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August 1, 2009 Vol. 64 No. 14 Back to Bulletin Main Page

MALAYSIA: McCurry vs. McDonald’s: Passing Off, the Common Law and Procrustean Beds

For Mr. Suppiah, the troubles began in 1999. He runs a local mom-and-pop roadside diner in Kuala Lumpur that sells Malay and South Indian food, such as roti canai, curries and nasi briyani. His staff does not wear uniforms, and his restaurant is cooled by ceiling fans, not air conditioning. He called his restaurant McCurry, which, he claims, was an abbreviation for Malaysian Chicken Curry.

McDonald’s Corporation sued Mr. Suppiah for the English common law tort of passing off. The case has been closely followed by both local and international media, which have billed it as a battle between David and Goliath.

In 2006, the trial court held in favor of McDonald’s, applying the classic “holy trinity” test for passing off—goodwill, misrepresentation and damage. McDonald’s had created a family of marks under the “Mc-” prefix by selling various food items (e.g., McChicken, McNuggets) and providing restaurant services (e.g., McDonald’s, McCafe). Consequently, consumers would associate McCurry with the plaintiff, thus causing damage to McDonald’s. Although the word “dilution” was not used, it seems to be the implicit reason for the trial court’s conclusion. Mr. Suppiah duly removed the lowercase “c” from his signboard and began trading as M Curry.

However, McDonald’s victory was short-lived, as the trial court’s decision was overturned by the Court of Appeal in April 2009. Justice of Appeal Gopal Sri Ram (who has since been elevated to the Federal Court) delivered a scathing 18-page judgment, saying that there had been “a serious misdirection which ha[d] resulted in a miscarriage of justice.”

The Court of Appeal felt that it was not bound by strictures of the “holy trinity” test because the common law “does not rest upon a Procrustean bed.” In any event, it went on to discuss the essential features of the tort—that is, goodwill, misrepresentation, damage—and found that there was no misrepresentation. McDonald’s get-up (trade dress) consists of a distinctive golden-arched “M” with the word “McDonald’s” against a red background. In contrast, the defendant’s signboard says “Restoran McCurry,” with the lettering in white and gray on a red background and with a drawing of a cartoon chicken giving a double thumbs up and the words “Malaysian Chicken Curry.” None of the items on McCurry’s menu carried the “Mc-” prefix. The type of food sold and the customer base were “very different.” Following the reasoning of the London High Court in Yuen Yu Kwan Frank v. McDonald’s Corp. (the McCHINA case), Justice Sri Ram said: “Where the learned judge, with respect, erred is to assume that McDonald’s had a monopoly in the use of the prefix ‘Mc’ on signage or in the conduct of business.”

It was not clear whether McDonald’s customers were lost to McCurry because they were actually misled, or whether this was likely in the future. The damage, presumably, was confined to the detrimental association with and dilution of the McDonald’s brand. McDonald’s is widely expected to appeal to the Federal Court, which is the final court of appeal in Malaysia.


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