Risk of confusion between "Mc Donalds" and "Mäc Spice"?

Is there a risk of confusion between the mark "Mäc Spice" and the trademark "Mc Donalds"? The fast food chain has now had this trademark law question decided by the Federal Patent Court (Bundespatentgericht), after the German Patent and Trade Mark Office had rejected a risk of confusion between the marks.

Mc Donalds opposed the registration of the mark "Mäc Spice" in opposition proceedings. The sign was to be registered for the following goods and services:

Class 3:

Perfumery, essential oils, body and beauty care products, hair lotions;

Class 4:

Technical oils and fats;

Class 30:

Vinegar, sauces (seasonings); spices

The DPMA rejected the opposition against the mark registration on the grounds that there was no risk of confusion.

The fast food chain, which has registered the mark "Mc Donalds" inter alia in Class 30 for various food products, subsequently brought an action before the Federal Patent Court (Bundespatentgericht). According to the Americans, the mark element "Mc" constitutes a series mark which the chain uses in many products in various combinations. Accordingly, there was a risk of confusion.

Court Decision

By decision of 15.04.2015 – Az. 24 W (pat) 39/13 – the Federal Patent Court (Bundespatentgericht) decided in the course of appeal proceedings against the previous decision of the DPMA that the marks "Mäc Spice" and "Mc Donalds" were confusingly similar for the identical goods in Class 30, and therefore ordered the deletion of the mark "Mäc Spice" for those goods.

An indirect risk of confusion arises in the case of series marks when the holder of the earlier mark has already used the corresponding parent element as a component of several of its own series marks formed accordingly. This indirect risk of confusion arose here from the phonetic similarity of the parent element "Mc" and the attacked mark "Mäc". There is a danger that the attacked mark, when called by its name in trade, would be mentally associated as a further sign of the existing earlier series mark.

Conclusion

For marks in which a specific element such as "Mc" is used in various combinations, trademark protection extends beyond the normal measure. Therefore, particular care should be exercised when using such elements in order to avoid trademark disputes.