McDonald's successful in opposition proceedings against MACCOFFEE mark


McDonald’s International Property Company Ltd has prevailed in opposition proceedings against the registration of the figurative trademark MACCOFFEE 3 IN 1 for “instant coffee mix” in Class 30 of the Nice Classification (September 10 2013).

On October 18 2012 McDonald’s (United States) filed an opposition (No PNZ-144) with the Appeal Division of the Lithuanian State Patent Bureau requesting the invalidation of the Lithuanian figurative trademark MACCOFFEE 3 IN 1 (No 65380, pictured below), owned by Future Enterprises Pte Ltd (Singapore).

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

  • MCCAFE (CTM No 000058438; filing date: April 1 1996; legal protection in the Republic of Lithuania in force since May 1 2004), registered for “services rendered or associated with operating and franchising restaurants and other establishments or facilities engaged in providing food and drink prepared for consumption and for drive-through facilities; preparation of carry-out foods; the designing of such restaurants, establishments and facilities for others; construction planning and construction consulting for restaurants for others” in Class 42.
  • MCCAFE (CTM No 006870851, filing date: April 18 2008), registered for “foods prepared from meat, pork, fish and poultry products, preserved and cooked fruits and vegetables, eggs, cheese, milk, milk preparations, pickles, desserts” in Class 29 and “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” in Class 30.

The opposition was based on Article 7(1)(2) of the Law on Trademarks of the Republic of Lithuania, which provides that a trademark registration should be declared invalid if it is identical, or misleadingly similar, to an earlier registered mark or application covering identical or similar goods and/or services.

The Appeal Division upheld the opposition and decided that the registration for MACCOFFEE 3 IN 1 was invalid.

First, the Appeal Division concluded that the dominant element of the opposed trademark was the word combination ‘MacCoffee’, which influenced the overall impression of the mark. This word combination was written in bright letters and took the foreground in the mark. The graphic elements, such as the steaming cup and coffee beans around the cup, described the goods in Class 30 and enhanced the semantic associations between the word element ‘MacCoffee’ and the goods. The element ‘3 in 1’, written in an oval background, was also descriptive of the goods. This was supported by evidence confirming that the expression ‘3 in 1’ was used on the packaging of the goods to indicate a coffee beverage made from an instant white coffee and sugar mix. The words ‘original’ and ‘coffee mix’ written in the same oval shape confirmed this assessment.

The Appeal Division also pointed out that the dominant element of McDonald’s marks was the word element ‘McCafé’. The fact that the prefixes ‘Mc’ and ‘Mac’ were used in various marks did not alter the conclusion that the distinctive elements of the compared marks were the word combinations ‘McCafé’ and ‘MacCoffee’.

The Appeal Division noted that the dominant elements of the marks were both written in Latin alphabet letters, and that they coincided in five letters. All the letters of the earlier marks were included into the opposed trademark. Further, the dominant elements had been created based on the same principle - that is, ‘Mc’/‘Mac’ followed by ‘Café’/’Coffee’. Since the graphic elements in the opposed trademark described the goods and did not create a different overall impression, the compared marks were found to be visually similar.

Phonetically, the marks were held to be highly similar. The pronunciation of the syllables ‘Mc’ and ‘Mac’ would be identical or highly similar. Moreover, although the second part - ‘Café’ and ‘Coffee’ - would differ in pronunciation, the identical letters ‘C’ and ‘F’ would be clearly heard.  

From a conceptual point of view, the Appeal Division noted that both marks were artificially created word combinations. The first part - ‘Mc’/’Mac’ - would be perceived as an artificial element or be associated with Irish and Scottish surnames. In any case, these elements did not give any specific meaning to the compared marks. Further, although the meaning of the words ‘Café’ and ‘Coffee’ is not identical, these words are closely related semantically, since a café is a place where coffee, tea and other beverages may be consumed.

Second, the Appeal Division found that the “instant coffee mix” covered by the opposed trademark was identical or similar to the “coffee and coffee substitutes” covered by the MCCAFE mark (CTM No 00687081). The Appeal Division also found that the goods “instant coffee mix” were partly related to the “services rendered or associated with operating and franchising restaurants and other establishments or facilities engaged in providing food and drink prepared for consumption and for drive-through facilities” in Class 42 covered by the MCCAFE mark (CTM No 000058438), because the goods played an important part in the provision of the services; therefore, the goods and services could be provided by the same undertakings.  

The Appeal Division also noted that a lesser degree of similarity between the goods or services could be offset by a greater degree of similarity between the marks, and vice versa.

Based on the foregoing, the Appeal Division concluded that there was a likelihood of confusion among the relevant public.

Vilma Dauskurdienė, AAA Law, Vilnius

Unlock unlimited access to all WTR content