McDonald's wins and loses

McDonald's opposed the trademark MCBERG for clothing et al. in class 25, for services for education, entertainment et al. and in class 41 and for providing food and drinks, provision of accommodation in class 43. Likewise it opposed four other trademarks McMountain, McTyrol, McTirol (figurative) and McTirol (word) registered for the same goods and services. The opposition was based on several registered trademarks namely Mc (figurative), Ronald McDonals, McDonald's, Ronald McDonald Playland, McBurger, MacSki (figurative) and McKids. The first five trademarks are registered in class 41 and 42 (among others), the last one only in class 25. All oppositions were totally rejected by the second instance but the Austrian Supreme Court upheld the opposition for the provision of food and drinks and rejected it for all the other goods and services. It held that the second instance was right in denying danger of direct confusion for all trademarks. Direct confusion is present if a confusion between the signs itself exists that means that the consumers think that the attacked trademark is (essentially) the same as the older trademark. Due to the very different second part of the trademarks this will, however, not be the case. Therefore, here the question is essentially whether indirect confusion under the aspect of a series of marks is present. Indirect confusion is a wrong association of the public in the sense that due to a common basic part of the colliding trademarks for the products of the trademark owner they are part of a family of marks of the opponent for similar goods. In oppositions actual use of the opposed trademark is irrelevant. It is only of relevance what is contained in the list of goods and services and confusion has to be judged on the basis of whether confusion is likely when the trademark is later on used for these goods and services. The stem sign MC/Mc in the trademarks MCDONALDS, McBURGER and McKIDS is essentially identical to the stem sign in MCBERG, MCTIROL, etc. and does not lose - if known - its independence in the combination with other words whether weak or strong. It will be seen by the public in connection with the provision of food and drinks as a stem indicating origin of the opponent because of the many marks in this family and their famously wide use of these goods. In view of that fact it is of no relevance that the second part of the opposed trademarks does not convey a meaning connected with food and drinks. Therefore, for these services in class 43 there exists a danger of indirect confusion. This is different for all other goods and services. For these it is not notorious that the public assumes the letters MC/Mc as a stem indicating origin of the opponent. Rather these letters will for other goods and services not be seen as independent from the rest of the mark of the combined sign. Therefore, to this extent indirect confusion does not exist. An argument based on a family of marks is therefore only likely to succeed for those goods and services for which these marks have been extensively used.