OPPOSITION No B 2 534 926
McDonald's International Property Company, Ltd., 2711 Centerville Road, Suite 400 Wilmington, DE 19808, 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
Medonia Marketing LTD, Intershore Chambers Road Town, Tortola 4342, British Virgin Islands (applicant), represented by Joanna Michaelides (Kpax Marketing Online Ltd.), Anapauseos 1,str. CY-3726 Limasol, Cyprus (professional representative).
On 26/06/2017, the Opposition Division takes the following
1. Opposition No B 2 534 926 is upheld for all the contested goods and services.
2. European Union trade mark application No 13 770 987 is rejected in its entirety.
3. The applicant bears the costs, fixed at 650.
The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 770 987. The opposition is based on, inter alia, European Union trade mark registration No 62 497. The opponent invoked Articles 8(1)(b) and 8(5) EUTMR.
The opposition is based on more than one earlier trade mark and on more than one ground. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark No 62 497 for the word mark ‘McDONALD’S’ under the grounds of Article 8(5) EUTMR.
REPUTATION – ARTICLE 8(5) EUTMR
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 shall 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.
- Reputation of the earlier trade mark
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 25/02/2015 for the following goods and services:
Class 9: Computer games entertainment software.
Class 35: Advertising, marketing and promotion services.
Class 41: Casino, gaming and gambling services; Entertainment.
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 for the following goods and services:
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, sugar.
Class 32: Non-alcoholic beverages, syrups and other preparations for making beverages.
Class 42: Services rendered or associated with operating and franchising restaurants and other establishment or facilities engaged in providing food and drink prepared for consumption and for drive- through facilities; preparation and provision of carry-out foods; the designing of such restaurants, establishments and facilities for others; construction planning and construction consulting for restaurants for others.
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 16/10/2015 the opponent submitted the following evidence:
- Annex 1: an extract from Wikipedia of 14/10/2015 providing information about the history of McDonald’s company.
- Annex 2: an extract from the website www.aboutmcdonalds.com titled ‘New Reporting segments: Historical Financials’ of 14/10/2015. The document provides financial highlights for 2014 and shows that the company McDonalds had a total of 7855 restaurants in Europe at the end of year 2014 (compared to 6785 restaurants in 2009).
- Annex 3: excerpt from McDonald’s Germany Corporate Responsibility Report 2014 Update. The document shows facts and figures regarding McDonald’s in Germany (the company had 1477 restaurants, 862 McCafes, 1248 franchise restaurants and more than 57000 employees in 2014).
- Annex 4: 2014 Annual Report of the McDonald’s Corporation, showing total revenue of $7,808 million in 2014 in Europe.
- Annex 5: an extract from Wikipedia, showing an article titled ‘McDonald’s Monopoly’ of 14/10/2015. The article 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. The article also discusses the online games which Mc’Donald’s has introduced in 2005.
- Annex 6: extract from the website www.fifa.com, showing two articles titled ‘McDonald’s looking ahead to 2018’ of 21/01/2014 and ‘McDonald’s renews as FIFA World Cup Sponsor until 2014’ of 08/07/2006. The articles give information that McDonald’s will be 2018 FIFA World Cup Sponsor and that 'McDonald's' has been the official sponsor of FIFA World Cup since 1994 and will continue to be until 2014.
- Annex 7: a document from 2012 showing McDonald’s Olympic Games History (from 1986 until 2012). It also shows that ‘McDonald’s’ became an official sponsor of the Olympic Games and is the leading foodservice retailer with more than 30,000 local restaurants serving food to nearly 50 million customers in more than 100 countries each day.
- Annex 8: a press release from ITMA (Institute of Trade Mark Agents), dated 1996, indicating that according to The World’s Greatest Brands, published by Interbrand on 13 November 1996, McDonald’s was the world’s top brand having taking over Coca-Cola.
- Annex 9: extract from EUIPO database eSearch of 14/10/2015, showing the results of the opponent’s trade marks which include the term ‘McDonald’.
- Annex 10: several printouts of 21/01/2015 from different McDonald’s websites (for example: www.mcdonalds.at, www.mcdonalds.be, etc.). The printouts show pictures of McDonald’s products on menus with different names (i.e. Big Mac, McRib, McWrap, Chicken McNuggets, McMorning Chicken, McMuffin Ham & Egg, McMuffin Country, McChicken Deluxe, McSundae Schoko, McFlurry, McMorning Chicken, McToast Deluxe, Le McFISH, Les glaces McFLURRY, etc) for different types of prepared foodstuff.
- Annex 11: copies of 'McDonald's' menus and packaging, on which name of the foodstuff products such as McDonald’s, McRib or McNuggets are visible. According to the opponent the menus were/are used in Germany, United Kingdom and France.
- Annex 12: extract from different websites (cargocollective.com, fandbnews.com), regarding McDonald’s ‘McMission’ mobile application. According to the article attached to this Annex, the company Mc’Donald’s Germany has worked with augmented reality company Metaio to launch ‘McMission’, an augmented reality application to educate Mc’Donald’s fans about the company’s a commitment to sustainability. The application featured four interactive mini games where visitors can learn about the social and environmental initiative which ‘McDonald’s’ and its franchises are involved in.
- Annex 13: an extract from Interbrand website, among others, showing rankings of different trade marks for the years 2001 to 2015. According to the extract, ‘McDonald’s’ restaurants are listed among the top ten brands for each year.
- Annex 14: publications of Millward Brown ‘Brandz Top 100 Most valuable Global Brands, showing the mark was among the fifteen of 100 most valuable brands for the period 2008-2015 (for example 4th place in 2013 and 5th place in 2014). The document also mentions McDonald’s as ‘the world’s largest fast food restaurant chain’ and ‘number one in the Brandz™ Fast Food Top 10’. 
- Annex 15 – 16: an extract from surveys conducted in 1991 and 1992 in (West) Germany by Infratest Burke. The studies done related to the prefix ‘Mc’ of ‘McDonald’s’ in Germany and were based on 2000 people (in 1991) and 1000 people (in 1992) aged 14 years and more. According to the survey from 1991, 58% of the asked population, when shown a card with ‘MC’ and asked ‘What comes to your mind when you hear this designation?’ replied ‘McDonald’s’. To the question ‘Have you heard or read this designation –in combination with another word- in relation to self service or fast food restaurants?’ 85% (in 1991) and 83% (in 1992) of the asked people replied ‘yes’. And to the question ‘Do you think this designation refers to fast food restaurants belonging to a certain group of restaurants or do you think this designation is used by fast food restaurants which do not belong to one group?’ a 75% (in 1991) and 77% (in 1992) replied ‘belong to a certain group of restaurants’.
- Annex 17 – 18: an extract from two surveys on mark’s recognition conducted in 2011 in Hungary, the first study conducted by Nielsen Company on the basis of 800 people aged 18-59 and the second one by Forecast Research Piackutató on the basis of 1000 people aged 18-50. According to the surveys, the 89% and 88% percent of the polled population, when asked ‘Which company uses the prefix ‘MC’ in Hungary?’ selected ‘McDonald’s’ from the options. To the question ‘Which restaurant uses the prefix ‘MC’ in Hungary?’ 84% selected ‘McDonald’s’ from multiple choice options and a 86% or 94,6% selected ‘McDonald’s’ to the question ‘which restaurant using the prefix ‘MC’ is the most famous to you?’ The survey conducted by Nielsen Company also indicates that the higher ratios were obtained among youngsters, high educated people and Budapest/South-West Hungary inhabitants.
- Annex 19: an original and translated decision No 28 W(pat) 111/03 of the Federal Patent Court of Germany of 07/07/2004 in the appeal case ‘McDonald’s’ vs. ‘Mc Döner Kebab’ in which likelihood of confusion was found.
- Annex 20: decision of the UK Patent Office (16/08/1996) ‘McIndians’ in favour of McDonald’s.
- Annex 21: translated decision (2004) of the Spanish Patent and Trade Marks Office on the administrative appeal lodged by McDonald’s against the registration of the trade mark, in which the mark ‘McDonald’s’ is recognised as reputed.
- Annex 22: 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 23: Opposition Division’s decision (05/11/2013, B 2 017 146, 'McParking') in which the reputation of the mark ‘McDonald’s’ and the existence of the family of marks ‘MC’ was recognised.
Having evaluated all the documents listed above, the Opposition Division concludes that the earlier European Union trade mark ‘McDONALD’S’ has a reputation in the European Union for some of the goods and services for which the opponent has claimed reputation.
From the evidence as a whole it is clear that the trade mark ‘McDONALD'S’ has been subject to long-standing and intensive use from 1971 onwards and is generally known in the relevant market, where it enjoys a consolidated position among the leading brands, as has been attested by independent and diverse sources. The Interbrand rankings (Annex 13) ascertain that for several consecutive years, starting with 2001, the mark was ranked among top ten world’s brands (for example sixth place in 2010 and 2011 and ninth place in 2014 and 2015), with impressive brand values (for example USD 39,809 million for 2015 and USD 42,254 million for 2014). The same conclusion was confirmed in the document Brandz Top 100 Most valuable Global Brands 2015' (Annex 14), where appears on 9th place (with brand value of USD 81,162).
The mentioned documents together with product labels, menu displays, promotional material, etc. all show that the mark ‘McDONALD'S’ has been used intensively, over a substantial part of the relevant territory of the European Union and enjoys a high degree of recognition among the relevant public at least in connection with the following services: services rendered or associated with operating and franchising restaurants and other establishment or facilities engaged in providing food and drink prepared for consumption and for drive- through facilities, in Class 42 which leads to the conclusion that the earlier mark enjoys reputation for those services. The existence of the reputation of the earlier mark ‘McDONALD'S’ in relation to the mentioned services has also been confirmed on several other occasions (for example 05/07/2016, T-518/13, McDONALD’S / MACCOFFEE, EU:T:2016:389, 04/04/2014, R 1949/2013-2, Mc Travel /McDONALD’s et al. and 02/04/2013,R R 516/2013-2, MC Travel Reisen zu Schottenpreisen / McDONALD'S et al.) and also by the courts in Germany, Spain, Sweden and the United Kingdom (05/07/2016, T-518/13, McDONALD’S / MACCOFFEE, EU:T:2016:389, § 59).
Further, it has also been apparent from the independent surveys carried out in 1991 and 1992 in Germany (Annexes 15 and 16) that, in the mind of the relevant public, the prefix 'mc', combined with another word, was/is largely associated with the sign 'McDONALD'S' and that that prefix, combined with another word, was widely associated with fast-food establishments belonging to the same group and has acquired its own distinctive character for fast-food services and goods on the menu of fast food establishments (05/07/2016, T-518/13, McDONALD’S / MACCOFFEE, EU:T:2016:389, § 59, 60). The same was also confirmed by the courts in Germany, Spain and the United Kingdom.
The evidence produced by the opponent therefore demonstrates that the use by the latter of the marks McDONALD’S, McMUFFIN, McRIB, McFLURRY, CHICKEN McNUGGETS, McCHICKEN and EGG McMUFFIN was sufficient to ensure that, in the relevant periods, the prefix ‘mc’, combined with the name of a menu item or 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.
However, the evidence does not demonstrate reputation of the earlier mark 'McDONALD'S' in relation to the remaining goods and services in Classes 29, 30, 32 and 42. Although it is clear from the evidence (Annexes 10 and 11) that the opponent also sells food and drinks (such as hamburgers, wraps, salads, milk shakes, sandwiches, muffins etc.) in its restaurants, the evidence does not show the recognition of the mark with respect to these goods and services. Moreover, some of the mentioned products bear their own trade marks, most of which start with or contain the prefix ‘Mc’ (for example: McRib™, Big Mac™, McFlurry™, McChicken™, etc.).
- The signs
Earlier trade mark
The relevant territory is the European Union.
The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).
The earlier sign is composed of a common Scottish surname and will be perceived as such at least by a part of the relevant public. Since it has no meaning in relation to the relevant services at hand, it is considered to be inherently distinctive to an average degree.
The letters ‘mc’ included in the beginning of the contested mark will be associated, by the part of the relevant public, with a prefix of a Gaelic surname, which the English-speaking consumers will identify with the meaning ‘son of’. For the remaining part of the public, the letter combination ‘mc’ has no meaning (05/07/2012, T-466/09, Mc.Baby, EU:C:2012:346, § 41 and § 42). The letter combination 'mc' has no meaning in relation to the relevant goods and services and is therefore considered to be distinctive.
The word ‘MONEY’ included in the contested mark will be associated by the vast majority of the relevant public with the basic English term, commonly used across the European Union as meaning the current medium of exchange in the form of coins and banknotes. Bearing in mind that some of the relevant services are gaming, casinos and entertainment services, this element is considered to be non-distinctive for services because usually these services involve money. For the goods and services in Classes 9 and 35, the element 'money' is considered to be weak. Moreover, for a small part of the relevant public that may not be accustomed to this word or its meaning, this element is distinctive.
Visually, the signs have four letters in common, namely ‘m', 'c’, 'o' and 'n', occupying the same position in the marks at issue. The letters ‘mc’ are included in the initial part, while the letters 'o' and 'n' are located in the fourth and fifth position in the marks. On the other hand, the marks differ in the letters d', 'a’, 'l', 'd' and 's' of the earlier mark and the letters m', 'e’, and 'y' of the word 'money'. The difference in the upper case letters and lower case letters is immaterial, as the marks are word marks and their protection is arising from the registration and not particular graphic or stylistic aspects that the mark might possibly assume.
Taking into account all the above, especially that the differences are arising from the word 'money' which is considered to be non-distinctive or weak in relation to the relevant goods and services at hand and also the fact that the consumers generally tend to focus on the beginning of a sign when they encounter a trade mark, the signs at hand are considered to be 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 sound of the letters ‛mc’, present at the beginning of both signs. The parts ‛DONALD'S’ and 'money' of the marks are aurally different, since the mere fact that two letters (‘o’ and ‘n’), are pronounced in the same way, is negligible in this case.
There is a certain aural similarity between the marks at issue, resulting from the identical pronunciation of their initial part 'mc' by the relevant public. Therefore, the signs are aurally similar to a low degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.
For the part of the public that is familiar with the (prefix of) Gaelic surnames and that understands the meaning of the English word 'money' (considered to be non-distinctive or weak in relation to the relevant goods and services at hand), the marks at issue have a certain conceptual similarity, in so far as they are both perceived, as referring to a prefix of Gaelic origin. Consequently, the marks at issue are conceptually similar to a low degree.
For the part of the public that will not perceive any meaning in the letters 'mc' of the contested mark, but is familiar with the surname 'McDONALD'S' and the word 'money', the signs are conceptually not similar. The same applies for the part of the public that will only perceive the concept in the earlier mark.
Finally, for the part of the public that will not see any meaning in any of the marks, a conceptual comparison is not possible.
- 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 will therefore first examine the opponent’s claim of family of marks.
In the contested mark 'mcmoney', the prefix 'Mc' is not followed by a name of foodstuff and the contested mark does not seek protection for identical or similar goods and services as the earlier mark 'McDONALD'S'. However, the Opposition Division is of the opinion that there is still a link between the contested mark 'mcmoney' and the earlier mark due to the degree of reputation of the earlier mark and the fact that also the prefix ‘mc’ enjoys high degree of distinctiveness. The relevant public, composed of public at large, could still automatically – but erroneously – believe that the applicant's goods and services, even though they are outside the food industry, are somehow affiliated or connected to 'McDONALD'S' for the reasons explained below.
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. The overlapping element neither is negligible visually (two identical letters being placed in the beginning of both signs and coincidence in the fourth letter 'o' and fifth letter 'n') nor aurally (the same syllable in the beginning) or conceptually (similar concept, at least for a part of the public, due to the letters 'mc'). Although not overwhelming, the common element is perceptible in both signs.
As regards the degree of similarity between the marks at issue, it is clear from the case-law that, the more immediately and strongly the mark is brought to mind by the sign, the greater the likelihood that the current or future use of the sign is taking, or will take, unfair advantage of the distinctive character or the repute of the mark or is, or will be, detrimental to it (27/11/2008, C-252/07, Intel,EU:C:2008:655, § 67 to 69; and 18/06/2009, C-487/07, L’Oreal, EU:C:2009:378, § 44). Moreover, the stronger the distinctive character of the earlier mark, the more likely it is that, when confronted with a later similar mark, the relevant public will associate it with that earlier mark.
As regards the distinctiveness of the earlier mark, the earlier mark 'McDONALD'S' is inherently distinctive as it has no meaning in relation to the services at hand. In addition, it has been concluded above that the earlier mark ‘McDONALD’S’ enjoys a considerable reputation in the European Union in connection with fast-food services. Further, it has also been concluded that the prefix 'mc' is largely associated with the sign 'McDONALD'S' and had acquired its own distinctive character for fast-food restaurant services and goods on the menu of fast-food establishments.
It is true that the contested goods and services are dissimilar to the earlier reputed services; however, taking into account and weighing up all the relevant factors of the case at hand, the Opposition Division concludes that there is still sufficient proximity between the mentioned goods and services because of the following reasons:
- There is a connection between the opponent's services rendered or associated with operating and franchising restaurants and other establishment or facilities engaged in providing food and drink prepared for consumption and for drive- through facilities for which reputation has been proven and the contested entertainment services in Class 41. The opponent’s services are often offered in casino premises and vice versa also entertainment services are often provided in fast-food establishments. The consumers therefore know and may expect for casinos to also offer restaurant services and many chains offer the same. The establishments that provide services rendered or associated with operating and franchising restaurants and other establishment or facilities engaged in providing food and drink prepared for consumption and for drive- through facilities; preparation and provision of carry-out foods in Class 42 also provide different entertainment services to attract customers and keep them in the restaurants longer. Restaurant services in general consist in offering a wide variety of different meals, ready to be consumed in the premises or to be taken away. Although, this is not the main purpose of the entertainment services, many of the establishments providing the mentioned services nowadays also organise family friendly shows, concerts and birthday parties or have play places within their premises. Therefore, the consumers do not select these establishments only on the basis of their food options but also to enjoy the additional services that these establishments are providing. In fact, the consumers, which are very often young people and families (who not only want to buy a meal but also want to enjoy other consumer friendly services available at these premises) many times select these establishments on the basis of their entertainment services (organisation of birthday parties or different shows). Consequently it is considered that these services present certain connections with the earlier services for which the opponent’s marks is reputed.
- The same is valid for the contested computer games entertainment software in Class 9. These goods have a specified purpose (entertainment). Despite the fact that they are not directly related to the opponent's reputed services, it is noted that there is still a sufficient proximity to establish a link between them as the contested goods may be specifically designed and used for, or may be rendered in connection with the reputed ones. Many of the fast-food establishments nowadays not only provide food but also provide goods such as computer games entertainment software in order to entertain the consumers. The opponent also filed the evidence from which it is seen that it was involved in development of mobile application featuring four interactive mini games (Annex 12). Moreover, it is also quite common that such establishments provide devices (for example tablets) in order to be able to play games while they eat or even to order food from their table (so called Table Top Ordering Systems and interactive table-top displays). Same establishments also use internet kiosks featuring specialized hardware and software that provides access to information and applications for communication, commerce, entertainment, and education.
- In the case of casino, gaming and gambling services in Class 41, consumers using these services normally expect that the establishments providing these services also provide array of food choices. Several fast food services operators are investing in the casinos nowadays since the consumers of casino, gaming and gambling services normally want a fast, casual food option in casino. That is why it is not uncommon that for example burger or pizza places to operate in several casino locations. While consumers will probably not go to casino with the aim to get the quick service or fast food, rendering these services together gives more possibilities for consumers to stay within in the premises for a longer time. It also has to be noted that the opponent has demonstrated, its mark is associated by consumers with the concept of something fast. This is also the concept behind some of the contested services which ensure fast money pay outs. Finally, it is also not unusual that big fast food chains nowadays provide gaming corners with video game console systems in order to better target the youth segment.
- Although the contested advertising, marketing and promotion services in Class 35 may not appear to be immediately linked to the opponent’s reputed services (the contested services are mainly aimed at professional public while the opponent's reputed services are aimed at public at large and also the opponent is not an advertising agency in a traditional sense), nevertheless a certain connection cannot be denied. Advertising in places such as fast food restaurants, is often used as a type of advertising (so called restaurant media) for other types of businesses (for example when purchasing a certain meal you receive a discount which you can use in a different establishment such as amusement parks and casinos or you receive a free gift/toy which is basically advertising of movies and cartoons). Moreover, it is not uncommon that big companies such as fast-food chains are involved in promotion of goods and services through sponsorships of big international events. The documents enclosed under Annexes 5, 6 and 7 can only support these findings. Weighing up all the relevant factors of the case at hand, the Opposition Division concludes that the gap between the contested services and the reputed services rendered or associated with operating and franchising restaurants and other establishment or facilities engaged in providing food and drink prepared for consumption and for drive- through facilities; preparation and provision of carry-out foods is not so large and consequently there exists, at least, prima facie a possibility that when encountering the contested mark the relevant consumers will establish a mental ‘link’ between the signs in relation to the mentioned services.
On account of the repute of the earlier mark 'McDONALD'S' and also the prefix 'mc' on its own, the element ‘mc’ is immediately recognisable in the contested sign. Another aspect that needs to be taken into account is that the word, ‘MONEY’ is considered to be non-distinctive in relation to the services in Class 41 and weak in relation to the remaining goods and services at hand, at least for a significant part of the relevant public. When encountering a trade mark that features the element ‘Mc’ in the beginning – just like in the contested sign’s ‘mcmoney’ – and especially in the context of the goods and services at hand, the Opposition Division considers that the presence of the element ‘mc’ will suffice for triggering an immediate link with the opponent’s reputed trade mark, ‘McDONALD'S’. This is especially true in parts of the European Union where the prefix ‘mc’ is not so much recognised as a common prefix for surnames but is basically seen as a reference to a 'McDONALD'S' company, as the survey conducted in Germany or Hungary found out (Annex 15-18). For the consumer who is not acquainted with the Scottish or Gaelish surnames and will see the letters 'Mc' prefixed to a weak or non-distinctive term 'money', this prefix will bring into mind, in related fields of activities such as the goods and services in Classes 9, and 41 but also services in Class 35, a mental connection with the reputed 'McDONALD’S' mark.
In conclusion, 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. 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).
- 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’ (06/06/2012, 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 mark 'mcmoney' 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 mark is used to identify a new service from McDonald's offering 'Mc' services.
- When comparing the opponent's mark to the contested mark 'mcmoney', one can see that the marks are identical in their structure, and that the overall impression of each mark is similar due to the inclusion of the opponent's distinctive term 'mc'.
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 (06/06/2012, 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 evidence provided in relation to the reputation of the mark 'McDONALD'S' and the element 'Mc' has shown that they carry the opponent's goodwill, which was obtained by the longstanding and extensive use and promotion of the sign 'McDONALD'S'. As it has been shown, the recognition of the mark 'McDONALD'S' and the element 'mc' among the relevant public is already very high.
- The contested mark clearly fits into the opponent's 'mc' family of marks. When being confronted with the mark 'mcmoney' in relation to the contested goods and services, the public will inevitably believe that the so-designated goods and services come from the opponent.
- The long established use of the opponent mark 'McDONALD'S' and the 'mc'/'mac' family of marks would result in transfer of the goodwill of the earlier reputed marks in favour of the applicant's trade mark. The applicant would benefit from the opponent's investments in the mark 'McDONALD'S' and the 'mc'/'mac' 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 marks, the high degree of 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 mark is likely to benefit from the attractiveness of the earlier mark and its intensive marketing efforts.
The characteristics and the image associated with the ‘McDONALD'S’ brand (relaxed fast-food establishment where you can go to eat and have fun, with family and friends) could be transferred to the applicant's 'mcmoney' goods and services. These circumstances could positively influence the choice of the public as regards the goods and services of other providers. As a result, by using a trade mark similar to the earlier renowned mark, it is highly likely that the contested mark 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. The long-established use and recognition of the earlier mark makes it probable that consumers’ economical behaviour would be swayed in favour of the applicant’s goods and services solely because they are commercialised under the contested sign.
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.
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.
Likewise, there is no need to examine the opponent’s claim that it owns a family of ‘Mc’ trade marks and the evidence of use filed in support of such claim.
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), (6) and (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
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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.
 Source: Millward Brown (including data from brandz™ and Bloomberg).