If you responded: ‘McCurry’ then you are in full agreement with the owners of that business. Apparently, the proprietors preferred McCurry, which is meant to be short for Malaysian Chicken Curry Restaurant… McDonalds, by contrast, considered that the use of “Mc” was likely to cause confusion by evoking “McDonalds” in the mind of consumers. This week, after pursuing its claim for eight years in Malaysia, McDonalds failed in its final attempt to overturn an earlier, adverse decision.
McDonalds’ pursuit of its perceived rights, even if unsuccessful, highlights how the pursuit of legal action can be a powerful deterrent to imitators. True it is, McCurry has contested this particular matter with vigour. It is also hard to see how the use of a “Mc” prefix for a “family owned restaurant which serves up Malaysia favourites like tandoori chicken and fish masala” (the Age, September 8, 2009) could cause people to wonder whether the original source is, in fact, McDonalds. After all, the premise of McDonalds’ restaurants stems from its ability to provide a consistent menu (mainly of the hamburger variety) around the world.
The outcome of this decision has been publicised globally. Some might say that the floodgates will now open, and everyone (at least in Malaysia) will use the “Mc” prefix in future business activities. Against this, if a marketing team has three potential brand names on the table, and one of them involves a “Mc” prefix, why select that option and wear the commercial risk of a potential law suit? This separation of legal and commercial risk is a reason why it is sensible to request, when seeking legal advice about use of a potential brand name:
- a “strict legal assessment” of the ultimate outcome; and
- a risk analysis of the practical likelihood of receiving a demand and/or legal action.
The answer to these two questions might well differ, and impact your approach.