News

• McDonald’s Wins EU Trademark Opposition Over Phonetically Similar Coffee Brand

  
  
  
  On 13 May 2025, the EUIPO Opposition Division upheld McDonald’s opposition to trademark for a coffee-related brand resembling 'MAK', ruling that it posed a likelihood of confusion with McDonald’s earlier mark 'GREEK MAC'. The decision states that the contested mark targeted identical goods—namely coffee beverages— and bore high aural similarity despite only low visual resemblance. The analysis focused on English-speaking consumers in Denmark, the Netherlands, Finland, and Sweden, for whom the verbal elements 'MAC' and 'MAK' were deemed phonetically indistinct. The descriptive or weakly distinctive nature of the term 'GREEK' further amplified the significance of the overlapping elements. While McDonald’s invoked a family of marks based on the 'Mc' prefix (e.g., McCafe, Big Mac, McRib), the Division ultimately concluded the opposition on the grounds of individual mark conflict rather than series association. Following visualisation shows detailed information on the opposed 'MAK' trademark.
  
  

  
  

  14/05/2025

• BMW Secures Victory in WIPO Dispute Over Gaming Domains Mimicking Its Brand

  
  
  
  In a ruling issued on 1 May 2025, the WIPO Arbitration and Mediation Center ordered the transfer of two disputed domain names — <bmw.game> and <bmwonling.com> — to German automaker Bayerische Motoren Werke AG (BMW), finding both registrations to be clear cases of cybersquatting. The panel concluded that the domains, which were used to promote online gaming services, were confusingly similar to BMW’s globally recognised trademark, noting that the mark was fully incorporated in both names. With no evidence of the registrants holding rights or legitimate interests, and given BMW’s longstanding trademark rights—dating back to 1929 in Germany and 1955 in the U.S.—the panel found it inconceivable that the respondents were unaware of the brand. The use of the BMW mark to attract users for commercial gain, coupled with the absence of a response from the domain holders, led to a determination of bad faith.
  
  

  
  

  09/05/2025

• RAI Files U.S. Trademark Opposition Against ‘RIA’ Over Risk of Brand Dilution in Educational Sector

  
  
  
  On 5 May, RAI–Radiotelevisione Italiana, Italy’s state-backed media powerhouse, filed an opposition in the United States against the trademark ‘RIA’, submitted by the Global Association of Risk Professionals, arguing the mark is confusingly similar to its own suite of well-established brands, including ‘RAI ITALIA’, ‘RAI PLAY’, and ‘RAI WORLD PREMIUM’. Although the opposed trademark relates to educational and certification services in financial risk management, RAI contends that the phonetic and visual overlap could undermine its identity—particularly as it expands into streaming and digital content delivery. Following visualisation shows detailed information on the opposed trademark, mapping its classifications and usage scope, which RAI believes could encroach upon the public broadcaster’s reputation. Despite retaining more than one-third of Italy’s TV viewership and producing over 4.2 million hours of streamed content in 2021, RAI has seen a steady decline in traditional prime-time audiences and continues to grapple with digital engagement gaps. The opposition underscores its broader strategy to protect its legacy branding in a competitive multimedia and educational services environment, where convergence increasingly blurs sectoral boundaries.
  
  

  
  

  07/05/2025