McDonald's sued Malaysia's McCurry for its name... and lost

[aelf]

Malaysia's 'McCurry' beats McDonald's in trademark saga

Malaysia's highest court ruled Tuesday against US fast food giant McDonald's, which has waged an eight-year battle to prevent local eatery "McCurry" from using the prefix "Mc" in its name.

"It is the end of the road for McDonald's. McCurry can use the prefix," said lawyer Sri Dev Nair who represented the family-owned restaurant, which serves up Malaysian favourites like tandoori chicken and fish masala.

"McCurry and McDonald's are two different businesses which sell different types of food and they have different customers," he said, rejecting McDonald's claim that the use of "Mc" in its name could cause confusion.

In April, McCurry scored a David-and-Goliath victory when the appeals court overturned a 2006 high court decision that McCurry had illegally infringed on the burger chain's trademark.

McDonald's on Tuesday sought permission from the federal court to contest the appeals court decision, but judges denied the application and said the burger chain's petition was "not properly framed".

"It is unfortunate we have to dismiss the application with costs," said Judge Arifin Zakaria, who headed the three-member panel. Costs amounted to 10,000 ringgit (2,845 US dollars).

"Justice has been served. The food that we serve is very different from McDonald's," said McCurry owner Kanaeges Suppiah.

"We have no similarities with them at all. That's what we have felt all this while and that's why we could go on until this stage," she told reporters.

McDonald's counsel declined to comment, saying they had to brief their client first.

"We abide by the court's decision," lawyer Wong Sai Fong said.

The McCurry restaurant, which the owners say is short for Malaysian Chicken Curry Restaurant, was established in 1999. McDonald's has 185 outlets in Malaysia, the first of which it opened in 1982.

Link

One thing Malaysia got right. But it almost didn't anyway.

But I don't even know why Micky D's tried this. AFAIK, it would have to be able to lay some sort of trademark claim on 'Mc'. Considering the fact that many people have that as part of their name, I don't see much of a case.

So what do you think? Should McDonald's be able to claim 'Mc' as its trademark? Can Coca-Cola claim the colour red as its trademark? How far can companies go in this?

 

[Tee Kay]

One of the banks here claimed a shade of the color blue as a registered trademark. I think it's ridiculous.

Anyways, go McCurry! Curry > McDonald's any day.

 

[Mise]

There's a wiki on [wiki]McDonald's legal cases[/wiki]

EDIT: This one's actually really interesting... http://en.wikipedia.org/wiki/McLibel

 

[Rossiya]

For what it's worth, when the prospective American Formula 1 team USF1 applied to be a Formula 1 team, they could not use the term "USF1" at that time because Bernie Ecclestone, the owner of FIA, owns the term "USF1".

 

[Bamspeedy]

McDonald's claim to the Mc name is a bit excessive at times.

But it's possible McCurry wouldn't have had as much of a problem had they chosen different colors.

 

[Rossiya]

Why "Mc"Curry? Why not FitzCurry or de Curry?

 

[Tee Kay]

Malaysian Chicken Curry

 

[Babbler]

They could just called it MacCurry and everything would have been fine.

 

[Truronian]

There's a wiki on [wiki]McDonald's legal cases[/wiki]

EDIT: This one's actually really interesting... http://en.wikipedia.org/wiki/McLibel

That was a good read. Best bit:

In June 1995, McDonald's offered to settle the case (which "was coming up to its first anniversary in court") by donating a large sum of money to a charity chosen by the two. They further specified that they would drop the case if Steel and Morris agreed to "stop criticising McDonald's". Steel and Morris secretly recorded the meeting; McDonald's said the pair could criticise McDonald's privately to friends but must cease talking to the media or distributing leaflets. Steel and Morris wrote a letter in response saying they would agree to the terms if McDonald's ceased advertising its products and instead only recommended the restaurant privately to friends.

 

[Snorrius]

They could just called it MacCurry and everything would have been fine.

And next time McDonald would claim there is a capital "M" which is similar to McDonald's one...

 

[Truronian]

They could just called it MacCurry and everything would have been fine.

I wouldn't be so sure...

 

[aelf]

Why "Mc"Curry? Why not FitzCurry or de Curry?

Malaysian Chicken Curry

This.

I don't think there's a need to bold any part of this article, right? And I'm not asking that sarcastically. It's pretty damn short already.

McDonald's claim to the Mc name is a bit excessive at times.

But it's possible McCurry wouldn't have had as much of a problem had they chosen different colors.

Yeah, when I saw that I thought that they are trying to copy the style somewhat. But they are right that there's just no reason to believe that anyone would actually equate the two different kinds of food offered. They probably did it out of laziness.

One of the banks here claimed a shade of the color blue as a registered trademark. I think it's ridiculous.

Apparently, according to some lawyers who gave a course on intellectual property, and as the earlier ruling here also shows somewhat, sometimes companies do get away with that sort of claim. It's scary when courts of justice can actually make such ridiculous judgements, right?

 

[Yeekim]

And next time McDonald would claim there is a capital "M" which is similar to McDonald's one...

My first thought as well...

 

[aelf]

Hmm I just read the wiki article on the legal cases. This same issue sure isn't the first!

MacJoy (Philippines)

In 2004, McDonald's sued Cebu-based fast food restaurant MacJoy for using a very similar trade name. In its defense, MacJoy insisted that it was the first user of the mark under the title "MACJOY & DEVICE" for its business in Cebu City which started in 1987, five years before McDonald's opened its first outlet in the same city. MacJoy stated that the requirement of “actual use” in commerce in the Philippines before one may register a trademark pertains to the territorial jurisdiction on a national scale and is not merely confined to a certain locality or region. It added that "MacJoy" is a term of endearment for the owner's niece whose name is Scarlett Yu Carcel. In response, McDonald's claimed that there was no connection between the name Scarlett Yu Carcel to merit the coinage of the word "MacJoy" and that the only logical conclusion over the name is to help the Cebu restaurant ride high on their (McDonald's) established reputation.

On February 2007, the Philippine Supreme Court upheld the right of McDonald's over its registered and internationally-recognized trademarks. As a result, the owners of MacJoy, the Espina family, was forced to change its trademark into MyJoy, which went into effect with the re-opening of its two branches in Cebu City on August that year.

So McDonald's does have rights to 'Mc'? Idiot court.

McCoffee (US)

In 1994, McDonald's successfully forced Elizabeth McCaughey of the San Francisco Bay Area to change the trading name of her coffee shop McCoffee, which had operated under that name for 17 years. "This is the moment I surrendered the little 'c' to corporate America," said Elizabeth McCaughey, who had named it as an adaptation of her surname.

That's part of her name, goddamnit. Idiot court.

McChina Wok Away (UK)

In 2001, McDonald's lost a nine-year legal action against Frank Yuen, owner of McChina Wok Away, a small chain of Chinese takeaway outlets in London. Justice David Neuberger ruled the McChina name would not cause any confusion among customers and that McDonald's had no right to the prefix Mc.

Yes!

McMunchies (UK)

In 1996, McDonald's forced Scottish sandwich shop owner Mary Blair of Fenny Stratford, Buckinghamshire to drop McMunchies as her trading name. Mrs. Blair did not sell burgers or chips. She said she chose the name because she liked the word munchies and wanted the cafe to have a Scottish feel. The cafe's sign reflected this, featuring a Scottish thistle and a St Andrew's flag. But in a statement to Mrs. Blair's solicitors, McDonald's said if someone used the Mc prefix, even unintentionally, they were using something that does not belong to them.

lolwut

And what the hell? It's Scotland! Idiot court.

These judges should be fired. They are either corrupt or too stupid to be deserving their positions.

 

[Mise]

If they're selling a product called "McCurry" or "McMunchies", then I think that's different, because that really could cause confusion between McDonalds existing products (e.g. McChicken Sandwich, McNuggets, McMuffin, McFlurry...). However, to confuse a random restaurant which happens to be called McSomethingorother with McDonalds is pretty far fetched.

Moreover, none of those legal cases, to me at least, represented attempts to "rip off" the McDonalds brand.

BTW:

There are "Tennessee Fried Chicken" rip offs all over the country.

 

[Rossiya]

You're damaging the Turkish diasporatic economy!

 

[Phlegmak]

McDonald's claim to the Mc name is a bit excessive at times.

But it's possible McCurry wouldn't have had as much of a problem had they chosen different colors.

The signs look the same. That, plus the use of the Mc makes it look to me that McCurry is indeed trying to infringe on McDonalds.

 

[Godwynn]

But in a statement to Mrs. Blair's solicitors, McDonald's said if someone used the Mc prefix, even unintentionally, they were using something that does not belong to them[7].

I guess they could sue half of the people in Ireland.

 

[aelf]

The signs look the same. That, plus the use of the Mc makes it look to me that McCurry is indeed trying to infringe on McDonalds.

Infringe on what exactly?

 

[Dachs]

You're damaging the Turkish diasporatic economy!

One little baby step at a time.