McDonald’s: Better at Home than on the Road

by Vault Law Editors | September 17, 2009

  • My Vault

No fan of C.C. Colton, McDonald’s has notoriously dispatched attorneys to all corners of the earth to answer perceived affronts to its multifaceted branding efforts. The cholesterol king’s most recent international foray into trademark protection ended unfavorably two weeks ago: Malaysia’s highest court ruled that McDonald’s had no right to demand a Kuala Lumpur eatery change its name, slamming the door on an eight-year tussle over the moniker and branding of Restoran (ahem) McCurry. Overturning a lower court’s ruling, the three-member panel dismissed McDonald’s infringement suit on the grounds that there’s no danger any customer worth two shakes of sodium silicoaluminate would wander into McCurry with dreams of a Royale with Cheese—the place specializes in such local and south Indian delicacies as fish head curry (and furthermore, amply-acronymed co-owner A.M.S.P. Suppiah explained that the ‘McCurry’ title is a tribute to top menu item ‘Malaysian chicken curry’). McDonald’s, which operates 137 locations in Malaysia alone, will have to reimburse McCurry’s owners for around $2,900 in legal costs, while Suppiah and Co. are busy entertaining partnership and franchising proposals from around the globe.

This is, of course, but the latest development in McDee’s decades-long assault on any business bearing a name or brand identity similar to its own. In the mid-1990s, however, the corporation took aim on a South African entity that bore a smidge more than a passing resemblance: A South African fast-food tycoon announced plans in 1993 to open a string unauthorized McDonald’s outlets, replete with ubiquitous golden arches and Big Macs galore. George Sombonos, chief of Joburgers Drive-Inn Restaurant Limited, attempted to head off the expected legal onslaught—the ‘real’ McDonald’s had registered those and other definitive trademarks in the nation decades earlier but hadn’t actually opened shop under the apartheid regime—by simultaneously petitioning the government to nullify those trademarks and applying to register the same as Joburgers’ own. McDonald’s, as you’d expect, vigorously challenged Sombonos’ contention that it was not a widely-known brand in the impoverished nation. A long string of thrust-and-parry brought the case before the Supreme Court of South Africa, which ruled against Joburgers in 1996, leaning heavily on McDonald’s-commissioned market research that gauged its brand awareness among South Africa’s bourgeoisie. In reference to two studies that reflected a strong recognition of the McDonald’s brand and its cadre of marketing campaigns among affluent white suburbanites, the Court concluded that “it is reasonable to suppose that much the same results would be achieved elsewhere among persons of all races who have a similar financial and social background” (read: white people). Betraying South Africa’s notorious racial inequalities of the time—deep divisions that endure to this day—the Court went on to assert that “by the same token, people who are poor, do not travel abroad, do not read foreign publications or, possibly do not read at all, and are not exposed to television, are likely not to have heard of McDonald's or its marks. It is accordingly not surprising that market surveys commissioned by Joburgers showed a low awareness of McDonald's and its marks among black persons generally.” That assessment proved inconsequential, however, since “extremely poor people are not likely to patronize McDonald’s establishments.” Therefore, the ruling concluded, as “a substantial portion” of potential McDonald’s customers would identify the company by name or image, Joburgers’ intended use of the trademarks was certain to cause “deception or confusion.”

To recap: South Africa’s rich minority recognizes McDonald’s brand. Rich minority represents potential customer base. Poor majority doesn’t recognize McDonald's brand. Poor majority can’t afford Big Macs. Poor majority ruled inconsequential. Original trademarks stand, Joburgers pays legal fees.

There have been a smattering of similar squabbles in the years since: London’s McChina Wok Away and a Singaporean purveyor of “MacNoodles” and “MacChocolate” swatted back suits in 2001 and 2006, respectively (as in the McCurry case, the courts rejected McDee’s argument that it essentially held sway over all food-related copyrights using a “Mc” or “Mac” prefix). A Filipino company lost a 16-year-defense of its right to slang the “Big Mak” burger in 2004, while closer to home, a Seattle-area man continues to resist the burger-maker’s demands that he rethink his 2003 decision to trademark McSweet Pickled Cocktail Onions (via Seattle Trademark Lawyer). As for the less orthodox, an attorney from helped a commercial artist who reportedly redesigned such characters as the Hamburglar sue the U.K. subsidiary of McDonald’s in 2002 for allegedly using the artist’s work without authorization. The artist, who freelanced for McDonald’s from 1986 through 2000, accused the company of violating his copyrights by reproducing his images without permission in the United States and England. The case’s media trail went dry in November 2002 as intellectual property partner Robert Barry attempted to collect more than £1 million for his client (Barry apparently left A&O for WilmerHale sometime thereafter and is now among those lacking employment). 

And finally (finally!), there’s the curious case of the Golden Arches: McDonald’s, following the by-now-familiar pattern, sued a closelyidentically-named crosstown eatery (‘McDonald’s’) that served a wholly noncompetitive class of food (curried goat and jerk chicken) in a developing country (Jamaica) in 1995. This time, however, the defendant countersued, and a Jamaican court reportedly ordered the American McDonald’s—which had just opened its first outlet on the island—to go by the name “Golden Arches” for five months.

That’s a wrap, folks—I’m off to grab an officially-sanctioned McMuffin© on Canal Street among the trunks of $20 Rolexes, Gucci glasses and Vuitton handbags.

- posted by ben fuchs

Filed Under: Law

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