Luxembourg: Trade marks which resemble McDonald’s product names are invalid

The Court today upheld the European Union Intellectual Property Office (EUIPO)’s 2013 decision to declare the “MACCOFFEE” EU trade mark invalid following an application by McDonald’s.

Future Enterprises, based in Singapore, originally applied for the trade mark in 2008 and it was subsequently granted in 2010.

However, McDonald’s argued that the trade mark should be declared invalid on the basis of its McDonald’s trade mark and 12 other trade marks which it held for fast food restaurant services and which incldued the word elements ‘Mc’ or ‘Mac’ as prefixes.

EUIPO recognised that, in view of the reputation of the McDonald’s trade mark, the public could mentally establish a link between the contested trade marks, and Future Enterprises could thereby take unfair advantage of the repute of the McDonald’s trade mark.

The General Court today confirmed that decision by dismissing an action brought by Future Enterprises against the decision.

In its judgment, the Court validated EUIPO’s assessment that the public could establish a link between the “MACCOFFEE” and “McDONALD’S” marks because of the combination of ‘Mac’ with the name of a drink in the MACCOFFEE trade mark.

It considered that, despite the difference of the goods and services covered by the trade marks at issue, there is a certain similarity owing to the close links existing between them.

Some of the foodstuffs designed by MACCOFFEE, such as ice cream, muffins, filled sandwiches and toasted sandwiches correspond to goods offered on the menus of fast-food restaurants, and the foodstuffs and restaurant services at issue are directed at the same consumers.

Lastly, the General Court confirmed EUIPO’s analysis that the use of MACCOFFEE without due cause takes unfair advantage of the repute of McDonald’s trade marks.