Threatened opposition to trade mark

[adzi]

Good evening,

We’re in the processing of setting up a new virtual brand for takeaway businesses that will be franchised at some point. The initial steps were to trademark the name so it can be licensed at a later date. The application was submitted with the IPO and our period was due to end on 18th September. I received notice at 4pm on the 18th that our trademark application has received a threat to oppose from the McDonald’s corporation. We have received correspondence from their solicitor to that effect to.

They opposed the word “MAC” in our trademark, claiming it can be easily confused with a “Big Mac” or their IP. In our context, mac refers to the common shortening of Macaroni cheese. Our trademark is being registered under classes 35 and 43. Is there any guidance on entering discussions as we are keen to avoid any litigation/challenges and the associated costs which we understand will start at £600 for a consideration (+opposition costs if applicable). Ideally we want to retain the Mac part of our trade mark given it’s the signature dish of the takeaway. Any advise or guidance is greatly appreciated.

[AndyJ]

Hi adzi and welcome to the forum,

Since the company opposing your registration is McDonalds, you will be up against some serious lawyers who are hired specifically to protect McDonald's brand image, The company is renown for its robust stance when it comes to any actual or perceived competition. You can read about some their previous cases here on Wikipedia.

As you may know, opposition is usually based on the same factors as would apply in an infringement action, namely the likelihood of confusion based in the similarity of the two marks, and the closeness of the class(es) in which the mark for which registration is sought, as compared to the class(es) in which the original mark is registered. As you are probablly equally aware, there are many companies who use the word mac as their registered mark, including of course Apple, as well as Make-Up Art Cosmetics, Inc and a number of others. So there is no real issue with the word on its own; the problem comes with its use in connection with restaurant services (ie Class 43), because McDonald's have a current registration for the word mac in class 43 for restaurant services etc (Registration details).

Since you are up against a formidable opponent you will almost certainly need some professional assistance to counter this opposition or indeed to find a compromise position. I suggest you use the Chartered Institute of Trade Mark Atorney's web site to find someone who can help you. CITMA also offer a free advice clinic which you might wish to consider: https://www.citma.org.uk/trade-marks-ip ... inics.html

[AndyJ]

Following on from my earlier post, you may find this recent judgment interesting. The case involved a similarly litigious large company and a dispute over the use of a fairly common word: easyGroup Ltd v Premier Inn Hotels Ltd
TL;DR easyGroup lost the case.

[AndyJ]

And if further proof was needed that easyGroup are particularly litigious, here is the Court of Appeal's recent judgment in another case brought by them. This case was against EasyFundraising Ltd, although for reasons explained in the judgment, it also involves a second case, easyGroup Ltd v Easy Live (Services) Ltd. Yet again, easyGroup lost their appeal that EasyFundraising had infringed easyGroup's trade marks.