European Trademark Registration
In 2008, the company Future Enterprises, of Singapore, applied for European trademark registration of the MACCOFFEE for foodstuffs and beverages, which was granted in 2010 by EUIPO (European Union Intellectual Property Office). But later the American company McDonald’s then applied to have the trademark declared invalid on the basis of its earlier EUTM of McDonald’s.
In 2013, EUIPO granted McDonald’s application, in view of the reputation of the McDonald’s trademark for restaurant services and the link that the public could establish between the contested European trademark registration (and Future Enterprises could thereby take unfair advantage of the repute of the McDonald’s trade mark). Future Enterprises requests the General Court to set aside the decision of EUIPO.
By dismissing the action, brought by Future Enterprises, the General Court judgment on the first hand confirms the decision of EUIPO regarding the EUTM Registration and on the other hand indicates, that the repute of McDonald’s trademarks makes it possible to prevent the European trademark registration, for foods or beverages, of trademarks combining the prefix ‘Mac’ or ‘Mc’ with the name of a foodstuff or beverage. Moreover, the General Court validates the assessments of EUIPO according to which, because of the combination of the element 'mac' with the name of a drink in the MACCOFFEE trade mark, in particular, the relevant public can associate that trade mark with the McDonald’s ‘Mc’ family of trademarks and mentally establish a link between the trade marks at issue.
The importance of the case is that it shows how a firm or company, already established a certain brand or mark of a good or service, easily recognizable by the society, it could be protected by the relevant law and procedures, as well as the European trademark registration and in the same time to keep its competitiveness.
Comparable cases you can enjoy here:
- European Union Trade Mark – absolute grounds for registrability: http://gencs.eu/news/view/3543 ;
- Relative grounds for refusal of European Union trade mark registration: http://gencs.eu/news/view/3429
To find out more about the European Trademark Registration, contact our EU Trademark attorney at: firstname.lastname@example.org