Marqonsult

McCurry Restaurant (KL) Sdn Bhd v. McDonald’s Corporation [2009] 3 MLJ 774, Malaysia Court of Appeal

Summary:

The Court of Appeal of Malaysia has overturned the Malaysian High Court’s decision to allow McDonald’s the exclusive use of the prefix “Mc” by permitting a local Indian eatery, McCurry Restaurant to use “Mc” in its business signage or in the conduct of its business.

The Appellate Court judges found no evidence to suggest the appellant, McCurry Restaurant, had passed-off its business as that of McDonald’s.

The Court of Appeal relied on the following distinguishing features between McCurry Restaurant and McDonald’s to influence the outcome of the appeal:

1. Looking at the McDonald’s getup or logo as a whole, it was clear that it consists of a distinctive yellow M shape (“golden arches”) with the word McDonalds on a red background and thus, can be contrasted against “Restoran McCurry” signage in white and grey lettering against a red background coupled with a picture of a chicken giving the thumbs up and the phrase “Malaysian Chicken Curry”.

2. McCurry Restaurant does not label its food items on the menu with the prefix “Mc” as does McDonald’s.

3. The respective customers are from different segments of the population: McCurry Restaurant is frequented by adults and senior citizens while McDonald’s is patronized mainly by children.

4. McCurry Restaurant caters only typical Indian food whereas McDonald’s serves Western fast food.

The Court of Appeal held that the High Court had overlooked these material facts when ruling in favour of McDonald’s. Thus, no inference could be drawn that McCurry Restaurant’s signage would result in persons associating McCurry with the trademark, McDonald’s.

Comments:

The trial judge’s decision to acknowledge dilution of the trademark “McDonald’s” was overturned by the tide of a totality in the comparison of the get-up, the types of food, and the target market of the two businesses to rule out possible confusion. Nevertheless, the appellate court’s remark that the trial judge had erred in assuming that the respondent had a monopoly in the prefix ‘Mc’ hints of a different outcome had the mark been sufficiently distinctive. In this case, it was noted that ‘Mc’ has been associated with several sources worldwide.

ABOUT THE AUTHOR: Ms Clara C.F.Yip
Ms Yip holds a Law and Economics degree from University of Auckland, New Zealand. She gained admission to the Malayan Bar and the New Zealand Bar in 1994 and 1993 respectively and worked in legal firms as well as one of the largest patent and trademark firms in Kuala Lumpur. She left legal practice in late 2001 and founded MarQonsult IP in February 2002, an IP boutique firm specialising in the protection, licensing and enforcement of Intellectual Property Rights. A member of FICPI, AIPPI, APAA, INTA, ABA International and MARQUES, she is fluent in English, Malay and Cantonese and is conversant in French and Mandarin.