McDonald's turns up the heat on MCCURRY
An Indian curry house located in Kuala Lumpur, trading under the mark MCCURRY, has lost a five-year legal tussle with US fast-food restaurant chain operator McDonald's Corporation.
In McDonald's Corporation v McCurry Restaurant (KL) Sdn Bhd (Civil Suit D6-22-989-2001, September 7 2006), the Kuala Lumpur High Court has ordered McCurry Restaurant to stop using immediately the prefix 'Mc', which it held to be distinctive of McDonald's Corporation, both on its own and in conjunction with food items. Therefore, McDonald's could claim goodwill and reputation in its business with reference to the prefix 'Mc'. The High Court further ruled that the curry house, in using the signature colours distinctive of McDonald's on its signage, could confuse the public into thinking that McCurry was associated with McDonald's.
The High Court stated that the actions of the curry house were a deliberate attempt to take unfair advantage of McDonald's reputation to its detriment, thereby causing damage to its goodwill and reputation and eroding the singularity which it enjoys in relation to the MC trademark.
In its claim McDonald's stated that it had created the prefix 'Mc' as a source or badge of origin to enhance its business. It had applied for and secured numerous registrations for the prefix 'Mc' and for 'Mc' with a suffix or suffixes in many countries around the world. It further stated that it had always emphasized the distinctiveness of the prefix 'Mc' on its goods and services in the course of trade. It stressed that the use of the prefix and its commercial presence can be seen in over 120 countries.
The curry house denied it had used the prefix 'Mc' to enhance its business and insisted that the MCCURRY trademark, with its red and gold logo which features a chicken giving a thumbs-up sign, was an abbreviation for a popular local dish, Malaysian chicken curry. The curry house, which was formerly known as Restoran Penang Curry House, argued that the prefix 'Mc' was not exclusive to McDonald's, citing examples of its use in surnames, particularly among Scottish people. The curry house serves an array of traditional Indian and Malaysian food which differs from the typical fare of burgers and fries at a McDonald's restaurant.
The court has yet to decide the amount of damages to be awarded. McCurry has announced its intention to appeal the ruling.
Michael Soo and Lee Lin Li, Shook Lin & Bok, Kuala Lumpur
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