OPPOSITION No B 2 620 535

 

McDonald’s International Property Company, Ltd., 2711 Centerville Road, Suite 400 Wilmington, DE 19808, The United States of America (opponent), represented by Bardehle Pagenberg Partnerschaft mbB Patentanwälte, Rechtsanwälte, Prinzregentenplatz 7, 81675 München, Germany (professional representative)

 

a g a i n s t

 

Concepts4Future Limited, 5/2 Merchants Street, Valletta VLT 1171, Malta (applicant), represented by Gevers, Brussels Airport Business Park, Holidaystraat 5, 1831 Diegem, Belgium (professional representative).

 

On 26/09/2017, the Opposition Division takes the following

 

DECISION:

 

1.        Opposition No B 2 620 535 is upheld for all the contested goods and services.

 

2.        European Union trade mark application No 14 500 029 is rejected in its entirety.

 

3.        The applicant bears the costs, fixed at EUR 650.

 

 

REASONS:

 

The opponent filed an opposition against all the goods and services in Classes 29, 30, 31, 35 and 43 of European Union trade mark application No 14 500 029 for the figurative trade mark . The opposition is based on the following European trade mark registrations:

 

• EUTM No 62 497, ‘McDONALD’S’;
• EUTM No 10 392 835, ‘Mc’;
• EUTM No 5 056 429, ‘McFISH’;
• EUTM No 4 699 054, ‘McTOAST’;
• EUTM No 4 562 419, ‘McMUFFIN’;
• EUTM No 1 391 663, ‘McRIB’;
• EUTM No 864 694, ‘McFLURRY’;
• EUTM No 16 196, ‘CHICKEN McNUGGETS’;
• EUTM No 62 638, ‘BIG MAC’;
• EUTM No 11 596 442, ‘McCOUNTRY’;
• EUTM No 11 205 093, ‘McBITES’;
• EUTM No 11 642 519, ‘McDOUBLE’;
• EUTM No 8 664 617, ‘McWRAP’;
• EUTM No 11 990 223, ‘McBAGUETTE’

 

The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR with respect to EUTM No 62 497, ‘McDONALD’S’; with respect to the other earlier rights the opponent invoked Article 8(1)(b) EUTMR only.

 

 

REPUTATION – ARTICLE 8(5) EUTMR

 

For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to earlier EUTM No 62 497 for the word mark ‘McDONALD’S’, for which the opponent claimed repute in the EU.

 

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

 

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

 

• The signs must be either identical or similar.

 

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

 

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

 

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

 

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

 

 

1. The signs

 

 

 

McDONALD’S
Earlier trade mark	Contested sign

 

The relevant territory is the European Union.

 

The prefix ‘MC’ contained in both signs is not particularly striking as it will be linked by English-speaking consumers with the initial part of family names of Scottish and Irish origin for which it is commonly used. Therefore, the earlier trade mark will be perceived by this part of the public as the surname ‘McDonald’, which is distinctive, and the contested sign as a coined surname formed by the prefix ‘Mc’ and the word ‘cherry’, a small, round red fruit.

 

In relation to the goods in question, the word ‘cherry’ has a lower degree of distinctive character for the English-speaking part of the public as it is descriptive in relation to foodstuffs and agricultural products; however, in combination with the prefix ‘Mc’ it has a normal degree of distinctiveness. For non-English-speaking consumers, neither of these elements have a meaning.

 

The contested sign also contains figurative elements, namely the prefix ‘Mc’ is in a standard white typeface within a grey circle and the word ‘cherry’ in a standard black typeface. A highly stylised grey and black cherry-like device is placed over the word ‘cherry’.

 

None of the marks has a dominant (visually eye-catching) element.

 

Visually, the signs are similar to the extent that they coincide in the prefix ‘Mc’ at the beginning of the signs. However, they differ in the verbal elements ‘DONALD’S’ and ‘CHERRY’ that have no counterparts. The stylisation and the cherry-like element of the contested sign constitute further visual differences. Although it is true that the consumer generally attaches more importance to the first part of the words that consideration cannot apply in every case (12/11/2008, T-281/07, Ecoblue, EU:T:2008:489, § 32). In the present case the non-coincident elements, although with different degrees of distinctiveness depending on the part of the public, are larger than the coincident elements. Therefore, the signs are visually similar to a low degree.

 

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory the pronunciation of the signs coincides in the syllables ‛Mc’ present identically in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the two syllables of the earlier mark, ‘DO-NALDS’, and the remaining two syllables of the contested sign, ‘CHE-RRY’. The cherry-like device of the contested sign will have no impact in the aural comparison as it will not be pronounced. To that extent, the signs are aurally similar to a low degree.

 

Conceptually, as stated above, the most distinctive elements of the signs will be associated with Scottish or Irish surnames by the English-speaking public. Since the surname in each case is different, there can be no conceptual similarity, apart from the finding that they might be perceived as surnames. Therefore, the signs differ from a conceptual point of view. For the rest of the public, since the most distinctive elements of the signs convey no meaning, a conceptual comparison is not possible; therefore, the conceptual aspect does not influence the assessment of the similarity of the signs. Furthermore, it is not excluded, that part of the non-English-speaking public will recognize the name Donald in the earlier sign; for this part of the public, since the contested sign will not be associated with any meaning, the signs are not conceptually similar.

 

The signs under comparison are visually and aurally similar to a low degree, to the extent they have in common the element ‘MC’ in the same position.

 

 

2. Reputation of the earlier trade mark

 

According to the opponent, the earlier trade mark has a reputation in the European Union.

 

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

 

In the present case the contested trade mark was filed on 24/08/2015. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the opponent has claimed reputation, namely:

 

Class 29:        Foods prepared from meat, pork, fish and poultry products, meat sandwiches, fish sandwiches, pork sandwiches, chicken sandwiches, preserved and cooked fruits and vegetables, eggs, cheese, milk, milk preparations, pickles, desserts.

 

Class 30:        Edible sandwiches, meat sandwiches, pork sandwiches, fish sandwiches, chicken sandwiches, biscuits, bread, cakes, cookies, chocolate, coffee, coffee substitutes, tea, mustard, oatmeal, pastries, sauces, seasonings, spices, sugar.

 

Class 32:        Non-alcoholic beverages, syrups and other preparations for making beverages.

 

Class 42:        Restaurant services (at the time the earlier mark was registered these services belonged to Class 42. Nowadays they are classified in Class 43).

 

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

 

On 24/03/2017 the opponent submitted the following evidence:

 

• Annex 1: extract from the Wikipedia article titled ‘History of McDonald’s’ dated 02/01/2017, showing the origins, growing and worldwide expansion of the opponent’s company, having been stablished in Europe since 1971.

 

• Annex 2: extract from McDonalds website titled ‘Financial highlights’ dated 02/01/2017, showing a significant number of McDonald’s Restaurants in Europe at the end of year 2015, most of them in the EU.

 

• Annex 3: excerpt from the Corporate Responsibility Report 2015 McDonald’s Deutschland, Inc., showing facts and figures of McDonald’s in Germany.

 

• Annex 4: excerpt from the 2015 Annual Report of the McDonald’s Corporation, showing worldwide financial data of the company.

 

• Annex 5: 2014 Annual Report of the McDonald’s Corporation, showing total revenue in Europe of $7,808 million in 2014.

 

• Annex 6: extract of Wikipedia article titled ‘McDonald’s Monopoly’ dated 02/01/2017. It refers to a sweepstakes promotion of the opponent and Hasbro, using the theme of latter’s board game Monopoly. The promotion has been offered in several EU countries since 1987.

 

• Annex 7: extracts from FIFA’s website. One titled ‘McDonald’s looking ahead to 2018’ dated 02/01/2017, indicating that McDonald’s will be 2018 FIFA World Cup Sponsor. Another article titled ‘The McDonald’s Player Escort Programme’ dated 02/01/2017, describing the opponent’s programme for kids during 2010 South Africa FIFA World Cup.

 

• Annex 8: a press release, dated 2012, showing that McDonald’s has been official sponsor of the Olympic Games since Montreal 1976, as well as of some national Olympic committees.

 

• Annex 9: a press release from ITMA (Institute of Trade Mark Agents), dated 1996, indicating that according to Interbrand’s The World’s Greatest Brands, McDonald’s is the world’s top brand having taking over Coca-Cola.

 

• Annex 10: a list of European countries in which ‘McDonald’s’ is a registered trade mark and extracts from EUIPO database eSearch, dated 19/09/2016, showing results of trade marks that the opponent holds which include the term ‘McDonald’.

 

• Annex 11: printouts of from national McDonald’s websites in the EU, dated 19/09/2016. The printouts show pictures of products such as sandwiches named, inter alia, Big Mac, McRib, McWrap, McNuggets, McMuffin or McChicken.

 

• Annex 12: examples of menus and packaging used in Germany, the UK and France for the period 2005-2010, on which terms such as McDonald’s, McRib or McNuggets are visible.

 

• Annex 13: an internet publication from Interbrand, whose date is illegible, including rankings of trade marks for the years 2001 to 2015, showing the earlier mark among the top ten brands for each year.

 

• Annex 14: publications by Millward Brown, titled Brandz Top 100 Most valuable Global Brands (+year), showing the earlier mark among the ten most valuable brands for the period 2008-2015, and in 11th position in 2006 and 2007.

 

• Annex 15: an extract from a survey on mark’s recognition conducted in 1991 in (West) Germany by Infratest Burke. The extract is in German and no translation into the language of proceedings was provided. However, the opponent summarised the content of the survey within its submissions and stated that the 58% percent of the polled population (2000 people aged 14 or older), when shown a card with ‘MC’ and asked ‘what comes to your mind when you hear this designation?’ replied ‘McDonald’s’. The opponent also indicated that 85% replied ‘yes’ to the question ‘have you heard or seen this designation in relation to self service or fast food restaurants?’ And 75% replied that ‘MC’ belongs to a certain group of restaurants, namely ‘McDONALD’S’.

 

• Annex 16: an extract from a survey on mark’s recognition conducted in 1992 in (West) Germany by Infratest Burke. The extract is in German and no translation into the language of proceedings was provided. However, the opponent summarised the content of the survey within its submissions and stated that 83% percent of the polled population (1000 people aged 14 or older) linked the sign ‘MC’ in combination with another word to a self service or fast food restaurant.

 

• Annex 17: an extract from a survey on mark’s recognition conducted in 2011 in Hungary by Nielsen Company on the basis of 800 people aged 18-59. According to this survey, the 89% percent of the polled population, when asked ‘which company uses the prefix ‘MC’ in Hungary?’ selected ‘McDonald’s’ from multiple choice options. An 84% selected ‘McDonald’s’ from multiple choice options to the question ‘which restaurant uses the prefix ‘MC’ in Hungary?’ And a 86% selected ‘McDonald’s’ to the question ‘which restaurant using the prefix ‘MC’ is the most famous to you?’ The survey also indicates that the higher ratios were obtained among youngsters, high educated people and Budapest/South-West Hungary inhabitants.

 

• Annex 18: an extract from a survey on mark’s recognition conducted in 2011 in Hungary by Forecast Research Piackutató on the basis of 1000 people aged 18-50. According to this survey, the 88% percent of the polled population, when asked ‘which company uses the prefix ‘MC’ in Hungary?’ selected ‘McDonald’s’ from multiple choice options. A 94.6% selected ‘McDonald’s’ from multiple choice options to the question ‘which restaurant uses the prefix ‘MC’ in Hungary?’ And a 94.6% selected ‘McDonald’s’ from a multiple choice options to the question ‘which restaurant using the prefix ‘MC’ is famous, known to you?’

 

• Annex 19: judgment of 05/07/2016, T-518/13, ‘MACCOFFEE’ in favour of the opponent.

 

• Annex 20: decision (and translation) of the Federal Patent Court of Germany (07/07/2004) on the case ‘McDonald’s’ vs. ‘Mc Döner Kebab’ in which likelihood of confusion was found.

 

• Annex 21: decision of the UK Patent Office (16/08/1996) ‘McIndians’ in favour of McDonald’s.

 

• Annex 22: translated decision (2004) of the Spanish Patent and Trade Marks Office on appeal against the registration of the trade mark ‘McWilly Express’ filled by McDonald’s, in which the mark ‘McDonald’s’ is recognised as repute.

 

• Annex 23: translation of the judgment of the Swedish Court of Patent Appeals (08/10/1999) in the invalidity of the mark ‘Mc Ostrich’, in which the family of ‘MC’ marks in relation to food, beverages and restaurant services was recognised as indicating the opponent.

 

• Annex 24: extract from EUIPO database eSearch, dated 22/03/2017, showing the European Union trade mark No 14 500 011, ‘McBerry’ (fig.) from the same applicant as in the current proceedings.

 

On the basis of the above the Opposition Division concludes that the earlier European Union trade mark No 62 497, ‘McDONALD’S’, has been subject to long-standing and intensive use and is well known in the relevant market.

 

Particularly the evidence originating from various independent marketing agencies shows the mark ‘McDonald’s’ (for the sake of completeness it is noted that since the earlier mark is registered as a word mark, it is irrelevant for the purposes of assessing the evidence of reputation, if the word is used in alternating lower case or upper case letters or in a more stylised version) having a significant recognition worldwide and in the EU.

 

The evidence submitted also indicates that the ‘McDonald’s’ trade mark has been used for a substantial period of time in EU Member States (since 1971) and the revenue figures suggest that the trade mark has a consolidated position in the market. Although the evidence falls somewhat short in terms of quantitative data (market shares, promotional investment…) and qualitative data (the surveys conducted in Hungary seem to have been leading the consumers to a certain answer using a multiple choice scheme in which the opponent’s mark was available for all questions), the evidence which emanates from third parties (industry reviews, press clips) provides sufficient indications that ‘McDonald’s’ restaurants have a strong position among its competitors and it is seen as an important player on the EU market. Under these circumstances, the Opposition Division finds that, taken as a whole, the evidence shows that the mark ‘McDONALD’S’ enjoys recognition for restaurant services in Class 42(43), which leads to the conclusion that the earlier mark enjoys reputation for those services.

 

However, it does not demonstrate a reputation for this mark in relation to the remaining goods. Although it is clear from the evidence submitted that the opponent also sells food and drinks (such as hamburgers, salads, soft drinks, milk shakes, etc.) in its restaurants, the evidence does not show the recognition of the mark with respect to these goods. Moreover, most of these products bear their own brands, most of which starting with or containing the prefix ‘Mc’ (McRib, Big Mac, McFlurry, McChicken, etc.) and only scarce evidence of use of the mark ‘McDonald’s’ on their packaging was provided.

 

Under these circumstances, the Opposition Division concludes that the opponent failed to prove that this mark has a reputation in relation to:

 

Class 29:        Foods prepared from meat, pork, fish and poultry products, meat sandwiches, fish sandwiches, pork sandwiches, chicken sandwiches, preserved and cooked fruits and vegetables, eggs, cheese, milk, milk preparations, pickles, desserts.

 

Class 30:        Edible sandwiches, meat sandwiches, pork sandwiches, fish sandwiches, chicken sandwiches, biscuits, bread, cakes, cookies, chocolate, coffee, coffee substitutes, tea, mustard, oatmeal, pastries, sauces, seasonings, spices, sugar.

 

Class 32:        Non-alcoholic beverages, syrups and other preparations for making beverages.

 

 

3. Family of marks

 

Furthermore, it remains necessary to consider the opponent’s argument that the earlier trade marks, all characterised by the presence of the same word component ‘MC’ constitute a ‘family of marks’ or ‘marks in a series’. In its view, such a circumstance is liable to give rise to an objective likelihood of confusion insofar as the consumer, when confronted with the contested mark which contains the same word component as the earlier marks, will be led to believe that the goods and services identified by that mark may also come from the opponent.

 

In fact, the concept of the family of marks was exhaustively analysed by the General Court in its judgment of 23/02/2006, T-194/03, Bainbridge, EU:T:2006:65.

 

When the opposition to an European Union trade mark is based on several earlier marks and those marks display characteristics which give grounds for regarding them as forming part of a single ‘series’ or ‘family’ a likelihood of confusion may be created by the possibility of association between the contested trade mark and the earlier marks forming part of the series. However, the likelihood of association described above may be invoked only if two conditions are cumulatively satisfied.

 

Firstly, the proprietor of a series of earlier registrations must furnish proof of use of all the marks belonging to the series or, at the very least, of a number of marks capable of constituting a ‘series’.

 

Secondly, the trade mark applied for must not only be similar to the marks belonging to the series, but also display characteristics capable of associating it with the series. This could not be the case where, for example, the element common to the earlier series of marks is used in the contested trade mark, either in a different position from that in which it usually appears in the marks belonging to the series, or with a different semantic content.

 

In this case, it must be held that even if the evidence listed makes reference to the mark for which reputation was invoked, ‘McDonald’s’, it shows also information regarding other sub-brands and trade marks the opponent invoked as basis of its opposition.

 

The evidence produced by the opponent therefore demonstrates that the use by the latter of the marks ‘McDONALD’S’, ‘McMUFFIN’, ‘McRIB’, ‘McFLURRY’, ‘McCHICKEN’ and others was sufficient to ensure that, in the relevant period, the prefix ‘MC’, combined with the name of a foodstuff, retains its own distinctive character that it had previously acquired in relation to fast-food restaurant services and goods on the menu of fast-food establishments, at least in part of the territory of the European Union.

 

In particular, Annexes 11 and 12 show pictures of products, menus and packaging marked, inter alia, as McRib, McChicken, McNuggets, McFlurry, Big Mac, McFish or McWrap.

 

With the possible exception of Big Mac and McFlurry, most of the opponent’s sub-brands consist of the prefix ‘MC’ followed by an ingredient or a generic term for foodstuff. The Opposition Division and the Boards of Appeal (and also national courts) have recognised on several occasions that the opponent owns a ‘family of marks’ that follows the aforesaid structure (MC+FOOD) in relation to fast-foods and fast-food outlets.

 

 

4. The ‘link’ between the signs

 

As seen above, the earlier mark is reputed and the signs are similar to some extent. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed in the judgments of 23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 29 and 31, and of 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

 

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 42):

 

∙        the degree of similarity between the signs;

 

∙        the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

 

∙        the strength of the earlier mark’s reputation;

 

∙        the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

 

∙        the existence of likelihood of confusion on the part of the public.

 

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

 

One of the relevant factors to be taken into account in assessing the establishment, on the part of the relevant public, of a link between the marks at issue is also the existence of a family of earlier marks (05/07/2016, T-518/13, MACCOFFEE, EU:T:2016:389, § 73). The Opposition Division has assessed in the previous section the opponent’s claim of family of marks.

 

In the contested mark, , the prefix ‘Mc’ is followed by the name of a foodstuff, namely by ‘cherry’. Account must be taken of the fact that the contested mark does seek protection for identical services for which the ‘McDonald’s’ mark enjoys reputation, namely services for providing food and drink in Class 43. In relation to the goods for which the contested sign seeks protection, the fact that the contested mark follows the same structure for which the opponent’s family of marks has been found and that the products branded with a mark belonging to the opponent’s family of marks are sold in the establishments for which the earlier mark ‘McDonald’s’ enjoys reputation, will lead the relevant public, composed of public at large, to believe that the applicant’s goods, all of them belonging or relating to the food industry, are somehow affiliated or connected to ‘McDonald’s’ restaurants. The same occurs in relation to the remaining contested services in Class 35 which might be perceived as closely related to the services for which the earlier right enjoys reputation.

 

The signs have a certain degree of visual, aural and conceptual similarity as they share the letters ‘mc’ placed at the beginning of both marks. Account must be taken of the fact that the word ‘CHERRY’ lacks distinctive character in relation to the goods in Classes 29, 30 and 31 and also for the services in Class 43 at least for a significant part of the relevant public. In relation to services in Class 35 this word enjoys a normal degree of distinctive character.

 

It is recalled that the degree of similarity of the signs required under Article 8(5) EUTMR differs from the one required under Article 8(1)(b) EUTMR. In particular, whereas the protection provided for under Article 8(1)(b) EUTMR is conditional upon a finding of a degree of similarity between the marks at issue such that there is a likelihood of confusion between them on the part of the relevant section of the public, the existence of such a likelihood is not necessary for the protection conferred by Article 8(5) EUTMR. Accordingly, the types of injury referred to in Article 8(5) EUTMR may result from a lesser degree of similarity between the marks in question, provided that it is sufficient for the relevant section of the public to make a connection between those marks, that is to say, to establish a link between them (24/03/2011, C-552/09 P, TiMiKinderjoghurt, EU:C:2011:177, § 53).

 

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that when encountering the contested mark the relevant consumers will be likely to associate it with the earlier sign, that is to say, establish a mental ‘link’ between the signs.

 

Even though the opponent does not show a reputation for goods and services which extends to other areas beyond restaurant services, the relevant consumer will immediately make the connection with the opponent’s restaurant services because the contested signs falls into the family of earlier marks and the goods and services for which registration is sought are linked to the opponent’s reputed services.

 

However, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR (26/09/2012, T-301/09, Citigate, EU:T:2012:473, § 96).

 

 

5. Risk of injury

 

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

 

∙        it takes unfair advantage of the distinctive character or the repute of the earlier mark;

 

∙        it is detrimental to the repute of the earlier mark;

 

∙        it is detrimental to the distinctive character of the earlier mark.

 

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 53).

 

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

 

The opponent claims the following:

 

• The registration of the applicant’s sign will take unfair advantage of the distinctive character and the reputation associated with the opponent’s trade mark. Even if the public were able to distinguish between the marks themselves, it is likely that the public would believe that the contested sign is used to identify a new product or service offered by McDonald’s.

 

Before examining the opponent’s claim, it is appropriate to recall that the opposition is directed against the following goods and services:

 

Class 29:        Processed fruits, fungi and vegetables (including nuts and pulses); fruit desserts; yoghurt desserts; dairy puddings.

 

Class 30:        Ice, ice creams, frozen yogurts and sorbets; baked goods, confectionery, chocolate and desserts; chocolate-based ready-to-eat food bars.

 

Class 31:        Agricultural and aquacultural crops, horticulture and forestry products.

 

Class 35:        Commercial trading and consumer information services; business assistance, management and administrative services; advertising, marketing and promotional services.

 

Class 43:        Services for providing food and drink.

 

As seen above, the earlier trade mark was found to have a reputation for:

 

Class 42(43):        Restaurant services.

 

Unfair advantage (free-riding)

 

Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free-riding on the coat-tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 48, and 22/03/2007, T-215/03, Vips, EU:T:2007:93, § 40).

 

The opponent bases its claim on the following.

 

∙        The reputation of the mark ‘McDONALD’S’ was obtained by the longstanding and extensive use and promotion of the sign. The recognition of the earlier mark among the relevant public is already very high.

• The contested mark clearly falls into the opponent’s family of marks.
• The long established use of the opponent’s mark ‘McDONALD’S’ and the ‘Mc’ family of marks would result in transfer of the goodwill of the earlier reputed mark in favour of the applicant’s sign. The applicant would benefit from the opponent’s investments in the mark ‘McDONALD’S’ and the ‘Mc’ family of marks.

 

According to the Court of Justice of the European Union as regards injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, insofar as what is prohibited is the drawing of benefit from that mark by the proprietor of the later mark, the existence of such injury must be assessed by reference to the average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 36).

 

Taking into account the similarity between the contested sign and the opponent’s family of marks, the reputation of the earlier mark and the link between the relevant goods and services as examined in detail above, it is concluded that the contested sign is likely to benefit from the market attractiveness of the earlier mark and its intensive marketing efforts.

 

As a result, it is highly likely that the contested sign is riding on the coat-tails of the earlier mark, thus unduly benefitting from the repute and power of attraction of ‘McDONALD’S’ and the marketing efforts made by the opponent in creating and maintaining its image without paying any financial compensation. Therefore, the benefit obtained by the applicant would not be based on its own merits but on the reputation of the earlier mark.

 

On the basis of the above, the Opposition Division concludes that the contested trade mark is likely to take unfair advantage of the distinctive character or the repute of the earlier trade mark.

 

 

6. Conclusion

 

Considering all the above, the opposition is well founded under Article 8(5) EUTMR. Therefore, the contested trade mark must be rejected for all the contested goods and services.

 

Given that the opposition is entirely successful under Article 8(5) EUTMR it is not necessary to examine the remaining grounds and earlier rights on which the opposition was based.

 

 

COSTS

 

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

 

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

 

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

 

 

 

 

The Opposition Division

 

 

Martin EBERL

Octavio MONGE GONZALVO

Claudia MARTINI

 

 

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

 

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.