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. Last Updated: 07/27/2016

Hot Fight Brewing Between Mc, Mac

The owners of the MacCoffee brand have challenged the right of McDonald's Russia to the similar sounding McCafe logo as the former prepares to launch a chain of coffee shops in Moscow.

Future Enterprises Singapore claims the fast food giant's trademark sounds confusingly similar to its instant coffee label and has appealed to Russia's trademarks and patents agency, Rospatent.

According to Sudip Nair, the head of FES's Moscow office, the appeal points out that his company has held the right to the brand since 1998. FES has sold its instant coffee under the MacCoffee name since 1994. The company also owns the MacTea, MacCandy and MacFood trademarks.

FES says its investments in developing the brand come to "several millions of dollars a year." A company spokesman cited Gallup AdFact data that shows that MacCoffee accounted for 2 percent of the total media budget of coffee brands on Russian television ($133 million) in 2002.

But the main reason for FES's concern is that the company plans to open a chain of coffeehouses under the MacCoffee sign in Moscow. This, according to FES's lawyer, Yekaterina Savchenko, is why FES is trying to protect its brand and remove the question of any similarity to the McDonald's trademark.

But when it comes to cafes, McDonald's is a step ahead of the Singapore company.

The first McCafe in Russia opened at the end of 2002 in McDonald's restaurant on the Arbat. McDonald's introduced the McCafe brand internationally in 1995 and already works with it in 20 countries.

But this does not concern FES. "We will stop the violations of our brand," Savchenko said.

Anna Rozenich, a representative of the McDonald's Corp., said her company had applied to register the McCafe trademark in Russia in 2001.

"Since the registration process is ongoing, we will not discuss this question. But it is clear that McCafe is McDonald's trademark in more than 20 countries and our application is being considered in 100 countries," Rozenich said.

Whether McDonald's will create a chain in Moscow is unclear. Svetlana Polyakova, spokeswoman for McDonald's in Moscow, said that so far no decision has been taken.

"Restaurant owners often find that the name of a newly registered product has already been registered," said Valeria Silina, the public relations director of Rostik Group.

Rostik Group says it conducts extensive research to make sure a trademark is "clean." As a result, it discovered that the name Barista, which it had selected for its coffeehouse chain, had already been registered by one of the biggest coffee suppliers in Russia, Finland's Paulig. It took six months until the company chose Mocca Loca for its new name.

Margarita Mironova, a patent attorney with law firm Uskov & Partners, said that FES has a good chance of showing that its rights have been violated.

It would not be hard to show the graphic and phonetic similarities between the MacCoffee and McCafe logos, she said, which differ by only one letter in their Cyrillic versions.

But Denis Voyevodin, advisor to the law firm Salans, said FES's behavior was strangely aggressive.

McDonald's in Russia controls earlier-registered rights to trademarks incorporating the "Mc" prefix, he said. "As a consumer, this prefix is firstly associated with McDonald's."

Rospatent declined to comment.