In the battle of brands, repute and mileage, the grapple is often between MNCs and smaller local players, the latter often find themselves buried under the brawl of an established brand name. Wriggling out of such a situation is Sterling's Mac Fast Food in the decision of McDonald's Corporation v. Sterling 's Mac Fast Food. [2008 (37)PTC 247]

McDonald's adopted the trademark "BIG MAC" for the first time in 1968 in USA. In India, they got registered their marks BIG MAC, McDonald's as well as their corporate logo 'M'. According to them, the word "BIG" was registered on the condition that the same would not append exclusivity, while "MAC" was allowed to be put to exclusive use by them. They were the owner of several marks incorporating Mc/MAC as the suffix or prefix. The usage of the mark "MAC" as a prefix by Sterling's Mac Fast Food, came to their notice and they alleged a mala fide intention to trade upon their goodwill and reputation of BIG MAC and Mc/MAC, asserting that the mark was in use since 1983. On issuance of a legal notice Sterling averred that they were trading in the name of "Sterling's Mac Fast Food" and not "Mac Fast Food."

McDonald's responded to the assertion of Sterling stating that "Sterling" did not form a visible part of the mark, and that earlier, the counsels for McDonald's, in order to avoid litigation, requested them to use the name "Sterling" in bold letters, equivalent to "Mac Fast Food". They also advised to incorporate the same in all prominent places of its business to avoid deception and confusion. Sterling describing the origin and birth of the name asserted that "they were the first in point to use the term "Mac", while McDonald's used "Big Mac" and not Mac alone. They also asserted that the name was McDonald's and not Mac. Sterling further stated that they procured registration under the Trade and Merchandise Marks Act, 1958, while McDonald's had not registered their mark until 1996. Further, a suit was filed only in 1998, five years after the existence of Sterling's mark came to their knowledge.

In the trial, documents were adduced to support their respective contentions. In the appeal, McDonald's contended that the judgment passed was on contentious issues and in error of law, while Sterling contended that the Court's opinion was correct. They also stated that the dismissal of the suit on the ground of delay and laches was correct. Presenting pieces of evidence such as lease deed copies and license, they averred that they had been using the trademark for sixteen years prior to McDonald's entry into India in 1996. The trial court rendered against McDonald's.

The High Court, examining the statute, comparing the marks and heeding attention to judicial precedents, stated that Sterling could not be alleged of infringement. Noting that Sterling had entered the business and was using the mark since 1983, McDonald's could not have any grievance against it. The court also stated that McDonald's could not claim exclusive rights over the mark, since they had admitted that most of the trademarks had been registered in the course of pendency of the suit. Pronouncing McDonald's case to be vexatious and imaginary, the High Court dismissed the suit and ordered costs.

© Lex Orbis 2008

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