American fast food chain, McDonald’s, won a trademark dispute case with their Singapore rival, Future Enterprises. The dispute arose over the use of ‘Mac’ and ‘Mc’ as prefixes for branding beverages and food items – in particular, Future Enterprise’s use of ‘MacCoffee’, an instant coffee product under their Food Empire brand.
The Court’s Decision
The ruling came from the General Court in Luxembourg, the European Union’s second highest court. The court ruled in favour of McDonald’s, who was granted exclusivity to the McDonald’s name, as well as 12 other trademarks that included the prefixes of ‘Mc’ and ‘Mac’.
MacCoffee is Food Empire’s flagship product and is a top all-in-one instant coffee brand in Ukraine, Russia and Kazakhstan. The company also distributes its products across Central Asia, China, the Middle East and in the United States.
Food Empire’s executive chairman, Mr Tan Wang Cheow, maintained that their instant beverage brand has a unique packaging design and that the product has to be prepared by the consumer, causing no confusion with the McDonald’s brand, which serves ready-to-consume food and drinks.
The company applied to register “MacCoffee” back in 2008, and was actually granted approval after two years. However, pressure from McDonald’s lawyers caused the trademark to be invalidated, leading to the European Union Intellectual Property Office reversing their decision.
Future Enterprise made the move to challenge the Property Office in an effort to regain the trademark.
Despite the company’s claim, the General Court sided with McDonald’s in 2016. They ruled that MacCoffee and McDonald’s trademarks are too similar conceptually, and upheld the patent office’s decision to reject Future Enterprise’s trademark application.
Trademarks Protect Against Free Riders
As McDonald’s holds the trademarks for food items branded with ‘Mac’ and ‘Mc’, the reputation of their trademarks prevents the registration of other food and beverages using these prefixes.
Judges of the General Court ruled in favour of McDonalds because of the high probability that MacCoffee is merely riding on the coat tails of the fast food giant. The use of ‘Mac’ in the name makes it extremely similar to McDonald’s ‘McCafe’, which is the fast food giant’s coffee and dessert bar brand.
This case shows that a registered trademark is a powerful tool that prevents competitors benefitting from the reputation and prestige of popular brands without paying financial compensation. Companies like McDonald’s have far reaching marketing campaigns to promote and maintain their image, which other companies may seek to benefit from without bearing the same costs for their own marketing efforts.
However if you are a small business, the danger of not protecting your brand, which you have invested time, money and engery into are just as real and can be a major setback in your business.
Trademark Your Brand
A registered trademark prevents the identity theft of a company’s intellectual property and branding, preventing piracy and protecting a brand’s reputation. The McDonald’s case proves how a registered trademark protects a company’s valuable asset and marketing efforts.
A formal trademark registration should be a starting point of any branding effort to ensure the security and protection of a company’s intellectual property. Why invest in a brand that has issues with use and ownership from the start?!
For questions regarding the trademark application in Australia, contact Pinnacle TMS today for a complementary 10 minute consultation. Email us at info@pinnacletms.com.au or call at +61 2 9520 4366. You can also visit our website at pinnacletms.com.au. to see our range of short videos answering trade mark questions.
