McDonald's Ukraine has since early September waged a legal war against Future Enterprises, owner of the MacCoffee products popular in Ukraine, with the fast food titan claiming that the MacCandy and MacTea brands violate its trademark.
Srdjan Krumpak, deputy general director of McDonald’s Ukraine, said his company is concerned that consumers could confuse the MacCoffee brands with McDonald’s own.
“Trademarks that are similar to those already registered in Ukraine cannot be registered under another name,” he said. “We are concerned that people may confuse these brands with trademarks already registered by McDonald’s.”
McDonald’s trademarks were first registered in the Soviet Union in 1977 and 1978, and then reregistered in Ukraine in 1994, he said.
“McDonald’s has to protect its meaning. Our brand promises quality, irreproachable service, cleanliness, value and the unique McDonald’s experience,” Krumpak said.
MacCandy has been sold on the Ukrainian market for the last three years. Both MacCandy and MacTea are legally registered trademarks in Ukraine, certified in the country by the State Department for Intellectual Property Rights. MacCandy was registered in Ukraine in 1997 and MacTea in 1998.
Pranab Singha, general manager of Singapore-based Future Enterprises, said he was surprised by McDonald’s move to file suit.
“Initially, we didn’t take it seriously. But after further consideration, we decided not to let anyone take us easily – not in Ukraine, where MacCoffee is an established brand,” he said.
Singha said there are 50 brands registered in Ukraine and about 80 brands worldwide that use the prefixes Mac and Mc, which weakens McDonald’s claim to a right to exclusivity.
Ruslan Israpilov, legal adviser for Future Enterprises, said that a court-appointed team of independent state experts would decide whether or not Future Enterprises violated the restaurant giant’s brand rights.
Kyiv-based Doubinsky & Osharova patent and law agency is representing McDonald’s Ukraine. The city’s Pakharenko & Partners legal agency is defending the MacCoffee trademark.
“When we first analyzed the issue, because the claim was not against our number one brand, MacCoffee, but against our less popular brands, we considered that this could have been McDonald’s first step in claiming our more popular brands,” Singha said.
In two other countries, McDonald’s has taken Future Enterprises to court over the use of its MacCoffee trademark.
“There were two suits, in Singapore and Latvia, which were almost similar” to what the company is facing in Ukraine, Singha said.
“The Administrative Council of the Latvian State Department for Intellectual Property Rights ruled that McDonald’s claims were pointless,” he added.
The Latvia decision was made in 2002, the Singapore claim in 2003.
McDonald’s Ukraine declined to comment on these rulings.
Future Enterprises and McDonald’s Russia have also been involved in a legal battle over trademarks. In 2001, McDonald’s attempted to register the McCafe brand in Russia, hoping to open a chain of McCafe coffee shops.
In July 2003, the Moscow office of Future Enterprises filed a petition with the Russian Agency on Patents and Trademarks to terminate the company’s application to register the McCafe brand, Israpilov said.
Future Enterprises denied any connection between the case in Russia and the current dispute in Ukraine. McDonald’s Ukraine declined to comment on the case.
Israpilov said that “for ordinary customers, Future Enterprises’ MacCoffee and McDonald’s McCafe look very similar. Ordinary people could be misled by McDonald’s trademark.”
Israpilov said a decision regarding the McCafe trademark in Russia is expected by the end of November.
McDonald’s entered Ukraine in 1997, and has invested more than $82 million in the country.
Future Enterprises, an international holding listed on Singapore’s International Stock Exchange, produces more than 40 products under the MacCoffee brand in Singapore, Thailand and Malaysia, and began importing the products to Ukraine in 1997.
According to Singha, Future Enterprises has over 17 million consumers of MacCoffee brands in Ukraine, but he declined to provide information on their investments in the country.
“We’ll do the best we can to ensure that no one ever tries to play with the MacCoffee name,” he said.
