On 5 July 2016, the EU General Court (the "Court")
upheld the decision of the EUIPO (European Union Intellectual
Property Office, formerly OHIM) finding the EU trade mark
"MACCOFFEE" invalid after McDonald's had brought an
application for a declaration of invalidity of that trade mark
For an earlier trade mark to invalidate successfully a similar
but not identical trade mark pursuant to Article 8(5) of Regulation
No 207/2009 of 26 February 2009 on the Community trade mark (the
"Trade Mark Regulation"), a number of cumulative
conditions must be satisfied. First, the earlier trade mark must
have been lodged before that for which cancellation is sought and
must be registered. Second, the earlier trade mark and that for
which cancellation is sought must be identical or similar so that
the relevant public could establish a link between the trade marks.
The establishment of such a link must be assessed globally, taking
into account all factors relevant to the circumstances of the case,
including the degree of the earlier trade mark's distinctive
character, the degree of similarity between the goods and services
covered by the trade marks at issue and the relevant public. Third,
the earlier trade mark must have a reputation in the EU. Fourth,
the use without due cause of the trade mark for which cancellation
is sought must lead to the risk that unfair advantage might be
taken of the distinctive character or the repute of the earlier
trade mark or that it might be detrimental to the distinctive
character or the repute of that trade mark.
Given that the first and third requirements had not been
challenged, the Court focused on the second and fourth
As regards the second requirement, the Court first confirmed
that the trade marks at issue had a certain degree of phonetic and
conceptual similarity due to their respective initial part, namely
the "mac" and "mc" elements. Although the trade
marks at issue lacked visual similarity, the Court concluded that
they were overall similar.
The Court went on to state that the relevant public was likely
to establish a link between the trade marks at issue since the
trade mark "MACCOFFEE" could be seen as belonging to the
"Mc" family of trade marks of McDonald's. To
establish the existence of a "Mc" family of trade marks,
the Court referred to the numerous "Mc" trade marks owned
by McDonald's (McMUFFIN, McRIBB, McFLURRY, McNUGGETS, McCHICKEN
and EGG MCMUFFIN). The Court found that the combination of the
prefix "Mc" with another word had acquired its own
The Court then rejected the appellants' argument that there
was no similarity between the goods and services at issue given
that the trade mark "MACCOFFEE" was registered mainly for
foodstuffs and beverages while the trade mark "McDonald"
related to fast food restaurant services. The Court found that
there is complementarity between those goods and services since the
goods covered by the trade mark "MACCOFFEE" are identical
to goods offered on the menu of McDonald's establishments and
they are both intended for the same consumers.
With reference to the fourth criterion, the Court held that it
was highly plausible that the trade mark "MACCOFFEE" rode
on the coat-tails of the trade mark "McDonald's" 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 McDonald's in order
to create and maintain its image.
Finally, the Court found that the owner of the trade mark
"MACCOFFEE" did not have a due cause to use the contested
This decision is still open to appeal to the Court of Justice of
the European Union.
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Trading under your name is an appealing idea, especially in the fashion world where designers frequently use their own names as brands (think Hugo Boss, Donatella Versace, and Tom Ford, to name but a few).
1.The trade mark shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in the Community under that trade mark by the proprietor or with his consent.
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