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.”