Malaysia Update

It is okay to use the prefix “Mc” in naming a company. The Court of Appeal said McCurry Restaurant (KL) Sdn Bhd at Jalan Ipoh did not misrepresent the public nor confuse them in conducting its business.

“There was no proof of the tort of passing of in this case,” Judge Datuk Gopal Sri Ram said in allowing an appeal by McCurry Restaurant against McDonalds Corporation.

Sri Ram, who sat Datuk Heliliah Mohd Yusof and Datuk Sulong Matjeraie, in delivering the unanimous decision yesterday, said there were several distinguishing features between the two in the conduct of their trade.

He said the McDonalds logo consists of a distinctive golden arched “M’ with the word “McDonalds” against a red background.

Sri Ram said McCurry’s signboard carried the words “Restoran McCurry” with the lettering in white and grey on a red background with a picture of a chicken giving a thumbs up and with the wording “Malaysian Chicken Curry.”
Secondly, he said, the items of food available at McDonalds carried the prefix “Mc”.

“However, as evident from the defendants (McCurry) menu card, none of the food items served carries the prefix ‘Mc’,” he said.

Thirdly, he said, McCurry only catered Indian food whereas McDonalds served fast food.

Sri Ram said the High Court judge who ruled in favour of McDonalds overlooked this material fact, a serious misdirection that resulted in a miscarriage of justice.

Fourthly, he said, those who patronised McCurry outlet were mainly adults and senior citizens while those who patronised McDonalds were mainly children.

Sri Ram, now a Federal Court judge, said the irresistible inference to be drawn from the totality of the evidence was that McDonalds’ signboard would not result in reasonable people associating McCurry with the McDonalds’ mark.

Sri Ram said the High Court judge, in arriving at her decision, erred that McDonalds had a monopoly in the use of the prefix “Mc” on a signage or in the conduct of business.

In September the High Court ruled that "Mc" is the exclusive right and trademark of fast food giant McDonald's Corporation, and McCurry then appealed to the Court of Appeal.

Counsel S. F. Wong and S. Indran appeared for McDonalds while Sri Dev Nair represented McCurry.