Do You Know Why A Trademark Owner Company is Disputing with Another One When it Deems the Trademarks To Be Similar?

A dispute based on an appeal filed by McDonald's International Property Company, Ltd. is over at the Chamber of Appeals functioning at the National Intellectual Property Centre of Georgia –Sakpatenti. McDonald's was against registration of the trademarks “მაკროლი” and “MacRoll”.

According to the appellant, these trademarks were similar to the trademarks of good reputation, registered in the name of the company, the use of which would create unfair advantages for its applicant and would damage the reputation of the appellant’s trademarks. The appellant company, on the basis of Paragraphs (c) and (g) of Article 5 of the Trademark Law of Georgia, requested annulment of the decision on the registration of the trademarks “მაკროლი” and “MacRoll”. By the decision of the Board of the Chamber of Appeals, the appeal was upheld and the registration of the disputed trademarks was cancelled. 

During the hearing of the case at the Chamber of Appeals, the Board regarded that the visual and phonetic similarities between the disputed trademarks and the marks belonging to the appellant, against the background of the weak and non-distinctive verbal elements, would create a risk of confusion between the marks. The Board paid special attention to the fact that the network of McDonald's restaurants during 23 years - since 1999 to the present day – has carried out its activity continuously, extending from year to year, which is confirmed by articles from the Internet publications submitted as evidence. Among these, McDonald's is ranked tenth in Forbes’ list of the “World's Most Valuable Brands”, the value of the brand exceeds 46 billion US dollars and its income is more than 100 billion US dollars.