In a ruling handed down by the EU’s General Court (“GC”) last week (Case T-518/13), McDonald’s International Property Co. Ltd (“MI”) have overcome a further challenge to an original finding that they could cancel a third party’s EUTM registration for “MACCOFFEE”. The case is particularly interesting for EU practitioners and famous brand owners as it illustrates the growing power of a family of marks argument in trade mark opposition/invalidity actions.     

In 2010, a Singaporean company, Future Enterprises Pte Ltd (“FE”), registered the mark MACCOFFEE in relation to a range of food and drinks in Classes 29, 30 and 32. MI applied for a declaration of invalidity on the grounds of a number of its earlier EUTM registrations including BIG MAC, McDONALD’S, and a number of ‘Mc’ prefixed marks such as McFISH and McMUFFIN.  MI’s action was successful at first instance not due to a likelihood of confusion but under the provision that provides additional protection to famous marks. It was held that the ”McDONALD’S” trade mark had a reputation in the EU, this mark was similar (to a degree) to MACCOFFEE, there was the necessary “link” in the minds of the consumer between the two marks, and the theoretical use of MACCOFFEE would take unfair advantage of the reputation of the “McDONALD’S” trade mark.

This decision was appealed by FE to the Board of Appeal of EUIPO, and when they dismissed the appeal, it was appealed yet further to the GC who ultimately also dismissed the action and upheld the decision below. What is particularly interesting, and what was considered at length by the GC, was the finding that reputation in "McDONALD'S" also extended to the prefix ‘Mc’ when combined with the name of a foodstuff item, as this combination had acquired its own distinctive character within the EU due to MI's extensive evidence of use and family of ‘Mc’-prefixed marks. Essentially, the GC said that one of the many criteria that can be taken into account in assessing whether there would be the necessary “link” required under this provision, is the existence of a family of marks (assuming certain evidentiary hurdles are met). In this case MI met those hurdles for establishing a family of “Mc prefixed” marks. 

This decision is clearly very favourable for MI and sends a clear message that other traders should avoid using the prefix ‘Mac’ or ‘Mc’ in relation to any food or beverage names.