September 28, 2017

The relevance of “family” trade marks comes into play when carrying out a global assessment of the likelihood of confusion between the marks at issue. The proprietor of a family of trade marks may seek to argue that the public will link the contested mark with its family of trade marks, such that the contested mark should be invalidated.

The concept of a family of trade marks is not new – the 2007 General Court decision in Il Ponte Finanziaria SpA v OHIM (Case C-234/06P) confirmed that a mark’s membership of a “family” of registered marks (i.e. which all contain a common element) might enhance its distinctiveness, provided that a sufficient number of marks has been used.

The EUIPO’s Guidelines for Examination state that when an opposition to an EUTM application is based on several earlier marks, two cumulative conditions must be satisfied in order for them to be considered a “family” of marks:

1. The proprietor must submit proof of use of at least three marks capable of constituting a series; and
2. The trade mark applied for must:
   • be similar to the marks belonging to the series; and
   • display characteristics capable of associating it with the series. Such association must lead the public to believe that the contested trade mark is also part of the series (i.e. that the goods/services could originate from the same or connected undertakings).

The Guidelines also confirm that it cannot be precluded that the “family” of marks doctrine may also include non-registered trade marks.

The recent General Court decision in Future Enterprises Pte Ltd v OHIM (Case T-518/13) provides further guidance. The case concerned the EUTM for MACCOFFEE, registered by a Singaporean company in respect of goods in Classes 29, 30 and 32 (including coffee). Unsurprisingly, McDonald’s sought a declaration of invalidity in respect of the mark on the basis that it would take unfair advantage of its earlier EUTMs for McDONALD’S and 12 other marks, including McMUFFIN, McFLURRY and CHICKEN McNUGGETS.

On appeal, the General Court considered whether the relevant public would establish a link between the marks in issue (the EUIPO Board of Appeal had said that it would). In making a global assessment, the Court confirmed that several marks possessing common characteristics make it possible for them to be regarded as part of a “family” when they reproduce the same distinctive element with the addition of a graphic or word element differentiating them from one another, or have the same prefix or suffix.

Confirming that such a family existed and that “Mc” was capable of characterising the existence of a family of marks, the Court pointed to evidence that the prefix “Mc”, combined with the name of a menu item or foodstuff, had acquired its own distinctive character in relation to fast food restaurant services and goods within the EU. The considerable reputation of the McDONALD’S trade mark extended to the characteristic elements of the “Mc” marks, without having to determine whether each of the marks constituting that family had a reputation.

The General Court concluded that, due to the link that the public would make between the MACCOFFEE mark and McDonald’s other marks, MACCOFFEE did take unfair advantage of the McDONALD’S trade mark and the declaration of invalidity was upheld.

The case confirms that a mark’s membership of a family of trade marks can help strengthen an infringement claim by enhancing its distinctiveness and therefore increasing the likelihood of confusion.