McDonald’s has its McLimits

Ashlee Froese is an Osgoode Hall alumnus and currently practices intellectual property at the law firm of Keyser Mason Ball LLP.

After a prolonged 8-year battle, the highest court in Malaysia has unanimously confirmed that McDonald’s does not have a monopoly over the “MC” prefix in association with all restaurant operations.

Lets “Relish” in the Facts

McCurry’s held the position that its trade-mark “MCCURRY” is an acronym for “Malaysian Chicken Curry”, which coincides with its fare, namely Indian and Malaysian food.  Moreover, the “MCCURRY” trade-mark is displayed in white and grey letters, with a red background.  A picture of a smiling chicken accompanies the trade-mark, along with the verbiage “RESTORAN”.

McDonald’s relied on its renowned “golden arch” and “MC” prefix indicia, both of which are displayed against a red background, for its claim of passing off and trade-mark infringement.

A “Beefy” Judgment

Ultimately, the Federal Court, comprised of a 3-member panel, overturned the 2006 decision citing that the high court judge erred in assuming that McDonald’s had a monopoly over the “MC” prefix in association with restaurant services.  Whereas, McCurry’s exclusively sells Indian and Malaysian fast food dishes from a single location in Kuala Lumpur, McDonald’s sells Western fast food in 185 locations throughout Malaysia.  The respective parties’ menus are sufficiently disparate, thereby attracting a different clientele.  Both these factors contributed to a finding of no confusion.  Moreover, McDonald’s was unable to provide any tangible evidence that would satisfy its claim of passing off.  McCurry’s use of the “MC” prefix was not in itself sufficient to infer that its intention was to trade off of McDonald’s goodwill.  Overall, the disparate nature of the businesses and their menus, along with the varying get-up, was sufficient for McCurry’s to overcome McDonald’s claim of trade-mark infringement and passing off.

A “Taste” of Things to Come

Is this a precedent setting case that opens the flood-gate for other food operations to use the “MC” prefix, as long as they sufficiently distinguish their product line from McDonald’s?  Interestingly, McCurry’s has been cited as being relieved that their business plan to expand is no longer quashed by McDonald’s – is this the beginning of a new Mc-franchise in Malaysia?