MAKTEA | Decision 2702002 | Trademarkers LLC

MAKTEA | Decision 2702002

Date Published: Sep 25, 2017

OPPOSITION No B 2 702 002

McDonald’s International Property Company, Ltd., 2711 Centerville Road, Suite 400, Wilmington, DE 19808, United States of America (opponent), represented by Bardehle Pagenberg Partnerschaft mbB, Patentanwälte, Rechtsanwälte, Prinzregentenplatz 7, München, Germany (professional representative)

a g a i n s t

Natur Drinks, Vereda de Palacio 4, 28109, Alcobendas, Spain (applicant), represented by J. Lahidalga, Calle Arturo Soria, 243 Dpl. Esc. 4-1º Izd., Madrid, Spain (professional representative).

On 28/07/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 702 002 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 942 941, namely:

Class 16: Letters, envelopes, posters, cards, folders, tickets, brochures, magazines and printed publications, all the aforesaid being of paper and cardboard; Labels (not of textile); Packaging included in this class.

Class 30: Tea, tea extracts, tea-based preparations and beverages; Iced tea.

Class 32: Beer; Mineral and aerated waters and other non-alcoholic beverages; Fruit beverages and fruit juices; Syrups and other preparations for making beverages; Isotonic drinks.

The opposition is based on the following earlier rights:

• EUTM No 62 497 ‘McDonald’s’

• EUTM No 10 392 835 ‘Mc’

• EUTM No 62 638 ‘BIG MAC’

• EUTM No 9 062 118 ‘McCAFE’

• EUTM No 14 890 131 ‘McBreakfast’

• EUTM No 8 664 617 ‘McWRAP’

• EUTM No 1 391 663 ‘McRIB’

• EUTM No 4 562 419 ‘MCMUFFIN’

• EUTM No 11 642 519 ‘McDouble’

• EUTM No 11 205 093 ‘McBites’

• EUTM No 11 596 442 ‘McCOUNTRY’

• EUTM No 4 699 054 ‘MCTOAST’

• German well-known trade mark ‘McDonald’s’.

The opponent invoked Article 8(1)(b) EUTMR and, in respect of EUTM No 62 479, Article 8(5) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

Under Article 8(5) EUTMR, the opponent invoked only earlier EUTM No 62 497 ‘McDonalds’. According to the opponent, that earlier mark is reputed in the European Union for:

Class 29 Foods prepared from meat, pork, fish and poultry products, meat sandwiches, fish sandwiches, pork sandwiches, chicken sandwiches, preserved and cooked fruits and vegetables, eggs, cheese, milk, milk preparations, pickles, desserts.

Class 30 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.

Class 32 Non-alcoholic beverages, syrups and other preparations for making beverages.

Class 42 Services rendered or associated with operating and franchising restaurants and other establishment or facilities engaged in providing food and drink prepared for consumption and for drive- through facilities; preparation and provision of carry-out foods; the designing of such restaurants, establishments and facilities for others; construction planning and construction consulting for restaurants for others.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2)(c) EUTMIR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

The signs must be either identical or similar.

The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist/Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

The signs

McDonald’s

Earlier trade mark

Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The earlier sign is a word mark, ‘McDonald’s’. The relevant public may perceive the sign as a surname, as it contains the prefix ‘Mc’, which is commonly used in family names of Scottish and Irish origin and will be perceived this way by most of the public in the European Union, including the non-English-speaking part of the public. The sign as a whole is in no way related to the characteristics of the goods and services, and therefore it has an average degree of distinctiveness.

The contested sign is a figurative trade mark containing the words ‘MaK’ and ‘Tea’ placed against an abstract black and white background. The verbal element ‘MaK’ has a meaning in Slavic languages, namely ‘poppy’. For the remaining part of the public, the word ‘MaK’ has no meaning. The second word, ‘Tea’, is a basic English word that is understood internationally. Given that this word describes the contested goods in Class 30, namely tea, tea extracts, tea-based preparations and beverages; iced tea, this word is non-distinctive.

Visually, the signs ‘McDonald’s’ and ‘MaK Tea’ both include the letters ‘M’ and ‘A’. The marks differ in the remaining letters of their verbal elements. Furthermore, the signs differ in the figurative element of the contested sign. Therefore, the signs are visually similar to a low degree.

Aurally, all the relevant public is very likely to pronounce the earlier mark as ‘mæk-do-nalds’ and the contested sign as ‘MaK Tea’. It follows that the pronunciation of the marks’ beginnings will be similar. The pronunciation differs in the remaining sounds of the verbal elements. Therefore, the signs are aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with dissimilar meanings, the signs are not conceptually similar.

The signs under comparison are similar to the extent that they include some of the same letters.

Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in the European Union. Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed either the public at large or a more specialised public.

In the present case the contested trade mark was filed on 21/12/2015. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the opponent has claimed reputation, namely:

Class 32 Non-alcoholic beverages, syrups and other preparations for making beverages.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 21/09/2017, the opponent submitted the following evidence:

Annex 1: an extract from a Wikipedia article entitled ‘History of McDonald’s’, published on 21/01/2015, according to which McDonald’s has been using its mark in connection with the sale of food products since at least 1971, when the first restaurants were opened in Germany and the Netherlands. Furthermore, other restaurants followed shortly after in France (1972), Sweden (1973) and the UK (1974).

Annex 2: an extract from the McDonald’s website entitled ‘2015 Financial highlights’, dated 19/19/2016, showing that, in 2015, McDonald’s operated 1 478 restaurants in Germany, 1 384 restaurants in France, 531 restaurants in Italy and 12 641 restaurants in the UK.

Annex 3: an excerpt from the CR Report 2014 McDonald’s Deutschland, Inc., showing facts and figures regarding McDonald’s in Germany.

Annex 4: excerpts from the 2015 and 2014 Annual Reports of the McDonald’s Corporation showing that its total revenue in Europe increased, namely to USD 11.1 billion in 2014.

Annex 5: an extract from a Wikipedia article entitled ‘McDonald’s monopoly’. It refers to a sweepstake promotion by the opponent and Hasbro, using the theme of the latter’s board game Monopoly. The promotion has been offered in several EU countries since 1987.

Annex 6: extracts from FIFA’s website. One of the extracts is from an article entitled ‘McDonald’s looking ahead to 2018’, dated 24/10/2014, and it indicates that McDonald’s will be a 2018 FIFA World Cup sponsor. Another is from an article entitled ‘McDonald’s renews as FIFA World Cup Sponsor until 2014’, dated 08/07/2006, and it indicates that the opponent has been the official sponsor of the FIFA World Cup since 1994 and will continue to be until 2014.

Annex 7: a press release, dated 2012, showing that McDonald’s has been an official sponsor of the Olympic Games since Montreal 1976, as well as of some national Olympic committees.

Annex 8: a press release from ITMA (Institute of Trade Mark Agents), dated 1996, indicating that, according to Interbrand’s ‘The World’s Greatest Brands’, McDonald’s is the world’s top brand, having overtaken Coca-Cola.

Annex 9: an extract from the EUIPO database eSearch showing results of trade marks that include the prefix ‘Mc’ followed by a name or a word characterising the products in question.

Annex 10: printouts from national McDonald’s websites in the EU, dated January 2015, showing pictures of products such as foodstuffs named, inter alia, ‘Big Mac’, ‘McRib’, ‘McWrap’, ‘McNuggets’, ‘McMuffin’, ‘McChicken’ and ‘McToast’.

Annex 11: examples of menus and packaging used in Germany, the UK and France in 2007-2010, on which terms such as ‘McDonald’s’, ‘McRib’ and ‘McNuggets’ are visible.

Annex 12: an internet publication from Interbrand, dated 12/10/2015, including rankings of trade marks for 2001 to 2015, showing the earlier mark among the top ten brands for each year.

Annex 13: publications by Millward Brown entitled ‘Brandz Top 100 Most Valuable Global Brands’ (+ year), showing the earlier mark among the 10 most valuable brands in 2008-2015, and in 11th position in 2006 and 2007.

Annex 14: an extract from a survey on the earlier mark’s recognition conducted in 1991 in (West) Germany by Infratest Burke on 2 000 people aged 14 or older. According to this survey, 58% of the polled population, when shown a card bearing the designation ‘MC’ and asked ‘what comes to your mind when you hear this designation?’, replied ‘McDonald’s’. In response to the question ‘have you heard or read this designation – in combination with another word – in relation to self service or fast food restaurants?’, 85% replied ‘yes’. Moreover, in response to the question ‘do you think this designation refers to fast food restaurants belonging to a certain group of restaurants or do you think this designation is used by fast food restaurants which do not belong to one group?’, 75% replied ‘belong to a certain group of restaurants’.

Annex 15: an extract from a survey on the earlier mark’s recognition conducted in 1992 in (West) Germany by Infratest Burke. According to this survey, when shown a card bearing the designation ‘MC’ and asked ‘what comes to your mind when you hear this designation?’, 58% of the polled population replied ‘McDonald’s’. In response to the question ‘have you heard or read this designation – in combination with another word – in relation to self service or fast food restaurants?’, 91% replied ‘yes’. Moreover, in response to the question ‘do you think this designation refers to fast food restaurants belonging to a certain group of restaurants or do you think this designation is used by fast food restaurants which do not belong to one group?’, 85% replied ‘belong to a certain group of restaurants’.

Annex 16: a survey carried out in 2011 in Hungary by the Nielsen Company on 800 respondents aged between 18 and 59 years. Of those surveyed, 89% spontaneously answered ‘McDonald’s’ when asked ‘Which company uses the prefix “Mc” in Hungary?’.

Annex 17: a survey carried out in 2011 in Hungary by Forecast Research Piackutató, on 1 000 respondents aged between 18 and 50 years. In this survey, the same answer to the question referred to in Annex 16 was also given by 88% of those surveyed.

Annex 18: the decision of 05/07/2016, T-518/03, MACCOFFEE, EU:T:2016:389, of the General Court (European Union). The contested mark in this case was ‘MACCOFFEE’.

Annex 19: a decision of the UK Patent Office issued on 16/08/1996, in which the use of the prefix ‘Mc’ in the field of foodstuffs is recognised as likely to be perceived as indicating the opponent.

Annex 20: a translation into English of a decision (administrative Appeal No 04390/04 before the Spanish Trade Mark Office dated 17/08/2004), in which the mark ‘McDonald’s’ is recognised as having a reputation.

Annex 21: a translation into English of the decision of 08/10/1999, No 97-707, of the Swedish Court of Patent Appeals, in which the family of ‘Mc’ marks in the field of food and beverages and restaurant services is recognised as indicating the opponent.

Annex 22: opposition decision of 05/11/2013, B 2 017 146, in which the reputation of the mark ‘McDonald’s’ and the family of marks ‘Mc’ is recognised.

Annex 23: an extract from the EUIPO database eSearch showing two results of searches for trade marks that include the element ‘MC’.

On the basis of the above, the Opposition Division concludes that the opponent has demonstrated that the earlier mark ‘McDONALD’S’ has a reputation in the European Union. It is clear from the evidence that the earlier trade mark has been subject to longstanding and intensive use and is generally known in the relevant market, where it enjoys a consolidated position among the leading brands, as has been attested by diverse independent sources. The sales figures, marketing expenditure and market share shown by the evidence and the various references in the press to its success all show that the mark enjoys a high degree of recognition among the relevant public.

However, the evidence does not succeed in establishing that the trade mark has a reputation for all the goods and services on which the opposition is based and for which reputation has been claimed. The evidence mainly relates to fast food services rendered or associated with facilities engaged in providing food and drink prepared for consumption and for drive-through facilities and the preparation and provision of carry-out foods in Class 42, but there is little or no reference to the remaining goods and services. This is clear, for example, from the surveys and the evidence of the mark’s recognition, the examples of advertisements and the packaging, in which only the former are mentioned.

Although it is clear from the evidence submitted that the opponent also sells food and drinks in its McDonald’s restaurants, the evidence shows that these products bear their own brands, most of which begin with or contain the prefix ‘Mc’ (e.g. ‘McRib’, ‘Big Mac’, ‘McFlurry’, ‘McChicken’) and only scarce evidence of the use of the mark ‘McDonald’s’ on the packaging of such products was submitted. Under these circumstances, the Opposition Division concludes that the opponent has proved that its mark has a reputation in relation to the following services:

The Opposition Division concludes that the opponent failed to prove that its mark has a reputation in relation to:

Class 32 Non-alcoholic beverages, syrups and other preparations for making beverages.

Class 42 The designing of such restaurants, establishments and facilities for others; construction planning and construction consulting for restaurants for others.

The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are similar to some extent. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed in the judgments of 23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 29 and 31, and of 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 42):

∙ the degree of similarity between the signs;

∙ the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

∙ the strength of the earlier mark’s reputation;

∙ the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

∙ the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

The establishment of such a link, while triggered by similarity (or identity) between the signs, requires that the relevant sections of the public for each of the goods and services covered by the trade marks in dispute are the same or overlap to some extent.

As the Court has stressed, one factor when considering a link must be ‘the nature of the goods or services for which the conflicting marks were registered, including the degree of … dissimilarity between these goods and services, and the relevant section of the public’ (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 42).

The contested goods are the following:

Class 30: Tea, tea extracts, tea-based preparations and beverages; Iced tea.

Class 32: Beer; Mineral and aerated waters and other non-alcoholic beverages; Fruit beverages and fruit juices; Syrups and other preparations for making beverages; Isotonic drinks.

In the present case, the signs are aurally and visually similar to a low degree. This does not mean that the relevant public is likely to establish a link between them. The similarity between the signs results from the letter ‘M’, which appears at the beginning of both of the marks. Although generally a consumer normally attaches more importance to the first part of words, that consideration cannot apply to every case (12/11/2008, T-281/07, Ecoblue, EU:T:2008:489, § 32). The word ‘MaK’ in the contested sign has a meaning in Slavic languages, namely ‘poppy’. For the remaining part of the public, this word has no meaning. As stated above, the letter combination ‘Mc’ will be perceived as a prefix that is commonly used in family names of Scottish and Irish origin, and the earlier sign as a whole will be associated with a Scottish or Irish surname. Therefore, the signs will be associated with different meanings by part of the public. For the rest of the public, who will not perceive any conceptual differences between the signs, the commonality in the first letters, ‘M’, cannot overshadow the visual and aural differences. The elements ‘Mc’ and ‘MaK’ coincide in only one letter; they are short and will be perceived in one glance. Therefore, it is unlikely that the relevant consumer will establish a link between the prefix ‘Mc’ and the contested sign. Given all these factors, it is considered that the similarities between the contested sign and the earlier mark are unlikely to bring the earlier trade mark to the mind of the average consumer when encountering the contested sign.

Moreover, as regards the contested goods in Class 16, consideration must be given to the fact that the goods and services in question – which broadly speaking are various kinds of goods made of paper or cardboard, on the one hand (the contested goods), and services rendered or associated with operating and franchising restaurants and other establishments or facilities engaged in providing food and drink, on the other (the opponent’s services) – belong to completely distinct industries and constitute market sectors that have no material overlap and in essence have nothing whatsoever in common. The purpose of the opponent’s services is related to fast food services and operating fast food restaurants, whereas the applicant’s goods made from paper are completely different. The significant differences between the applicant’s goods and the services for which a reputation has been proven make it very unlikely that the relevant public will make a connection between the signs in dispute.

The opponent’s services and the contested goods in Classes 29 and 30, on the other hand, are similar to a low degree. However, as stated above, the similarity between the signs is very low. The similarity mainly exists from the aural perspective on account of the similar pronunciation of the elements ‘Mc’ and ‘MaK’. Nevertheless, this similarity is outweighed by the conceptual difference between the signs. While the earlier mark will clearly be perceived as a surname, with the element ‘Mc’ perceived as a typical prefix in Scottish or Irish surnames, the element ‘MaK’ will not be associated with the same prefix (for a part of the public, it even has a very specific meaning that is completely unrelated to the earlier mark, as stated above) and the mark as a whole will not be associated with a name. Given all these factors, it is considered that the few similarities between the contested sign and the earlier mark are unlikely to bring the earlier trade mark to the mind of the average consumer when encountering the contested sign, even as regards the contested goods that are related to the services for which the earlier mark is reputed. In other words, given the differences between the signs in question, the relevant public will encounter the sign ‘MaK Tea’ without making any mental connection with the earlier mark.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them. Therefore, the opposition is not well founded under Article 8(5) EUTMR and must be rejected.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registrations No 4 699 054 ‘MCTOAST’, No 62 497 ‘McDONALD’S’ and No 10 392 835 ‘Mc’.

The goods and services

The goods and services on which the opposition is based are the following:

EUTM No 4 699 054 ‘MCTOAST’

Class 29: Foods prepared from meat, pork, fish and poultry products, preserved and cooked fruits and vegetables, eggs, cheese, milk, milk preparations, pickles.

Class 30: 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; desserts.

Class 43: Restaurant services.

EUTM No 62 497 ‘McDONALD’S’

Class 25: Clothing, headwear and footwear.

Class 28: Toys, games and playthings.

Class 29: Foods prepared from meat, pork, fish and poultry products, meat sandwiches, fish sandwiches, pork sandwiches, chicken sandwiches, preserved and cooked fruits and vegetables, eggs, cheese, milk, milk preparations, pickles, desserts.

Class 31: Fresh fruits and vegetables.

Class 32: Non-alcoholic beverages, syrups and other preparations for making beverages.

Class 35: Publishing services for restaurants.

Class 41: Publishing of course material for the management of restaurants. The training of persons in the management and operation of such restaurants, establishments and facilities for others.

Class 42: Services rendered or associated with operating and franchising restaurants and other establishment or facilities engaged in providing food and drink prepared for consumption and for drive- through facilities; preparation and provision of carry-out foods; the designing of such restaurants, establishments and facilities for others; construction planning and construction consulting for restaurants for others.

EUTM No 10 392 835 ‘Mc’

Class 29: Foods prepared from meat, pork, fish and poultry products, preserved and cooked fruits and vegetables, eggs, cheese, milk, milk preparations, pickles.

Class 32: Non-alcoholic beverages, syrups and other preparations for making beverages.

Class 43: Restaurant services.

The contested goods are the following:

Class 30: Tea, tea extracts, tea-based preparations and beverages; Iced tea.

Class 32: Beer; Mineral and aerated waters and other non-alcoholic beverages; Fruit beverages and fruit juices; Syrups and other preparations for making beverages; Isotonic drinks.

Some of the contested goods are identical to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark.

Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods assumed to be identical are directed at the public at large. The degree of attention is average.

The signs

MCTOAST

McDonald’s

Earlier trade marks

Contested sign

The relevant territory is the European Union.

The earlier sign ‘MCTOAST’ is a word mark composed of two conjoined elements, ‘mc’ and ‘toast’. It can be reasonably assumed that the relevant public that has at least a basic knowledge of English will split the verbal element into these two elements. The element ‘Mc’ is commonly used in family names of Scottish and Irish origin and therefore is known by the majority of the relevant public, including the non-English-speaking part of the public. The word ‘toast’ has a meaning in Danish, English, French and German, as it is a basic and widely used word, it will be understood by most of the public in the European Union. Therefore, this element is weak.

The earlier sign ‘McDonald’s’ is a word mark and the relevant public may perceive it as a surname, as it contains the prefix ‘Mc’, which is commonly used in family names of Scottish and Irish origin. Neither the sign as a whole nor any of its elements has any connection with the characteristics of the goods and services and therefore it has an average degree of distinctiveness.

The earlier sign ‘Mc’ is a word mark and the relevant public may perceive it as a prefix that is commonly used in family names of Scottish and Irish origin. The sign as a whole has no connection with the characteristics of the goods and services and therefore it has an average degree of distinctiveness.

The contested sign is a figurative trade mark containing the words ‘MaK’ and ‘Tea’ placed against an abstract black and white background. The verbal element ‘MaK’ has a meaning in Slavic languages, namely ‘poppy’. For the remaining part of the public, which has no knowledge of Slavic languages, the word has no meaning. The second word, ‘Tea’, is a basic English word that is understood internationally. Given that this word describes the contested goods in Class 30, namely tea, tea extracts, tea-based preparations and beverages; iced tea, this word is non-distinctive.

Visually, the signs ‘MCTOAST’ and ‘MaK Tea’ both include the letters ‘M’, ‘T’ and ‘A’; however, the letters ‘T’ and ‘A’ are in different positions in the signs. The marks differ in the remaining letters of their verbal elements. Moreover, the contested sign contains an additional figurative element, which will be perceived as such. Therefore, the signs are visually similar to a low degree.

The signs ‘McDonald’s’ and ‘MaK Tea’ both include the letters ‘M’ and ‘A’. The marks differ in the remaining letters of their verbal elements. Moreover, the contested sign contains an additional figurative element, which will be perceived as such. Therefore, the signs are visually similar to a low degree.

The signs ‘Mc’ and ‘MaK Tea’ coincide in only their first letter, ‘M’. The marks differ in their remaining letters and in the fact that the contested sign contains an additional figurative element. Therefore, the signs are visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the earlier mark ‘MCTOAST’ and the contested sign, ‘MaK Tea’, coincides in the sound of the letters ‘M’, ‘A’ and ‘T’ for the English-speaking public. This public will pronounce the earlier mark as ‘mæk-toʊst’ and the contested sign as ‘mak tiː’. It follows that the pronunciation of the marks’ beginnings will be similar for the English-speaking part of the public. The pronunciation differs in the remaining verbal elements. Therefore, these signs are aurally similar to an average degree.

The entirety of the relevant public is very likely to pronounce the earlier mark ‘McDonald’s’ as ‘mæk-do-nalds’ and the contested sign as ‘MaK Tea’. It follows that the pronunciation of the marks’ beginnings will be similar. The pronunciation differs in the remaining verbal elements. Therefore, the signs are aurally similar to a low degree.

As regards the signs ‘Mc’ and ‘MaK Tea’, the pronunciation of these signs coincides in the sound of the letter ‘M’, present in both marks. The English-speaking public will pronounce the earlier mark as ‘mæk’ and the contested sign as ‘MaK Tea’. It follows that the pronunciation of the marks’ beginnings will be similar. The pronunciation differs in the remaining verbal elements. Therefore, the signs are aurally highly similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

Distinctiveness of the earlier marks

The distinctiveness of the earlier marks is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, the earlier trade marks ‘McDonald’s’ and ‘Mc’ have a reputation in the European Union in connection with some of the goods and services for which they are registered.

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade marks has already been examined above under the grounds of Article 8(5) EUTMR. Reference is made to those findings, which are equally valid for Article 8(1)(b) EUTMR.

As regards the trade mark ‘McToast’, the opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark ‘McToast’ will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a weak element in the mark as stated above in section c) of this decision.

Global assessment, other arguments and conclusion

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

In the present case, the signs are aurally similar to an average or low degree and visually similar to a low degree. The signs are not conceptually similar. The goods were assumed to be identical and they target the public at large, whose degree of attention is average.

As outlined above, the Opposition Division has found that earlier mark No 62 497 ‘McDonald’s’ has a reputation for some of the services in Class 42. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore, marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

Although the signs ‘Mc’, ‘McDonald’s’, ‘McToast’ and ‘MaK Tea’ coincide in some letters, when comparing the signs overall the Opposition Division is of the opinion that there are sufficient differences between the signs to outweigh the tenuous similarities between them. Notwithstanding the fact that the earlier mark ‘McDonald’s’ enjoys a high degree of distinctiveness due to its extensive use in relation to some of the services in Class 42, the mere commonality between the marks in some of the letters is insufficient to trigger any likelihood of confusion, including the likelihood of association, on the part of the relevant public, because of the different overall impressions created by the marks from the visual, aural and conceptual aspects. Therefore, taking into account the differences between the signs ‘Mc’, ‘McDonald’s’, ‘McToast’ and ‘MaK Tea’, the Opposition Division considers that there would be no likelihood of confusion between the conflicting marks, even if the goods and services were identical and even though the earlier mark ‘McDonald’s’ has an enhanced degree of distinctiveness.

It is necessary to consider the opponent’s argument that the earlier trade marks, all characterised by the presence of the same word component ‘Mc’ constitute a ‘family of marks’ or ‘marks in a series’. In its view, such a circumstance is liable to give rise to an objective likelihood of confusion insofar as the consumer, when confronted with the contested mark which contains the same word component as the earlier marks, will be led to believe that the goods and services identified by that mark may also come from the opponent.

In fact, the concept of the family of marks was exhaustively analysed by the General Court in its judgment of 23/02/2006, T-194/03, Bainbridge, EU:T:2006:65.

When the opposition to a European Union trade mark is based on several earlier marks and those marks display characteristics which give grounds for regarding them as forming part of a single ‘series’ or ‘family’ a likelihood of confusion may be created by the possibility of association between the contested trade mark and the earlier marks forming part of the series. However, the likelihood of association described above may be invoked only if two conditions are cumulatively satisfied.

Firstly, the proprietor of a series of earlier registrations must furnish proof of use of all the marks belonging to the series or, at the very least, of a number of marks capable of constituting a ‘series’.

In the present case, the opponent has proved that it uses a family of ‘Mc’ marks, and moreover that it uses such a family in the same fields as those covered by the contested trade mark. The evidence filed by the opponent, as seen above (Annexes 10 and 11), demonstrates that the opponent has used marks that consist of the prefix ‘Mc’ followed by a name of a beverage or foodstuff; for example, the submitted list of evidence includes pictures of products, leaflets, menus and packaging bearing the trade mark. The four trade marks ‘McWRAP’, ‘McRib’, ‘McMuffin’ and ‘MCTOAST’ are sufficient to form a ‘family of marks’. The Opposition Division, the Boards of Appeal and some national courts have recognised on several occasions that the opponent owns a ‘family of marks’ that follows the structure ‘Mc’ + food name in relation to fast food and fast food services.

Secondly, the trade mark applied for must not only be similar to the marks belonging to the series, but also display characteristics capable of associating it with the series. This could not be the case where, for example, the element common to the earlier series of marks is used in the contested trade mark, either in a different position from that in which it usually appears in the marks belonging to the series, or with a different semantic content.

The opponent’s argument that it owns a family of marks all including the prefix ‘Mc’ followed by the name of a foodstuff cannot change the above findings, since the contested sign does not follow the same structure, as the distinctive elements ‘MaK’ and ‘Mc’ coincide in only their first letters. Despite having their first letter in common, these elements are short and will be perceived in one glance; therefore, the differences will be noticed immediately and will significantly influence the overall impressions created by the contested sign and the opponent’s family of marks. Furthermore, as stated above, the distinctive element ‘Mc’ will be associated with Scottish or Irish surnames; therefore, the elements ‘Mc’ and ‘Mak’ differ from the conceptual point of view. Therefore, even in the context of identical goods, the contested sign does not have characteristics that are capable of leading it to be associated with the ‘Mc’ family of marks and it is unlikely that consumers would think that the contested trade mark is a new mark in the series of the opponent’s ‘Mc’ marks.

The opponent refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision. In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

As regards the other earlier rights invoked by the opponent in the current proceedings – EUTM No 9 062 118 ‘McCAFE’, EUTM No 14 890 131 ‘McBreakfast’, EUTM No 8 664 617 ‘McWRAP’, EUTM No 1 391 663 ‘McRIB’, EUTM No 4 562 419 ‘MCMUFFIN’, EUTM No 11 642 519 ‘McDouble’, EUTM No 11 205 093 ‘McBites’ and EUTM No 11 596 442 ‘McCOUNTRY’ – the Opposition Division observes that they do not have a higher degree of similarity to the contested sign than the sign already compared because, in most cases, the only similar element is the letter combination ‘Mc’ at the beginning of the trade marks and the additional elements ‘Breakfast’, ‘WRAP’, ‘RIB’, ‘MUFFIN’, ‘CAFÉ’, ‘Double’, ‘COUNTRY’ and ‘Bites’ are less similar to the earlier mark than the element ‘TOAST’ of the earlier right already compared. The opponent has also based its opposition on earlier trade mark No 62 638 ‘BIG MAC’; this mark is less similar to the contested sign than the sign already compared, as the letter combination ‘MAC’ is placed in a different part of the earlier mark; therefore, there would be no likelihood of confusion between these additional earlier marks and the contested EUTM application.

EARLIER WELL-KNOWN MARK – ARTICLE 8(1)(b) EUTMR IN CONJUNCTION WITH ARTICLE 8(2)(c) EUTMR

In its notice of opposition, the opponent claims to have a well-known mark in the sense of Article 6bis of the Paris Convention for the word mark ‘McDonald’s’ in Germany in relation to the following goods and services:

Class 32 Non-alcoholic beverages, syrups and other preparations for making beverages.

Class 42 Restaurant services.

According to Article 8(2)(c) EUTMR, for the purposes of Article 8(1) EUTMR ‘earlier trade marks’ means:

trade marks which, on the date of application for registration of the European Union trade mark, or, where appropriate, of the priority claimed in respect of the application for registration of the European Union trade mark, are well known in a Member State in the sense in which the words ‘well known’ are used in Article 6bis of the Paris Convention.

Article 8(2)(c) EUTMR, in general, defines the earlier trade mark only ‘for the purposes of paragraph 1’ and, therefore, does not provide an independent relative ground for refusal. Therefore, the grounds for refusal and opposition are those provided by Article 8(1)(b) EUTMR.

For Article 8(2)(c) EUTMR in conjunction with Article 8(1)(b) EUTMR to be applicable, the following has to be established:

a) the earlier mark was well-known in the relevant territory on the date when the contested European Union trade mark application was filed and

b) because of identity with or similarity of the contested mark to the earlier well-known mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the relevant territory.

These conditions are cumulative. Therefore, where a mark does not satisfy one of these conditions, the opposition based on a well-known trade mark under Article 8(1)(b) EUTMR in conjunction with Article 8(2)(c) EUTMR cannot succeed.

With regard to the second requirement, these are all the conditions that have to be fulfilled to render Article 8(1)(b) EUTMR applicable, namely identity or similarity between the conflicting signs and identity or similarity between the goods or services covered by the signs, and a consequent likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected.

As stated above, no likelihood of confusion exists between EUTM No 62 497 ‘McDonald’s’ and the contested sign ‘MaK Tea’ as examined under Article 8(1)(b) EUTMR; this is because the established similarities between the signs are insufficient to conclude that there is a likelihood of confusion between the marks. Since the invoked well-known mark is identical to the registered mark that has already been compared above and covers the same or a narrower scope of goods and services to this registered mark, the outcome cannot be different, even if the well-known character of the mark in Germany were proven. The condition of likelihood of confusion between the mark ‘McDonald’s’ and the contested mark is not fulfilled, as seen above.

The opposition must, therefore, be rejected also insofar as it is based on Article 8(2)(c) EUTMR in conjunction with Article 8(1)(b) EUTMR for the unregistered well-known word mark ‘McDonald’s’ in Germany.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Michaela

SIMANDLOVA

Liina PUU

Loreto

URRACA LUQUE

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.

MAKTEA | Decision 2702002

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