Mc Donald’s was today victorious in a trademark dispute before the European Court and opposed registration of the EU figurative mark Mc Dreams for a hotel. The court saw a hotel’s services as an neighbouring market segment to fast food services.
A special feature in this case was the application of Article 8(5) of EU Regulation No 2017/1001, since it was not the likelihood of confusion that was negotiated, as is otherwise customary, but the similarity of marks where the earlier mark is a well-known one, even for goods and services which are not comparable to those of the earlier mark.
Overall impression of the marks only slight degree of similarity
Mc Donald’s had based its opposition to the registration of the figurative mark Mc Dreams mainly on its own earlier Union word mark Mc Donald’s. The opposition was based on the fact that Mc Donald’s had not registered the figurative mark Mc Dreams. Accordingly, the similarities between the marks were examined visually, phonetically and conceptually. Since the only similarity between the marks is given by the prefix “mc”, the CFI found only a low degree of similarity both visually and conceptually. As regards aural similarity, the Court found that the two marks were similar to an average degree. Overall, therefore, there is only a low degree of similarity between the two marks.
However, for Article 8(5) to apply, it is not necessary for the degree of similarity between the earlier mark with a reputation and the mark applied for to be such as to create a likelihood of confusion on the part of the relevant public. As soon as there is a link with the earlier mark with a reputation, even if there is a low degree of similarity, Article 8(5) may be applied, the Court of First Instance stated.
Hotel and fast food – comparable services?
The contested Union figurative mark Mc Dreams was registered for services in Nice Class 43, namely ‘provision of temporary accommodation’. Mc Donald’s, in turn, was registered at the time of registration as a Union word mark in Nice Class 42. However, serving dishes and beverages are now classified in Nice Class 43. Such a circumstance is, however, irrelevant for the purposes of examining the similarity of the services in question, the European Court stated.
In addition, the Court saw hotel services and fast food services as neighbouring market segments. If a hotel’s services do not include the provision of a kitchen where guests can prepare their own meals, food and drink and accommodation services are often offered, the CFI explained. Therefore, fast food services and the services covered by the mark applied for should be regarded as belonging to neighbouring market segments.
McDreams Hotel argued that it offered only hotel services which did not include food and beverage services. The CFI considered this to be irrelevant. In order to assess the similarity between the services in question, the group of services protected by the marks in question had to be taken into account and not the services actually marketed under those marks, the CFI explained.
Earlier mark with an exceptionally high reputation
However, the brand family of Mc Donald’s weighs more heavily and that the Mc Dreams brand fits very well into this brand family, according to the court. The plaintiff, McDreams Hotel, had not even tried to call into question the exceptionally high reputation and prestige of the earlier McDonald’s mark. Instead, the applicant referred to other registered EU trade marks which also contain the prefix “mc”, “mc travel”, registered under No 9 413 881, and “mc cruise”, registered under No 3 546 686. The Court pointed out that the applicant had not invoked any infringement of the principle of equal treatment and therefore found, rather marginally, that those marks differed substantially from the contested trade mark “Mc Dreams”, in particular as regards the colour scheme.
Mark Mc Dreams refused under Article 8(5)
The CFI refused the trademark registration pursuant to Article 8(5) of EU Regulation 2017/1001. This paragraph 5 of this Regulation is not applied as often, as the requirements for infringement of this paragraph are high. A trade mark cannot therefore be registered,
- if it is identical with or similar to an earlier trade mark and is to be registered for goods or services which are not comparable to those of the earlier trade mark
- where an earlier trade mark is an EU trade mark with a reputation in the European Union
- and where use without due cause of the mark applied for would take unfair advantage of or be detrimental to the distinctive character or the reputation of the earlier mark.
The European Court considered all this to be proven by the trademark application of MC Dreams. Mc Donald’s today successfully opposed the trademark registration of the figurative mark Mc Dreams for a hotel.
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Sources:
Judgement CFI “Mc Dreams” EU:T:2019:738
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