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• McDonald's persuades EU court to affirm cancellation of “MacCoffee” trademark registration.
• Case may be expansion of concept of “family” of marks in dilution cases.
By Peter Leung
July 5 — The European Union Intellectual Property Office was correct in canceling a trademark registration for “MacCoffee” because it wrongly linked to McDonald's International Property Co.'s trademarks, a court ruled July 5 ( Future Enterprises Pte. Ltd. v. European Union Intellectual Property Office , E.C.R., No. T-518/13, 7/5/16 ).
The General Court of the EU Court of Justice found that the “MacCoffee” trademark registered by Future Enterprises Pte. Ltd. improperly creates an association with McDonald's family of marks, which are based on adding the “Mc” prefix before the name of foods, even though the “Mac” prefix is not identical.
Future is a Singapore-based company that makes instant coffee and teas, held by the publicly-traded Food Empire Holdings Ltd.
Future's “MacCoffee” trademark was registered as an EU Trade Mark, formerly known as a Community Trade Mark, for its instant coffee product. An EU Trade Mark has effect throughout the EU.
Peter Brownlow, head of trademarks at Bird & Bird in London, told Bloomberg BNA that the case appears to expand the concept of a family of marks as asserted in a dilution claim.
The EUIPO, formerly known as the Office for the Harmonization of the Internal Market, granted Future's registration of the mark for three classes of goods related to products including coffee, tea and various foodstuffs. A few months after the registration, McDonald's moved to cancel it. The EUIPO's cancellation division sided with McDonald's on the grounds that the MacCoffee mark would take unfair advantage of McDonald's long-standing reputation. The EUIPO's First Board of Appeal concurred, again noting the strength of McDonald's marks.
The General Court affirmed the cancellation decision.
It found that, though the EUIPO made a minor error in finding that the MacCoffee mark was visually similar to McDonald's marks, visual similarity was not required for McDonald's to prove its case under Article 8(5) of Regulation No. 207/2009. Overall, the marks have a certain degree of similarity—namely, phonetic and conceptual likenesses.
Unlike an infringement case, McDonald's does not have to prove that the marks are so similar that there is a likelihood of confusion, but only that the relevant public establishes a link between them, the court said.
Article 8(5) is a claim akin to dilution in the U.S. It bars the registration of marks that would take unfair advantage of, or be detrimental to, the distinctive character of the earlier marks, even if they are in different classes of goods and services.
The court found the similarity was enough to establish a link between McDonald's and Future's marks in the minds of the public.
In particular, it found that McDonald's had a “family” of marks consisting of the “Mc” prefix followed by the name of foods, and the public would connect the MacCoffee mark with this family. “Mac” and “Mc” are similar enough to make a connection in the public's mind, in part due to the strong reputation of McDonald's marks, the court said.
Brownlow said it was interesting that McDonald's argument emphasized that the dilution was related to a family of its marks, rather than infringement of a specific mark. Though this argument has been accepted before, most, if not all, previous cases required that the prefix or suffix in the disputed trademark be identical to that in the family of marks, he said. The case may indicate the court's willingness to expand the concept, though weaker brands may have a harder time making their case.
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