The Court of Appeal has unanimously upheld an appeal by McCurry Restaurant (KL), allowing McCurry to use the prefix Mc in the name of its restaurant. In this case, McDonald's Corporation's claim against McCurry at the High Court was premised on the fact that McCurry is liable for passing-off for using the prefix Mc in its name.
In overturning the decision of the High Court, the Court of Appeal disagreed with the finding that McDonald's owns the goodwill and reputation in the prefix Mc.
The Court of Appeal noted that there were distinguishing features between McCurry and McDonald's in the conduct of their trade and also, differences in the representation of the marks. McDonald's is in the business of selling fast food whereas McCurry's scope of business lies in Malaysian and Indian food. Further, items sold in McDonald's contain the prefix Mc, while items sold in McCurry do not.
Justice Sri Ram, who delivered the judgment of the Court of Appeal, said that the learned Judge of the High Court who ruled in favour of McDonald's had overlooked these facts, which resulted in a miscarriage of justice.
During proceedings at the High Court, several facts were noted and agreed on by both parties. The restaurants of McCurry and McDonald's were based on a fast food concept although food items are very different. It was also conceded by McCurry that McDonald's had ownership, reputation and goodwill to the Mc mark, gained from extensive and constant use of the prefix by McDonald's in promoting its products, as well as being used as a source identifier of the company's products in Malaysia and worldwide. To come to his decision, the learned Judge had relied on the agreed facts as well as witness evidence provided by thirteen witnesses, and concluded that McDonald's owned the goodwill and reputation in the prefix Mc.
When the Court of Appeal's judgment on this case is released, we will be able to clarify the reasons for the differences in opinion between the High Court and the Court of Appeal. Meanwhile, it is unknown whether McDonald's will use its option to appeal to the Federal Court.
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