As a result of a five-year legal tussle between the U.S. Burger chain, McDonald’s Corp. (Plaintiff) and McCurry Restaurant (KL) Sdn Bhd (Defendant), the Malaysian High Court has ruled that “Mc” is the exclusive right and trade mark of fast food giant McDonald’s Corporation.
In the statement of claim filed on June 6, 2001, McDonald’s said it had reated the prefix “Mc” as a trade identifier and trade mark to be used on all goods and services offered by the company to enhance its business.
The trade identifiers can be seen in the use of the prefix “Mc” in food like McChicken, McMuffin, McRendang, McNuggets and others. Hence, it enjoyed a commercial advantange and advertising premium that is exclusively attached to “Mc”.
On a worldwide basis, McDonald’s has applied for and secured numerous trade mark registrations of prefix “Mc” and also for “Mc” with as prefix or suffix and its commercial presence can be felt in over 120 countries.
McDonald’s alleged that the defendant had expressly by implication suggested an association and connection with the plaintiff. Hence McCurry had committed the tort of “passing off” against the plaintiff. Passing off is conducting a business in such a way as to mislead the public into thinking that one trader’s goods, food and services are those of another trader’s business.
McCurry’s unlawful encroachment hurt the McDonald’s fast food’s reputation and goodwill.
McDonald’s was seeking that McCurry change its name. It also sought an order from the Companies Commission of Malaysia to record the change of name or cancellation and to strike off the defendant from the register.
McDonald’s also sought the destruction of McCurry’s materials, articles and documents connected to the defendant’s use of the prefix “Mc”.
In its defence, McCurry, which was formerly known as Restoran Penang Curry House (KL) Sdn Bhd, which later changed its name to McCurry Restaurant (KL) Sdn Bhd, claimed that the name was an abbreviation of “Malaysian Chicken Curry” and that it offered Malaysian Indian Cuisine.
The 24-hour open air restaurant serves spicy fish-head curries, tandoori chicken and other Indian delicacies on a street corner in the capital, under a large McCurry sign.
McCurry claimed that its trade mark consisting of smiling chicken depicted inside a circle with the words “Malaysian Chicken Curry” was different than McDonald’s.
It also contented that McDonald’s does not have the exclusive rights to the prefix “Mc”, as it is used in Scottish surnames and hence, it need not seek the fast food’s permission to use it. It denied it had use the prefix “Mc” to enhance its business.
The judge agreed that “Mc” was distinctive of McDonald’s, either used singularly or in conjunction with food. McDonald’s could therefore, claim goodwill and reputation in their business with reference to the prefix “Mc”.
The defendant using the word McCurry and employing a signage which featured the colours which were descriptive of McDonald’s was indulging in acts that could give rise to confusion and deception to the public.
In granting the order, the act of the defendant was said to be a deliberate attempt to get an unfair advantage to the detriment of the plaintiff. The plaintiff had suffered damages to their goodwill and reputation and erosion to the singularity that they had enjoyed vis-à-vis the “Mc” trade mark.
The High Court ordered McCurry Restaurant (KL) Sdn Bhd to immediately stop using the prefix from its business name. The defendant might be appealing against the ruling on the basis that “McCurry” was just an abbreviation for “Malaysian Chicken Curry”.
This case demonstrates that the features of a well-known mark as well as the essential features are the basis in determining the likelihood of confusion and deception.
McDonald’s has been involved in a number of lawsuit and other legal cases in the past 66-year history. Many of these involved trade mark issues. Here in Malaysia, they have now successfully protected their interest and moreover obtained the exclusive use of “Mc”.