THE ORIGINAL sign used by a business to distinguish its products and services from other competitors and promote them in the market is called a trademark, through which the business acquires reputation and value. The recognition of products or services by customers creates a positive image and it is necessary for the commercial activity of a business.
A trademark can consist of words, letters, drawings, colours, numbers, even sounds, provided they distinguish the products and the services and can be reproduced for the public to identify. The registration of a trademark is necessary to protect its owners so that others cannot use it to gain unfair advantage. In Cyprus, trademarks are registered through the Registrar of Companies and the registration provides the owner with exclusive right over the trademark, prohibiting any third parties from using it without the owner’s consent or using something similar.
A business wishing to protect its trademarks in the EU can register it as a Community trademark at the European Union Intellectual Property Office under EC Regulation No 207/2009. The importance of the registration of a trademark has been addressed by the Supreme Court in Cyprus and the European Court in their recent judgements relating to McDonald’s. The company succeeded in protecting its trademarks and the registration by a Singaporean company of the brand ‘MacCoffee’.
In Cyprus, both the Registrar of Companies and the Supreme Court at first instance dismissed the objection of McDonald’s but the Supreme Court in its appellate jurisdiction disagreed with the decision and judgement of first instance and set it aside. Moreover, the European Court decided that the
company from Singapore did not have due cause for the use of the contested mark and dismissed its recourse. The Court agreed with the Board of Appeal endorsing the findings of the Cancellation Division, according to which the use without due cause of the contested mark unfairly took advantage of the reputation of the McDonald’s trademark.
It indeed felt it was highly likely that the contested mark rode on the coat-tails of the McDonald’s trademark, in order to benefit from its power of attraction, its reputation and its prestige, and exploited, without paying any financial compensation, the marketing effort made by the
intervener in order to create and maintain the image of the McDonald’s trademark. According to the Board of Appeal, all the factors of the case made it possible to conclude that the relevant public or a substantial part of it, could establish a mental link between the marks at issue and could be attracted by the fact that that mark had practically the same prefix and reproduced the same structure as the McDonald’s trademark and could associate that mark with the “Mc” family of marks, of which the McDonald’s trademark was the original trademark.
The Supreme Court of Cyprus decided that the Registrar did not compare the two marks MacCoffee and McCafe in their acoustic and conceptual
aspect. The prefix “Mc” is a registered mark of Mc-Donald’s and it is pronounced “Mac”. Moreover, even though the words Coffee and Café which follow the prefixes are acoustically different, they are two small words having acoustic similarity; the same applies for the conceptual comparison. The Court concluded that the decision of the Registrar was not complete and could not be accepted without making the comparison. Hence, it set aside
the judgment of the Court of first instance and confirmed the protection of the family of trademarks of McDonald’s.