The trademarks McMuffin, McRib, McFlurry, Chicken McNuggets, McChicken and Egg McMuffin, all derived from the McDonald’s brand, meet all of the conditions to form a ’family’ of trademarks according to the General Court of the European Union. All derived trademarks are connected by a common feature, namely the prefix ‘Mc’. The brand MACCOFFEE infringes upon this (series of) trademarks.

Same products
Despite the difference of the goods and services to which the conflicting trademarks relate (namely the foodstuffs and drinks for MACCOFFEE and the fast food restaurant services for McDonald’s), there is nevertheless a certain similarity between these goods and services, the GCEU held. Specifically, foodstuffs can be used and offered in the context of the fast food restaurant industry. Foodstuffs, such as ice cream, muffins, filled sandwiches and toasted sandwiches, correspond to the goods offered on the menu of fast food restaurants. The foodstuffs and restaurant services at issue are geared at the same group of consumers.

The GCEU finds that ‘the trademarks McMUFFIN, McRIB, McFLURRY, CHICKEN McNUGGETS, McCHICKEN and EGG McMUFFIN, derived from the McDONALD’s trademark, fulfil all the conditions to form a ‘family’ of trademarks pursuant to the case law in paragraph 43 above, insofar as they are sufficient in number and reproduce in full the same distinctive element – namely the element ‘Mc’ – adopted in its entirety, with the addition of a word element that differentiates them from each other and that they are characterised by the repetition of the same prefix, ‘Mc’, taken from the McDONALD’S trademark. The fact that in the latter trademark the second element refers to a family name, while in the trademarks of which the family consists it refers to the name of one of the foodstuffs on the menu of the fast-food restaurants is irrelevant, contrary to what the applicant claims. As the Board of Appeal correctly observed in paragraph 81 of the contested decision, the McDONALD’S trademark, with a reputation for fast-food restaurant services, is the original trademark of the family, to which all the derived trademarks are connected by a common feature, namely the prefix ‘Mc’, and from which they are all separated by the same type of final element, which refers to one of the foodstuffs on the menu of the intervener’s fast-food restaurants, as is pointed out in paragraph 61 of the contested decision.’

Obtaining benefit
Due to the combination of the element ‘Mac’ with the name of a drink in a MACCOFFEE trademark requested by a third party, the relevant public can associate this with the McDonald’s ‘Mac’ or ‘Mc’ family of trademarks and in that way can make an association, which infringes on the Mac brands. The GCEU finds that when seeing the MACCOFFEE brand, if this were to be applied to goods that correspond closely to those of McDonald’s, the relevant public can make a mental link between that brand and that of McDonald’s, and the image that the McDonald’s brands conjure up are transferred to the products offered under the MACCOFFEE trademark. Here it is of importance that the same distinguishing component, specifically the element ‘Mc’, appears in both trademarks:

‘99. In the present case, the Board of Appeal concluded, in paragraph 90 of the contested decision, that the relevant public was the public that was relevant for the goods covered by the contested trademark, namely the general public within the European Union, with an average level of attention. Furthermore, the Board of Appeal found, in paragraph 108 of the contested decision, that it was sufficiently established that the use without due cause of the contested trademark took unfair advantage of the reputation of the McDONALD’S trademark. As is apparent from paragraphs 102 to 108 of that decision, it indeed felt it was highly likely that the contested trademark rode on the coat-tails of the McDONALD’S trademark, in order to benefit from its power of attraction, its reputation and its prestige, and exploited, without paying any financial compensation, the marketing effort made by the intervener in order to create and maintain the image of the McDONALD’S trademark. According to the Board of Appeal, all the factors of the case made it possible to conclude that the relevant public or a substantial part of it, could establish a mental link between the trademarks at issue, insofar as, upon seeing the contested trademark affixed to the goods closely linked to those of the intervener, it could be attracted by the fact that this trademark had practically the same prefix and reproduced the same structure as the McDONALD’S trademark and could associate that trademark with the ‘Mc’ family of trademarks, of which the McDONALD’S trademark was the original trademark.

100. Therefore, the Board of Appeal concluded that the use of the contested trademark could entail a transfer of the image of the McDONALD’S trademark, or of the characteristics that it projects, to the goods covered by the contested trademark. The relevant factors for its assessment were, as stated in paragraphs 99 to 101 of the contested decision, (i) the considerable reputation of the McDONALD’S trademark, (ii) the distinctive character acquired by the prefix ‘Mc’, combined with the name of a menu item or foodstuff, for fast-food restaurant services and goods on the menu of fast-food restaurants, (iii) the fact that the contested trademark reproduced the same structure as ‘Mc’ family of trademarks, and (iv) the fact that the goods and services in question had a certain degree of similarity, because of the close links between them.’

So the Board of Appeal had already determined that MACCOFFEE was most likely riding on the coat-tails of the trademark, due to the possible transfer by the relevant public of the image of the McDONALD’S trademark or of the characteristics conjured up by this trademark to the goods covered by the contested trademark. The GCEU confirms that this judgement is correct:

‘108. As is apparent from paragraph 99 above, the Board of Appeal concluded, after an overall analysis of the relevant factors in the present case, that there was a serious risk that the relevant public would be able to associate the contested trademark with the ‘Mc’ family of trademarks and establish a mental link between the trademarks at issue, so that there was a serious likelihood that use of the contested trademark would take unfair advantage of the reputation of the McDONALD’S trademark.’

No valid reason
It is considered that MACCOFFEE derives an unfair advantage without a valid reason from the reputation of McDonald’s trademarks.

Conclusions
This shows that the (series of) trademarks can enjoy a broad scope of protection. In the case of McDonald’s/MACOFFEE, it was decided that trademarks can conflict with the Mac brands, even if they are not requested for identical goods (or used, if the series trademark element is entirely reproduced in the sign contested by the holder), while no valid reason can be identified for this.

By Joost Becker