In the battle of brands, repute and mileage, the grapple is
often between MNCs and smaller local players, the latter often
find themselves buried under the brawl of an established brand
name. Wriggling out of such a situation is Sterling's
Mac Fast Food in the decision of McDonald's
Corporation v. Sterling 's Mac Fast Food. [2008
McDonald's adopted the trademark "BIG MAC"
for the first time in 1968 in USA. In India, they got
registered their marks BIG MAC, McDonald's as well as
their corporate logo 'M'. According to them,
the word "BIG" was registered on the condition that
the same would not append exclusivity, while "MAC"
was allowed to be put to exclusive use by them. They were the
owner of several marks incorporating Mc/MAC as the suffix or
prefix. The usage of the mark "MAC" as a prefix by
Sterling's Mac Fast Food, came to their notice and they
alleged a mala fide intention to trade upon their goodwill and
reputation of BIG MAC and Mc/MAC, asserting that the mark was
in use since 1983. On issuance of a legal notice Sterling
averred that they were trading in the name of
"Sterling's Mac Fast Food" and not "Mac
McDonald's responded to the assertion of Sterling
stating that "Sterling" did not form a visible part
of the mark, and that earlier, the counsels for
McDonald's, in order to avoid litigation, requested
them to use the name "Sterling" in bold letters,
equivalent to "Mac Fast Food". They also advised to
incorporate the same in all prominent places of its business to
avoid deception and confusion. Sterling describing the origin
and birth of the name asserted that "they were the first
in point to use the term "Mac", while
McDonald's used "Big Mac" and not Mac alone.
They also asserted that the name was McDonald's and not
Mac. Sterling further stated that they procured registration
under the Trade and Merchandise Marks Act, 1958, while
McDonald's had not registered their mark until 1996.
Further, a suit was filed only in 1998, five years after the
existence of Sterling's mark came to their
In the trial, documents were adduced to support their
respective contentions. In the appeal, McDonald's
contended that the judgment passed was on contentious issues
and in error of law, while Sterling contended that the
Court's opinion was correct. They also stated that the
dismissal of the suit on the ground of delay and laches was
correct. Presenting pieces of evidence such as lease deed
copies and license, they averred that they had been using the
trademark for sixteen years prior to McDonald's entry
into India in 1996. The trial court rendered against
The High Court, examining the statute, comparing the marks
and heeding attention to judicial precedents, stated that
Sterling could not be alleged of infringement. Noting that
Sterling had entered the business and was using the mark since
1983, McDonald's could not have any grievance against
it. The court also stated that McDonald's could not
claim exclusive rights over the mark, since they had admitted
that most of the trademarks had been registered in the course
of pendency of the suit. Pronouncing McDonald's case to
be vexatious and imaginary, the High Court dismissed the suit
and ordered costs.
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