Following a legal dispute spanning several years between McDonald's and the operator of the hotel "McTirol", the Supreme Court has now finally ruled in favour of McDonald's stating that the prefix "Mc" and its use in the food sector as well as in relation to the provision of food and drink and temporary accommodation is exclusively reserved for McDonald's. CHSH Partner Mag. Mark Krenn represented the client during proceedings.
Following a legal dispute spanning several years (which began in 2012) between McDonald's and the operator of the hotel "McTirol", which had registered a series of trademarks (McBerg, McMountain, McTyrol, and McTirol) with the "Mc" component, the Supreme Court has now finally ruled in favour of McDonald's (4 Ob 190/14s, 4 Ob 211/14d, 4 Ob 212/14a, 4 Ob 213/14y, and 4 Ob 214/14w) – by altering the decisions of the lower courts – stating that "Mc" (pronounced "Mäc") – a well-known component of a series of protected trademarks of the McDonald's group – qualifies as a series of marks, the use of which in the food sector and in relation to the provision of food and drink and temporary accommodation is exclusively reserved for McDonald's. Although this had already been established by the Supreme Patent and Trademark Adjudication Body in its decision in the matter of McChinese, it should nevertheless still be noted that the component "McChinese" informally refers to a Chinese restaurant, thus a connection to restaurant operations exists and therefore there is a risk of confusion. However, what is new and decisive in the present decisions is that it is not necessary for the second word element following "Mc" to embody a reference to food or to the provision of food and drink and temporary accommodation in order to give rise to a likelihood of direct confusion with the trademarks of McDonald's in the protected area relating to the provision of food and drink and temporary accommodation.
The Supreme Court explained in all decisions: "Furthermore, this series of letters [note: Mc/MC] […] is likely to be perceived by the public in connection with food and the provision of food and drink due to the significant number of trademarks belonging to this [note: McDonald’s] family of trademarks and its notorious prevalence as the root mark referring to the business of the applicant [note: McDonald's]" and further: "Unlike the assumption of the court that heard the appeal, in this case it does not matter whether the second trademark element ("Mountain", "Tyrol", "Tirol") has a meaning that refers to food or to the provision of food and drink. Rather, it suffices that the opposed trademarks were (also) registered for these products."
"This correct assessment by the Supreme Court closes the final gap in a number of issues regarding the inadmissibility of the use of "Mc" for other products in the food, restaurant and hotel sectors. Thus, McDonald's solely reserves the right to any such imaginative word combination, which contains the component "Mc" and which is intended to be used for this area or protected as a trademark. It cannot be ruled out that this assessment by the Supreme Court will also set a precedent for other jurisdictions, such as Germany", explained Mag. Mark Krenn, partner and attorney at CHSH Cerha Hempel Spiegelfeld Hlawati, who represented McDonald’s in proceedings before the Supreme Court. And further: "From the point of view of branding, this decision is also enormously significant and shows just how important it is for a company to pursue its rights, instead of allowing a brand that has taken decades to establish at considerable financial expense to be diluted."