The General court of EU ruled in Case T-518/13, which concerns invalidation of an EU trademark MACCOFFEE registered by a Singaporean company. McDonald’s attacked this mark on the ground of its family of well-known trademarks McFISH, McTOAST, McMUFFIN, McRIB, McFLURRY, CHICKEN McNUGGETS, McCHICKEN, EGG McMUFFIN, McFEAST, BIG MAC, PITAMAC and McDonald’s.
The General court upheld the invalidity of the mark because of the suffix MAC which is the only distinctive element in the mark taking into account that COFFEE is descriptive. Based on this there is possibility the EU consumers to perceive the later mark as part of the McDonald’s family of marks which combines Mc and MAC suffixes with descriptive words too.
According to the court:
“In the present case, the Board of Appeal concluded, in paragraph 90 of the contested decision, that the relevant public was the relevant public for the goods covered by the contested mark, namely the general public within the European Union, with an average level of attention. Furthermore, the Board of Appeal found, in paragraph 108 of the contested decision, that it was sufficiently established that the use without due cause of the contested mark took unfair advantage of the repute of the McDONALD’S trade mark. As is apparent in paragraphs 102 to 108 of that decision, it indeed felt it was highly likely that the contested mark rode on the coat-tails of the McDONALD’S trade mark, in order to benefit from its power of attraction, its reputation and its prestige, and exploited, without paying any financial compensation, the marketing effort made by the intervener in order to create and maintain the image of the McDONALD’S trade mark. According to the Board of Appeal, all the factors of the case made it possible to conclude that the relevant public or a substantial part of it, could establish a mental link between the marks at issue, in so far as, upon seeing the contested mark affixed to the goods closely linked to those of the intervener, it could be attracted by the fact that that mark had practically the same prefix and reproduced the same structure as the McDONALD’S trade mark and could associate that mark with the ‘Mc’ family of marks, of which the McDONALD’S trade mark was the original trade mark.
Therefore, the Board of Appeal concluded that the use of the contested mark could entail a transfer of the image of the McDONALD’S trade mark, or of the characteristics which it projects, to the goods covered by the contested mark. The relevant factors for its assessment were, as stated in paragraphs 99 to 101 of the contested decision (i) the considerable reputation of the McDONALD’S trade mark, (ii) the distinctive character acquired by the prefix ‘mc’, combined with the name of a menu item or foodstuff, for fast-food restaurant services and goods on the menu of fast-food establishments, (iii) the fact that the contested mark reproduced the same structure as ‘Mc’ family of marks and (iv) the fact that the goods and services in question had a certain degree of similarity, because of the close links between them.”
Source: Marques Class 46.