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InsiderTAPS (15 October 2006)

Insider TAPS Issue 008 - McCurry vs McDonald's - battle of the clans in Malaysia

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On 7th September 2006, the High Court ordered a Malaysian Indian food outlet, McCurry Restaurant (KL) Sdn Bhd, to cease its use of the prefix “Mc” and the use of similar colours in its signage as that of McDonald’s Corporation’s. The Court had also made an order awarding damages to be assessed.

The ruling was the result of a five-year legal battle between the US fast food giant and McCurry Restaurant (KL) Sdn Bhd, which is a local Indian restaurant serving spicy fish-head curries, tandoori chicken and other Indian delicacies at Jalan Ipoh, Kuala Lumpur.

The Court ruled that by using the prefix “Mc” in its name and by employing a signage which featured the colours red and yellow which are associated with and distinctive of the McDonald’s brand, McCurry was indulging in acts that could give rise to confusion and deception and had thus committed the tort of passing off against the plaintiff, McDonald’s. The Court further ruled that the acts of the defendant were a deliberate attempt to get an unfair advantage to the detriment of the plaintiff and the plaintiff had suffered damage to their goodwill and reputation. The Court also recognised the concept of erosion to the goodwill and reputation that McDonald’s had singularly enjoyed in respect of the “Mc” trade mark.

McCurry in its defense claimed that the name was in fact an abbreviation of “Malaysian Chicken Curry” and that its trade mark was different as it consist of a smiling chicken depicted inside a circle with the words “Malaysian Chicken Curry”. It also contended that its Indian and Malaysian fare was distinctly different from McDonald’s western menu and thus there was no likelihood of confusion or deception. Lastly, it contended that McDonald’s does not have the exclusive rights to the prefix “Mc” and pointed to its use in surnames, including Scottish ones.

Apparently, McCurry’s flavour of defence did not appeal to the Court. McCurry has indicated that it would appeal against the decision.