McDonald's invalidates registration of figurative MCAFE mark

The Board of Appeals of the Patent Office of Latvia has partially upheld McDonald’s International Property Company Ltd’s opposition against the registration of the figurative trademark MCAFE based on its MCCAFE marks (written as ‘McCAFE’).

On June 11 2013 McDonald’s (United States) filed an opposition with the Board of Appeals of the Patent Office requesting the invalidation of the registration for the figurative trademark MCAFE (No M 65 785, pictured below), owned by BERTA NAMS SIA (Latvia).

The MCAFE mark covered “flour and preparations made from cereals, bread, pastry and confectionery; chocolate and chocolate products” in Class 30, “retail services of food products, alcoholic beverages and tobacco” in Class 35 and “provision of food (restaurant services)” in Class 43 of the Nice Classification.

McDonald’s based its opposition on the following national and Community word marks: 

• MCCAFE (Latvian mark No M 52 237; filing date April 16 2002), registered for various food products and food catering services in Classes 29, 30, 32 and 43;
• MCCAFE (Latvian mark No M 63 398; filing date April 29 2010), registered for food catering services in Class 43;
• MCCAFE (CTM No 009062118; filing date April 28 2010), registered for various food products in Class 30;
• MCCAFE (CTM No 006870851; filing date April 18 2008), registered for various food products in Classes 29 and 30; and
• MCCAFE (CTM No 000058438; filing date April 1 1996; valid in Latvia as from May 1 2004), registered for services related to the operation of restaurants in Class 42.

The opposition was based on Article 7(1)(2) of the Law on Trademarks and Indications of Geographical Origin of the Republic of Latvia, which provides that a trademark registration may be declared invalid if, because of its identity or similarity to an earlier trademark belonging to another party and because of the identity or similarity of the respective goods or services, there is a likelihood of confusion or a likelihood of association between the trademarks among the relevant consumers.

The Board of Appeals partially upheld the opposition and decided that MCAFE was invalid in relation to the goods and services that were similar to those covered by the MCCAFE marks in Latvia.

In its decision, the Board of Appeals recognised that the trademarks were similar on the following grounds:

• The trademark MCAFE differed from the opponent’s MCCAFE marks only in one letter (‘C’), while the first letter (the capital letter ‘M’) and the endings (‘café’) coincided. The fact that the word ‘café’ was written in capital letters in the opponent’s marks and in lower case in the opposed mark was of no significance.
• In the opposed mark, the capital letter ‘M’ was followed by the letter ‘c’ in lower case in the same way as in the opponent’s trademarks. The additional letter ‘C’ in MCCAFE did not create a significant difference between the marks.
• The meaning of the word ‘café’ is known to the average Latvian consumer, and relates to food and drinks catering services. It is clear that exclusive rights obtained by registration would not apply to the word ‘café’ in the compared trademarks, as it is of a descriptive nature in relation to the claimed goods and services.
• The conceptual structure of the compared trademarks was the same, which reinforced the similarity of the marks.
• Although the opposed trademark was a figurative sign, its figurative elements were limited to a slightly stylised representation of its verbal part and the mark did not contain any other graphic elements. Therefore, the figurative elements did not create a substantial difference between the compared marks and consumers would use the verbal part to identify the goods and/or services.
• The pronunciation of both marks was highly similar.
• The argument by the owner of the opposed mark that the letter ‘M’ in its mark referred to the name of the owner of the café - whose initials were AM - was irrelevant, as this fact was not known by the average Latvian consumer.

When comparing the goods and services, the Board of Appeals referred to Section 9 of the Singapore Treaty on the Law of Trademarks, which states that goods and services may be found similar even if they fall within different classes of the Nice Classification.

The Board of Appeals considered that “flour and preparations made from cereals, bread, pastry and confectionery; chocolate and chocolate products” covered by the MCAFE mark in Class 30 and the “provision of food (restaurant services)” in Class 43 were similar to “bread; sandwiches; oat flour; barley; pies; biscuits; cakes; confectionery; chocolate; desserts” and “restaurant services and food catering services” covered by the opponent’s earlier MCCAFE marks.

The Board of Appeals admitted that “retail services of food products” in Class 35 were similar to the food products covered by the opponent’s trademarks to some extent; however, this was not the case for “retail services of alcoholic beverages and tobacco”, as the opponent’s trademarks did not cover similar services.  

Based on the foregoing, the Board of Appeals concluded that there was a likelihood of confusion between the marks among the relevant public in relation to some of the goods and services, and decided to uphold the opposition partially. The opposed trademark MCAFE is thus still valid in respect of  “retail services of alcoholic beverages and tobacco” in Class 35.

Aušra Pakėnienė, AAA Law, Vilnius