McDonald's holds a portfolio of trademarks built on a prefix. The question of how far this monopoly extends has been put to courts on several continents, and they have not answered it in the same way.
1988, United States: the “family of marks” is recognised
In September 1987, the hotel chain Quality Inns announced the launch of budget hotels named “McSleep Inn”. It was the chain that went to court first, seeking a ruling that the name did not infringe McDonald's rights; McDonald's responded with a counterclaim.
On 16 September 1988, the federal court for the District of Maryland (Quality Inns International v. McDonald's Corp., 695 F. Supp. 198) found in favour of McDonald's. It recognised the existence of a family of marks formed by “the prefix ‘Mc’ combined with a generic word to form a fanciful mark”, noted that no use prior to McDonald's had been established, and relied in particular on the company's advertising campaigns promoting an invented language, “McLanguage”. The surveys produced showed that nearly a third of respondents attributed the hotel to McDonald's. A permanent injunction prohibited the use of “McSleep”.
The same reasoning has prevailed elsewhere. In the Philippines, the Supreme Court on 2 February 2007 reinstated the refusal to register the trademark “MacJoy”, noting that “it is the prefix ‘Mc’, an abbreviation of ‘Mac’, which visually and aurally catches the attention of the consuming public”. Before the General Court of the European Union, the cancellation of the trademark “MACCOFFEE” was upheld on 5 July 2016 (case T-518/13), on the ground that it took unfair advantage of McDonald's reputation.
2009, Malaysia: “McCurry” prevails
In Kuala Lumpur, a restaurant serving Indian and Malaysian food took the name “Restoran McCurry”. Its owners would explain that the name was an acronym for Malaysian Chicken Curry. McDonald's sued it in 2001, on the basis of passing off - the common law tort of unfair competition - and not infringement of a registered trademark.
The High Court found in its favour in 2006. But on 27 April 2009, the Court of Appeal reversed that judgment: McDonald's has no monopoly on the “Mc” prefix; the trade signs, customers and cuisines differ; and the restaurant did not use the prefix to designate its dishes. In early September 2009, the Federal Court refused McDonald's leave to appeal and ordered it to pay costs. The company reacted soberly: “We respect the court's decision and have nothing further to add.”
In the United Kingdom, in November 2001, the High Court had already dismissed McDonald's opposition to the registration of “McChina Wok Away”, after nine years of proceedings: Mr Justice David Neuberger had noted the absence of any evidence of actual confusion.
What the comparison teaches
| Case | Court, date | Outcome |
|---|---|---|
| McSleep (hotels) | District of Maryland, 1988 | McDonald's wins |
| McChina Wok Away | High Court, United Kingdom, 2001 | McDonald's loses |
| MacJoy | Supreme Court of the Philippines, 2007 | McDonald's wins |
| McCurry | Court of Appeal, Malaysia, 2009 | McDonald's loses |
| MACCOFFEE | General Court of the EU, 2016 | McDonald's wins |
| BIG MAC / Supermac's | General Court of the EU, 2024 | Partial revocation |
There is therefore no universal answer. Decisions depend on the legal basis relied on, the proximity of the activities, and above all on proof of a likelihood of confusion among the relevant public.
The term “trademark bully”
The expression is regularly associated with these cases. It is necessary to be precise about its scope. It was used in an academic law journal - Leah Chan Grinvald, “Shaming Trademark Bullies”, Wisconsin Law Review, 2011 - which names McDonald's. It is also used by opposing parties: the head of Supermac's, Pat McDonagh, said in 2017 that “if a McGrath, a McCarthy or a McDermott uses their name in the title of their business, chances are McDonald's already holds the trademark”.
But the official report of the US Patent and Trademark Office to Congress, in April 2011, does not describe McDonald's in any such way. What is more, the office removed the terms “bullies” and “bullying” from its public consultation, considering it more appropriate to keep to the statutory wording of “litigation tactics”, and pointed out that “aggressive enforcement of trademark rights does not automatically amount to abuse”. The report concluded that the testimony received was anecdotal and made no recommendation naming anyone.
On the side where McDonald's was, this time, partially stripped of its own rights, see the Big Mac v. Supermac's case before the General Court of the European Union.
Where a trademark is judged
These cases are decided before different institutions, and confusion is constant.
The offices - the EUIPO in Alicante, the USPTO in the United States - rule only on the right to registration: they register, refuse, cancel. They do not order anyone to stop using a sign and award no compensation. Losing before them does not mean losing the right to trade: it means losing a title.
The courts, for their part, rule on use: infringement, unfair competition, and - in common law countries - passing off, which protects the actual goodwill attached to a sign even in the absence of any registration.
Finally, a third route requires no one to be right on the merits: revocation for non-use. Anyone can apply for it, without having to show a particular interest, and it is for the trademark owner to prove that it genuinely uses it. That is how Supermac's brought down part of the European registration of the Big Mac.