The General Court of the European Union has ruled in case T‑428/18 McDreams Hotel GmbH v EUIPO.

It concerns an attempt for registration of the following European trademark in class 43:

Against this application, McDONALD’S filed an opposition based on 16 earlier trademarks such as McDONALD’S, Mc, McCOUNTRY, McCAFE, McFAMILY for 29, 30, 43. In addition trademarks with reputation were claimed.

The EUIPO initially dismissed the opposition stating that both signs are not enough similar and what’s more the claimed reputation didn’t cover the restaurant’s and hotels’ services in class 43.

The Board of Appeal annulled this decision accepting that the later and the earlier signs are similar up to a point and that MC DEARMS can be perceived by the consumers as a part of the McDONALD’S family of trademarks that have established reputation in the EU for many years.

The General Court upheld this position. According to the court, the signs are similar enough both from a phonetic and visual point of view. They start with the MC abbreviation and their second words DONALD’S and DREAMS start with D and ending with S. Apart from this the colors in the later mark are similar to those used by the US company.

The Court considers that there is a link between the services offered by McDONALD’S and these in class 43 because of which the reputation of the earlier marks has to be taken into consideration as an important argument for possible consumer confusion.