From Malaysia to the rest of the world, McDonald’s has zealously guarded its “Mc-” trademarks and Malaysia’s homegrown battles have been some that have gripped the attention of the local public. Nearly every foodie or restauranteur here knows about “that McCurry case” even though it has been more than 24 years since McDonald’s sued McCurry Restaurant (KL) in 2001 under the tort of passing off and 16 years since the appellate courts delivered that fateful blow against McD’s monopoly of the prefix in 2009.
Perhaps that case emboldened others but yet little did we know that at about that same time period, Big M was also dealing with another curry house in the same country. In 2003, B. Awtar Singh s/o Balwant Sing trading as Mc Spicy Curry House sought to register “MC CURRY” as a trademark for its various food-related products in Class 29 vide Application No. 03005153. Registration was initially allowed by the Registrar of Trademarks of MyIPO in 2007, interestingly with a disclaimer condition imposed on the letters “MC”. Despite such non-exclusive rights to use the prefix, this nonetheless still triggered a trademark opposition from McDonald’s in 2007, who argued that the use of the prefix “MC” in “MC CURRY” would likely cause confusion or deception among consumers, given McDonald’s longstanding use of “Mc/Mac” as part of its global brand identity. The opponent contended that “Mc” and “Mac” are core elements of its “Mc family of marks,” used internationally across 100+ countries, and that allowing a third party to register “MC CURRY” would dilute the distinctiveness of its brand.
On the other hand, the applicant of the opposed mark argued that its “MC CURRY” mark that is used for food products like anchovy, butter, jam, oils, canned foods, etc. are targeting a different market segment i.e. retail groceries, not fast-food restaurants, and therefore would not cause any confusion.
This opposition was kept painfully pending for close to 20 years when the Registrar only issued a decision in February of this year; rejecting the opposition and allowing “MC CURRY” to be registered by Mc Spicy Curry House and clearly persuaded by the Court of Appeal’s 2009 decision. In response, McDonald’s filed an appeal in the High Court of Malaya seeking to set aside the Registrar’s decision and to not allow the mark’s registration.
In October 2025, the High Court rendered a judgment that was surprisingly favourable to McDonald’s. The court held that the Registrar had erred in law when it allowed the “Mc Curry” registration. Judicial Commissioner Dato’ Edwin Paramjothy Michael Muniandy found that the Registrar had relied on a narrow test, focusing only on whether the parties’ goods or products were generally similar, rather than on the likelihood of public confusion or deception. The court ruled that under Sections 14 and 19 of the Trademarks Act 1976 (this was a trademark matter under the old Act), “MC CURRY” was liable to mislead or confuse the public into thinking there might be an association with McDonald’s. As a result, its registration should be revoked.
The winning party had initially asked for RM 30,000 in legal costs, but the court settled on a lower amount of RM10,000 (about USD 2,500).
At a glance, some (especially Mc Spicy Curry House) may wonder: If McCurry won in 2009, securing the right for a local restaurant to use “Mc”, why did McDonald’s now succeed in preventing another McCurry in 2025? The answer lies mostly in two factors: the nature of the dispute (passing off versus trademark registration) and the application of different legal principles.
The 2009 dispute was about the tort of passing off i.e. whether McCurry’s use of “Mc” misrepresented its goods or services as belonging to McDonald’s. The courts ultimately concluded that it did not. This 2025 case, however, centred on formal trademark registration and its opposition under statutory law (the Trademarks Act). The court scrutinised whether the “Mc Curry” mark should have been allowed to be registered in the first place, and concluded it should not.
The context is also different. Mc Spicy Curry House was seeking mark registration covering groceries and consumables that extend beyond just a restaurant or a shop name; unlike McCurry Restaurant. The broader scope raises stronger potential for confusion. Thus, even though earlier jurisprudence gave room for “Mc”-prefixed name for local enterprises, the 2025 judgment reasserts limits when it comes to obtaining formal trademark protection. The 2009 decision never did guarantee that future “Mc-something” marks would automatically be allowed to register.
For multinational or well-known brands like McDonald’s, the ruling underscores that long-standing use plus global reputation can justify broad protection, including refusal of seemingly unrelated “Mc-” marks. This outcome bolsters what many call the “Mc family of marks” worldwide. For local businesses, especially those considering such well-known prefixes, the ruling signals stricter scrutiny and potentially higher risk of rejection.
The decision draws a clearer line in the different legal tests being assessed when it comes to disputes under the tort of passing off (actual misrepresentation) and formal trademark registration (likelihood of confusion)
The 2025 ruling against Mc Spicy Curry House marks a pivotal moment in Malaysia’s evolving trademark jurisprudence. After years of sporadic enforcement and taunting by copycats that it is A-OK to use a famous prefix, the High Court’s decision to cancel “MC CURRY” registration reaffirms the importance of protecting well-known global brand identities under statutory law.
For McDonald’s, the verdict restores a measure of control over its “Mc” branding within Malaysia. For local entrepreneurs and SMEs, the ruling serves as a cautionary tale: prefix-based branding that seems innocuous may still run afoul of trademark law. More broadly, the case underscores how intellectual-property rights, consumer perception, and brand identity continue to shape and sometimes constrain business naming and branding strategies in a globalised marketplace.
Two horses, no confusion: the Ferrari Wee Power trademark dispute in Malaysia
Italian luxury sports car manufacturer Ferrari S.p.A., globally renowned for its iconic prancing horse emblem and the exceptional goodwill associated with its brand, has unfortunately failed in its attempt to block the registration of a Malaysian energy drink company’s trademark featuring a twin-horse logo. Our firm was entrusted with representing Ferrari in this matter, including the trademark opposition proceedings and the subsequent appeal to the High Court.
The dispute began in 2016 when Ferrari opposed Sunrise-Mark’s application, arguing that the twin-horse device was confusingly similar to its iconic prancing horse emblem, particularly in light of Ferrari’s longstanding and internationally recognized rights in the emblem. The Intellectual Property Corporation of Malaysia (MyIPO) applied the “word talk principle” and issued a decision in favour of Sunrise-Mark, finding that the marks were not visually or conceptually similar and that the parties operated in entirely different markets.
Unsatisfied with the outcome, Ferrari appealed to the High Court seeking to overturn MyIPO’s decision, in order to uphold the integrity of its brand.
Despite Ferrari’s formidable global reputation and the principled basis for its objections, the High Court affirmed the earlier decision of MyIPO, ruling in favour of Sunrise-Mark Sdn Bhd and allowing its “WEE POWER” logo to proceed to registration.
Key findings of the High Court include the following:
1. No likelihood of confusion under Section 14(1)(a) TMA 1976
Section 14(1)(a) of the Trade Marks Act 1976 prohibits registration of a mark if its use is likely to deceive or cause confusion to the public. The Court examined the applicable principles from Tohtonku Sdn Bhd v Superace (M) Sdn Bhd and Ortus Expert White Sdn Bhd v Nor Yanni bt Adom, applying both the side-by-side comparison test and the imperfect recollection test.
Ferrari’s registered mark consists solely of a single rearing horse. Sunrise-Mark’s logo, however, features two rearing horses facing each other, a prominent “W” between them, and the words “WEE POWER” beneath the device.
The Court held that the only similarity between the two trademarks was the depiction of horses, which was insufficient to cause consumer confusion.
2. Side-by-side comparison: marks visually and conceptually distinct
On side-by-side comparison, the Court found that while both marks depict horses, the similarity ended there. Sunrise-Mark’s design included additional distinctive features, a large “W” positioned between the horse heads and the words “WEE POWER” prominently displayed below.
Ferrari argued that the word “POWER” has already been disclaimed and should not be considered in the comparison, citing British-American Tobacco Co Ltd v Tobacco Importers & Manufacturers Ltd. The Court disagreed, holding that while a disclaimer affects the scope of protection, it does not remove the feature from consideration in an overall visual comparison.
Ferrari also argued that the word “WEE” is a common English word meaning “very small” or “very early”. As the word is a descriptive and non-distinctive English word, Ferrari argued that no claim of ownership can be made on the word. The Court rejected this as well, finding that “WEE” in the Sunrise-Marks mark derived from the founder’s name, and was therefore satisfies the element of distinctiveness under Section 10(1)(a) of the TMA 1976.
3. Imperfect recollection test
This more realistic test considers the impression left on an average consumer with ordinary memory, who typically does not have the luxury of comparing marks side by side. The Court acknowledged that real-world consumers rarely recall trademarks in detail. Applying the imperfect recollection test, the Court held that ordinary consumers would not confuse Sunrise-Mark’s mark with Ferrari’s mark, especially given the distinctive branding and the entirely different product categories involved.
The Court found no realistic possibility that consumers, even with imperfect memory, would mistake an energy drink bearing the “WEE POWER” logo for a product associated with Ferrari. The differences in design, presentation, and overall commercial impression were too significant to overlook.
4. Different goods and target markets
The Court also emphasized the parties’ distinct market segments. Ferrari’s mark is applied to luxury, high-performance vehicles, targeted at a high-end consumer base. In contrast, Sunrise-Mark’s products are mass-market energy beverages sold in supermarkets.
The goods do not compete, the consumer bases do not overlap, and there was no evidence that ordinary consumers would associate an energy drink with Ferrari’s automotive brand.
As such, the Court held that it was unlikely that the general impression formed by an average consumer viewing Sunrise-Mark’s products would lead them to believe that Sunrise-Mark’s mark is similar to Ferrari’s mark.
The High Court held that the marks are not likely to deceive or cause confusion, affirming MyIPO’s original decision. Ferrari’s opposition was therefore dismissed, and Sunrise-Mark’s trademark was allowed to proceed to registration.
While the outcome was not in Ferrari’s favour, this case reinforces an important principle in trademark law - even a globally famous brand cannot prevent another trademark’s registration without establishing a genuine likelihood of confusion. Whilst reputation may play a major role in an opposition proceeding, it may be insufficient to ensure success; factors such as the overall look and impression of both marks, whether there exists a strong likelihood of confusion and provision of relevant evidence are equally important to obtain a favourable judgment.
Despite Ferrari’s setback, its challenge against Sun Rise’s trademark application reflects the diligence with which strong brands should continue to protect the integrity and exclusivity of their trademarks in diverse markets.
