No distinction is made between “Mac” and “Mc” for the purposes of trademark law. The General Court of the European Union (EGC) ruled that whether the syllable includes an “a” is of no great significance (Az.: T-518/13).
GRP Rainer Lawyers and Tax Advisors in Cologne, Berlin, Bonn, Düsseldorf, Frankfurt, Hamburg, Munich, Stuttgart and London conclude: The EGC’s ruling was preceded by a longstanding legal dispute between a well-known American fast food chain and a company based in Singapore. The latter successfully applied in 2008 to register the EU trademark “Maccoffee” for food and beverages with the EUIPO (European Union Intellectual Property Office). The fast food chain took action against this move and filed for a declaration of invalidity for this trademark. In doing so, it referred to the rights arising from its older EU trademark for fast food restaurants, which included the prefixes “Mc” and “Mac”. Taking into account, among other things, the level of recognition associated with this trademark, the EUIPO granted the action. It stated that consumers could make connections between these trademarks, thereby unfairly exploiting the value and esteem of the older trademark.
The action brought by the company based in Singapore to overturn this decision has since failed. The General Court of the European Union held that the syllables “Mac” and “Mc” were similar both phonetically and conceptually. As a result of this similarity, it was said that consumers could make connections between these trademarks, with it being possible to perceive the syllables as almost identical. It went on to say that they had very similar compositions and would be associated with food products by consumers.
The Court further opined that the value and esteem of the older trademark was being unfairly exploited in order to benefit from its brand awareness and image.
Businesses attach particular importance to trademarks, which is why the latter ought to be afforded special protection. The more well known a trademark is, the more in need of protection it is. Attempts to profit from the high profile and positive image of a trademark can often give rise to violations of trademark law. Especially in the case of very well-known trademarks, even similarities can lead to infringements. That is why it is crucial to consider during the registration process whether the new trademark would violate the rights of other trademark proprietors’.
Companies concerned can turn to lawyers who are versed in the field of trademark law for support and assistance in enforcing or fending off claims in the event of trademark violations.
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