The EU General Court has confirmed that, despite the difference of the goods and services covered by the marks (namely foodstuffs and beverages for MACCOFFEE, and fast food restaurant services for McDONALD's), there was a certain degree of similarity due to the close links between them. The foodstuffs covered by the MACCOFFEE mark could be offered in the context of McDONALD's restaurants and they were aimed at the same consumers.
In addition, the Court confirmed that it was highly likely that the MACCOFFEE mark rode on the coat-tails of the McDONALD's mark due to the possible transfer, by the relevant public, of the image of the earlier mark or of the characteristics which it projected, to the goods covered by the later mark. Consequently, the Board of Appeal had been correct to conclude that the use of MACCOFFEE without due cause took unfair advantage of the repute of the McDONALD's mark.
Will this decision encourage Apple to take a more robust approach to enforcing its iPHONE, iPAD, iPOD, iMAC and iTUNES trade marks?
The EU General Court, confirming a decision of the Board of Appeal, has held that an unfair advantage was taken of the McDONALD's EU trade mark by the later MACCOFFEE mark, which was consequently invalid under Article 8(5) of the EU Trade Mark Regulation (207/2009/EC). The Court found that the marks had a degree of overall similarity due to the conceptual and phonetic similarity of the elements "mc" and "mac", even if they differed visually because of their different ending. The evidence showed that the prefix "Mc", combined with the name of a menu item or foodstuff, had acquired its own distinctive character in relation to fast-food restaurant services in the EU, so that the prefix was capable of characterising a family of marks. The court agreed that the MACCOFFEE mark had characteristics capable of associating it with the "Mc" family of marks, which was a relevant factor in establishing a link between the marks.