 30 and 32.

 

In August 2010 McDonald’s filed and action for invalidation of the trademark MACCOFFEE on the basis of its earlier European Union trademarks McDONALD’S, McFISH, McTOAST, McMUFFIN, McRIB, McFLURRY, CHICKEN McNUGGETS, McCHICKEN, EGG McMUFFIN, McFEAST, BIG MAC, PITAMAC, and on the basis of its German trademark McDonald’s for which reputation is invoked.

 

In order to pronounce judgement, the Court bases its conclusion on the following elements:

  • The conflicting trademarks McDONALD’S and MACCOFFEE are similar on the whole, in view of their conceptual and phonetical similarities, and in view of the slight visual analogy. The products and services present a certain degree of similarity in view of the close links between them;
  • The trademark McDONALD’s has a reputation;
  • The prefix ‘Mc’ combined with the name of an item of a menu or a food product possess an individual distinctive character compared to the fast food restauration services and to the menu items of fast food restaurants.
  • The above mentioned McDonald’s trademarks are a trademark family. The existence of a trademark family is a matter for consideration when the risk that a link between the trademarks will be made is assessed. In this respect, the Court points out that the common element between the contested trademark and the trademark family must be identical or strongly similar. In this particular case, the stem ‘mac’ of the contested trademark is seen as identical or equal to the trademark family’s stem ‘Mc’. 
    The contested trademark MACCOFFE reproduces the structure of the ‘Mc’ trademark family.

 

The Court concludes that the use of the contested trademark MACCOFFEE would involve that ‘the relevant public will mentally establish a link between the conflicting trademarks’, which can cause a transfer of the McDONALD’S trademark’s image to the designated products. Therefore, the trademark MACCOFFE ride on the coat-tails of the earlier trademark in order to benefit from its power of attraction, its reputation, its prestige, and exploit, without cost, the commercial effort of McDONALD’S.

 

In the light of the above, the Court declares the trademark MACCOFFEE invalid.

 

This decision shows that the existence of a family trademark is a decisive factor to take into account to appreciate the existence of a profit unduly realized by a third party.

 

Publication date : September 2016

 

Contacts : Marion LAPERRIERE and Béatrice DAUBIN

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