McDonald's battles to protect its 'Mc'-family
McDonald's has successfully defended its 'Mc' branding, following an application by Children's Cancer Aid Limited (CCA) to register 'MCVEGAN' as a trade mark (the Application).
The Application was filed in March 2019 in classes 29, 32 and 33 for a range of meat-alternatives, health foods and vegan drinks. The products were to be made using Scottish produce, with the proceeds of sale used to support families affected by childhood cancer. A CCA director also planned to create a McVegan character for a book and cartoon series in which the products were to be promoted.
McDonald's opposed the Application based on its portfolio of earlier 'Mc' prefixed trade marks (including, but not limited to, MCDELIVERY, MCVEGGIE, MCSALAD and MCCHICKEN). McDonald's asserted that these registrations constituted a "family" of trade marks (the Mc Family).
McDonald's alleged that CCA's use of the 'MCVEGAN' sign created a likelihood of confusion on the part of the public, in relation to each of its earlier marks and the Mc Family, in general. McDonald's also argued that CCA's 'MCVEGAN' sign took unfair advantage of the reputation of its earlier marks, as well as alleging passing off and bad faith.
Although McDonald's does not currently use 'McVegan' to promote its plant-based range in the UK (opting to use 'McPlant' instead), it does use the term in European outlets and there has been reported use in the UK (albeit such use was described by the hearing officer as "very thin").
McDonald's opposition succeeded on unfair advantage and bad faith, such that the hearing office found there was no need to consider any other grounds.
(i) Bad faith (section 3(6) Trade Marks Act 1994 (TMA))
Under section 3(6) TMA, a trade mark will not be registered if the application is made in bad faith.
CCA and its director had previously applied for a number of trade marks featuring the 'Mc' prefix, including 'McDracula'. Prior to the filing of 'McVegan', CCA had suggested to McDonald's that the companies collaborate or that McDonald's make an offer to purchase the 'McDracula' trade mark.
McDonald's declined and in the days following the conclusion of these business discussions, CCA filed the Application. CCA then threatened to collaborate with McDonald's' competitors, if McDonald's did not comply with CCA's requests regarding the McVegan mark.
The UKIPO hearing officer stated that "whilst raising charitable funds is a laudable aim, leveraging a trade mark for compensation, even for a good cause, is not an aim which falls within the functions of a trade mark." The hearing officer considered it "implausible" that the Application had been filed for any purpose other than to obtain financial benefit from McDonald's and stated that the Application constituted a "paradigm example of bad faith."
(ii) Reputation (section 5(3) TMA)
Section 5(3) TMA provides that a trade mark which is similar to an earlier mark will not be registered if the earlier mark has a reputation in the UK and the use of the later mark would take unfair advantage of, or be detrimental to, the character or repute of the earlier trade mark.
The hearing officer stated that the earlier marks relied on had a "sizeable reputation" and described McDonald's' general reputation as "enormous". That said, it was found that this reputation did not extend to all of the goods and services relied on for the purposes of the opposition (hot cakes, for example).
The hearing officer also stated that the extensive use of the earlier marks would have "cemented the public's perception" of the 'Mc' marks as a family of marks, indicating common origin.
Whilst some of the goods listed in McDonald's' specifications were deemed dissimilar to those listed in the Application (although not "strikingly dissimilar", given they related to the food and drink sector), the hearing officer commented that where the contested mark is used for goods which are highly similar or identical, it "would be taken to be an extension of the earlier family of marks and that there would be indirect confusion."
The UKIPO therefore found in favour of the fast food giant, refusing the Application registration on the basis that the repute and distinctiveness of McDonald's' earlier family of marks would result in confusion amongst a significant number of consumers.
The decision is a useful reminder that even where an applicant has good intentions per se (in this case, to raise money for a children's cancer charity), bad faith will be assessed in a purely trade mark sense and applications which fall foul of the absolute grounds under s3 TMA will be refused registration.
The full decision can be read here.