{"id":9388,"date":"2016-08-05T09:58:00","date_gmt":"2016-08-05T01:58:00","guid":{"rendered":"https:\/\/henrygoh.com\/?p=9388"},"modified":"2024-11-27T15:46:23","modified_gmt":"2024-11-27T07:46:23","slug":"return-of-the-mc","status":"publish","type":"post","link":"https:\/\/henrygoh.com\/zh\/return-of-the-mc\/","title":{"rendered":"Return of the \u201cMc\u201d"},"content":{"rendered":"\n
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In 2009, the Court of Appeal of Malaysia, decided on a landmark case between McCurry Restaurant (KL) Sdn Bhd v McDonald\u2019s Corporation. The case was first brought by McDonald\u2019s in the High Court for passing off against McCurry Restaurant (KL) Sdn Bhd. McDonald\u2019s claimed that the use of the word \u2018Mc\u2019 in the name of McCurry would cause confusion amongst the people due to the distinctive \u2018Mc\u2019 identifier.<\/p>\n\n\n\n

The Learned High Court judge found in favour of McDonald\u2019s Corporation and held that customers familiar with the McDonald\u2019s trademark would logically assume that the prefix \u2018Mc\u2019 in McCurry would be associated with McDonald\u2019s. However, McCurry appealed against the decision of the High Court, and at the Court of Appeal, their appeal was allowed with the High Court\u2019s decision being reversed.<\/p>\n\n\n\n

One of the main reasons given by the Learned Court of Appeal judge, Gopal Sri Ram JCA (as he was known then) for the decision to allow the appeal was that there was no chance of confusion amongst the public due to the fact that the foods that were available in McCurry greatly differed from the foods served at McDonald\u2019s. As we know McDonald\u2019s serves western fast food. McCurry, on the other hand serves Indian food and other local Malaysian cuisine. Furthermore, the fare served by McCurry did not contain the words \u2018Mc\u2019 in them. McCurry had not offered to its customers items that were labelled either the same or similar to those sold by McDonald\u2019s.\u00b9<\/p>\n\n\n\n

Fast forward to 05 July 2016 where McDonald\u2019s recently won a ruling in the General Court of the European Union in a case between Future Enterprises Pte. Ltd v European Union Intellectual Property Office<\/em> which stated that the name of McDonald\u2019s is so famous that the company can stop other rivals from registering the trademark \u2018Mac\u2019 or \u2018Mc\u2019 for foods and beverages. The case was instituted against a firm called Future Enterprises which had tried to apply for the registration of the trademark \u2018MacCoffee\u2019. The decision was premised on the fact that consumers might establish a mental link between \u2018MacCoffee\u2019 and \u2018McDonald\u2019s\u2019 due to the prefix \u2018Mac\u2019 or \u2018Mc\u2019.<\/p>\n\n\n\n

The EU court held on the first part that it is common knowledge, for the part of the relevant public that knows the prefixes of Gaelic surnames, that they are written interchangeably as \u2018Mc\u2019 or \u2018Mac\u2019.\u00b2 The EU Court also held that there would be a serious risk that the public would associate the mark \u2018MacCoffee\u2019 with the \u2018Mc\u2019 family of trademarks and established a mental link between the marks that were owned by McDonald\u2019s. This would raise a serious likelihood that \u2018MacCoffee\u2019 would derive an unfair advantage off the reputation of McDonald\u2019s.\u00b3 This is due to the \u2018Mc\u2019 family of trademarks being associated primarily with McDonald\u2019s. It is important to note that at this time, McDonald\u2019s had not registered the trademark \u2018McCoffee\u2019 or the like in Europe. The decision of the EU Court was entirely on the \u2018Mc\u2019 family of trademarks.<\/p>\n\n\n\n

Turning to the local scene once again, the Malaysian IP practice be it by the Malaysian IP Court and the Malaysian Trade Mark Registry is to provide a check and balance so that no one party monopolises a prefix that indicates a familial name. Be that as it may, it can be argued that the word \u2018Mc\u2019 which had no direct relation to food, is only made popular and famous by McDonald\u2019s. Likewise is the case of the usage of the letter \u201ci\u201d in Apple\u2019s products. Consumers have now come to relate to, at a certain level, the origin and\/or quality of foods that accompany the prefix \u2018Mc\u2019. In EU Court\u2019s decision, this is the gist of the decision in that the \u2018Mc\u2019 family of trademarks had been built and made famous by McDonald\u2019s Corporation and the rationale is to prevent another party from taking an unfair advantage of the reputation of a trader who has spent years building up their brand and portfolio of related marks.<\/p>\n\n\n\n

The argument would come down to whether a party should be allowed to use the mark \u2018Mc\u2019 even if there is no chance of confusion and\/or passing off especially even if the goods do not relate to one another. Or would the decision of the EU Court be upheld where a mark has gained such popularity and\/or fame that it would have to be protected as a whole i.e. \u2018Mc\u2019 family of trademarks. If the EU Court\u2019s decision was made before 2009, would it be a deciding factor in the decision of the McCurry case. We can agree that yes, the food served by McCurry is not the same as that of McDonald\u2019s, however, the use of the word \u2018Mc\u2019 in relation to foods would make a consumer think of McDonald\u2019s and the \u2018Mc\u2019 family of trademarks.<\/p>\n\n\n\n

Although decisions by EU courts are merely persuasive in Malaysia, and thus not binding, there may come a time that the brand of McDonald\u2019s and the \u2018Mc\u2019 family of trademarks has grown to an extent that the decision of the EU Court may hold sway in Malaysia. However, for now, it is important to note that the decision of the EU General Court is appealable to the Court of Justice of the European Union, which is the EU\u2019s apex court.<\/p>\n\n\n\n

\u00b9 Held, paragraph 2 (McCurry Restaurant (KL) Sdn Bhd v McDonald\u2019s Corporation [2009] 3 MLJ 774)<\/em>
\u00b2 Paragraph 30 (Judgment of the General Court, Future Enterprises Pte Ltd v European Union Intellectual Property Office (EUIPO) [Intervener: McDonald\u2019s International Property Co. Ltd])<\/em>
\u00b3 Paragraph 108 (Judgment of the General Court, Future Enterprises Pte Ltd v European Union Intellectual Property Office (EUIPO) [Intervener: McDonald\u2019s International Property Co. Ltd])<\/em><\/p>\n\n\n\n