On 27th April 2009, Justice Datuk Gopal Sri Ram delivered a favourable judgement to the owner of McCurry Restaurant at the Court of Appeal. The use of the trademark “McCurry” in relation to Indian and Malaysian food was not found to be an act of passing off of McDonald’s Corporation’s food and beverage business.
Apart from its famous restaurant name “McDonald’s” and “McD’s”, the ”Mc” prefix is used by McDonald’s Corporation on its food products and its marketing material such as McChicken, McMuffin, McRendang, Mc Value Meals, McNuggets, McCrispy, McEgg, McMonday, McTwist, McWings, McSausage, McSpaceship, McTeddyBears and McCafé.
McCurry Restaurant, which is located on Jalan Ipoh, Kuala Lumpur began its operations in 1999 and the name “McCurry” has been claimed to originate from the phrase “MalaysianChicken Curry”. The words “McCurry” on the restaurant’s signage is in white and grey while the background is in red.
The three panel judge at the Court of Appeal found that the High Court judge had erred in her decision on 7th September 2006 as, among other reasons,
(i) McDonald’s Corporation did not have goodwill and reputation in the name “McCurry”;
(ii) McDonald’s Corporation did not have monopoly over the prefix “Mc” singularly;
(iii) Due to the different types of food sold by both parties, there was no likelihood of
confusion among the public with the co-existence of both marks;
(iv) The customers of McCurry and McDonald’s were substantially different.
Commenting on the Court of Appeal decision, experienced Trademark Attorney, Geetha Kandiah from KASS International said that “this decision from the Court of Appeal reflects that the grant of extreme monopolies to part of a trademark is considered in a serious manner in the law on trade marks, and the Courts still revert to the trite trademark law that ‘marks should be compared as a whole and not in segments’”.
Nonetheless, as this is not the final battle, we shall wait to see whether this Court of Appeal decision is appealed by McDonald’s Corporation to the Federal Court. This is another episode in the global battle by McDonald’s against marks, such as McIndians, McChina, MacNoodles, all used in the food and restaurant business in various countries.