Recently, the local media has reported that the High Court of Malaya has ordered McCurry Restaurant (KL) Sdn Bhd to immediately stop using the prefix “Mc” in its business name.
The 24-hour open-air restaurant serves spicy fish-head curries, tandoori chicken and other Indian delicacies on a street corner in the capital, under a large “McCurry” sign.
The Honourable Justice Siti Mariah Ahmad also ordered that damages to be paid to McDonald’s Corporation to be assessed.
Yang Arif (Malay term for The Honourable), in the verbal judgement (I cant wait for the written judgement to be published!) ruled that “Mc” was distinctive of McDonald’s either singularly or used in conjunction with items of food and it could therefore claim goodwill and reputation in its business in reference to the prefix. Yang Arif further held that “The defendant’s use of the word McCurry and employing signage featuring colours distinctive of the plaintiff’s was indulging in acts that could rise to confusion and deception”.
Yang Arif held that the acts of the defendant were a deliberate attempt to get an unfair advantage to the detriment of the plaintiff and as a consequence of McCurry’s usage of the word “Mc”, “The plaintiff had suffered damage to their goodwill and reputation and an erosion to the singularity that they had enjoyed vis-a-vis the “Mc” trademark.
In McCurry defence, it was stated that it was not aware that McDonald’s was the proprietor and operator of the world-renowned chain of restaurants and that “McCurry” was just an abbreviation for “Malaysian Chicken Curry”.
This case was heavily publicized in many countries such as the United Kingdom, China and Japan. This case clearly serves as a warning to everyone on the risk of using any signs, marks and even colour schemes that are closely connected to McDonald.
To me, the case was decided fairly although it creates an impression that any traders using the word “Mc” would get into trouble. Also, as some may know, McCurry is an ancient Scottish surname.
In this case, in my humble opinion, if McCurry had the word “McCurry” in a different stylized mark and adopted another colour scheme, McDonalds would not have a strong case.
When choosing a company name or a trade mark or even a get-up (e.g. packaging), it is always best to create something distinctive. The ultimate aim of a trade mark or get up is to distinguish your goods or services from other traders.
Using common elements that are connected or associated to the specification of goods and/or services on your mark would create many problems as these elements are widely used by others. For example, using the mark “The Cake” on your bakery products. You may not be able to stop others from using the words “The Cake”.
Further, if you use a mark or name which is identical or confusingly similar with another trade mark, be prepared to receive a letter from a lawyer and thereafter be embroiled in an expensive legal battle.
19 thoughts on “McDonalds v McCurry”
cl: what about the shoe shop leh? if they get to know of your site, and coincidentally they opened before your site started, could they sue you?
eletronicfly:i doubt so they could sue me cause i am not doing any business and also i’m not selling shoes 😛 also, i’m sure they are aware of this website 😀
heavily publicized in other country?
feel so proud to be a malaysian in a sudden
Hidup Malaysia! Malaysia Boleh.
go to hell with malaysian law la. cipet gosok kasut big corporation. i ask everyone this; say someone has been given the name, for example, McLeong by his father since birth, and McLeong decides to open a food chain using his name, would that be wrong?. take note that McLeong is his real name and i think he has the right to use his own name for his business.
wah didn’t know this case went overseas leh
that McCurry in Ipoh Road ???? Then there are so many McXXXX in the market that Golden Arches need to sue. Is it only in Malaysia thats happening?
(hire a graphic designer today! :D)
For my opinion, McCurry is copying McD’s colour…. Hey common sense! Who don”t know Mc Donalds in Malaysia? And they dare to say they are not aware of it? Are you sure? That is a big lie! McCurry should change their color scheme or maybe they should change the word!
This is a simple case here. Look at their chicken logo> It even looks like one of the other logos u see from one of the Chinese vendor which have a chain..can’t remember the name of the company. The chicken wearing boxing glove one…
karheng: the daging salai shop Ngo Loi Ya.
wait, so they used the term and mark as a TM? a bit duh, right… i mean, i think if they used only the term “McCurry” with another mark, they have gotten away with it. chey, like i so terror like that. bWaHahaha~
If your name is McLeong – you cannot be sued for using it in business, whether food or otherwise. Personal names are exempt from Trademark and passing-off laws. That’s how it works in most common law countries anyway, so there’s no reason to think this is not the case in Malaysia.
The same applies should a Mr McCurry opens a restaurant.
If the prefix ‘Mc’ was used for any other type of business/industry, there should be no problem. The law of passing off is generally confined only to similar types of goods (though there are exceptions) So you could have a McShoe Sdn Bhd selling shoes without risk of being sued.
MrCormick©® selling peppers, spices used for your steaks??
what about MChammer? we call it as machammer or M-C-h-a-m-m-e-r heh?
khoo: well said! i presume you’re a lawyer as well 😀
Lainie: heh yeah!
endroo: mcD sue because mccurry did more than selling under the name of McCurry. they went to the extend of copying McD’s colour scheme.
yvonne: yup thats correct!
darren&cnigel: yup! a boose to our malaysian judiciary!
but that only make sense. Curry is red/orange/yellow coloured.
Btw, anyone came across HSBC ? Not the bank. HSBC (Hot & Spicy Bangsar Cuisine) Restaurant??
endroo: the case was decided based on the totality of the facts not solely because of the colour scheme and/or the word Mc. I heard about the HSBC case, i wonder what happen to it.
xes: Not a lawyer yet, but a law student in my final semester. 🙂
khoo: im sure you will do well when you practice 😀