McSlim | Decision 2578204 - McDonald's International Property Company, Ltd. v. Olaf J. Jansen

Date Published: Oct 10, 2017

OPPOSITION No B 2 578 204

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, 81675 München, Germany (professional representative)

a g a i n s t

Olaf J. Jansen, Innere Wienerstr. 13a, 81667 München, Germany (applicant), represented by Olaf J. Jansen, Innere Wienerstr. 13a, 81667 München, Germany (professional representative).

On 10/03/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 578 204 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 14 179 873. The opposition is based on the following European trade mark registrations:

EUTM No 62 497, ‘McDONALD’S’;
EUTM No 11 955 929, ‘McMISSION’;
EUTM No 2 888 402, ‘McINTERNET’;
EUTM No 12 982 658, ‘McCOMPASS’;
EUTM No 10 633 436, ‘McFAMILY’;
EUTM No 9 062 118, ‘McCAFE’;
EUTM No 8 664 617, ‘McWRAP’;
EUTM No 62 638, ‘BIG MAC’;
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’;
EUTM No 5 056 429, ‘McFISH’;
EUTM No 10 392 835, ‘Mc’;

and the German well-known mark ‘McDONALD’S’.

The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR with respect to EUTM No 62 497, ‘McDONALD’S’; with respect to the other earlier rights the opponent invoked Article 8(1)(b) EUTMR only.

REPUTATION – ARTICLE 8(5) EUTMR

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

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 shall 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.

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

McSLIM

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).

Both signs are word marks. For non-English consumers, neither of the marks has a meaning. However, English-speaking consumers will perceive the earlier mark as a surname and will associate the contested mark with a coined surname because of the use of prefix ‘Mc’, commonly used in family names of Scottish and Irish origin, in combination with the English word ‘SLIM’, a person who is small in width relative to height or length. Therefore, the element ‘MC’ is not particularly distinctive for this part of the public as it will be perceived as a combining form of surnames. In relation to part of the goods, namely the clothing articles in Class 25, this element has a weak distinctive character for the English-speaking part of the public.

Visually, the signs coincide in the prefix ‘MC’. They differ in their respective second element ‘DONALD’S’ and ‘SLIM’ which have nothing in common, exception made for the letter ‘L’ which appears in both elements but in different order. Therefore, the signs are visually similar to a low degree because they coincide in an element with a lower distinctive character for the English-speaking part of the public. For the rest of the public, although it is true that the consumer generally attaches more importance to the first part of the words that consideration cannot apply in every case (12/11/2008, T-281/07, Ecoblue, EU:T:2008:489, § 32). In the present case the non-coincident elements comprise eight characters, including the apostrophe, in the earlier right and four letters in the contested and only the letter ‘L’ appears on both of them and not even in the same position.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the syllable ‘MC’, present identically in both signs. The pronunciation differs in the other two syllables of the earlier mark, ‘DON-ALDS’, and the remaining single syllable of the contested sign: ‘SLIM’. To that extent, the signs are aurally similar to a low degree.

Conceptually, as stated above, the signs will be associated with Scottish or Irish surnames by the English-speaking public. Since the surname in each case is different, there can be no conceptual similarity, apart from the finding that they might be perceived as surnames. Therefore, the signs differ from a conceptual point of view. For the rest of the public, since the signs convey no meaning, a conceptual comparison is not possible; therefore, the conceptual aspect does not influence the assessment of the similarity of the signs.

The signs under comparison are visually and aurally similar to a low degree, to the extent they have in common the element ‘MC’.

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 30/05/2015. 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 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.

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 21/03/2016 the opponent submitted the following evidence:

Annex 1: extract from the Wikipedia article titled ‘History of McDonald’s’ dated 14/10/2015, showing the origins, growing and worldwide expansion of the opponent’s company, having been stablished in Europe since 1971.

Annex 2: extract from McDonalds website titled ‘2014 Financial highlights’ dated 14/10/2015, showing a total of 7855 McDonald’s Restaurants in Europe at the end of year 2014, most of them in the EU.

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

Annex 4: 2014 Annual Report of the McDonald’s Corporation, showing total revenue in Europe of $7,808 million in 2014.

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

Annex 6: extracts from FIFA’s website. One titled ‘McDonald’s looking ahead to 2018’ dated 24/10/2014, indicating that McDonald’s will be 2018 FIFA World Cup Sponsor. Another article titled ‘McDonald’s renews as FIFA World Cup Sponsor until 2014’ dated 08/07/2006, indicating that the opponent has been the official sponsor of 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 official sponsor of the Olympic Games since Montreal 1976, as well as 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 taking over Coca-Cola.

Annex 9: extract from EUIPO database eSearch showing 21 results of trade marks that include the term ‘McDonald’ and the opponent holds.

Annex 10: printouts of from national McDonald’s websites in the EU, dated January 2015. The printouts show pictures of products such as sandwiches named, inter alia, Big Mac, McRib, McWrap, McNuggets, McMuffin or McChicken.

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

Annex 12: extracts from the opponent’s German website showing pictures of toys under the tag ‘Current toys offered with a Happy Meal’

Annex 13: an internet publication from Interbrand, dated 12/10/2015, including rankings of trade marks for the years 2001 to 2015, showing the earlier mark among the top ten brands for each year.

Annex 14: publications by Millward Brown, titled Brandz Top 100 Most valuable Global Brands (+year), showing the earlier mark among the ten most valuable brands for the period 2008-2015, and in 11th position in 2006 and 2007.

Annex 15: an extract from a survey on mark’s recognition conducted in 1991 in (West) Germany by Infratest Burke on the basis of 2000 people aged 14 or older. According to this survey, the 58% percent of the polled population, when shown a card with ‘MC’ and asked ‘what comes to your mind when you hear this designation?’ replied ‘McDonald’s’. To the question ‘have you heard or read this designation –in combination with another word- in relation to self service or fast food restaurants?’ the 85% replied ‘yes’. And 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?’ a 75% replied ‘belong to a certain group of restaurants’.

Annex 16: an extract from a survey on mark’s recognition conducted in 1992 in (West) Germany by Infratest Burke on the basis of 1000 people aged 14 or older. According to this survey, the 83% percent of the polled population, when asked ‘have you heard or read this designation –in combination with another word- in relation to self service or fast food restaurants?’ replied ‘yes’. 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?’ a 77% of those who replied ‘yes’ to the previous question said ‘belong to a certain group of restaurants’.

Annex 17: an extract from a survey on mark’s recognition conducted in 2011 in Hungary by Nielsen Company on the basis of 800 people aged 18-59. According to this survey, the 89% percent of the polled population, when asked ‘which company uses the prefix ‘MC’ in Hungary?’ selected ‘McDonald’s’ from multiple choice options. An 84% selected ‘McDonald’s’ from multiple choice options to the question ‘which restaurant uses the prefix ‘MC’ in Hungary?’ And a 86% selected ‘McDonald’s’ to the question ‘which restaurant using the prefix ‘MC’ is the most famous to you?’ The survey also indicates that the higher ratios were obtained among youngsters, high educated people and Budapest/South-West Hungary inhabitants.

Annex 18: an extract from a survey on mark’s recognition conducted in 2011 in Hungary by Forecast Research Piackutató on the basis of 1000 people aged 18-50. According to this survey, the 88% percent of the polled population, when asked ‘which company uses the prefix ‘MC’ in Hungary?’ selected ‘McDonald’s’ from multiple choice options. A 94.6% selected ‘McDonald’s’ from multiple choice options to the question ‘which restaurant uses the prefix ‘MC’ in Hungary?’ And a 94.6% selected ‘McDonald’s’ from a multiple choice options to the question ‘which restaurant using the prefix ‘MC’ is famous, known to you?’

Annex 19: decision (and translation) of the Federal Patent Court of Germany (07/07/2004) on the case ‘McDonald’s’ vs. ‘Mc Döner Kebab’ in which likelihood of confusion was found.

Annex 20: decision of the UK Patent Office (16/08/1996) ‘McIndians’ in favour of McDonald’s.

Annex 21: translated decision (2004) of the Spanish Patent and Trade Marks Office on appeal against the registration of the trade mark ‘McWilly Express’ filled by McDonald’s, in which the mark ‘McDonald’s’ is recognised as repute.

Annex 22: translation of the judgment of the Swedish Court of Patent Appeals (08/10/1999) in the invalidity of the mark ‘Mc Ostrich’, in which the family of ‘MC’ marks in relation to food, beverages and restaurant services was recognised as indicating the opponent.

Annex 23: references to previous Opposition Division’s decision (05/11/2013, B 2 017 146, McParking) in which the reputation of the mark ‘McDonald’s’ and the family of marks ‘MC’ was recognised.

Annex 24: extracts from the Office’s database showing the marks ‘McGym’ and the application ‘McLight’ as belonging to the applicant of the present case.

On the basis of the above the Opposition Division concludes that the earlier European Union trade mark No 62 497, ‘McDONALD’S’, has been subject to long-standing and intensive use and is well known in the relevant market.

Particularly the evidence originating from various independent marketing agencies shows the mark ‘McDonald’s’ (for the sake of completeness it is noted that since the earlier mark is registered as a word mark, it is irrelevant for the purposes of assessing the evidence of reputation, if the word is used in alternating lower case or upper case letters or in a more stylised version) having a significant recognition worldwide and in the EU.

The evidence submitted also indicates that the ‘McDonald’s’ trade mark has been used for a substantial period of time in EU Member States (since 1971) and the revenue figures suggest that the trade mark has a consolidated position in the market. Although the evidence falls somewhat short in terms of quantitative data (market shares, promotional investment…) and qualitative data (the surveys conducted in Hungary seem to have been leading the consumers to a certain answer using a multiple choice scheme in which the opponent’s mark was available for all questions), the evidence which emanates from third parties (industry reviews, press clips) provides sufficient indications that ‘McDonald’s’ restaurants have a strong position among its competitors and it is seen as an important player on the EU market. Under these circumstances, the Opposition Division finds that, taken as a whole, the evidence shows that the mark ‘McDONALD’S’ enjoys recognition for 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 in Class 42, which leads to the conclusion that the earlier mark enjoys reputation for those services.

However, it does not demonstrate a reputation for this mark in relation to the remaining goods and services. 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 starting with or containing the prefix ‘Mc’ (McRib, Big Mac, McFlurry, McChicken…) and only scarce evidence of use of the mark ‘McDonald’s’ on their packaging was provided.

Under these circumstances, the Opposition Division concludes that the opponent failed to prove that this mark has a reputation in relation to:

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; and

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

The Opposition Division also notes the fact that the opponent offers giveaway toys together with its ‘Happy Meal’ menus (Annex 12); however, it does not indicate that consumers will perceive these toys as commercially originating from ‘McDonald’s’ and, moreover, reputation was not claimed for products in Class 28.

Family of marks

Furthermore, it remains 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 an 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’.

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.

In this case, it must be held that even if the evidence listed makes reference to the mark for which reputation was invoked, ‘McDonald’s’, it shows also information regarding other sub-brands and trade marks the opponent invoked as basis of its opposition.

In particular, Annexes 10 and 11 show pictures of products, menus and packaging marked, inter alia, as McRib, McChicken, McNuggets, McFlurry, Big Mac, McFish, McWrap…

With the possible exception of Big Mac and McFlurry, most of the opponent’s sub-brands consist of the prefix ‘MC’ followed by an ingredient or a generic term for foodstuff. The Opposition Division and the Boards of Appeal (and also national courts) have recognised on several occasions that the opponent owns a ‘family of marks’ that follows the aforesaid structure (MC+FOOD) in relation to fast-foods and fast-food outlets.

However, the opponent also based its opposition on other trade marks that, despite starting with the prefix ‘MC’, do not follow the above mentioned structure as their second element is not related to foodstuffs, this is the case of ‘McMission’, ‘McInternet’, ‘McCompass’ or ‘McFamily’. The Opposition Division maintains that for those marks the opponent failed to furnish proof of use of them in the market as there is no reference to them in the evidence submitted apart from being listed as registered trade marks of the opponent. In this regard, references to registrations are not per se particularly conclusive, as they do not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the prefix ‘MC’ but not followed by foodstuffs as originating from the opponent. Therefore the Opposition Division concludes that the opponent failed to prove that these marks (MC+DIFFERENT TO FOOD) constitute a family or series of marks.

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 contested goods are:

Class 25: Bathing suits; Bathing costumes for women; Bathing suits for men; Fitted swimming costumes with bra cups; Swim wear for gentlemen and ladies; Bathing trunks; Trunks; Clothing for martial arts; Clothing for horse-riding [other than riding hats]; Sportswear; Bermuda shorts; Bikinis; Maillots; Boxer shorts; Bustiers; Brassieres; Leisure suits; Slacks; Leisurewear; Golf trousers; Golf pants, shirts and skirts; Unitards; Clothing for gymnastics; Lumberjackets; Snowboard trousers; Jackets being sports clothing; Fishermen's jackets; Snowboard jackets; Shell suits; Jogging sets [clothing]; Sweatpants; Jogging tops; Martial arts uniforms; Combative sports uniforms; Running Suits; Running vests; Casual trousers; Leggings [trousers]; Wet suits for water-skiing and sub-aqua; Wet suits for surfing; Wet suits for windsurfing; Cycling tops; Cycling shorts; Jodhpurs; Riding jackets; Rugby shorts; Snow suits; Ski suits for competition; Ski trousers; Ski jackets; Clothing for skiing; Sports clothing [other than golf gloves]; Casual shirts; Sports shirts with short sleeves; Sports jackets; Sports socks; Gym suits; Sports jerseys; Sports jerseys and breeches for sports; Thongs; Tennis shirts; Tennis dresses; Tennis pullovers; Tennis skirts; Tennis shorts; Tennis socks; Bib shorts; Gym shorts; Knitwear [clothing]; Wet suits for water-skiing.

Class 28: Sporting articles and equipment; Balls being sporting articles; Ball pitching machines; Stress relief balls for hand exercise; Benches for sporting use; Parallel bars for gymnastics; Stomach exercisers; Benches for gymnastic use; Weight lifting benches; Boards used in the practice of water sports; Bodysurfing boards; Stationary exercise bicycles; Chest expanders [exercisers]; Shuttlecocks; Spring bars for exercising; Indoor fitness apparatus; Machines for physical exercises; Machines incorporating weights for use in physical exercise; Ankle and wrist weights for exercise; Body training apparatus [exercise]; Artificial climbing walls; Manual leg exercisers; Bowling apparatus and machinery; Mountain boards; Monoskis; Horizontal bars [for gymnastic]; Rollers for stationary exercise bicycles; Roller skates; In-line roller skates; Rowing machines; Skateboards; Skis; Sporting articles not included in other classes; Sportballs; Tennis ball throwing apparatus; Trampolines; Spring boards [sports articles]; Gymnastic training stools; Wakeboards; Waterskis.

Class 30: French toast; Snack food products consisting of cereal products; Snack food products made from potato flour; Snack foods prepared from maize; Snacks manufactured from muesli; Flaky pastry containing ham; Pretzels; Bean jam buns; Frankfurter sandwiches; Burritos; Calzones; Cheeseburgers [sandwiches]; Enchiladas; Pastries consisting of vegetables and fish; Fajitas; Egg rolls; Spring rolls; Prawn crackers; Vegetable pies; Rice based dishes; Meals consisting primarily of pasta; Toasted sandwiches; Mincemeat pies; Hamburgers being cooked and contained in a bread roll; Hamburgers contained in bread rolls; Hot sausage and ketchup in cut open bread rolls; Hot dog sandwiches; Snack food products made from cereal flour; Snack food products made from rice flour; Snack food products made from soya flour; Snack foods made from corn; Snack foods made from corn and in the form of puffs; Snack foods made from corn and in the form of rings; Puffed corn snacks; Cereal snack foods flavoured with cheese; Canapes; Sandwiches containing meat; Steamed buns stuffed with minced meat (niku-manjuh); Nachos; Ready-made dishes containing pasta; Noodle-based prepared meals; Crackers filled with cheese; Caramel coated popcorn; Mung bean pancakes (bindaetteok); Pies [sweet or savoury]; Pastries consisting of vegetables and poultry; Pastries consisting of vegetables and meat; Pies; Pies containing fish; Pies containing poultry; Pies containing vegetables; Hot dogs (prepared); Ready to eat savory snack foods made from maize meal formed by extrusion; Prepared meals containing [principally] rice; Meals consisting primarily of rice; Pre-packaged lunches consisting primarily of rice, and also including meat, fish or vegetables; Snack foods consisting principally of extruded cereals; Soft pretzels; Wontons; Wrap [sandwich]; Sausage rolls.

Class 32: Soya-based beverages, other than milk substitutes; Peanut milk [non-alcoholic beverage]; Milk of almonds [beverage]; Non-alcoholic beverages containing fruit juices; Flavoured carbonated beverages; Waters; Flavoured waters; Flavoured mineral water; Bottled drinking water; Aerated water; Aerated water [soda water]; Lithia water; Mineral water [beverages]; Mineral water (Non-medicated -); Spring water; Seltzer water; Soda water; Powders for effervescing beverages; Pastilles for effervescing beverages; Preparations for making mineral water; Preparations for making aerated water; Essences for making beverages; Essences for making flavoured mineral water [not in the nature of essential oils]; Extracts for making beverages; Extracts of hops for making beer; Hop extracts for use in the preparation of beverages; Concentrates for use in the preparation of soft drinks; Cordials; Lime juice cordial; Syrups for lemonade; Malt syrup for beverages; Malt wort; Orgeat; Orange squash; Preparations for making liqueurs; Powders used in the preparation of fruit-based beverages; Syrups for making soft drinks; Syrups for making beverages; Syrups for making fruit-flavored drinks; Syrups for making flavoured mineral waters; Squashes [non-alcoholic beverages]; Syrups for beverages; Syrups for making non-alcoholic beverages; Grape must, unfermented; Processed hops for use in making beer; Lemon squash.

In the present case, the signs have some similarities. This does not mean that the relevant public is likely to establish a link between them. 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. The opponent demonstrated the reputation of the earlier mark in relation to 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. Although it is true that restaurants serve food and drinks and the contested goods consist also of foods and drinks in Classes 30 and 32 and a section of the public covered by the conflicting marks is the same or overlaps to some extent, those goods or services are so different that the later mark is unlikely to bring the earlier mark to the mind of the relevant public. The Opposition Division is of the opinion that, apart from being different in nature, given that services are intangible whereas goods are tangible, they serve different needs. Restaurant services in general consist in offering a wide variety of different meals, ready to be consumed in the premises or to be taken away. This is not the purpose of the goods. Furthermore, the method of use of those goods and services is different and the same occurs with their distribution channels.

That is to say it is not a common practice for restaurants to market foodstuffs in supermarkets even though some of them may do it, the relevant public does not expect to find restaurants’ foodstuffs in supermarkets because it is not a common practice. In the same way, most of the restaurants do not serve their food labelled or tagged with their brand unless they serve it packed and in those occasions, as it has been previously noticed in the assessment of the earlier mark reputation, they use other sub-brands and trade marks for those purposes. Therefore, the Opposition Division is of the opinion that the public will not link all the so called ‘MC-products’ for sale in the supermarkets as to come from McDonald’s Restaurants. By the way of example in the supermarkets of the Union it is easy for the public to find frozen French fries and other foodstuffs from McCain Company; even if French fries are widely sold in McDonald’s Restaurants, not a single consumer will make the link between these two different companies. These differences are even more apparent in relation to the contested goods in Class 25 and 28 (clothing, sportswear and sporting articles).

The comparison of the signs shows that both signs contain additional elements which account for visual and aural differences (Donald’s / Slim) and, for the English-speaking part of the public, also conceptual differences since the signs will recall different surnames.

Account must be taken that in relation to foodstuffs a family of the opponent’s marks has been proven following the structure of the prefix ‘MC’ and the name of a foodstuff or ingredient. However, the contested mark does not follow such a structure because, despite starting with the same prefix, it is not followed by any food or ingredient rather by the adjective ‘SLIM’ which, although some people may link it with foodstuffs that help the consumer to stay fit or slim, it is not a clear indication of any food, meal or ingredient. In this respect, it has to be noted that the opponent failed to prove that its marks following a structure ‘MC+DIFFERENT TO FOOD’ also constitute a family or series of marks; therefore, it is unlikely that the consumer will make a link with those opponent’s marks.

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 earlier sign ‘McDONALD’S’ and the contested sign ‘McSLIM’, 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.

The Opposition Division will continue now with the examination of the opposition under Article 8(1)(b) EUTMR.

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 trade mark registration No 62 497, ‘McDONALD’S’.

The goods and services

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

Class 25: Clothing, headwear and footwear.

Class 28: Toys, games and playthings.

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.

The contested goods are the following:

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 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 found to be identical are directed at the public at large. The degree of attention of the consumer of these goods is considered to be average.

The signs

McDONALD’S

McSLIM

Earlier trade mark

Contested sign

As the comparison refers to the same marks compared in the Reputation section, the Opposition Division refers to its findings on that section for the purposes of the comparison under Article 8(1)(b) EUTMR.

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 mark

The distinctiveness of the earlier mark 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 mark enjoys a high degree of distinctiveness as result of its long standing and intensive use in the European Union and, in particular in Germany, in connection with all the goods and services for which it is registered. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. 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). The evidence submitted by the opponent in that regard has already been listed and assessed under Article 8(5) EUTMR. The same findings are valid under Article 8(1)(b) EUTMR. Specifically, the Opposition Division concludes that the evidence submitted by the opponent demonstrates that the earlier EUTM No 62 497, ‘McDONALD’S’ acquired a high degree of distinctiveness through use in relation to 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 in Class 42.

Global assessment, other arguments and conclusion

As is clear from consistent case law, the global appreciation of the likelihood of confusion must, as regards the visual, phonetic or conceptual similarity of the conflicting signs, be based on the overall impression created by them, bearing in mind, in particular, their distinctive and dominant components (judgment of 11/11/1997, C-251/95, ‘Sabèl’, paragraph 23; judgment of 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik Meyer’, paragraph 25).

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

The similarity of the signs results from the element ‘MC’ which appears at the beginning of the marks in conflict. Although generally a consumer normally attaches more importance to the first part of the words, that consideration cannot apply in every case (12/11/2008, T-281/07, Ecoblue, EU:T:2008:489, § 32). In the case at bar, only the first two letters of each sign are identical, while the remainder of the opponent’s sign, ‘DONALD’S’, has no echo whatsoever in the mere four letters comprising ‘SLIM’. Therefore, the marks are linked solely through the element ‘MC’ which has a low degree of inherent distinctiveness, at least for the English-speaking part of the public that perceives it as a prefix used in Scottish and Irish surnames. Although the verbal element ‘SLIM’ may have a weak distinctive character for part of the goods in Class 25 for the English-speaking part of the public, it would be overshadowed by the overall impression created together with the prefix ‘MC’ which will make the mark to be perceived as a newly coined or original surname and, therefore, endowing the mark as a whole with an average distinctive character also for the goods in Class 25. Consequently, they differ significantly visually and aurally and also conceptually for this part of the public. For the rest of the public, the coincidence in the element ‘MC’ cannot overshadow the visual and aural differences that the remaining elements convey. These differences contribute to putting a distance between the overall impressions conveyed by the signs.

Notwithstanding the fact that the earlier mark enjoys a higher distinctiveness due to its extensive use in relation to part of the services in Class 42, the mere coincidence of the marks in the element ‘MC’ is insufficient for triggering any likelihood of confusion, including likelihood of association on the part of the relevant public because the different overall impressions of the marks from the visual, aural and conceptual aspects of the signs.

According to the principle of interdependence mentioned above, a lesser degree of similarity between the signs may be offset by a greater degree of similarity between the goods and services, and vice versa. The Opposition Division has taken this principle into account when assessing the likelihood of confusion and the fact that the goods were considered identical cannot, in this case, compensate for the differences identified between the signs.

Therefore, on an overall assessment, the Opposition Division finds that the differences between the marks, in particular the different overall impressions conveyed by them, counterbalance the similarities found between them and the possible identity of the goods in question.

The opponent claimed that its earlier ‘MC’-prefixed 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.

Since this argument has been discussed and refused under the section Reputation-Article 8(5) of this decision, there is no need to examine it again under Article 8(1)(b) CTMR as it would fail the same. This finding is valid even taking into account that the earlier trade mark enjoys a high degree of distinctiveness due to its intensive and widespread use for 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 in Class 42. Therefore, the opponent’s argument in relation to the family of marks is not a relevant factor in establishing a likelihood of confusion in the present case.

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.

Under Article 8(1)(b) EUTMR, the opponent has also based its opposition on the following earlier word trade marks:

EUTM No 11 955 929, ‘McMISSION’;
EUTM No 2 888402, ‘McINTERNET’;
EUTM No 12 982 658, ‘McCOMPASS’;
EUTM No 10 633 436, ‘McFAMILY’;
EUTM No 9 062 118, ‘McCAFE’;
EUTM No 8 664 617, ‘McWRAP’;
EUTM No 62 638, ‘BIG MAC’;
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’;
EUTM No 5 056 429, ‘McFISH’;
EUTM No 10 392 835, ‘Mc’; and
German well-known mark McDONALD’S.

Most of these earlier marks are structured in the same manner as the one which has been already compared, namely the element ‘MC’ is followed by another word or expression, for example ‘FISH’, ‘MISSION’, ‘COMPASS’, ‘RIB’, ‘MUFFIN’ or ‘DOUBLE’. Therefore, the same findings apply to these earlier marks as to the one compared above, even under the presumption that all the contested goods and services were identical to the ones covered by these earlier marks; that is to say that the outcome of the opposition based on the abovementioned earlier trade marks cannot be different. No likelihood of confusion exists with respect to those earlier marks.

In respect of the EUTM No 10 392 835, ‘Mc’, the differences between the marks would be even more apparent. They only coincide in the prefix ‘Mc’ in the contested sign. The coincidence in this prefix, although the only element in the earlier mark, will be unable to overshadow the differences that the subsequent element of the contested mark, ‘SLIM’, conveys. Therefore, the little visual and aural similarities and their conceptual differences or non-relevant meanings, make the Office take the view that since the differences in the overall impressions of these marks are even more apparent to those previously compared, a different result would not apply as to the ones compared above.

Consequently, the opposition must be rejected in its entirety.

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

Martin

EBERL

Octavio MONGE GONZALVO

Claudia

MARTINI

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.

McSlim | Decision 2578204 - McDonald's International Property Company, Ltd. v. Olaf J. Jansen

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