In March 2026, the Chamber Specialising in Intellectual Property of Indecopi (the Peruvian Trademark Office) upheld the decision to grant registration of the trademark MCOIL’S, which had been applied for in relation to edible oils and fats, despite the opposition filed by McDonald’s Corporation.
The dispute arose in December 2023, when Oil Market Recycling applied to register the MCOIL’S trademark for various goods in Class 29. During the proceedings, and in response to the opposition, the applicant voluntarily limited the scope of the application so that it covered only oils and fats for food use.
McDonald’s objected to the registration, arguing that the name MCOIL’S incorporated the prefix “MC”, an element that forms part of numerous trademarks in its portfolio and which, in its view, could give rise to a likelihood of confusion, association or unfair exploitation of the reputation of its signs. In support of its opposition, the company cited both its trademark registrations in classes 29, 30 and 43 and the well-known nature of the MCDONALD’S trademark in the Peruvian market.
In May 2025, Indecopi’s Distinctive Signs Commission ruled that the opposition was unfounded and granted the requested registration. The records examined by the authority included numerous trademarks registered in Peru that incorporate the particles “MC” or “MAC”, belonging to various owners.
McDonald’s appealed the decision, arguing that the trademark applied for would give rise to a likelihood of confusion and constituted an attempt to exploit the reputation associated with its distinctive signs. The case was then reviewed by the Chamber Specialising in Intellectual Property of Indecopi.
Finally, by means of Resolution No. 0451-2026/TPI-INDECOPI, the Chamber upheld the decision of the court of first instance and maintained the registration of MCOIL’S. To this end, it considered it significant that Class 29 includes various third-party trademarks incorporating the particles “MC” and “MAC”, including McCormick, MC MILLAN, McCain, MC TAMBO, MACBEL, MACPAN and MAC TAMBO. In that context, it concluded that the prefix “MC” was not, on its own, sufficient to give rise to a likelihood of confusion with the trademarks cited by McDonald’s; it therefore dismissed the opposition and upheld the grant of the registration sought. Furthermore, the Chamber considered that the goods to be distinguished by MCOIL’S have characteristics and purposes that differ from the services primarily associated with the McDonald’s trademarks, a factor which helps to reduce the possibility of error among consumers. Consequently, it dismissed the appeal as unfounded and upheld the grant of the registration sought.
So, what does it mean for a particle to be considered “commonly used” in trademark law?
Generally speaking, an expression, term, particle, prefix, suffix or element is considered to be commonly used when it is used by multiple owners within the same economic sector or in relation to similar goods or services. In such cases, intellectual property authorities generally consider that such an element has limited distinctiveness and, therefore, cannot be exclusively claimed by a single competitor.
This has a significant implication for the analysis of registrability: where two trademarks share a commonly used element, the comparison cannot focus exclusively on that common element. On the contrary, the examination should focus on those additional components that make it possible to identify the business origin of the goods or services and that genuinely confer distinctiveness on the signs in opposition.
It was precisely for this reason that the Chamber considered it important to verify the existence of multiple third-party trademark registrations incorporating the particles “MC” and “MAC” in the same class 29. In the authority’s opinion, this coexistence demonstrated that these elements were not exclusive to McDonald’s and that, consequently, the assessment of likelihood of confusion should be based on the overall impression of the trademarks and not solely on the presence of the prefix ‘MC’.
This case provides an interesting example of how the identification of commonly used elements can influence the outcome of an opposition or, more generally, the analysis of registrability.
Regardless of the specific outcome of the case, the decision raises some practical considerations that are relevant to those who design, manage and protect trademarks.
Firstly, when creating and selecting a trademark, it is important to assess whether any of its key elements are already widely used by third parties within the relevant sector. The inclusion of commonly used expressions, prefixes or suffixes will not necessarily prevent the trademark from being registered, but it may limit the scope of the exclusive rights that can subsequently be claimed in respect of those elements. In practice, this means that the owner may be forced to coexist with third-party signs that incorporate similar elements, a situation that can be problematic from a commercial or trademark positioning perspective.
Secondly, the case highlights the importance of maintaining constant vigilance over both the trademark register and the market. The distinctive strength of a trademark does not depend solely on its registration, but also on the steps taken by its owner to protect it. The timely filing of oppositions, observations or claims on the grounds of infringement can be crucial in preventing certain distinctive elements from becoming diluted over time or from being widely adopted by third parties.
In conclusion, the MCOIL’S case demonstrates that trademark protection does not always revolve around individual words or particles. In many cases, the analysis focuses on the real distinctive capability of the elements that make up a trademark and on how these are perceived by consumers within a given market. It is therefore just as important to devise strategies that preserve and strengthen the distinctiveness of these signs over time as it is to secure registration.
Andrea Díaz, Senior Lawyer – PONS IP Colombia
