Jaume Mourisco Ayuso. Intellectual Property Lawyer | Litigation Department

Today we have yet another case that makes it clear that, no matter how well-known your trade mark(s) may be, that’s not enough to ban everything that might bother us in some way. This is the case between MCDONALD’S INTERNATIONAL PROPERTY LTD (hereinafter ‘McDonald’s’) and the Spanish Patent and Trademark Office (SPTO) and FÁBRICA CHEF, S.L., concerning the latter’s application for the distinctive sign M4228845, for goods and services in classes 30 and 43.

Following the application for said sign with the SPTO, McDonald’s considered that its priority trade mark registrations might be at risk as a result of that application, as, in its opinion, there was a clear likelihood of confusion, particularly given the reputation of its trade marks and, specifically, the use of the prefix ‘Mc’. With this in mind, it filed an objection, which was dismissed, and then lodged an appeal to a higher authority, which met with the same fate.

Obviously, McDonald’s disagreed with this decision by the SPTO, and therefore decided to take the matter to the Provincial Court of Madrid (Section 32), which is responsible for hearing such cases (formerly known as ‘contentious’ cases).

What were McDonald’s arguments in this appeal? Namely, given the reputation enjoyed by its trade marks–which, in its opinion, is very high—the protection afforded by trademark law to its distinctive signs ought to be much greater (in other words, the protection afforded to well-known trade marks), and, given the similarity–however slight–between the signs, this was sufficient grounds for the implementation of Article 8 of the Trademark Law, and thus for the refusal of the contested sign.

In addition to the arguments already set out regarding the similarities between the signs in question, particularly concerning the element ‘Mc’, they also point to the fact that, from a conceptual point of view, there is a section of the population that uses the term ‘Macas’ to refer to going to a McDonald’s, specifically among young people in Madrid. The appeal also concludes by addressing the applicant’s argument, which stated that the term ‘Macas’ refers to the diminutive form of the name ‘Las Macarenas’ in Spain.

After the Provincial Court had examined the case, it confirmed the position previously taken by the SPTO, albeit on the following grounds.

There is certainly no doubt that the trade marks belonging to McDonald’s are well-known, and indeed, they all have a very important reputation, which is why a much more thorough examination is required in this case, given the enhanced protection that these trade marks deserve.

It is after comparing the signs that the Court identifies the insurmountable problem (?) for implementing the aforementioned enhanced protection, which is none other than the fact that the signs in question do not meet the required minimum level of similarity.

Although the letters ‘m’ and ‘c’ appear in the signs in question, and the syllable ‘ca’ also appears in the priority signs that include the word ‘café’, the fact is that they do not give the impression of being similar when viewed as a whole. As the Provincial Court points out, in accordance with the established case law of the Court of Justice of the European Union (CJEU), it is not sufficient for one or more elements of the earlier trade mark to be reproduced in the subsequent trade mark; rather, it is essential to compare the signs as a whole. Furthermore, it emphasises that only if the other elements of the contested sign are negligible and do not contribute any distinctiveness would it be possible to base the comparison on the dominant elements.

It is also important to bear in mind that comparing word marks is not the same as comparing complex word marks or combined marks. Thus, as we are dealing with the second scenario, the differences arising from the graphic elements must also be assessed as part of the overall picture, a factor which serves to accentuate the distinction between the signs in question in the present case. Although McDonald’s sought to argue that the use of the yellow and red colours in the contested mark is an element to be considered, the fact remains that, while it does indeed use those colours in practice, their combination is not found in the priority signs it has registered.

Lastly, in the conceptual comparison, in the Court’s opinion, the differences are even more evident. Nevertheless, this is where the title of this article makes sense, because it is true that young people in Madrid commonly use the term “macas” (for example, “let’s go for a macas” or “see you at the macas”) to refer to McDonald’s and its products.

This is certainly curious, given that this was precisely the point raised by McDonald’s as a further reason for the similarity between the signs, although the Court, due to its (lack of) knowledge (?), as well as (in my opinion) the absence of documents proving (e.g., market studies or surveys) that consumers, upon seeing the term ‘macas’, would associate it with McDonald’s, were the reasons why it concluded that there was no similarity whatsoever from a conceptual point of view.

What would have happened if, unlike in the previous case, McDonald’s had submitted that document to the SPTO? For me, that is perhaps the most interesting question: given the differences from a word, graphical and aural standpoint, could this have led to a reversal in the decisions of the SPTO and the Provincial Court? Unfortunately, at least for now, we’ll have to keep you in suspense.

We must therefore take note of the substance of this judgment, which reaffirms the message that, when two signs are in question and the opponent is well-known (and, in this case, very well-known), this will be of no avail if, when comparing the signs as a whole, a minimum degree of similarity cannot be discerned which would allow the protection afforded to the enhanced trade marks to be applied.

For, regardless of the reputation that one may have, that does not imply an omnipotent power that can be wielded against any sign that stands in one’s way in order to ensure its refusal.