The case concerned an application by Nigel McHugh to register the mark “The McHug or The McHug Burger” in class 43 for food and drink services. The application was opposed by McDonald’s International Property Company Ltd (McDonald’s), which relied on a number of earlier registrations, including McDONALD’S, McCHICKEN, and McFLURRY. The opposition was brought on multiple grounds, including likelihood of confusion, reputation, passing off and bad faith. Central to the opposition was the contention that the applied-for mark would be perceived as part of McDonald’s well-known “Mc” family of marks.

The hearing officer identified the strongest grounds as those under section 5(3) (reputation) and section 3(6) (bad faith) of the Trade Marks Act 1994, and addressed these first.

Reputation and family of marks

McDonald’s filed extensive evidence of its reputation in the UK. This included evidence that it served nearly four million customers daily in 2024, generating a UK turnover exceeding £1.8 billion. The hearing officer readily concluded that McDonald’s enjoyed a “strong” reputation in relation to restaurant services and core food products.

A key question was whether this reputation extended to a protectable family of marks. To establish this, the earlier marks must all be present on the market and share common characteristics such that the public recognises them as a series (which may not be the case where when the element in common is in a different position or has a different semantic content).

The hearing officer found that the requirements were satisfied. While the marks varied in their second elements, ranging from names (McDonald’s), to descriptive terms (McChicken), to unrelated words (McFlurry), they were unified by the consistent “Mc-” prefix. In light of the extensive use of these marks, the hearing officer found that the relevant public would recognise this prefix as indicating a common commercial origin.

Link and unfair advantage

In assessing whether the public would make a “link” between the marks, the hearing officer considered the established relevant factors. Although the applied-for mark consisted of a longer phrase, the element “McHug” was identified as its most distinctive component. That term followed the “Mc + dictionary word” structure and was therefore consistent with the established family of marks.

Taking the factors together, the hearing officer concluded that the relevant public would make a mental link between the marks, and would be likely to perceive “McHug” as an extension within the same brand family, also giving rise to indirect confusion.

The finding of unfair advantage followed, and the opposition succeeded in its entirety under section 5(3).

Bad faith

The bad faith finding provides an important aspect of the decision.

McDonald’s alleged that the application had been filed with the intention of approaching it to suggest a collaboration. The evidence included correspondence in which the applicant stated that his “plan… was to eventually approach McDonalds for a collaboration” and that the idea could form a new product for the McDonald’s menu. The applicant accepted that he did not operate a restaurant and that McDonald’s was effectively the only entity capable of using the mark.

Whilst mere knowledge of a third party’s business is not sufficient to establish bad faith, the hearing officer found that this went further. The mark mimicked the format of McDonald’s’ family of marks and had been applied for to secure a commercial advantage in negotiations. The hearing officer concluded that this did not constitute a legitimate objective for a trade mark application.  The application was therefore found to have been filed in bad faith.

The hearing officer also indicated that the opposition would have succeeded under section 5(2)(b), and under section 5(4)(a).

Practical takeaways

• A consistent structural element (such as a prefix) can support a family of marks. However, case law suggests that a family is more likely to be recognised where the shared element is itself distinctive.
• The applicant appeared to rely on similarities with his surname (McHugh), but it is well established that a personal name does not confer an automatic entitlement to register or use it as a trade mark.
• Applicants should ensure that trade mark filings are made for a genuine commercial purpose. Using the trade mark system to secure negotiating leverage may give rise to a finding of bad faith.
• Even where an applicant believes their conduct to be legitimate, subjective intent will not justify behaviour that constitutes an improper use of the trade mark system.

Case details at a glance

Jurisdiction: England & Wales
Decision level: UKIPO
Parties: Nigel McHugh v McDonald’s International Property Company, Ltd
Citation: O/0385/26
Date: 05 May 2026
Decision: dycip.com/o-o385-26