find the latest legal job
Senior Associate - Litigation & Dispute Resolution
Category: Litigation and Dispute Resolution | Location: Melbourne CBD & Inner Suburbs Melbourne VIC
· Come work for a firm ranked in Lawyers Weekly Top 25 Attraction Firms
View details
Associate - Workplace Relations & Safety
Category: Industrial Relations and Employment Law | Location: Brisbane CBD & Inner Suburbs Brisbane QLD
· Employer of choice · Strong team culture
View details
Freelance Lawyers
Category: Banking and Finance Law | Location: All Perth WA
· Freelance opportunities through Vario from Pinsent Masons
View details
Freelance Lawyers
Category: Other | Location: All Adelaide SA
· • Qualified lawyer with a strong academic background
View details
Freelance Lawyers
Category: Other | Location: All Melbourne VIC
· • Qualified lawyer with a strong academic background
View details
McBrats wins in IP lawyer vs Maccas case

McBrats wins in IP lawyer vs Maccas case

IN WHAT has been labelled a case of “McDavid beating McGoliath”, a Brisbane intellectual property lawyer this week won a trademark challenge against fast food giant McDonald’s over…

IN WHAT has been labelled a case of “McDavid beating McGoliath”, a Brisbane intellectual property lawyer this week won a trademark challenge against fast food giant McDonald’s over his use of ‘Mc’ on a community rugby team’s shorts.

McDonald’s appears to have bitten off more than it could chew when it took on Malcolm McBratney, partner at law firm McCullough Robertson, who used his nickname ‘McBrat’ on his sponsored team’s uniform.

The Federal Court ruled this week that McBratney could register and have his nickname appear as a registered trademark on his team’s shorts.

“I am a staunch advocate of IP protection, and actively encourage organisations to safeguard their identity and intellectual property. However, when corporations use their corporate muscle to ‘beat down’ other small, legitimate trademark applications — this is simply unacceptable,” he said.

“No longer should McDonald’s or any other corporate entity abuse the process of trademarking and monopolise something as fundamental as someone else’s name.

“I have been fortunate to be in the position I am in and have the opportunity to take on this corporate giant. I am sure there are plenty of other small organisations out there who have not had the time or money to follow through with the legal process.

“It is now time for McDonald’s to be corporately responsible; stop wasting businesses and the trade mark office’s time and money in pursuing these fruitless ‘bully-boy’ tactics.”

McBratney spoke to Lawyers Weekly in July last year, criticising McDonald’s for depriving many Irish people with family names starting with ‘Mc’ the right to use a derivation of their names.

McDonald’s took action in the Australian Trade Marks Office last year against McBratney for printing the name ‘McBrat’ on his team’s shorts.

McDonald’s claimed the McBrat name should not be registered because it is too similar to its McKids trademark. McBratney was determined to have the McDonald’s claim struck out, claiming he is “not about to let a US-based multinational tell me or my team whether a derivation of [the family name] can be displayed on some footy shorts or registered as a trademark”.

McDonald’s was unfairly trying to extend its trademark to cover other names starting with ‘Mc’, said McBratney. “This is shaping up to be a real McBunfight over McDonald’s’ fanatical protection of its brand name.”

McBratney said the family name had been used in Ireland since the 1600s, and argued that he did not think McDonald’s could tell him, or his football team, that he could not register a version of his own name as a trademark.

The dispute was reignited in July last year in the Trade Marks Office, with McBratney filing an action asking that the McDonald’s trademark McKids be removed from the trademark register. McBratney argued the McKids trademark had not been used in Australia since being registered in 1987. This, he said, was one of the first cases in which an individual has challenged McDonald’s over one of its trademarks.

“A trademark can be removed for non-use if it hasn’t been used in Australia for a rolling three year period, and that is the case with McKids,” he said. “I think it smacks of corporate arrogance that even though McDonald’s is not using the McKids trademark in Australia it still thinks it can block the registration of a separate trademark that has nothing to do with its business.”

“What it boils down to is that McDonald’s seems to be trying to own not only the McDonald name but everything beginning with ‘Mc’. There are a lot of people with Irish and Scottish heritage who’d dispute that, including me, and I’m prepared to take them on.”

Like this story? Read more:

QLS condemns actions of disgraced lawyer as ‘stain on the profession’

NSW proposes big justice reforms to target risk of reoffending

The legal budget breakdown 2017

McBrats wins in IP lawyer vs Maccas case
lawyersweekly logo
Promoted content
Recommended by Spike Native Network
more from lawyers weekly
microphone
Oct 20 2017
Podcast: One of law’s most infamous alumni – in conversation with Julian Morrow
In this episode of The Lawyers Weekly Show, Melissa Coade is joined by The Chaser’s Julian Morrow....
protest
Oct 20 2017
High Court overturns ‘excessive’ anti-protest legislation
Bob Brown’s recent victory in the High Court over the Tasmanian government was a win for fundament...
Blocked
Oct 20 2017
Changes to Australian citizenship laws blocked
Attempts to beef up the requirements to obtain Australian citizenship were thwarted this week, after...
APPOINTMENTS
Allens managing partner Richard Spurio, image courtesy Allens' website
Jun 21 2017
Promo season at Allens
A group of lawyers at Allens have received promotions across its PNG and Australian offices. ...
May 11 2017
Partner exits for in-house role
A Victorian lawyer has left the partnership of a national firm to start a new gig with state governm...
Esteban Gomez
May 11 2017
National firm recruits ‘major asset’
A national law firm has announced it has appointed a new corporate partner who brings over 15 years'...
opinion
Nicole Rich
May 16 2017
Access to justice for young transgender Australians
Reform is looming for the process that young transgender Australians and their families must current...
Geoff Roberson
May 11 2017
The lighter side of the law: when law and comedy collide
On the face of it, there doesn’t seem to be much that is amusing about the law, writes Geoff Rober...
Help
May 10 2017
Advocate’s immunity – without fear or without favour but not both
On 29 March 2017, the High Court handed down its decision in David Kendirjian v Eugene Lepore & ...