McDonald's reserves the right to use the prefixes "Mc" and "Mac" in its field
Infinite application of a prefix to a range of products is likely to constitute a powerful marketing tool. Prefixes are easily identified by consumers and become particularly attractive if they achieve a sufficient level of recognition. In any case, this is what Apple and McDonalds have banked on with the copious use of their respective prefixes "i" (iPod, iPad, iPhone, etc.) and "Mc" (McFish, McToast, McFlurry, McChicken).
In this case, McDonald’s brought an action to enforce its rights on its emblematic prefix, allegedly infringed by Future Enterprises. This Singaporean company had registered the European Union trademark "MACCOFFEE" to describe food products and beverages. Once registered, the trademark was the subject of a cancellation action by McDonald’s on the grounds of its earlier European Union trademark "McDONALD’S", as well as other trademarks featuring "Mc" or "Mac", invoking an infringement of the reputation of its trademarks and family of trademarks, pursuant to article 8, par. 5 of regulation 207/2009 of 26 February 2009 on the Community trademark .
When the Office for Harmonisation in the Internal Market, since renamed the European Union Intellectual Property Office, upheld the cancellation request, given the reputation of the "McDONALD’s" trademark, Future Enterprises lodged an appeal with the European General Court.
The Court confirmed the reputation of the "McDONALD’S" trademark as well as that of the family of trademarks. Finding that the "MACCOFFEE" trademark was built on the combination of the prefix "Mac" with the name of a food product, according to a pattern similar to McDonald’s trademarks, the Court found that "there was a serious risk that the relevant public would be able to associate the contested trademark with the "Mc" family of trademarks and establish a mental link between the trademarks at issue" and that the use of "MACCOFFEE" took unfair advantage of the reputation of the McDonald’s trademarks in order to benefit from their power of attraction. The Court dismissed the Singaporean company's argument in this respect based on the distinct nature of the prefixes "mac" and "mc" and the standard use of the prefix "mc", commonly included in Gaelic patronyms. The appeal brought by Future Enterprises was therefore rejected (EGC, 5 July 2016, T-518/13, McDonald’s vs. Future Entreprises).
This ruling therefore gives McDonald’s a monopoly over the use of the prefix "Mc" or "Mac" in relation to food and beverage products and implies an unprecedented application of article 8, par. 5 to the family of trademarks. This decision is likely to encourage some companies to expand and enhance the value of their trademark families.
Author: Sabine Rigaud
