(By Zoey Zeffrey Azman)
WHAT IS A TRADE MARK?
A trade mark is a sign which distinguishes the goods and services of one trader from those of another. A mark includes words, logos, pictures, names, letters, numbers or a combination of these. A trade mark is used as a marketing tool to enable customers in recognizing the product of a particular trader.
INTRODUCTION
During one of the classes, our instructor, En Azlan Syazani Adanan, thought us the importance of trademarks. The functions of the trademark are as the following:
• Origin Function - A trade mark helps to identify the source and those responsible for the products and services sold in the market.
• Choice Function - A trade mark enables consumers to choose goods and services with ease while shopping.
• Quality Function - Consumers choose a particular trade mark for its known quality.
• Marketing Function - Trademarks play an important role in advertising. Its normal for consumers to make purchases based on continuous influence of advertising.
• Economic Function - Established trade mark is a valuable asset. Trade marks may be licensed or franchised.
In one of the slide shows before the class, we have been told one of the landmark case, “McCurry v. McDonald’s”.
FACTS OF THE CASE
McDonald’s is a global franchise of hamburger fast-food restaurants. The prefix of “Mc” is used in conjunction with other words to name the various foods available at all of the company’s restaurants, such as “McChicken”, “McNuggets”, and “McMuffin”.
Whereas McCurry Restaurant is one restaurant along Jalan Ipoh, KL, selling Indian and Malaysian food. Its restaurant signboard carries the words “Restoran McCurry”, with the lettering in white and grey on a red background with a picture of a chicken giving a double thumbs-up and the words “Malaysian Chicken Curry.”
GROUND OF ACTION
McDonald’s claimed that the “Mc” prefix was distinctive to McDonald’s alone, both in Malaysia and around the world, in conjunction with the food, beverage and restaurant business. McDonald’s contended that McCurry Restaurant was misrepresenting and deceiving the public into the false belief that there exists an association and connection between the two restaurants. Further, McCurry Restaurant had created an instrument of deception for others to commit passing-off, misuse and abuse of McDonald’s distinctive “Mc” prefix, which would cause damage and harm to the goodwill, reputation and commercial advantage acquired by McDonald’s in the course of its trade.
On the other hand, McCurry Restaurant did not agree with McDonald’s claim. McDonald’s does not have monopoly over the use of the word “McCurry” and denied that McDonald’s has any exclusive right to the “Mc” prefix. The name “McCurry” was created based on the abbreviation of “Malaysian Chicken” and “Curry”. McCurry Restaurant contended that its business and range of food and drinks are totally distinct from that sold by McDonald’s, selling typical Malaysian and Indian food such as fish head curry, briyani rice, roti canai, nasi lemak and teh tarik while McDonald’s sells burgers, fries, shakes, pies, etc. Thus, McCurry Restaurant denied that its business style and the get up of its restaurant causes confusion and deception in the minds of the public, and that it did not amount to passing-off, either in the traditional or extended sense. McCurry restaurant further argued that there was no evidence that proved passing-off.
THE COURT’S DECISION
• McCurry’s presentation of business was in a style and get-up distinctively different from that of McDonald’s.
• McDonald’s get-up consisted of a distinctive golden arched “M” with the word “McDonald’s” against a red background whereas McCurry’s signboard carried the words “Restoran McCurry” with the lettering in white and grey on a red background with a picture of a chicken giving a double thumbs-up and the wordings “Malaysian Chicken Curry”.
• The items of food available at McDonald’s outlets all carried the prefix “Mc” whilst none of the items served at McCurry’s outlets carried the prefix as shows from McCurry’s menu card.
• The type of food available at McDonald’s outlets too differed from that of McCurry’s. McCurry’s served only typical Indian food while McDonald’s served fast food.
• The type of customers who come to McCurry’s outlets was very different from those who come to McDonald’s outlets. McCurry’s were mainly adults and senior citizens while McDonald’s were children.
• The fact that McCurry chose the name “McCurry” could not by itself lead to the inference that it sought to obtain an unfair advantage from the usage of the prefix “Mc”. It would have been different if McCurry had offered its customers items labeled either the same or similar to those sold by McDonald’s.
CONCLUSION
McDonald’s does not have a monopoly on the prefix “Mc”, and that other restaurants could also use it as long as they distinguish their food from McDonald’s. McDonald’s cannot claim an exclusive right to the “Mc” prefix in the country.
REFERENCE(S)
1. http://www.myipo.gov.my/web/guest/cap-dagangan
2. http://www.loyarburok.com/2010/02/03/a-comment-on-mcdonald-losing-its-trademark-battle-against-mccurry/
3. Current Law Journal [2009] 3 CLJ pg 540
4. Materials from RekaCipta instructor, En Azlan Syazani Adanan
5. My father, Azman Mohamed of Messrs. Azam Idzham Azman & Partners
