McDonald’s v MacCoffee: a family affair
2 August 2016
T-518/13 Future Enterprises v EUIPO
Can ownership of a family of trade marks help to prove infringement? According to the EU’s General Court, the answer is yes. In this case, McDonald’s were able to invalidate a third party’s registration for MACCOFFEE. The Court held that where a party owned a set of earlier registrations, all of which possessed a common distinctive element, and all of which were in use, they could rely on this to prove the ‘reputational’ harms of unfair advantage, dilution, and tarnishment.
The EU’s General Court has recently held that the reputation of McDonald’s trade marks extends to allowing the business to prevent the registration of marks which employ the prefixes ‘Mac’ and ‘Mc’, together with the generic name of a food or beverage, in respect of food and beverages.
Future Enterprises is a Singaporean food manufacturer, which markets goods under brands including MacTea, MacCereal, MacChoco, MacChocolate, MacFito and MacCoffee.
In 2008, Future Enterprises registered MACCOFFEE as an EU trade mark for foodstuffs and beverages. McDonald’s applied to have the trade mark declared invalid on the basis of its earlier EU trade mark McDONALD’S as well as 12 other trade marks including ‘Mc’ as prefixes.
In finding for McDonald’s, the Court stated that McDonald’s trade mark portfolio constituted a ‘family’ of ‘Mc-‘ trade marks. The relevant public would establish a link between the ‘mac’ element in MACCOFFEE, and the use of MACCOFFEE without due cause would therefore take unfair advantage of the reputation of the McDonald’s trade marks.
Indeed, the Court provided some valuable guidance on the relevance and impact of ‘families’ of trade marks in opposition and infringement proceedings.
The Court confirmed that the existence of a family of marks was a relevant factor in assessing whether a junior trade mark created a link in the consumer’s mind to the senior mark. The existence of a link is necessary to prove the ‘reputational’ harms such as free-riding, dilution, and tarnishment. A condition of this relevance, however, was that each mark claimed to be in the family had to be in use (the owner thereby having to prove use to the Court). Without use, the existence of a number of similar trade mark registrations was irrelevant. Whether marks were a family depended on their having common characteristics, such as the reproduction in full of the same distinctive element with the addition of a graphic or word element differentiating each one. No lower limit was specified for the number of marks required for a family. Lastly, the infringing mark needed to contain elements which “connect with characteristics common to the family”.
It is worth noting that McDonald’s monopoly does not extend to “Mc-” alone in the food and drinks sector. Rather, the monopoly lies in the combination of a non-distinctive foodstuff with “Mc-“.
The judgment confirms the value of a branding programme for different products with a common root.
Mark Caddle
Charles King
Trade Mark group
If you require further information on anything covered in this briefing, please contact Mark Caddle (mcaddle@withersrogers.com; +44 207 940 3600) or your usual contact at the firm. This publication is a general summary of the law. It should not replace legal advice tailored to your specific circumstances.
© Withers & Rogers LLP, August 2016
