McDonald's loses trademark battle in Malaysia

Court says McCurry restaurant gets to keep its name

When it comes to its famous trademarks, McDonald's Corp. is known for McFightin'. But it came up a loser Wednesday in Malaysia, where a court ruled that an Indian restaurant can keep the name McCurry.

The case highlights a never-ending battle for big consumer-products companies: staving off alleged attempts to hijack their marquee brands.

"When you get a [trade] mark like McDonald's or Coca-Cola or 7-Eleven, it's a constant policing effort," said Craig Fochler, a trademark lawyer at Foley & Lardner in Chicago. And McDonald's has a "history of being very aggressive" when it believes someone is trespassing on its trademarks, he said.

The Oak Brook-based fast-food giant took offense at McCurry Restaurant, a Malaysian joint that maintains its name is an abbreviation for Malaysian Chicken Curry. McDonald's considers the "Mc" prefix to be its intellectual property.



The company long ago established that premise in the United States, successfully forcing two restaurant companies, McBagel's and the vegetarian McDharma's, to change their names.

When companies such as McDonald's wage trademark wars, they do so because they believe consumers are being confused by like-named entities, said Jeffery Handelman, a trademark attorney in Chicago with Brinks Hofer Gilson & Lione. They're also trying to protect their reputation in case similarly named firms have poor products.

But Malaysia's Appeal Court said Wednesday that McDonald's can't claim an exclusive right to the "Mc" prefix, overturning a 2006 court ruling. The Appeal Court ruled there was no proof that McCurry misrepresented itself to the public and confused consumers, Malaysia's New Straits Times reported. Besides, McCurry serves Indian food, the Appeal Court said.

In a statement, McDonald's said it was disappointed with the court's ruling, but declined to comment further because it has not seen the written decision.

Fochler said consumer-products giants such as McDonald's aren't always as successful in trademark infringement cases overseas as they are here. Still, the company has logged some substantial victories.

In the Philippines, it won a 16-year battle in 2004 to protect its Big Mac trademark when that country's Supreme Court ordered L.C. Big Mak Burger Inc. to change its name and fork over damages.

And then there are its famous golden arches. The company currently has a beef -- it hasn't yet morphed into a lawsuit -- against a strip club in Sweden for allegedly infringing on the arches.

McDragan's, as the club is known, has a sign featuring a red "M" that resembles the golden arches but also connotes a woman's breasts. McDonald's has asked the club's owner to remove it. McDonald's said the sign is not only an unauthorized use of the golden arches but also "distasteful" to boot.

Source: Chicago Tribune 30 April 2009