Intellectual Property solicitor Jenna Bruce considers the recent case which ended McDonald’s run of success against food establishments using the “Mc” prefix.

It has been hailed as a David and Goliath style victory: after eight long years of legal proceedings, the formidable fast food giant, McDonalds, has fallen at the hands of a small curry house from the streets of Kuala Lumpur.

The case began in 2001 when McDonalds became aware of an Indian fast food restaurant named “McCurry”. McDonalds wrote to the husband and wife owners of the curry house, demanding that they remove the prefix “Mc” from the restaurant’s name, or face legal proceedings. When the owners refused to change the name, McDonalds issued proceedings against McCurry for trade mark infringement.

In Malaysia’s High Court, McDonalds argued that the prefix “Mc” was internationally recognised as belonging to the burger giant and that McCurry was therefore infringing its trade mark and taking advantage of the company’s global reputation. The High Court agreed, and McCurry was ordered to remove the prefix from its signage and to pay damages to McDonalds.

McCurry, however, was undeterred and appealed against the High Court’s decision. It argued that “McCurry” stood for “Malaysian Chicken Curry” and that because it sold only Indian food, not burgers and fries, it was not trying to capitalise on McDonald’s success. The Court of Appeal agreed, and in April of this year overturned the High Court’s decision.

McDonalds fought on, and appealed to Malaysia’s highest court. However in a significant ruling at the beginning of September, the Federal Court of Malaysia refused McDonald’s application for leave to appeal, thereby ending any possibility of a victory for the fast food giant. The Court ruled that McDonald’s case had “no merit” and ordered it to pay McCurry’s costs.

The ruling means that McCurry’s owners are now free to create the Indian fast food franchise they dreamed of eight years ago, before the legal battle began.

However, do spare a thought for those whose legal battles do not end as happily as McCurry’s. In its extensive legal past, McDonalds has successfully sued a café called “MacJoy”, a coffee shop named “McCoffee” (after its owner Elizabeth McCaughey) and a Scottish based sandwich shop called “McMunchies”. It seems that it is not always “Happy Meals” all round!

If you are considering a new business or brand name, our Intellectual Property team would be happy to review and provide a report on potentially conflicting names or trade marks. If you require any further information or would like to speak to a member of the Intellectual Property team, please telephone Jenna Bruce on 0116 247 3580.