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 (Case T-518/13).

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 requirements.

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 distinctive character.

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 trade mark.

This decision is still open to appeal to the Court of Justice of the European Union.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.