On 5 July 2016 the Supreme Court of Lithuania has adopted the final decision in the long lasting Lithuanian dispute over the trademarks’ confusing similarity. The court ruled that a combined mark „MacCoffee, owned by the applicant – the company “Future Enterprises Pte Ltd”, composed of verbal and figurative elements, and the word mark „McCafe“, owned by the defendant – the company “McDonald’s International Property Company, Ltd”, are not confusingly similar.
While assessing the similarity between the two marks and a possible likelihood of confusion, the court stated that namely the graphic signs are the dominant element in the combined trademark, while the weak ones in the both marks are the words “Coffee” and “Café”.
The court also pointed out that one of the trademark’s formant „Mc“ is registered as a separate trademark owned by “McDonald‘s International Property Company, Ltd“ and for its use, distribution, availability and the strong reputation should be regarded as a strong element of the defendant‘s trademark. Nevertheless, as stated by the Supreme Court of Lithuania, according to the data of the European Union Intellectual Property Office, the “Mc” is being used in the other trademarks that belong to other persons or legal entities. Therefore, this part of the trademark (“Mc”) that coincidence with the part of trademark being compared (“Mac”) and the possible association with the defendant’s company, as well as the other weak similarities of the trademarks do not justify the confusing similarity between the compared trademarks.
As can be seen from the analyzed decision, “McDonald’s International Property Company, Ltd” – the world-famous company with a strong reputation has failed to protect its trademark „McCafe“. What is more, according to the ruled decision of the Supreme Court, it can be stated that the use of the trademark „Mc“ owned by “McDonald’s International Property Company Ltd’s” or the use of the similar trademark cannot always constitute a ground to qualify it as an infringement of rights of the trademark.