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Blog 6 Jul 2016

McConflict: the protection of family brands

A family brand, also known as a serial brand, is a group of brands of the same company, which contain the same element. When a brand is part of a brand family, the rest of the family can play an important role in assessing trademark infringement.

The Court of the EU has discussed the series of ‘Mc’- brands of the famous fast food chain McDonald’s.  

The reason for the conflict was that a European trademark application for MACCOFFEE, covering coffee-related products. A complaint was filed against the trademark application, based on different trademarks that all start with 'Mc'. Think for example of McDonald’s, McFish, McFlurry and McChicken. With the use of the element MAC, the applicant would unlawfully want to benefit from the familiarity of the ‘Mc’-marks of McDonald’s.

MacCoffee (source: MacCoffee)

After some consideration, the Court came to the opinion that McDonald’s is intensively using its trademark and the family of marks that all start with ‘Mc’. The marks are considered a family, because (1) there are many ‘Mc’-marks, who (2) all contain the element ‘Mc’ with an additional word. That is why the familiarity of the McDonald’s trademark extends to the family of marks with the ‘Mc’-element.

Although the element ‘Mc’ in MACCOFFE is different, the Court is still of the opinion that there is a chance that the consumer connects it to McDonald’s. Reason for this is that McDonald’s sells coffee themselves. According to the Court, the MACCOFFEE applicant therefore tries to benefit from the familiarity of the Mcdonald’s trademark and its reputation and attraction. That is why the trademark registration got annulled.