Yes it’s another fight over a “Mc” starting brand name, but this time the underdog (no reference to the menu intended) won the day.
Who: McDonald’s Corporation and Frank Yu Kworporation and Frank Yu Kwan Yuen
Where: Chancery Division of the High Court, London
When: November 2001
In 1967 Frank Yen emigrated from China and settled in Wimbledon, where, at the start of the nineties, he opened his first restaurants under the names McChina Stir Fried and McChina Wok Away. In 1992 he applied to register “McChina” as a trade mark in the UK in respect of Chinese style food and restaurant services. McDonald’s Corporation opposed the registration. They argued that Mr Yuen’s use of the mark McChina would cause confusion and deception They also produced survey evidence suggesting a third of those exposed to the “McChina” name would believe it was linked to the famous US organisation. On appeal, the Chancery judge rejected McDonald’s opposition and allowed Mr Yuen’s application to go forward to registration. The survey evidence was flawed the judge said, and there was sufficient difference between the second syllables of McDonald’s and McChina to persuade the judge that there was no real risk of confusion or deception.
Why this matters:
In the course of his judgment, Neuberger J commented that the US claimant seemed intent on monopolising all food or restaurant service brands starting with “Mc” or “Mac.” His ultimate verdict shows that the differences between the two brand names, looked at as a whole, had to make it difficult for McDonald’s to make their case stick. As for the survey evidence, this is only the latest in a long line of cases in which UK judges have shown their natural disinclination to rely on third hand evidence of this kind.