The Pechersk District Court of the city of Kyiv, by its decision dated October 6, 2022, upheld the lawsuit of McDonald’s International Property Company, Ltd. to the Ukrainian Institute of Intellectual Property (Ukrpatent) and the individual Yevhen Leskiv and canceled the registration of TM “McFlower” in Ukraine.
The American company stated in the lawsuit that it is the owner of the well-known trademark “Mc” for a wide list of goods and services in classes 29, 30, and 43 of the Nice classification, related to public catering, which has enhanced legal protection compared to ordinary registered trademarks, and a large series of TMs with a common verbal element “Mc”, known throughout the world, including a separately registered trademark “Mc” for a wide range of goods and services in classes 29, 30, 35, 42, and 43, the rights to which are not recognized and violated by the defendants, since the state registration of “McFlower”, which includes the well-known trademark “Mc”, was carried out in violation of the requirements of the current legislation of Ukraine, violates his rights and interests protected by law.
The defendants in their responses stated that the mark “Mc” has become well known in relation to goods and services in classes 29, 30, and 43, while “McFlower” is registered in classes 35 and 44, and this trademark is used exclusively for the sale of flowers and in no way cannot mislead customers because McDonald’s is not a well-known flower company and has never been in this business.
In addition, the court took into account the conclusion of the forensic examination conducted on behalf of McDonald’s. According to it, the trademark “McFlower” is recognized as similar and it can be confused with the plaintiff’s well-known trademark “Mc”.
In addition to the obligation to cancel the registration of the “McFlower” trademark, the court also ordered the defendant to pay court costs in the amount of UAH 27,000 ($740).