This case demonstrates the scope of protection available to registered brand owners who may be able to prevent others using similar names, including certain prefixes used within a family of trade marks, if the relevant consumers are likely to establish a link between the marks.

Future Enterprises registered the word mark MACCOFFEE in classes 29, 30 and 32. McDonalds International Property did not oppose the mark and the application was successfully registered. In 2013 McDonalds applied for invalidation of the mark pursuant to Art 53(1)(a) read in conjunction with Art 8(5) EUTM Regulation 207/2009 due to their earlier mark ‘McDONALD’S’ and family of marks with the prefix ‘Mc’ or ‘MAC’ attached to a menu item. The Cancellation Division declared the mark invalid in its entirety and the Board of Appeal upheld this decision. Future Enterprises applied to the General Court who held that the marks were phonetically and conceptually similar however disagreed with the Board of Appeal that the marks were not visually similar. The General Court agreed with this but held, ultimately that the MACCOFFEE mark shared common characteristics with the family of McDONALD’S trade marks which made it capable of being associated in the minds of the relevant public with such marks and the goods registered under the MACCOFFEE mark were closely linked to the services in which the earlier marks had a reputation.

Accordingly the General Court dismissed the appeal holding that there was a sufficient degree of overall similarity between the marks that the relevant EU public would establish a link between MACCOFFEE and the McDONALD’s family of marks that was without due cause and would take unfair advantage of the reputation acquired.

Link to Judgment

Judgment Date: 05 JULY 2016