Discussing the recent trademark dispute between fast food giant McDonald and Gujarat-based entity McPatel, Siri Gudapati looks at the family of marks concept under the Indian trademarks law and the ill effects of granting exclusivity on prefixes like “Mc”. Siri is a recent BA LL.B. (Hons.) graduate from Jindal Global Law School, and is passionate about intellectual property, technology, media and entertainment law. She was also a part of the SpicyIP Summer School, 2025.
The “Mc”Monopoly: Is McDonald’s Building a Trademark Empire on a Single Prefix?
By Siri Gudapati
Very recently, McDonald’s found itself in a legal battle after opposing a trademark application filed by McPatel Foods Private Limited, an Ahmedabad based food business that pushed back with a lawsuit (see here). McPatel argues that McDonald’s does not have exclusive rights over the prefix “Mc”, and filed a suit under Section 146 of the Trade Marks Act, 1999 to restrain McDonald’s from taking unjustified legal action. McDonald’s has a long history of opposing trademark applications across industries claiming exclusivity over the word “Mc”. This is just one of the many multi-national corporations that opposed Indian fast-food joints over their brand name fearing dilution of their trademark. In 2011, a Pune based eatery operating under the name Burger King was sued by Burger King Corporation, despite being in operation way before the latter entered the Indian market. In 2017, Starbucks Corporation vigilantly opposed Sardarkbukh Coffee & Co. alleging trademark infringement and deceptive similarity, and got it rebranded to Sardarji Bakhsh Coffee & Co. Now the issue at hand with McDonald’s is not just about a name, but about the broader implications caused by registering a series of names and using them as a tool to dominate the market.
Opposition by McDonald’s and Family of Marks:
Indian courts have recognized the concept of a “family of marks” under the intellectual property domain. Although it must be noted that the concept is not statutorily defined under the Trade Marks Act. It refers to a group of trademarks that share a common prefix or suffix, and are used in a consistent and recognized manner for the public to associate them to a single source. This practice generally helps companies establish and maintain a cohesive brand identity across various products and services. Companies that wish to protect their core trademark while operating across diverse industries benefit the most from the strategy (Tata Group’s Tata Motors, Tata Steel, Tata Consultancy Services is an example). This has also enhanced the purchasing experience of consumers, making it easier for them to navigate through an extensive product landscape.
The problem, however, arises when corporations begin to get possessive about the standalone usage of the particular prefix or a suffix. They are afraid that even if another person’s mark is not infringing on its own, adding that one common element (“Mc” in this case) would confuse people, associate this brand with the “McDonalds Corporation”, and/or weaken their brand. This is when it becomes important to evaluate the reasonability behind a single entity claiming exclusivity over a) a generic term, b) a term that does not even a significant portion, let alone half of its registered trademark, and c) and industries or sectors it does have any commercial presence in.
Modi-Mundipharma Case
The Courts have discussed the “family of marks” principle in the Modi-Mundipharma case, in which the mark “FEMICONTIN” was in dispute. The plaintiff claimed, through its family of marks, it acquired distinctiveness over the suffix “CONTIN”, and that the defendants’ product name was deceptively similar to the same. The Court observed consistent usage of the suffix, and the element gained recognition as a source identifier among the public. It recognized the “family of marks” concept and considered “CONTIN” to evaluate likelihood of confusion among the public.
While the court recognized infringement and passing off in this case, it is important to note that it has only restrained the respondents from using any registered trademarks, which do not include standalone suffixes and prefixes of the same. It actively rejected the appellants request to restrain anybody from using “CONTIN” as a suffix or a prefix in the pharma sector. The Court essentially declined to grant monopoly over suffixes and prefixes, although it recognized the concept of family of marks to assess likelihood of confusion.
Erosion of Fair Competition
While the practice of having variant trademarks helps multi-national corporations to small businesses retain brand identity, it has also opened the doors for corporations to use it as a tool to block healthy competition. Proprietors such as McDonald’s have begun to increasingly claim exclusive rights over generic prefixes and suffixes arguing that other businesses using the same would dilute their brand. A practice that should be used to streamline brand protection has instead become a strategy to block market entry. On a related tangent, trademarks, with minor differences whose goods and services fall under the same class, and have the same description can be registered as Series Marks under a single application under Section 15 of the Trademarks Act, 1999. While this significantly reduces administrative and registration costs for the proprietor, it can also be anti-competitive. In Indian law, trademarks must generally be used in commerce after registration and the failure to do so can lead to cancellation for non-use after a specific period of non use. Series marks are considered to be associated marks, which means they are assigned together, and using one mark in the series would have the same effect as using all marks in the series. So, even using one mark in the series protects the rest from non-use cancellation. While this can be considered beneficial for the proprietor, it creates a market asymmetry as it bars others from using names that are not even being commercialized. The very purpose of non-use cancellation is to prevent trademark hoarding and to ensure active market participation. However, with the concept of associated trademarks, the purpose gets defeated.
Judicial Stance:
Across various jurisdictions, courts have had a varied response to McDonald’s vigilant attempt at protecting its “Mc” prefix. In some jurisdictions, courts have ruled that the risk of consumer confusion is unlikely for products in different classes, and allowed its use. While in other jurisdictions, courts held that the high level of recognition and global presence of McDonald’s could potentially lead to a consumer associating anything with a “Mc” prefix with McDonald’s, even if they operate in entirely unrelated sectors.
In Malaysia, a local restaurant named McCurry was allowed by the Malaysian Court of Appeal to operate as they served a traditional Malaysian and Indian cuisine, and found there would be no likelihood of confusion. For the same reason, MacChocolate, MacTea and MacNoodles by Future Enterprises were allowed to function in Singapore. This illustrates that in the two jurisdictions, McDonald’s right on the prefix was limited primarily to the fast-food industry and largely depended on likelihood of confusion among consumers. Ironically, when Quality Inn attempted to launch a chain of budget hotels under the name McSleep Inns., the court held that consumers would assume association between the two brands and ruled in favor of McDonald’s.
In 1988, McDonald’s filed a suit against Sterling’s Mac Fast Food, alleging that their using of “MAC” infringed on their trademarks of BIG MAC and McDonald’s. However, it must be noted that Sterling’s Mac Fast Food has been in use since 1982, which is much prior to the establishment of McDonald’s in the country. The term “MAC” was a bona fide reference to the founder’s son Mac Mathew. The trial court and the Karnataka High Court took note of the same, and held that words such as “Mac” and “Mc” were common in India and “MAC” was not registered by McDonald’s independently. Moreover, the Trade and Merchandise Marks Act, 1958 under Section 34 protected bona fide use of a personal or business name. In context of family of marks concept, the Delhi High Court’s decision in Amar Singh Chawalwala resonates with this understanding. The Court, denying the application for an interim injunction, relied on McCarthy on Trademark, that has the following to say about the family of trademarks
“The point is that the “family of marks” argument does not exempt a mark from the standard tests of trademark protection. In most cases, use of the “family” argument appears to add little, if anything, to a straight argument of a likelihood of confusion between plaintiffs marks and defendant’s mark. The family of marks argument is often raised but infrequently bears fruit. Many courts view the argument with suspicion because it appears that the plaintiff is seeking protection of an ordinary and undistinguished syllable“
A Balanced Approach between Protection and Competition:
The approach taken by the Karnataka High Court in the Sterling’s Mac Fast Food case, and the Delhi High Court in the Modi-Mundipharma case reinforce that trademark protection should not be extended to prefixes and suffixes in isolation. Granting such exclusivity would only risk establishing monopolies over generic words. It may be reasonable to protect a distinctive or a coined word in its entirety but granting such protection to partial elements that are generic within themselves would undermine linguistic freedom. It is important to consider aspects such as likelihood of confusion, industry practices and how it would affect competition before placing a blanket restriction on a word.
In the McPatel case, it would be unreasonable to grant protection to a generic prefix alone without examining the word in its entirety. As Justice V Gopala Gowda observed, “Mc” and “Mac” are common words in India, and exclusive rights cannot be claimed over them. McDonald’s does not hold any standalone registration over the word “Mc”. On top of that, Patel is a widely used family and business name, bringing the case under the ambit of Section 35 of the Trade Marks Act,1999. Similar to the Sterling’s case, it gives a person the right to use their name in the course of business. There also seems to be no similarity in trade dress, logo or font style between the two entities that may suggest any association.
The legal battles consistently fought by McDonald’s to protect its brand identity reveals how such enforcement can hinder market participation. This calls for the courts to strike a balance to protect genuine trademarks, while also acknowledging that modern consumers are not so easily misled. In industries where consumers are well-informed and brand confusion is less likely to have serious consequences such as food and retail, the courts could adopt a more flexible approach. Although with pharmaceuticals, in cases such as Neon Laboratories Ltd. v. Themis Medicare Ltd. and Glenmark Pharmaceuticals Ltd. v. Softgel Healthcare Pvt. Ltd., courts have rightly prioritized consumer confusion to avoid any kind of medication mix up. Ultimately, considering factors such as consumer literacy, industry context and actual harm while evaluating a claim instead of extending a blanket protection can be a step towards striking a balance between brand protection and fair competition.