As local businesses start and expand, the big global giants strike a blow on them to restrict their operations and try to establish their monopoly over such business activities. The same has happened with the snack company called McPatel from Gujarat, famous for its French fries brand called “Oh Potato!” McDonald’s, recognised globally for their burgers and fries, has claimed a monopoly over the prefix “Mc.”
Genesis of Dispute
McDonald’s, on August 27, 2024, challenged the application before the Indian Trademarks Registry filed by the Indian snack maker, McPatel, to get the brand name McPatel registered under Class 30, which covers food and beverage products.
Arguments by McDonald’s
McDonald’s alleges that the registration of “McPatel” contravenes Sections 9(2)(a), 11(1)(a) & (b), 11(2), and 11(3) of the Trademarks Act, 1999.
In its opposition notice, McDonald’s claimed that the adoption of the mark “McPatel” by the Indian snack maker is conducted in bad faith and to take undue advantage of the giant’s goodwill, and hence the mark is more likely to cause confusion and deception in the minds of the consumer and would also lead to the trademark dilution of McDonald’s. In more than 100 countries McDonald’s trademark is registered, and it has been protected against the third-party use of “Mc” (a formative mark), which has obtained distinctiveness by its long and extensive usage since the year 1996 in India and since the 1970s all over the world. McDonald’s alleges that “McPatel” is deceptively similar to the set of “Mc” and “Mac” trademarks of McDonald’s, which includes McVeggie, McFlurry, McChicken, and many more.
Arguments by McPatel
McPatel on October 29, 2024, challenged all the grounds of opposition by McDonald’s and submitted in its counter-statement that their mark is conceptually, visually, and phonetically from the McDonald’s mark. Since the company is a legally incorporated entity as well as a registered MSME, functioning in the frozen French fries and processed food sector, while registering, the registrar did not find conflicting marks at its examination stage, and as a result, the application was accepted and advertised. Moreover, there is no actual evidence of consumer deceptiveness and confusion in the mind. It also alleged that the prefix “Mc” is a linguistic word, denoting “son of Patel, used by the Patel community as well as other influential communities of Gujarat, and hence McDonald’s cannot claim a monopoly over it.
Behind the Courtroom Drama
Primarily, an attempt was made by McDonald’s to settle the matter out of court, and accordingly, mediation was initiated in the Delhi High Court, asking McPatel to drop the prefix “Mc.” McPatel refused such a demand, which resulted in the failed mediation, and filed a case under Section 142 of the Trademark Act, 1999, in the Ahmedabad rural court.
Shaping Tomorrow
Provided that McDonald’s prevails, it will jeopardise the functioning of the small companies and pose a threat to the establishment. It will also give leeway to other big giants to exploit the startups and allow them to claim ownership and create a monopoly.
This conflict is more about globalisation and local identity, as it can influence upcoming business as well as the branding of the companies.
Authored By: Ms. Suhani Gandhi
Ms. Suhani Gandhi is a 5th-year law student at NMIMS, Bangalore. She has a keen interest in IPR Laws, Media Laws, Technology Laws, and Competition Laws. She is always eager to learn and acquire new skills. Apart from this, she loves her coffee and enjoys good music.
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