McDonald’s has lost its mark protection to one of its mark, “Mc” after previously losing its mark protection to its “Bigmac” mark. Cancellation of “Mc” mark re-registration was based on objections raised by rival company Supermac’s European Union Intellectual Property Office (EUIPO). The case between McDonald’s and Supermac’s began with Supermac’s difficulties in applying for registration of the “Supermac’s” mark in the European Union because it was always prevented by McDonald’s parties who objected to EUIPO on the basis that they had an exclusive right to use the word “Mc” so that there should be no other party who may use the mark other than McDonald’s. In addition, the thing worried by McDonald’s if the mark name “Supermac’s” is registered is the emergence of confusion in the community because there are similarities to the word “Mac/Mc” in the word “Supermac‘s” with McDonald’s mark such as “MACFISH”, “McCafe” and “McCHICHKEN”. As such, McDonald’s believes that the “Supermac” mark cannot be registered as mark in the European Union. The objection raised by McDonald’s ultimately impeded Supermac’s efforts to expand his business in the European Union.
Furthermore, because Supermac’s efforts to protect its mark in the European Union have always failed, finally Supermac’s submitted a request to cancel “Mc” mark registration to EUIPO on the basis that McDonald’s did not use “Mc” mark properly and honestly for certain types of products and/or services registered. Based on these objections, EUIPO examined McDonald’s “Mc” mark and decided to grant the objection filed by Supermac’s by canceling “Mc” mark registration for certain types of goods and/or services registered by McDonald’s because it was proven that McDonald’s did not use “Mc” mark for several types of goods or services that have been registered.
In connection with the above case, it should be noted that in the European Union, interested parties can submit cancellation of trademark registration with EUIPO by proving that the trademarks of other registered parties have not been used in the European Union for 5 years from registration. In this case, Supermac’s managed to prove that McDonald’s doesn’t use the “Mc” mark honestly so that EUIPO ultimately canceled McDonald’s “Mc” mark registration for certain types of goods and/or services.
The same regulation can be found in Indonesia in Law Number 20 Year 2016 concerning Trademark and Geographical Indications in Article 74 paragraph (1) which states that,
“The deletion of registered mark may also be submitted by third party with an interest in the form of a lawsuit to the Commercial Court on the grounds that the mark has not been used for 3 (three) consecutive years in trade in goods and/or services as of registration date or the last use“.
Thus, it can be concluded that the mark which has been registered in Indonesia and European Union must be used since the mark was registered. If the mark is not used, then the mark may be threatened to be canceled or written off by third parties concerned through the Commercial Court in Indonesia or through the EUIPO in European Union.
Source:
- https://trademarklawyermagazine.com/McDonalds-loses-exclusive-use-of-its-mc-prefix/, accessed on August 23, 2019
- https://euipo.europa.eu/ohimportal/en/invalidity-and-revocation, accessed on 26 August 2019
- Law No. 20 of 2016 concerning Trademark and Geographic Indications