MCCAFE dispute boils over

Russian Federation

Future Enterprises PTE, a Singaporean food and beverages manufacturer, has filed a cancellation action against McDonald's Russia's registration of MCCAFE (Registration 241248) for a chain of coffee shops. Future Enterprises claims that the mark is confusingly similar to its MACCOFFEE (Registration 145846) mark for instant coffee. The case is likely to require a detailed analysis of the interpretation of confusing similarity.

Future Enterprises owns a registration for MACCOFFEE for, among other things, coffee, catering foodstuffs and beverages. MCCAFE is registered in respect of restaurant services.

The Russian Patent and Trademark Office (PTO) will have to decide whether the MCCAFE mark is confusingly similar to MACCOFFEE. It will be interesting to see what approach the PTO takes to the interpretation of confusing similarity. If it follows a simplified approach, it is unlikely to conclude that the marks are confusingly similar or the goods to which they relate are the same. Using this approach, the marks differ on a phonetic level and the sale of packaged coffee is not identical to the sale of coffee as part of restaurant services.

On the other hand, if the PTO adopts a more sophisticated approach it could come to the opposite conclusion. On a general level, Russian consumers are not deeply versed in the English language. Therefore, the spoken sounds of the two marks, when vocalized by a Russian consumer, are potentially very similar. In addition, the MCCAFE restaurants sell the very product for which the MACCOFFEE mark was registered. It is possible that the PTO will consider that this creates an overlap between the two parties' goods and services.

The PTO's decision in this case is eagerly anticipated.

Valery Medvedev, Gorodissky & Partners, Moscow

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